Ex parte Hallenstvedt

Board of Patent Appeals and Interferences

Jul 16, 1999

08372126 (B.P.A.I. Jul. 16, 1999)

Application for patent filed January 13, 1995. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was
not written for publication in a law journal and (2) is not binding
precedent of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ODDBJORN HALLENSTVEDT
____________
Appeal No. 99-0214
Application No. 08/372,1261
____________
ON BRIEF
____________
Before CALVERT, ABRAMS, and McQUADE, Administrative Patent
Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 5-18, which constitute all of the
claims remaining of record in the application.
Appeal No. 99-0214 Page 2
Application No. 08/372,126
The appellant's invention is directed to the combination
of a seat for a sealing ring and a sealing ring seated in the
seat (claims 8-14), and to a seat for a sealing ring (claims
15-18). The claims on appeal have been reproduced in an
appendix to the Brief.
THE REFERENCE
Kondoh et al. (Kondoh) 4,776,768 Oct. 11,
1988
THE REJECTION
Claims 5-18 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kondoh.
The rejection is explained in Paper No. 17 (the final
rejection).
The opposing viewpoints of the appellant are set forth in
the Brief.
OPINION
The test for obviousness is what the combined teachings of
the prior art would have suggested to one of ordinary skill in
Appeal No. 99-0214 Page 3
Application No. 08/372,126
the art. See, for example, In re Keller, 642 F.2d 413, 425,
208 USPQ 871, 881 (CCPA 1981). In establishing a prima facie
case of obviousness, it is incumbent upon the examiner to
provide a reason why one of ordinary skill in the art would
have been led to modify a prior art reference or to combine
reference teachings to arrive at the claimed invention. See Ex
parte Clapp, 227 USPQ 972, 973 (Bd. Pat. App. & Int. 1985). To
this end, the requisite motivation must stem from some
teaching, suggestion or inference in the prior art as a whole
or from the knowledge generally available to one of ordinary
skill in the art and not from the appellant's disclosure. See,
for example, Uniroyal, Inc. V. Rudkin-Wiley Corp., 837 F.2d
1044, 1052, 5 USPQ2d 1434, 1052 (Fed. Cir.), cert. denied, 488
U.S. 825 (1988).
The appellant’s invention is directed to a seat for an
elastic sealing ring of the type used to seal around a rotating
shaft. The invention provides an annular groove into which a
portion of the elastic seal (a bead) is displaced when the seal
is pressed into position. From the description in the
specification, there appear to be five features of the
Appeal No. 99-0214 Page 4
Application No. 08/372,126
invention. The first of these is forming a sharp edge or
corner (22) where the groove intersects with the inner seat
defining surface (5), which prevents the seal from moving in
that direction by interacting with the bead that extends into
the groove. This clearly is taught by Kondoh, and is not an
issue in the case. The second feature is inclining the wall
(24) of the annular groove opposite the edge at an angle of
“about" fifteen degrees relative to the seat defining surface
(5), which “provides the least possible resistance to pressing
the sealing ring into the seat” (page 2). A “gentle
transition” of the inclined wall (24) relative to the seat
defining surface (5) is another feature of the invention. The
final two features are that the axial extent of the groove is
“approximately 20-30%” of the axial length of the seat defining
surface (5), and the depth of the annular groove is
“approximately 5-7%” of the axial length of the seat defining
surface (5).
Kondoh discloses means for sealing around a rotating shaft
which, as shown in Figure 10, comprises a pair of axially
spaced grooves (223) and an elastic sealing ring. As is the
case in the appellant’s invention, the sealing ring is pressed
Appeal No. 99-0214 Page 5
Application No. 08/372,126
into place, whereupon a sharp edge (294) in each groove engages
the a bulge in the sealing ring to hold it in position. Each
of Kondoh’s grooves has a first surface perpendicular to the
seat defining surface and a second surface that appears from
the drawing to be at about a 45 degree angle thereto, although
no specific information on this point is set forth in the
written description. Nor is information provided regarding the
length or depth of the grooves.
We agree with the examiner that all of the subject matter
recited in claim 5 is disclosed by Kondoh, except for the
requirement that the inclined groove wall be at an angle of
“about” fifteen degrees. However, we do not agree with the
examiner that “this is a mere difference in degree from that
shown by Kondoh and, therefore, would have been obvious” (Paper
No. 17, page 2). Our conclusion is grounded in the fact that
the appellant has established in the specification that this
limitation is critical in that it “provides the least possible
resistance” to pressing the sealing ring into place.
Considering that the angle of the comparable groove wall in
Kondoh appears to be about three times the claimed value, and
that Kondoh evidences no concern for the problem solved by this
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Application No. 08/372,126
feature of the appellant’s invention, it is our view that the
teachings of the reference fail to establish a prima facie case
of obviousness with regard to the subject matter recited in
claim 5. Moreover, the examiner has not pointed out, and we
fail to perceive on our own, any teaching, suggestion or
incentive which would have led one of ordinary skill in the art
to modify the Kondoh grooves so that this particular wall is
inclined at an angle of about fifteen degrees.
For the reasons set forth above, we will not sustain the
rejection of claim 5 or claims 6-11, which depend therefrom.
The same rationale applies to independent claim 15, which
is directed to a seat for an elastic sealing ring and which
requires, inter alia, that the axial extent of the annular
groove in the seat be “approximately 20-30%” of the length the
internal lateral surface of the sealing ring. The
specification establishes that this is a critical value, for it
is a factor in making milling the groove very simple with a
minimum of material waste (page 2). Kondoh is silent here as
to the problem solved by this particular measurement, and
provides no hint as to the size relationship of the groove to
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Application No. 08/372,126
See, for example, Merriam Webster’s Collegiate2
Dictionary, Tenth Edition, 1996, page 58.
the length of the sealing ring in the patented invention, and
therefore one is left only to analyze the showing in the
drawing. We find ourselves in agreement with the appellant
that even considering the drawings in the most favorable light,
the axial extent of the each of the grooves does not comply
with the terms of the claim. In this regard, we note that the
common meaning of “approximately” is “to come near,” which in2
our view is not the case with regard to the axial extent of the
Kondoh groove.
Therefore, a prima facie case of obviousness also is not
established with respect to the subject matter of independent
claim 15 or of claims dependent claim 16-18. The rejection of
claims 15-18 is not sustained.
We reach the opposite conclusion with regard to
independent claim 12, however. This claim contains neither of
the numerical limitations discussed above, and the point at
issue is the requirement “said inclined side [24] smoothly
transitioning to said internal lateral surface [5].” The
appellant has not explained where in the specification guidance
Appeal No. 99-0214 Page 8
Application No. 08/372,126
is provided for determining the meaning of the phrase “smoothly
transitioning,” other than to use the words “gentle transition”
to describe it, which provides no greater clue to its meaning
than the original phrase. This being the case, from our
perspective one of ordinary skill in the art would have
appreciated that the transition between the inclined surface
and the lateral surface for seating the sealing ring must be
smooth enough to allow the leading edge of the sealing ring to
pass without difficulty. This conclusion is supported by
Kondoh, which teaches providing inclined walls at two places so
that the sealing ring can be “smoothly inserted.” The first is
wall 291, which is at the entrance to the cavity in which the
sealing ring is installed, and the second is the inclined
surface of the contacting grooves 293 and 294 (see column 4,
lines 20-27). It therefore is our view that in the Kondoh
construction the inclined groove wall is “smoothly
transitioning” to the internal lateral surface to the extent
required by claim 12, and therefore a prima facie case of
obviousness is established and the rejection of claim 12 is
sustained.
Appeal No. 99-0214 Page 9
Application No. 08/372,126
Claim 13 adds to claim 12 the requirement that the axial
extent of the groove be approximately 20-30% of the axial
length of the inner lateral surface of the seat, and claim 14
that the inclined side is inclined at about fifteen degrees.
As we explained above in our refusal to sustain the rejections
of claims 8 and 15, it is our view that these limitations would
not have been obvious in view of the record before us, and for
the same reasons we will not sustain the rejection of claims 13
and 14.
SUMMARY
The rejection of claims 8-11 and 13-18 is not sustained.
The rejection of claim 12 is sustained.
The decision of the examiner is affirmed-in-part.
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Application No. 08/372,126
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
NEA/jlb
Appeal No. 99-0214 Page 11
Application No. 08/372,126
ROBERT J. PATCH
YOUNG & THOMPSON
745 SOUTH 23RD STREET
ARLINGTON, VA 22202