Ex Parte Kita et al

Board of Patent Appeals and Interferences

Dec 1, 2009

11409053 (B.P.A.I. Dec. 1, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YUKI KITA, SHINJI OKUDA, and HIKARU YAMANE
____________

Appeal 2009-012829
Application 11/409,053
Technology Center 3700
____________

Decided: December 1, 2009
____________

Before WILLIAM F. PATE, III, STEVEN D.A. McCARTHY, and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL
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Application 11/409,053

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STATEMENT OF THE CASE
Yuki Kita et al. (Appellants) appeal under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1-7. We have jurisdiction over this
appeal under 35 U.S.C. § 6 (2002).

THE INVENTION
Appellants’ invention relates to a seal structure that restricts flowage
to the outside of machining fluid from an opening in the sidewall of a
machining tank of a wire-cut electric discharge machine. Spec. 1, ll. 5-8.
The seal structure includes a first seal 7 including an inner ridge 72a, an
outer ridge 72b, a groove having top, bottom, left, and right portions 71a-
71d, respectively, and a plurality of passages 73a-73e that communicate
from the bottom groove 71b to the outside of the machining tank. Spec. 7,
ll. 22-27; 8, ll. 3-6; and figs. 3, 6a, and 6b.
Claim 1 is representative of the claimed invention and reads as
follows:
1. A seal structure sealing an opening formed at a
side wall of a machining tank of a wire-cut electric
discharge machine in which an upper arm and a
lower arm support a wire electrode, and the lower
arm extends through the opening into the
machining tank containing machining fluid, said
seal structure comprising:

a first seal provided along a periphery of said
opening; and

a second seal having a hole through which the
lower arm extends and pressed against said first
seal to be in contact with said first seal to cover
said opening,
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said first seal having two or more ridges and one or
more grooves between the ridges along an
extending direction thereof on a side in contact
with said second seal, and one or more
passages extending between at least one of the
grooves and the exterior of said first seal, said one
or more passages providing drainage paths for the
machining fluid to control routes of
leakage of the machining fluid outside the
machining tank.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Girardin US 4,565,915 Jan. 21, 1986
Lipschitz US 4,972,986 Nov. 27, 1990
Lodetti US 5,111,016 May 5, 1992

The following rejections are before us for review:
Appellants seek review of the Examiner’s rejection of claims 1-6
under 35 U.S.C. § 103(a) as unpatentable over Lodetti and Lipschitz.
Appellants seek review of the Examiner’s rejection of claim 7 under
35 U.S.C. § 103(a) as unpatentable over Lodetti, Lipschitz, and Girardin.

THE ISSUE
The Examiner found that Lodetti discloses all the features of
independent claim 1 with the exception of a seal structure having a plurality
of passages. Ans. 3. Specifically, The Examiner found that Lodetti
discloses:
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[A] seal structure for sealing an opening formed at
a side wall of a machining tank with first seal
means (element 32) formed at a periphery of said
opening and second seal means (element 33)
having a hole through which the lower arm
extends. The first seal means discloses two or
more ridges as displayed in figure 5 of Lodetti et
al.

Id. (Emphasis added).

The Examiner further found that Lipschitz discloses a seal structure
having a plurality of passages 66. Id. The Examiner concluded that:
It would have been obvious to adapt
Lodetti et al. in view of Lipschitz to provide
passages [to] direct fluid from relatively high
pressure areas to relatively low pressure areas to
create evenly pressurized distributed pressure
across the seal and to use the passages to direct
fluid to the other side of the seal structure.
Id.

Appellants argue that if the second sealing means 33 of Lodetti were
replaced with the concentric seal of Lipschitz, “such an arrangement would
actually promote leakage from the working fluid container 18 of Lodetti and
thus render the invention of Lodetti unsatisfactory for its intended purpose.”
App. Br. 5-6. (Emphasis added). Furthermore, Appellants argue that, “there
is no suggestion as to how the seal of Lipschitz could somehow be used in
place of the first sealing means 32 of Lodetti.” App. Br. 6. (Emphasis
added).
Accordingly, the issue presented for our consideration in the instant
appeal is whether Appellants have demonstrated that the Examiner erred in
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determining that the combined teachings of Lodetti and Lipschitz would
have prompted a person of ordinary skill in the art to provide the
passageways of Lipschitz to the seal structure of Lodetti.

SUMMARY OF DECISION
We REVERSE.
FINDINGS OF FACT
The following enumerated findings of facts (FF) are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Lodetti discloses a sealing structure for sealing an opening 20a
in the sidewall of a tank 18 of a wire-cut electric discharge
machine including sealing means 32 having a sealing body 35
and a plurality of tube-shaped sealing portions 34 separated by
multiple grooves. Lodetti, col. 5, ll. 48-66 and figs. 1 and 5.
2. The sealing means 32 of Lodetti provides sealing between plate
member 23 of closing piece 22 and the back wall 19 of the tank
18. Lodetti, col. 4, ll. 62-67; col. 5, ll. 48-49; and fig. 3.
3. Lodetti further discloses a sealing device 33 arranged between a
guide-arm 13 and the closing piece 22. Lodetti, col. 6, ll. 60-63
and fig. 3.
4. Lodetti also discloses a duct 28 and a drainage connection piece
29 for collecting working fluid leaking from sealing means 32.
Lodetti, col. 6, ll. 32-43 and fig. 3.
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5. Lipschitz discloses a seal assembly 10 between a rotatable
hollow outershaft 12 and a rotatable inner shaft 14 for sealing a
high pressure fluid reservoir PH from a low pressure fluid
reservoir PL. Lipschitz, col. 3, ll. 25-34 and fig. 1.
6. The seal assembly 10 of Lipschitz includes a first runner 16
having passages 32, a second runner 18, a spacer 20, and a seal
ring 38 having passageways 66 that extend axially through the
entire width of the ring. Lipschitz, col. 3, ll. 41-44 and 51-52;
col. 4, ll. 26-28; col. 5, ll. 29-33; and fig. 1.
7. Lipschitz further discloses that the purpose of seal assembly 10
is to balance the seal ring 38 both axially and radially.
Lipschitz, col. 6, ll. 51-53.
8. The seal ring 38 is balanced axially because the pressure forces
acting on the left surface 54 and the right surface 60 of the seal
ring 38 are equally opposing when the seal ring is centrally
positioned between the runners 16, 18 due to passageways 32,
66 and annular recesses 68, 76 formed on the sides of the seal
ring 38. Lipschitz, col. 6, ll. 20-28 and fig. 1.
9. The centrifugal force and the high pressure fluid occupying the
clearance 50 acting on the bottom surface 48 of the seal ring 38
are radially balanced by the force generated by the high
pressure fluid flowing through clearance 30 and occupying
clearance 46. Lipschitz, col. 7, ll. 4-22 and fig. 1.
10. Due to the axial and radial balancing of seal ring 38 of
Lipschitz, rubbing contact between sealing ring 38 and runners
16, 18 is prevented, hence increasing the seals’s durability,
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efficiency, and useful life. Lipschitz, col. 7, ll. 50-51; col. 10,
ll. 11-20; and fig. 1.

OPINION
At the outset, we note that claim 1 requires a seal structure including a
first seal provided along a periphery of an opening and a second seal that is
“pressed against said first seal to be in contact with said first seal to cover
said opening.” As noted above, the Examiner found that first sealing means
32 and sealing device 33 of Lodetti correspond to the recited “first seal” and
“second seal,” respectively. See also Ans. 3. However, the sealing device
33 is not pressed against first sealing means 32 so as to be in contact with it,
as required by claim 1. FF 2, 3. Accordingly, we find that the Examiner’s
interpretation of Lodetti’s sealing device 33 as the recited “second seal” is
incorrect. In fact, it is our finding that first sealing means 32 comes into
contact and is pressed against plate member 23. FF 2. Therefore, in contrast
to the Examiner’s position, we find that plate member 23 of closing piece 22
constitutes the “second seal,” as called for by claim 1.
Nonetheless, even if plate member 23 of Lodetti constitutes the
recited “second seal,” we do not agree with the Examiner’s position that the
combined teachings of Lodetti and Lipschitz would have prompted a person
of ordinary skill in the art to provide the passages of Lipschitz to the first
sealing means 32 of Lodetti.
Claim 1 specifically requires “one or more passages extending
between at least one of the grooves and the exterior of said first seal.” As
noted above, Lodetti discloses a sealing structure for sealing an opening 20a
in the sidewall of a tank 18 of a wire-cut electric discharge machine
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including sealing means 32 having a sealing body 35 and a plurality of tube-
shaped sealing portions 34 (ridges) separated by multiple grooves. FF 1.
Lipschitz discloses a seal assembly 10 between a rotatable hollow outershaft
12 and a rotatable inner shaft 14 for sealing a high pressure fluid reservoir
PH from a low pressure fluid reservoir PL. FF 5. The seal assembly 10 of
Lipschitz includes a first runner 16 having passages 32, a second runner 18,
a spacer 20, and a seal ring 38 having passageways 66 that extend axially
through the entire width of the ring. FF 6. Hence, according to the
Examiner’s proposed combination, in order to satisfy the limitation of claim
1, the passageways of the seal of Lodetti and Lipschitz would have to extend
from a groove portion through one of the tube-shaped portions 34 (one of the
ridges) and to the exterior of the seal. However, Lipschitz specifically
teaches that the passageways 66 extend axially through the entire width of
the ring. FF 5. Lipschitz teaches that the purpose of passageways 66 is to
provide an area of evenly distributed low pressure that balances the seal ring
38 both axially and radially by providing free flow of fluid across the seal
assembly 10 to prevent rubbing and hence, increase the seals’s durability,
efficiency, and useful life. FF 7-10. The Examiner has not articulated any
reason as to why the combined teachings of Lodetti and Lipschitz render
obvious a seal structure having “one or more passages extending between at
least one of the grooves and the exterior of said first seal.” Rather, we find
that the combined teachings of Lodetti and Lipschitz disclose sealing means
32 of Lodetti having a plurality of passageways extending through the entire
width of the seal, rather than from the groove through one of the tube-shaped
portions 34 (one of the ridges) and to the exterior of the seal, as required by
claim 1. As such, because the passageways extend through the entire width
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of the sealing means 32 of the seal of Lodetti and Lipschitz, we agree with
Appellants that the combination proposed by the Examiner “would promote
leakage of fluid.” Reply Br. 2.
Moreover, although we appreciate the Examiner’s reasoning for
combining the teachings of Lodetti and Lipschitz, namely, that the
passageways of Lipschitz would “create evenly pressurized distributed
pressure across the seal” (Ans. 3), we note that sealing means 32 of Lodetti
does not require radial and axial balancing because it does not include
concentric rotating shafts. Further, the sealing means 32 of Lodetti does not
suffer from rubbing contact, as does the seal ring 38 of Lipschitz. The
Examiner has not provided any findings that either Lodetti or Lipschitz
recognized a problem with the conventional sealing technique used in
Lodetti. Furthermore, we note that Lodetti already discloses a duct 28 for
collecting working fluid leaking from sealing means 32. FF 4. Absent
hindsight, we fail to see why one having ordinary skill in the art would have
been led by the teachings of Lipschitz to modify the sealing assembly of
Lodetti in the manner claimed.
In conclusion, the modification proposed by the Examiner of
providing the passageways of Lipschitz to the seal structure of Lodetti would
not have been obvious to the person of ordinary skill in the art. For the
above stated reasons, we conclude that Appellants have established that the
Examiner has not discharged the initial burden of establishing a prima facie
case of obviousness of the subject matter of independent claim 1 or its
dependent claims 2-6. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988)
(If an independent claim is nonobvious under 35 U.S.C. § 103, then any
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claim dependent therefrom is nonobvious). Therefore, the rejection of
claims 1-6 cannot be sustained.
With respect to claim 7, the application of the teachings of Girardin
does not cure the deficiency of the combination of Lodetti and Lipschitz, as
discussed above. Accordingly, the rejection of claim 7 under 35 U.S.C.
§ 103(a) as unpatentable over Lodetti, Lipschitz, and Girardin likewise
cannot be sustained.

CONCLUSION
Appellants have demonstrated that the Examiner erred in determining
that the combined teachings of Lodetti and Lipschitz would have prompted a
person of ordinary skill in the art to provide the passageways of Lipschitz to
the seal structure of Lodetti.

DECISION
The Examiner’s decision to reject claims 1-7 is reversed.

REVERSED

Klh

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