Ex Parte Haynes

Patent Trial and Appeal Board

Jan 23, 2018

13975317 (P.T.A.B. Jan. 23, 2018)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/975,317 08/24/2013 Brian Haynes SUBS0004-1_SUB-030349CQN1 6216
64833 7590 01/23/2018
FLETCHER YODER (CAMERON INTERNATIONAL CORPORATION)
P.O. BOX 692289
HOUSTON, TX 77269-2289
EXAMINER
LEE, GILBERT Y
ART UNIT PAPER NUMBER
3675
MAIL DATE DELIVERY MODE
01/23/2018 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN HAYNES
Appeal 2017-002198
Application 13/975,317
Technology Center 3600
Before EDWARD A. BROWN, JAMES P. CALVE, and
RICHARD H. MARSCHALL, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Brian Haynes (Appellant)1 appeals under 35 U.S.C. § 134(a) from the
Examiner’s decision rejecting claims 1—19.2 We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 The Appeal Brief identifies OneSubsea IP UK Limited as the real party in
interest. Appeal Br. 3.
2 Claim 20 is allowed. Final Act. 10.
Appeal 2017-002198
Application 13/975,317
CLAIMED SUBJECT MATTER
Claims 1 and 13 are independent. Illustrative claim 1 reads as follows
(Appeal Br. 25 (Claims App.)):
1. A system, comprising:
a composite seal, comprising:
a pre-formed annular metal shell comprising a top,
a bottom, and a seal interface disposed between the top and
the bottom; and
an elastomer disposed within the pre-formed
annular metal shell, wherein the elastomer is configured to
impart pressure against the seal interface.
REJECTIONS
I. Claims 13—19 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
II. Claims 13—19 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement.
III. Claims 13—19 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
IV. Claims 1—6, 11, and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Joyce (US 1,635,482, issued July 12, 1927).3
V. Claims 7—9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Joyce and Mullally (US 7,032,905 B2, issued Apr. 25,
2006).
3 In the Final Rejection, claims 1—3, 5, 6, 11, and 12 are rejected under 35
U.S.C. § 103(a) as unpatentable over Joyce (Final Act. 4—6), and claims 1
and 4 are rejected separately under 35 U.S.C. § 103(a) as unpatentable over
Joyce {id. at 6—7). Appellant appears to address both rejections together.
See Appeal Br. 13—20. For conciseness, we will do the same.
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VI. Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Joyce and Nippon (JP 7-224943, published Aug. 22, 1995).4
ANALYSIS
Rejection I
Regarding claim 13, the Examiner finds the disclosure does not
support the limitation “the spring and the elastomer cooperatively provide a
sealing force against the metal seal interface without application of pressure
to an outer perimeter of the metal seal interface” (hereafter, “sealing force
limitation”). Final Act. 2—3.
Appellant contends that paragraphs 18, 19, and 21 and Figures 2 and 4
of the disclosure support the sealing force limitation. Appeal Br. 8.
Paragraph 21 describes (emphasis added):
FIG. 4 is a cross-sectional view of another embodiment of
the composite seal 12 of FIG. 2, further illustrating a mechanical
spring assembly 62 disposed within the annular interior 30 of the
metal shell 20 along with the elastomer 18. The illustrated spring
assembly 62 includes a pair of opposing ring-shaped springs 64
and 66. Specifically, the springs 64 and 66 have opposing C-
shaped cross-sections, which are curved in directions away from
one another in a compressed state in-between the inner and outer
perimeters 44 and 46 of the shell 20. As a result, the springs 64
and 66 impart an outward pressure or force 68 and 70 toward
the ribs 40 and 42, respectively. These forces 68 and 70
supplement the forces 52 and 54 provided by the elastomer 18
within the shell 20.
Appellant points out that Figure 4 shows that springs 64, 66 are
dimensioned or sized such that they are compressed between the inner
4 The Examiner indicates the rejection of claims 13—17 was erroneously
added in the Final Rejection. Ans. 8—9; Final Act. 8—9.
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perimeter 44 and the outer perimeter 46 of the metal shell 20. Id. Appellant
also points out the Specification describes that “[t]he energization or
pressure of the elastomer 18 disposed within the interior 30 of the shell 20
generally provides an outward force 52 on the ribs 40 and an outward force
54 on the ribs 422’ Id. at 9; see Spec. 119 (emphasis added), Fig. 2.
Appellant contends that the process creates a seal 12 where springs 64, 66
and elastomer 18 each impart outward forces on metal shell 20 containing
springs 64, 66 and elastomer 18 before seal 12 is placed in a sealing
engagement with components that may impart forces on the outer perimeter
of metal shell 20. Id.
The Examiner responds that, to form a seal, the sealing member must
be compressed between two members. Ans. 3. The Examiner states that
paragraphs 19 and 21 of the Specification “[do] not enable one of ordinary
skill in the art to make and or use a seal that can provide sealing forces
without coming into contact with the members being sealed.” Id. at 3, 4
(emphasis added).5 Accordingly, the Examiner’s position is that the outer
perimeter of the metal seal interface of the composite seal must be in contact
with the members being sealed to actually form a seal, and thus, provide a
“sealing force” between the composite seal and the members.
In contrast, we understand Appellant’s position to be that the springs
and elastomer impart a force against the “metal seal interface” that
corresponds to the claimed “sealing force,” and this force acts against the
5 As discussed below, the Examiner’s statement relates to the standard for
the enablement requirement, not the written description requirement, of 35
U.S.C. § 112, first paragraph.
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Application 13/975,317
“metal seal interface” even when the “outer perimeter of the metal seal
interface” of composite seal is not in contact with components that impart
forces on the outer perimeter.
The test for sufficiency under the written description requirement of
35 U.S.C. § 112, first paragraph, “is whether the disclosure of the
application relied upon reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date.”
See AriadPharm., Inc. v. EliLilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010) (en banc). To have “possession,” “the specification must. . . show
that the inventor actually invented the invention claimed.” Id.
We are persuaded that the disclosure meets these written description
requirements. We disagree with the Examiner’s position that the outer
perimeter of the metal seal interface of the claimed composite seal must be
in contact with the members being sealed to meet the claimed sealing force
limitation. As noted above, Figure 4 shows springs 64, 66 disposed within
elastomer 18 and in a compressed state to impart outward forces 68, 70 on
the metal seal interface, and these forces supplement outward forces 52, 54
provided by elastomer 18 on the seal metal interface. See also Spec. 121.
Appellant discloses that elastomer 18 similarly provides outward forces 52,
54 against ribs 40, 42. Id. 119. We understand that these forces correspond
to the claimed “sealing force,” which acts against the inner perimeter of the
metal seal interface regardless of whether the outer perimeter of the metal
seal interface is in contact with any members to be sealed. In other words,
these forces act against the inner perimeter both without and with
“application of pressure to an outer perimeter of the metal seal interface.”
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Literal support for the claim language is not required in the
Specification to meet the written description requirement. Appeal Br. 6; see
Cordis Corp. v. Medtronic Ave., Inc., 339 F.3d 1352, 1364 (Fed. Cir. 2003)
(“The disclosure as originally filed does not, however, have to provide in
haec verba support for the claimed subject matter at issue.”). The Examiner
does not provide any reason to believe that either springs 64, 66 or elastomer
18 do not contact, and, consequently, impart forces against the inner
perimeter of the metal seal interface when the outer perimeter of the metal
seal interface is not in contact with members to be sealed. Accordingly, we
are persuaded that the disclosure shows that Appellant actually invented the
claimed composite seal comprising an elastomer and a spring disposed in the
elastomer which provides the claimed spring force limitation.
Accordingly, we do not sustain the rejection of claim 13, or claims
14—19 depending therefrom, under the written description requirement of 35
U.S.C. § 112, first paragraph.
Rejection II
Regarding the sealing force limitation recited in claim 13, the
Examiner determines that the disclosure does not enable one of ordinary
skill in the art to make and/or use “a spring and the elastomer providing
force against the metal interface without application of pressure to an outer
perimeter of the metal seal interface.” Final Act. 2—3.
Appellant contends that the disclosure does enable one of ordinary
skill to make and use the sealing force limitation. Appeal Br. 9. Appellant
presents arguments that are similar to those made for Rejection I, and
explains how the claimed composite seal is made to achieve the claimed
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Application 13/975,317
sealing force limitation. Id. at 9—10. The Examiner’s response is similar to
the response for Rejection I. See Ans. 4.
According to 35 U.S.C. § 112, first paragraph, the specification must
describe “the manner and process of making and using [the claimed
invention], in such full, clear, concise, and exact terms as to enable any
person skilled in the art to which it pertains ... to make and use the same.”
(Emphasis added). To meet this requirement, the disclosure, as filed, must
be sufficiently complete to enable a person of ordinary skill in the art at the
time of the invention to make and use the claimed invention without undue
experimentation. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). When
rejecting a claim for lack of enablement, the PTO has the initial burden to
provide “a reasonable explanation” of why it believes the specification is not
enabling. In re Wright, 999 F.2d 1557, 1561—62 (Fed. Cir. 1993).
Here, Appellant’s disclosure describes and illustrates embodiments
corresponding to the claimed composite seal, including how these
embodiments are made. See Spec. 121, Fig. 4; see also Spec. 119, Fig. 2.
The disclosure describes how a composite seal including springs disposed
within an elastomer is made, with the springs being in a compressed state to
impart outward forces on the metal seal interface to supplement outward
forces provided by elastomer on the seal metal interface. Id. The Examiner
does not provide a reasonable explanation why Appellant’s disclosure would
not enable one of ordinary skill in the art to make or use the claimed
invention without undue experimentation.
Accordingly, we do not sustain the rejection of claim 13, or claims
14—19 depending therefrom, under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement.
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Rejection III
Regarding the sealing force limitation recited in claim 13, the
Examiner states that it is unclear “how the spring and elastomer can provide
sealing force against the metal interface without pressure to an outer
perimeter of the metal seal.” Final Act. 4. According to the Examiner,
“[because] the spring is contained and floating in the metal seal interface
before the elastomer is injected, it is unclear as to how the spring with the
elastomer would impart any pressure on the metal interface before pressure
is applied to the outer perimeter.” Id.
Appellant contends that paragraphs 18, 19, and 21 support the claimed
sealing force limitation. Appeal Br. 12. Springs 64 and 66 of seal 12 are not
merely “floating” in the metal shell 20 before elastomer 18 is injected. Id.
Rather, Appellant contends, springs 64, 66 are positioned within metal shell
20 in a compressed state, such that springs 64, 66 impart outward forces on
metal shell 20. Id. Figure 4 shows that springs 64, 66 are sized or
dimensioned, such that they are compressed or “wedged” between inner
perimeter 44 and outer perimeter 46 of metal shell 20. Id. As a result,
springs 64, 66 exert outward forces on metal shell 20 once positioned within
metal shell 20 before elastomer 18 is injected, and before any external force
is applied to the perimeter of metal shell 20. Id.
The Examiner acknowledges that the cited paragraphs describe that
“the springs are in a compressed state when the elastomer is injected.” Ans.
4. However, the Examiner states that “[t]he claim requires sealing force
being provided without application of pressure to an outer perimeter of the
metal seal interface. It is unclear as to how a ‘sealing force’ is obtained if
the ‘sealing member’ is not engaging any objects.” Id.
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As discussed above, we understand that the claimed spring and the
elastomer provide a “sealing force” acting against the inner perimeter of the
metal seal interface both “with” and “without” “application of pressure to an
outer perimeter of the metal seal interface.” We agree with Appellant that
the meaning of the sealing force limitation would be sufficiently clear to one
of ordinary skill in the art when read in light of the disclosure.
Accordingly, we do not sustain the rejection of claim 13, or claims
14—19 depending therefrom, under 35U.S.C. § 112, second paragraph.
Rejection IV
Claim 1
Claim 1 recites, inter alia, “a pre-formed annular metal shell” and “an
elastomer disposed within the pre-formed annular metal shell, wherein the
elastomer is configured to impart pressure against the seal interface.'1'’
Appeal Br. 25 (Claims App. (emphasis added)). The Examiner finds that
Joyce discloses an annular metal shell 11, 11’ comprising a seal interface
(interface between top and bottom), and an elastomer 10 disposed within the
annular metal shell and configured to impart pressure against the seal
interface. Final Act. 5 (citing Joyce, Figs. 3—7). The Examiner construes
the claimed term “pre-formed” as a product-by-process limitation. Id. The
Examiner also determines that the process by which the claimed annular
metal shell is made is not a patentable distinction. Id.
Appellant contends that the flexible metal casing 11 disclosed by
Joyce is not “pre-formed,” but rather, “appears to be formed only after it is
deposited onto the rubber ring 10.” Appeal Br. 15. According to Appellant,
“[o]ne of ordinary skill in the art would readily understand an annular metal
shell that is ‘a pre-formed annular metal shelf to be a metal shell having a
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ring shape before an elastomer is injected into the hollow cavity of the
annular metal shell.” Id. at 16.
We agree with the Examiner that “pre-formed” relates to how the
claimed annular metal shell is formed, and thus, is a product-by-process
limitation. In analyzing product-by-process claims, “[i]f the product in [the]
product-by-process claim is the same as or obvious from a product of the
prior art, the claim is unpatentable even though the prior product was made
by a different process.” In re Thorpe, 111 F.2d 695, 697 (Fed. Cir. 1985)
(citations omitted). Once the Patent Office provides a rationale tending to
show that the claimed product appears to be the same as that of the prior art,
although produced by a different process, the burden shifts to Appellant to
come forward with evidence establishing an unobvious difference between
the claimed product and the prior art product. See In re Marosi, 710 F.2d
799, 803 (Fed. Cir. 1983).
Appellant does not appear to dispute the Examiner’s product-by­
process construction. Nor does Appellant provide any persuasive argument
or evidence to show that, in the claimed composite seal comprising the pre­
formed annular metal shell and an elastomer disposed within the pre-formed
annular metal shell, the pre-formed annular metal shell is structurally
different from Joyce’s metal casing 11 included in Joyce’s composite seal,
even if metal casing 11 may be “deposited” on rubber ring 10. See, e.g.,
Joyce 1,11. 66—75. For example, Appellant does not dispute that Joyce’s
metal casing comprises each of the claimed structural limitations of “a top, a
bottom, and a seal interface disposed between the top and bottom.”
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Appellant also contends that
as the flexible metal casing 11 is merely deposited onto the
rubber ring 10, the rubber ring 10 of Joyce is not capable of
imparting pressure or a sealing force on the flexible metal casing
11 without application of pressure to an outer perimeter of the
metal seal interface, as presently claimed.
Appeal Br. 15 (emphasis added). We note, however, claim 1 does not recite
the limitation “without application of pressure to an outer perimeter of the
metal seal interface.” Limitations that do not appear in the claims cannot be
relied upon for patentability. In re Self 671 F.2d 1344, 1348 (CCPA 1982).
Moreover, claim 1 does not recite explicitly any limitation that excludes an
elastomer configured to impart pressure against the seal interface with
application of pressure to an outer perimeter of the metal seal interface. It
appears that, in Joyce’s composite seal, rubber ring 10 would impart
pressure against the seal interface formed with metal casing 11 when
pressure is applied to the outer perimeter of the metal seal interface.
Further, claim 1 does not specify any amount of pressure that the
elastomer imparts against the seal interface. Appellant does not explain
persuasively why Joyce’s rubber ring 10 would impart no pressure against
the seal interface, either when pressure is not applied, or when pressure is
applied, to the outer perimeter of the metal seal interface.
The Examiner repeatedly refers to “the Joyce reference, as modified
in claim 1.” See, e.g., Final Act. 5. However, the Examiner states that claim
1 “is anticipated by Joyce” {id.), and, although the rejection is made under
35 U.S.C. § 103, does not appear to propose any modification of Joyce in
rejecting claim 1, but instead merely acknowledges that the claimed seal is
made by a different process (preformed) than Joyce’s seal. We agree with
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the Examiner that Joyce renders the claimed system unpatentable because it
discloses all the limitations of the claimed composite seal, although Joyce
teaches making the composite seal by a different process. See In re
Fracalossi, 681 F.2d 792, 794 (CCPA 1982) (A disclosure that anticipates
under 35 U.S.C. § 102 also renders the claim unpatentable under 35 U.S.C.
§103, for anticipation is the epitome of obviousness.). Accordingly, we
sustain the rejection of claim 1.
Claim 3
Claim 3 depends from claim 1 and recites that “the pre-formed
annular metal shell is a preformed hollow metal ring configured to receive
the elastomer.” Appeal Br. 25 (Claims App. (emphasis added)). Appellant
contends that Joyce fails to teach or suggest that flexible metal casing 11 is
pre-formed, and thus, fails to disclose pre-forming metal casing 11 into a
hollow metal ring. Id. at 17.
We are not persuaded. Claim 3 recites how the hollow metal ring is
made, that is, pre-formed. Appellant does not explain persuasively, or
demonstrate with evidence, how the pre-formed hollow ring in the
composite seal differs structurally from the metal casing included in the
composite seal disclosed in Joyce. Accordingly, Appellant does not apprise
us of any error in the rejection. Thus, we sustain the rejection of claim 3.
Claim 4
Claim 4 depends from claim 1 and recites that “the pre-formed
annular metal shell comprises upper and lower shell portions coupled
together at an intermediate joint.” Appeal Br. 25 (Claims App.). The
Examiner finds that Joyce, “as modified in claim 1,” discloses that the
annular metal shell comprises “upper and lower shell portions (e.g. left and
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right portions of Fig. 6) coupled together at an intermediate joint (e.g. 11).”
Final Act. 7.
Appellant contends that Joyce discloses the metal casing 11 as a
single element, and does not disclose upper and lower shell portions of metal
casing 11, much less that metal casing 11 comprises an intermediate joint
coupling the alleged upper and lower shell portions together. Appeal Br. 18.
Appellant’s contentions are persuasive. Figure 6 of Joyce cited by the
Examiner does not show metal casing 11 including an upper shell portion, a
lower shell portion, and an intermediate joint that couples these portions
together. Figure 6 appears to show a gap adjacent the left end of element 11.
Accordingly, the Examiner does not establish by a preponderance of the
evidence that Joyce discloses the limitation of claim 4. Nor does the
Examiner explain how Joyce would be modified to meet this limitation.
Thus, we do not sustain the rejection of claim 4.
Claim 5
Claim 5 depends from claim 1 and recites that “the pre-formed
annular metal shell comprises an elastomer injection passage.” Appeal Br.
25 (Claims App.). The Examiner finds Joyce, “as modified in claim 1,”
discloses that the annular metal shell comprises “an elastomer injection
passage (e.g. bottom of 11’ in Fig. 7).” Final Act. 5.
Appellant contends that “FIG. 7 of Joyce shows that approximately
half of the circumference of the cross-section of the rubber ring 10 is
covered by the metal casing 11’.” Appeal Br. 18. Appellant also contends
that “[bjecause Joyce teaches that the rubber ring 10 is formed before the
metal casing 11 ’ is deposited onto the rubber ring 10, the portion of the
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rubber ring 10 not covered by the metal casing 11 ’ cannot be properly
considered an elastomer injection passage.” Id.
Appellant’s contentions relate to how Joyce’s structure is formed.
The Examiner finds that the open end of the metal casing 11 shown in
Figure 7 of Joyce, not “the portion of the rubber ring 10 not covered by the
metal casing 11 ’” in Figure 7, corresponds to the “elastomer injection
passage.” The open end of metal casing 11 forms a passage, and Appellant
does not argue persuasively that elastomer could not be injected through the
passage. Even if Joyce’s metal casing 11’ is deposited onto rubber ring 10,
Appellant does not explain how the claimed elastomer injection passage
differs structurally from the open end of the metal casing 11 shown in Figure
7. Accordingly, we sustain the rejection of claim 5.
Claim 6
Claim 6 depends from claim 5 and recites that “the elastomer injection
passage is sealed by a plug.” Appeal Br. 25 (Claims App.). The Examiner
finds Joyce, “as modified in claim 5, discloses the elastomer injection
passage being sealed by a plug (12).” Final Act. 6.
Appellant contends that Joyce does not disclose the claimed plug that
seals the elastomer injection passage. Appeal Br. 19. We agree. The
elastomer injection passage in Joyce found by the Examiner (i.e., “bottom of
11’ in Fig. 7”) is not sealed by a plug. Rather, the bottom of metal casing
11’ in Joyce is open, with rubber 10 extending through the open end.
Accordingly, we do not sustain the rejection of claim 6.
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Claims 2, 11, and 12
Appellant relies on the arguments made for claim 1 for the
patentability of dependent claims 2, 11, and 12. Appeal Br. 19—20.
Accordingly, as Appellant does not apprise us of any deficiency in the
rejection of claim 1, we also sustain the rejection of claims 2, 11, and 12 for
the same reasons as for claim 1.
Rejection V
Appellant contends that Mullally fails to cure the deficiencies of Joyce
with regard to the rejection of claim 1. Id. at 20. As Appellant does not
apprise us of any deficiency in the rejection of claim 1, we sustain the
rejection of dependent claims 7—9 for the same reasons as for claim 1.
Rejection VI
Appellant contends that Nippon fails to cure the deficiencies of Joyce
with regard to the rejection of claim 1. Id. at 21. As Appellant does not
apprise us of any deficiency in the rejection of claim 1, we sustain the
rejection of dependent claim 10 for the same reasons as for claim 1.
DECISION
I. We reverse the rejection of claims 13—19 under 35 U.S.C.
§112, first paragraph, written description requirement.
II. We reverse the rejection of claims 13—19 under 35 U.S.C.
§112, first paragraph, enablement requirement.
III. We reverse the rejection of claims 13—19 under 35 U.S.C.
§112, second paragraph.
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IV. We affirm the rejection of claims 1—3, 5,11, and 12, and
reverse the rejection of claims 4 and 6, under 35 U.S.C. § 103(a) as
unpatentable over Joyce.
V. We affirm the rejection of claims 7—9 under 35 U.S.C. § 103(a)
as unpatentable over Joyce and Mullally.
VI. We affirm the rejection of claim 10 under 35 U.S.C. § 103(a) as
unpatentable over Joyce and Nippon.
No time period for taking any subsequent action in connection with
this appeal maybe extended according to 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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