Ex Parte Kurth

Patent Trial and Appeal Board

Sep 26, 2016

13446549 (P.T.A.B. Sep. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/446,549 04/13/2012
21839 7590 09/28/2016
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Jtirgen Kurth
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1024943-000238 3424
EXAMINER
PATEL, VISHAL A
ART UNIT PAPER NUMBER
3675
NOTIFICATION DATE DELIVERY MODE
09/28/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JURGEN KUR TH
Appeal2014-007121
Application 13/446,549
Technology Center 3600
Before JILL D. HILL, MARK A. GEIER, and GORDON D. KINDER,
Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jurgen Kurth ("Appellant") appeals under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 1, 2, 10-17, 26, and 28. 1 We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Claims 3-9, 18-25 and 27 have been withdrawn from consideration. Final
Act. 1.
Appeal2014-007121
Application 13/446,549
CLAIMED SUBJECT MATTER
Independent claim 1, the sole independent claim on appeal, represents
the claimed subject matter and is reproduced below, with certain limitations
italicized.
1. A compressor comprising:
a housing containing a lubricant and a coolant;
a rotatable shaft penetrating the housing;
a seal adjoining the shaft to seal against leakage of the
lubricant and the coolant so that the lubricant and the coolant
do not leak to outside the housing, the seal comprising:
a first seal part possessing a cylindrical sealing edge
adjoining the seal and seal the shaft, the sealing edge which
contacts the shaft extending along a line which deviates from a
circular shape and which is closed in itself in a peripheral
direction, the line along which the sealing edge extends is
wavy, comprising several arcs; and
a second seal part with a sealing section which is adapted
to adjoin the shaft and which is hollowly cylindrical when the
sealing section adjoins properly with an outside surface of the
shaft, the sealing section comprising a return structure for
returning a fluid, the sealing section configured to extend along
the outside surface of the shaft between the first seal part and
the shaft when the sealing section properly adjoins the outside
surface of the shaft.
Appeal Br. (Claims App.).
2
Appeal2014-007121
Application 13/446,549
REJECTIONS2
I. Claims 1, 2, 10, 14--17, 26, and 28 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Hosokawa (US 2003/0222407 Al, pub.
Dec. 4, 2003) and Peisker (US 3,929,340, iss. Dec. 30, 1975). Final Act. 4.
II. Claims 11-13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hosokawa, Peisker, and Matsushima (US 6,182,975 Bl,
iss. Feb. 6, 2001). Final Act. 6.
ANALYSIS
Rejection I
Claims 1, 10, 14-17, and 28
The Examiner finds that Hosokawa discloses, inter alia, a shaft S, a
housing H, and a seal 7, 17 adjoining the shaft to prevent leakage of
lubricant and coolant from the housing H. Final Act. 4. The Examiner finds
that Hosokawa's seal includes a first seal part 18 with a cylindrical sealing
edge (e.g., the edge with grooves 20) contacting the shaft and being "closed
in itself in a peripheral direction." Id. The Examiner then finds that a
second part 7 of Hosokawa's seal has a sealing section 7a configured to
extend along an outer surface of the shaft S and comprising a return structure
8 for returning a fluid. Id. at 5. The Examiner finds that Hosokawa fails to
disclose the sealing edge contacting the shaft along a wavy line that deviates
from a circular shape. Id. at 6. The Examiner finds, however, that Peisker
discloses a sealing member 30 with a wavy edge, and concludes that it
2 The Examiner withdraws the rejection of claims 1-2, 10-17, 26 and 28
under 35 U.S.C. § 103(a) as unpatentable over Maass (US 2006/0269407
Al, pub. Nov. 30, 2006) and Peisker (US 3,929,340, iss. Dec. 30, 1975).
Ans. 2.
3
Appeal2014-007121
Application 13/446,549
would have been obvious to modify Hosokawa's sealing edge to be wavy as
taught by Peisker, "to provide additional hydrodynamic pumping action (e.g.
abstract of Peisker)." Id.
Appellant first argues that Hosokawa's edge 14 "is not a sealing edge
extending along a line which deviates from a circular shape and which is
closed in itself in a peripheral direction so that the line along which the
sealing edge extends is wavy." Appeal Br. 5. Because the Examiner does
not make a finding that Hosokawa's sealing edge includes all of these
attributes, we do not find this argument to be persuasive of error in the
Examiner's findings.
Appellant also argues that the rejection fails to cite "any evidence that
a person of ordinary skill would have been motivated to implement Peisker' s
sinuous sealing edge in Hosokawa for the purpose of 'providing additional
hydrodynamic pumping action,"' indicating that the rejection is based on
impermissible hindsight. Id. at 5. The Examiner points to Peisker's
Abstract to support modifying Hosokawa' s sealing edge to be wavy (Final
Act. 6), and Peisker's Abstract indeed states that its undulating sealing
surface "return[ s] fluid along a shaft [via] hydrodynamic pumping action,"
which provides evidence to support the Examiner's conclusion. We
therefore are not persuaded that the Examiner's reasoning lacks evidentiary
support or is necessarily based on impermissible hindsight.
Appellant then argues that Peisker's wavy sealing edge is designed "to
pump oil across the seal band from the exterior 40 [to] the interior 36,"
which is not the objective ofHosokawa, which feeds lubricant to its sealing
edge 14 and maintains the lubricant at the sealing edge 14. Appeal Br. 5.
4
Appeal2014-007121
Application 13/446,549
Appellant contends that adding Peisker' s wavy pumping surface would
"interfere with Hosokawa's objective [of] keeping the seal edge 14
lubricated." Id.
The Examiner responds that Peisker is directed to using the pumping
effect of the wavy surface of its seal band 30 to maintain an appropriate
amount of oil at the meniscus 38, such that only a small amount of lubricant
is "pumped." Ans. 3--4. Indeed, Peisker appears to use it's "pumping" to
maintain an appropriate amount of lubricant at the meniscus while returning
fluid to the sealed region to prevent fluid loss. See Peisker, Abstract.
Peisker's objective, and its use of the wavy surface to keep fluid either at the
seal or in the sealed region is directly in line with Appellant's stated
objective. We therefore are not persuaded by this argument.
Appellant next argues that, even assuming one skilled in the art would
have recognized that Peisker's pumping action would further Hosokawa's
objective of lubricating its seal edge 14, "the evidence of record does not
establish that it would have been obvious to modify Hosokawa's seal edge
14 in the manner claimed," because Hosokawa already achieves its objective
using a spiral groove 20. Appeal Br. 5. According to Appellant, unless the
groove 20 is inadequate, one skilled in the art would not be motivated to
supplement the groove with Peisker' s pumping wavy surface. Id.
We are not persuaded by this argument, because a reference need not
recognize that a problem exists, and the problem solved by the secondary
reference need not be discussed by the primary reference to apply the
teachings of the secondary reference. See In re Kemps, 97 F.3d 1427, 1430
(Fed. Cir. 1996); In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992).
5
Appeal2014-007121
Application 13/446,549
Appellant then argues that it would not have been obvious to combine
Hosokawa with Peisker, because Peisker's seal is configured for use in an
environment with a fairly small pressure differential, whereas Hosokawa's
seal is for use in a compressor with a large pressure differential. Appeal Br.
6. According to Appellant, there is little pressure pressing Peisker's seal to
its shaft, so that Peisker' s seal is relatively flexible, weak, and unsuitable for
high pressure applications. Id.
The Examiner's does not, however, contend that one skilled in the art
would put Peisker' s seal in Hosokawa. Final Act. 6. Rather, the Examiner
contends that one skilled in the art would apply Peisker's wavy seal surface
to Hosokawa's seal. Id. Appellant's argument is therefore not persuasive of
error in the Examiner's proposed combination.
Appellant argues, for the first time in the Reply Brief, that Peisker is
not relevant to the "present application," because Peisker' s wavy sealing
edge "only works to keep a balance when primarily liquid oil can be
provided on both sides of the sealing [edge]." Reply Br. 2. According to
Appellant, the Examiner's proposed combination of Hosokawa and Peisker
would not have been obvious because Hosokawa utilizes a primarily mist
lubricant and does not describe the structure or function of its groove 8 or
the material of the seal element 7, and the Examiner fails to provide
evidence that the conditions in which an oil seal with hydrodynamic
pumping for primarily liquid oil operates has any relevance to a compressor
shaft seal, which has been established to operate under quite different
conditions. Id. We disagree. Peisker teaches that its wavy sealing element
edge can "pump" lubricant to maintain the lubricant at a desired meniscus
6
Appeal2014-007121
Application 13/446,549
location. See Peisker, Abstract. Hosokawa states that "[ t ]he liquid ... to
which the rotation shaft seal 1 is applied is mostly gaseous, and lubricant
liquid such as lubricant oil may exist as mist." Hosokawa i-f 25. A mist is a
liquid, and Appellant has failed to explain why one skilled in the art would
not understand that adding a wavy surface to Hosokawa's sealing edge 14
would not cause its misted lubricant to move around its seal in the beneficial
manner disclosed in Peisker.
For the reasons set forth above, we sustain the rejection of claims 1,
10, 14--17, and 28.
Claims 2 and 26
Claim 2 recites the return structure being "configured as a screw
thread." The Examiner finds that Hosokawa's groove 8 discloses is
limitations (Final Act. 5), reasoning that the claim limitations are functional
and therefore the art need only be capable of performing the function of
acting as a screw to push fluid back (Ans. 4--5). Although using the term
"configured," this limitation is a structural limitation. The prior art therefor
must disclose the structure recited, rather than merely being capable of
performing a screw function.
Claim 26 recites the return structure being "configured as at least one
curvilinear groove." The Examiner finds that Hosokawa's groove 8
discloses is limitations (Final Act. 5), reasoning that Hosokawa' s groove 8
"extends in a path of circle which makes the return structure 8" configured
as a curvilinear groove (Ans. 5).
Regarding both claims 2 and 26, the Examiner's findings regarding
Hosokawa's groove 8 are speculative. Hosokawa mentions groove 8 only
7
Appeal2014-007121
Application 13/446,549
once, stating that "mark 7 represents a seal element with a groove 8."
Hosokawa i-f 18. The Examiner does not find that, given the disclosure of
Hosokawa, a screw thread or curvilinear groove is obvious; rather, the
Examiner finds that Hosokawa discloses this limitation, which at best
requires speculation. We therefor do not sustain the rejection of claims 2
and 26.
Rejection II
Appellant makes no separate argument that claims 11-13 would be
patentable over Hosokawa, Peisker, and Matsushima, if claims 11-13 and 10
are not patentable over Hosokawa and Peisker. We therefore sustain
Rejection II.
DECISION
We AFFIRM the rejection of claims 1, 10, 14--17, and 28 under 35
U.S.C. § 103(a) as unpatentable over Hosokawa and Peisker.
We REVERSE the rejection of claims 2 and 26 under 35 U.S.C.
§ 103(a) as unpatentable over Hosokawa and Peisker.
We AFFIRM the rejection of claims 11-13 under 35 U.S.C. § 103(a)
as unpatentable over Hosokawa, Peisker, and Matsushima.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
8