Ex parte Johnson

Board of Patent Appeals and Interferences

Aug 13, 1997

07953539 (B.P.A.I. Aug. 13, 1997)

Application for patent filed September 28, 1992.1
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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte RAY M. JOHNSON
_____________
Appeal No. 96-0776
Application 07/953,5391
______________
ON BRIEF
_______________
Before ABRAMS, STAAB and CRAWFORD, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 96-0776
Application 07/953,539
2
This is an appeal from the decision of the examiner finally
rejecting claims 1 through 17, which constitute all of the claims
of record in the application.
The appellant's invention is directed to a waveguide seal
assembly. The subject matter before us on appeal is illustrated
by reference to claim 1, which reads as follows:
1. A waveguide seal assembly for sealing a waveguide joint
wherein said waveguide joint is formed between two joined
waveguide flanges having coupled waveguide openings, said
waveguide seal assembly comprising
an inner conductive part sized and shaped to substantially
mate with the coupled waveguide openings presented at the joined
waveguide flanges so as to provide a continuous electrical path
across the waveguide joint, said inner conductive part having a
defined outer perimeter,
an outer part separable from said inner part, said outer
part having a central opening which is complimentary in shape to
the outer perimeter of said inner part, the central opening of
said outer part being larger than the perimeter of said inner
part such that, when said inner part is placed within said
central opening, an intermediate gap separates said inner and
outer parts, and
a gas sealing element sized to removably fit in the
intermediate gap separating said inner and outer parts for
providing a pressure seal at the waveguide joint when the
waveguide seal assembly formed by the fitting together of said
inner and outer parts and said gas sealing element is clamped
between the waveguide flanges forming the waveguide joint.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Appeal No. 96-0776
Application 07/953,539
3
Smith 2,955,857 Oct. 11, 1960
Booth 3,400,344 Sep. 3, 1968
Domnikov et al. (Domnikov) 4,932,673 June 12, 1990
Bellis 937,707 Sep. 25, 1963
(GB)
Spinner 3,404,465 Jan. 9, 1986
(DT)
THE REJECTIONS
Under 35 U.S.C. § 102(b):
(1) Claims 1, 2, 9 and 12 on the basis of Domnikov.
(2) Claims 1, 2, 5, 6, 8, 9 and 12 on the basis of Spinner.
Under 35 U.S.C. § 103:
(1) Claims 3 and 10 on the basis of Spinner in view of Bellis.
(2) Claims 4, 11 and 14 through 16 on the basis of Spinner in
view of Booth.
(3) Claim 6 on the basis of Spinner in view of Smith.
(4) Claims 7 and 13 on the basis of Spinner in view of Booth and
Domnikov.
(5) Claim 17 on the basis of Spinner in view of Booth and Bellis.
(6) Claims 1 through 5, 10 through 12 and 14 on the basis of
Booth in view of Bellis.
(7) Claims 7, 13 and 15 through 17 on the basis of Booth in view
of Bellis and Domnikov.
Appeal No. 96-0776
Application 07/953,539
4
(8) Claims 6, 8 and 9 on the basis of Booth in view of Bellis and
Smith.
The rejections are explained in the Examiner's Answer.
The opposing viewpoints of the appellant are set forth in
the Brief.
OPINION
We shall consider the ten rejections posed by the examiner
in the order in which they appear in the Answer. The first two
are on the basis of anticipation, which is established only when
a single prior art reference discloses, either expressly or under
the principles of inherency, each and every element of the
claimed invention (see In re Paulsen, 30 F.3d 1475, 1480-1481, 31
USPQ2d 1671, 1675 (Fed. Cir. 1994) and In re Spada., 911 F.2d
705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990)). Claims 1, 2, 9
and 12 stand rejected as being anticipated by Domnikov. These
claims all are directed to a waveguide seal assembly comprising
an inner conductive part, an outer part, and a gas sealing
element located in a gap between the two other elements. Among
the claim requirements is that the outer part be "separable" from
the inner part, and the sealing element "removably" fit in the
gap. The waveguide seal disclosed in Domnikov comprises the same
three elements arranged in the same fashion, but they are secured
Appeal No. 96-0776
Application 07/953,539
5
together by bonding the metal parts to the rubber sealing element
(column 5, lines 34 through 38) to form "a one-piece gasket"
(Abstract). It is the examiner's position, however, that the
elements of the Domnikov seal "are capable of being separated or
removed if enough force is applied," and thus meet the terms of
the claims (Answer, paragraph bridging pages 8 and 9). We do not
agree with this theory, which the examiner has not supported by
citation to law, and by which, in the words of the appellant,
"the very essence of the applicant's invention has effectively
been read right out of the claims" (Brief, page 16). We
therefore will not sustain this rejection.
The anticipation rejection based upon Spinner meets the same
fate for the same reason, in that the three components of the
Spinner waveguide seal are secured together by vulcanization
(translation, page 2), and therefore are neither separable nor
removable. This rejection of independent claims 1 and 12 and
dependent claims 2, 5, 6, 8 and 9 is not sustained.
The remaining rejections are under 35 U.S.C. § 103. Here,
the examiner bears the initial burden of presenting a prima facie
case of obviousness (see In re Rijckaert, 9 F.3d 1531, 1532, 28
Appeal No. 96-0776
Application 07/953,539
6
USPQ2d 1955, 1956 (Fed. Cir. 1993) and In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992)), which is
established when the teachings of the prior art itself would
appear to have suggested the claimed subject matter to one of
ordinary skill in the art (see In re Bell, 991 F.2d 781, 783, 26
USPQ2d 1529, 1531 (Fed. Cir. 1993) and In re Rinehart, 531 F.2d
1048, 1051, 189 USPQ 143, 147 (CCPA 1976)). This is not to say,
however, that the claimed invention must expressly be suggested
in any one or all of the references, rather, the test for
obviousness is what the combined teachings of the references
would have suggested to one of ordinary skill in the art (see
Cable Electric Products, Inc. v. Genmark, Inc., 770 F.2d 1015,
1025, 226 USPQ 881, 886-87 (Fed. Cir. 1985) and In re Keller, 642
F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981)).
Claims 3 and 10 stand rejected as being obvious over Spinner
in view of Bellis. Claim 3 depends from claim 1, and therefore
inherits the separable and removable features recited in claim 1.
Claim 10 is an independent claim which also includes these two
limitations. The Spinner reference has been discussed above.
Bellis is cited for its teaching of placing an O-ring in a groove
in the inner part of the seal "to provide a secure attachment"
Appeal No. 96-0776
Application 07/953,539
The appellant has argued on pages 10 through 14 of the2
Brief that Bellis is nonanalogous art.
7
(Answer, page 5). However, even assuming, arguendo, that Bellis
is analogous prior art , it is our view that these two references2
fail to establish a prima facie case of obviousness with respect
to the subject matter of claims 3 and 10 by virtue of the same
shortcoming of Spinner pointed out in the foregoing rejections,
that is, its failure to teach the separable and removable
features. This rejection therefore is not sustained.
Claims 4, 11 and 14 through 16 have been rejected as being
unpatentable over Spinner in view of Booth, the latter being
cited for its teaching of making the inner part of the seal
slightly thicker than the outer part. Claims 4 and 14 also
require the separable and removable features for which the
examiner vainly looks to Spinner, as we have explained above. A
prima facie case of obviousness therefore is not established with
regard to claims 4 and 14, and their rejection on these grounds
is not sustained.
Independent claim 11 and its dependent claims 15 and 16
differ, however, in that claim 11 does not require that the outer
part be "separable" from the inner part, but merely that the
outer part be "separate." While we agree with the appellant that
Appeal No. 96-0776
Application 07/953,539
8
Spinner's outer part is not "separable" from the other elements
of the assembled seal, it nevertheless is a "separate" element,
albeit connected to the other components, and "separate" does not
proscribe all connection with another element (see In re Ruegg,
426 F.2d 405, 408, 165 USPQ 711, 714 (CCPA 1970)). Claim 11 does
not require that the sealing element removably fit in the gap
between the inner and outer parts.
Booth teaches making the inner part of a slightly greater
thickness than the outer part, so that upon tightening of the
flanges the electrical conductivity is improved (column 4, with
particular attention to lines 29 through 31). It is our opinion
that one of ordinary skill in the art would have found it obvious
to make inner part 10 of the Spinner sealing means of a slightly
greater thickness than outer part 13, so that the electrical
conduction through the joint is further enhanced. Booth also
teaches making the inner part of a more conductive material than
the outer part, to reduce cost (column 2, lines 38 through 54).
It is our view that it therefore also would have been obvious to
do the same with the Spinner device, as added by claim 15.
Suggestion for both of these modifications is found in the
explicit teachings of Booth. As for claim 16, from our
Appeal No. 96-0776
Application 07/953,539
9
perspective the seal assemblies in both Spinner and Booth are of
such size as to occupy "substantially" the entire region between
the waveguide flanges.
A prima facie case of obviousness thus is established here,
and the rejection of claims 11, 15 and 16 as being unpatentable
over Spinner in view of Booth is sustained.
Claim 6, which depends from claim 1 and therefore includes
all the limitations thereof, stands rejected as being
unpatentable over Spinner in view of Smith. This rejection also
will not be sustained because the Smith patent, cited for its
teaching of knurling the surfaces of the seal, does not alleviate
the shortcomings of Spinner regarding the separable and removable
features
of claim 1, and thus a prima facie case of obviousness has not
been established.
Spinner in view of Booth and Domnikov form the basis of the
examiner's rejection of claims 7 and 13, both of which depend
from claims requiring the separable and removable features. As
explained above, neither Spinner nor Domnikov (here cited for
teaching the use of aluminum in seals) provide these required
Appeal No. 96-0776
Application 07/953,539
10
basic teachings. Booth was added for its disclosure of copper as
a desired seal material, but it does not alleviate the
shortcomings of the other two references. Thus, a prima facie
case of obviousness has not been made, and we will not sustain
this rejection.
Claim 17 is an independent claim which stands rejected on
the basis of Spinner, Booth and Bellis. Among its requirements
are the "separable" and "removable" limitations discussed above
and, as was the case above, the teachings extracted from each
reference for the combination proposed by the examiner fail to
meet the terms of claim 17, for the same reasons. There is no
prima facie case, and this rejection is not sustained.
Claims 1 through 5, 10 through 12 and 14 have been rejected
as being unpatentable over Booth in view of Bellis, it being the
examiner's position that it would have been obvious to relocate
the seal of Booth from its disclosed position in a groove in the
outer part to a gap between the outer part and the inner part, in
view of the teachings of Bellis. We initially note here that in
the Booth seal there is no gap between the inner and the outer
parts, much less sealing means located within that gap. It is
our view that to modify the Booth construction in the manner
Appeal No. 96-0776
Application 07/953,539
11
proposed by the examiner would necessitate a total redesign of
the Booth invention, for which suggestion can be found only via
impermissible hindsight. Again, the failure of the references to
establish a prima facie case of obviousness necessitates that the
rejection not be sustained.
As for the rejection of claims 7, 13 and 15 through 17, the
addition of Domnikov to the combination of Booth and Bellis for
the purpose of disclosing the use of aluminum in seals fails to
overcome the basic problem which again is noted immediately
above. There is no prima facie case of obviousness, and the
rejection is not sustained.
Finally, claims 6, 8 and 9 stand rejected as being
unpatentable over Booth in view of Bellis and Smith. These
claims depend from claim 1, and therefore contain its
limitations. This being the case, the problem pointed out above
regarding the lack of suggestion to combine in the manner
proposed by the examiner also
is applicable here. It is not cured by Smith, which is cited
only for its teaching of utilizing knurling to promote electrical
conduction in a sealing means. The lack of a prima facie case of
obviousness causes us not to sustain this rejection.
Appeal No. 96-0776
Application 07/953,539
12
Pursuant to our authority under 37 CFR 1.196(b), we make the
following new rejection:
Claims 1, 2, 3, 5 and 10 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Bellis.
Anticipation by a prior art reference does not require
either the inventive concept of the claimed subject matter or
recognition of inherent properties that may be possessed by the
reference (see Verdegaal Brothers Inc. v. Union Oil Co. of
California, 814 F.2d 628, 633, 2 USPQ2d 1051, 1054 (Fed. Cir.
1987). Nor does it require that the reference teach what the
applicant is claiming, but only that the claim on appeal "read
on" something disclosed in the reference, i.e., all limitations
of the claim are found in the reference (see Kalman v. Kimberly-
Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir.
1983), cert. denied, 465 U.S. 1026 (1984)). It is only necessary
that the reference include structure capable of performing the
recited function in order to meet the functional limitations of
the claim (see In re Mott, 557 F.2d 266, 269, 194 USPQ 305, 307
(CCPA 1977)). Thus, the question of whether a reference is
analogous art is not an issue here.
Using the language of claim 1 as a guide, Bellis discloses a
seal assembly for a joint between two joined flanges. The Bellis
Appeal No. 96-0776
Application 07/953,539
13
seal assembly comprises an inner conductive part 11 sized and
shaped to substantially mate with the coupled openings presented
at the joined flanges, with the inner conductive part having a
defined outer perimeter. The Bellis assembly further comprises
an outer part 13 separable from the inner part and having a
central opening that is complimentary in shape to the outer
perimeter of the inner part and larger such that when the inner
part is placed within the central opening an intermediate gap
separates the parts, and a gas sealing element 12 sized to
removably fit in the gap for providing a pressure seal at the
joint when the parts and the sealing element are clamped between
the flanges of the joint.
The Bellis seal assembly "concerns fluid seals and has a
particular application to the sealing of substantially parallel
surfaces, as for example, pipe flanges and the like" (page 1,
lines 10 through 13). Its sealing element "forms a circum-
ferential seal about the axis of the pipe and flanges" (page 1,
lines 19 through 21). The Bellis reference does not mention
waveguides. However, from our perspective, a waveguide is merely
a pipe that contains fluid under pressure (or vacuum) through
Appeal No. 96-0776
Application 07/953,539
14
which microwave energy also is passed, and which has flange
joints which must be sealed against fluid loss (or entry). The
construction of the Bellis seal assembly bears a striking
resemblance to that of the appellant's invention, and we see no
reason why it is not capable of being used in a waveguide joint.
Although Bellis registers no explicit concern for providing a
continuous electrical path across the joint, inner part 11 is
described as being made of metal (page 2, line 15), and therefore
the Bellis seal assembly is capable of performing this function
and inherently would do so.
Bellis clearly discloses the O-ring required in claim 2, and
the groove added by claim 3. The reference also conforms to the
requirement in claim 5, in that inner part 11 is smaller than
outer part 13 and, in our view, the inner part constitutes a
"relatively small portion of the seal assembly" to the same
extent as the appellant's inner part. The comments made above
with regard to claim 1 apply also to the rejection of independent
claim 10.
It therefore is our opinion that all of the structural
limitations recited in claims 1, 2, 3, 5 and 10 read on the seal
assembly disclosed by Bellis, and that the Bellis seal assembly
Appeal No. 96-0776
Application 07/953,539
15
is capable of performing the functions stated in these claims in
the environment recited in the preambles.
In the course of sustaining the examiner's rejection of
certain of the claims, and in rendering the new rejection set
forth immediately above, we have carefully considered all of the
arguments presented by the appellant in the Brief. However, they
have not persuaded us that these actions were in error. Our
position with regard to each should be apparent from the
foregoing discussions.
Summary:
The examiner's rejection of claims 11, 15 and 16 as being
unpatentable over Spinner in view of Booth is sustained. All of
the other rejections made by the examiner are not sustained.
Pursuant to 37 CFR 1.196(b), claims 1, 2, 3, 5 and 10 are
newly rejected as being anticipated by Bellis.
The decision of the examiner is affirmed-in-part.
Any request for reconsideration or modification of this
decision by the Board of Patent Appeals and Interferences based
upon the same record must be filed within one month from the date
hereof (37 CFR § 1.197).
Appeal No. 96-0776
Application 07/953,539
16
With respect to the new rejection under 37 CFR
§ 1.196(b), should appellant elect the alternate option under
that rule to prosecute further before the Primary Examiner by way
of amendment or showing of facts, or both, not previously of
record, a shortened statutory period for making such response is
hereby set to expire two months from the date of this decision.
In the event appellant elects this alternate option, in order to
preserve the right to seek review under 35 U.S.C. §§ 141 or 145
with respect to the affirmed rejection, the effective date of the
affirmance is deferred until conclusion of the prosecution before
the examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If the appellant elects prosecution before the examiner and
this does not result in allowance of the application, abandonment
or a second appeal, this case should be returned to us for final
action on the affirmed rejection, including any timely request
for reconsideration thereof.
Appeal No. 96-0776
Application 07/953,539
17
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
37 CFR § 1.196(b)
)
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 96-0776
Application 07/953,539
18
Donald L. Beeson
One Kaiser Plaza, Ste. 2360
Oakland, CA 94612