Ex Parte Leimer

Board of Patent Appeals and Interferences

Mar 27, 2012

11421646 (B.P.A.I. Mar. 27, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/421,646 06/01/2006 Mark A. Leimer 1-17649 2900
68459 7590 03/27/2012
MARSHALL & MELHORN, LLC
FOUR SEAGATE
8TH FLOOR
TOLEDO, OH 43604
EXAMINER
BASTIANELLI, JOHN
ART UNIT PAPER NUMBER
3753
MAIL DATE DELIVERY MODE
03/27/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MARK A. LEIMER
__________

Appeal 2009-015144
Application 11/421,646
Technology Center 3700
___________

Before JOHN A. JEFFERY, MARC S. HOFF, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-015144
Application 11/421,646

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SUMMARY
Appellant appeals under 35 U.S.C. § 134(a) from the following
rejection:
Claims 1, 4, 5, 7-9, 11, 13-15, 17, 18, and 20 stand rejected under
35 U.S.C. § 103(a) as obvious over Binford (US 5,174,256; issued Dec. 29,
1992) in view of Lowe (US 3,427,034; issued Feb. 11, 1969) and Hegemier
(US 6,209,504 B1; issued Apr. 3, 2001).
We reverse.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject
independent claim 1 under 35 U.S.C. § 102(b) as anticipated by Hegemier.

THE INVENTION
Appellant’s Fig. 1, reproduced below, shows a cross-section view of
Appellant’s seal within a valve. (Spec. ¶¶ 0001, 0006, 000 9, and 0023). A
retainer 16 holds the flexible seal 10, a reciprocating stem 12, and a stem
guide 18 in place, such that a top lip 30 and bottom lip 40 (both labeled in
Appellant’s Figs. 5A-H) of the seal 10 respectively abut against the stem 12
and guide 18. (Spec. ¶¶ 0006- 07, and 0022-25). Accordion-like
articulations of the seal 10 urge the bottom lip 40 against the guide 18 and
accommodate variable differences in the heights of the retainer 16 and guide
18 (i.e., provide guide height tolerance). (Spec. ¶¶ 0006-07, 0025-29; Figs.
5A-H).
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Appellant’s Fig. 1 shows a schematic cross-section view of
Appellant’s seal within a valve.
Independent claim 1 is illustrative of the claimed subject matter
(formatting modified):
1. A valve seal for sealing a valve guide and a stem,
the valve guide having a height within a predetermined range of
heights thereof, the valve seal comprising:
a sealing lip for sealingly engaging the stem; and
a compressible portion comprising at least two
articulating portions and a hinge portion therebetween,
a first of the at least two articulating portions having a
bias toward the stem when installed,
each of the at least two articulating portions bending at
the hinge[,] thereby folding opposite one another in an
accordion-like fashion when compressed by the valve guide,
sealingly engaging the valve guide and configured to articulate
to accept the valve guide without substantially deforming said
lip or interfering with said stem.
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FINDINGS AND ANALYSIS
Claim 1 requires the seal to include (1) a lip that engages the stem;
and (2) a compressible portion with an articulation (recited as “at least two
articulating portions and a hinge portion therebetween”) that, by flexing in
accordion-like fashion, allows an articulating portion to engage the guide
without substantially deforming the lip or interfering with the stem.1 In
addition, a first articulating portion must be biased toward the stem.
The Examiner cites the seal 20 of Binford’s Fig. 1, reproduced below,
as teaching all but the compressible portion’s accordion-like articulation and
the first articulating portion’s bias toward the stem. (Ans. 3). In doing so,
the Examiner cites the stem 18 as teaching the claimed stem, the guide 16 as
teaching the claimed guide, the lower lip 22 of Binford’s seal 20 as teaching
the claimed compressible portion, and the upper lip of Binford’s seal 20
(surrounded by a spring 24) as teaching the claimed lip. (Ans. 3).

Binford’s Fig. 1 shows a perspective view, with cross-sectional
cut-out, of the reference’s cited valve.

1 Claim 1 recites “each of the at least two articulating portions … sealingly
engaging the valve guide.” Since the Specification does not disclose two
articulating portions that each engage the guide, we construe claim 1 as
requiring only one of the articulating portions to engage the guide.
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The Examiner cites the seal 55 of Lowe’s Fig. 1, reproduced in part
below with reference numerals “16” and “40” added, as suggesting the
accordion-like articulation of the claimed compressible portion. Lowe’s
Fig. 1 shows a schematic cross-section view of the seal 55 within a valve.
(Col. 1, ll. 14-16; col. 2, ll. 16-17).

Lowe’s Fig. 1 shows a schematic cross-section view of the
reference’s seal within a valve.
Lowe’s Fig. 2, also reproduced below, shows a schematic isolated view of
the seal 55. (Col. 2, ll. 18-20).

Lowe’s Fig. 2 shows a schematic isolated view of the seal.
According to the Examiner, it would have been obvious to add the
corrugated loops 60a-b of Lowe’s seal 55 between Binford’s bottom lip 22
and the remainder of Binford’s seal 20, so as to increase the guide height
tolerance of Binford’s seal 20 as modified. (Ans. 4). Appellant argues
(App. Br. 18), inter alia, that the proposed modification would not have
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been obvious because:
As shown above in Fig. 1 of Lowe and taught at column
4, lines 13-26, one skilled in the art recognizes that the flexible
corrugation loops of Lowe obtain structural strength from
confronting surfaces 30a and 50a, of, respectively, the retainer
30 and the sleeve shoulder 50.
(App. Br. 18).
Appellant’s argument is persuasive. Lowe’s seal 55 is “jammed” into
the annular cavity between Lowe’s shaft 16, sleeve 40, and shaft guide 30,
such that the collars 56 urge the loops 60a-b against the stem 16 and sleeve
40 with “great force.” (Col. 3, l. 56 – col. 5, l. 28). The Examiner does not
explain why the loops 60a-b, though described as being configured to
radially expand against the stem 40 with great force, would have been
understood as a viable means of increasing the axial compressibility of
Binford’s seal 20 (i.e., recognized as a viable means of increasing the guide
height tolerance of Binford’s seal 20).
Prior art elements can have obvious uses beyond their primary
purposes. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)
(“Common sense teaches, however, that familiar items may have obvious
uses beyond their primary purposes, and in many cases a person of ordinary
skill will be able to fit the teachings of multiple patents together like pieces
of a puzzle.”). However, because of the great dissimilarity between the
disclosed and proposed uses of Lowe’s loops 60a-b, and further because the
Examiner’s reason for the proposed modification is also Appellant’s reason
for articulating the claimed seal (i.e., to increase guide height tolerance), we
hold that the proposed modification constitutes an impermissible hindsight
reconstruction of the claimed invention. See In re McLaughlin, 443 F.2d
1392, 1395 (CCPA 1971)
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(Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it takes
into account only knowledge which was within the level of ordinary
skill at the time the claimed invention was made and does not include
knowledge gleaned only from applicant’s disclosure, such a
reconstruction is proper.).

Accordingly, we do not sustain the obviousness rejection of claim 1.
As the Examiner applies the same modification and reasoning for the
obviousness rejections of claims 4, 5, 7-9, 11, 13-15, 17, 18, and 20 over
Binford, Lowe, and Hegemier (Ans. 3), we do not sustain the obviousness
rejections of those claims as well.

NEW GROUNDS OF REJECTION UNDER
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter new
grounds of rejection under 35 U.S.C. § 102(b) against claim 1. We hold that
claim 1 is anticipated by Hegemier for the following reasons.
Hegemier’s Fig. 3 is reproduced below (annotations added).

Hegemier’s Fig. 3 is a schematic cross-section view of the
reference’s seal within a valve.
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The Examiner relied on the frustroconical base 68 (“first articulating
portion”) of Hegemier’s seal 26 as teaching the claimed bias of a first
articulating portion toward the stem. (Ans. 4). In light of the labeled first
articulating portion of Hegemier’s Fig. 3, we agree that Hegemier’s seal 26
includes a first articulating portion 68 that is biased toward the stem 20.
We find that the remaining limitations of claim 1 are also disclosed by
Hegemier as follows:
(i) The seal 26 presses against the guide 22 and stem 20 (col. 1, ll. 25-28;
col. 2, ll. 23-26; col. 4, ll. 20-26 and 32-34; Fig. 3), as claimed (“A
valve seal for sealing a valve guide and a stem”).
(ii) The shape and elastomeric properties of the seal 26 provide an
inherent degree of guide height tolerance. As such, the seal 26 is
capable of accommodating guide heights within a predetermined
range of heights, as claimed (“the valve guide having a height within a
predetermined range of heights thereof”).
(iii) Several lips or fingers 56 of the seal 26 engage the stem 20 (col. 4, ll.
20-26), as claimed (“a sealing lip for sealingly engaging the stem”).
(iv) The shape and elastomeric properties of the seal 26 inherently impart
a compressible portion with a hinge of articulating portions (labeled in
Fig. 3) that fold opposite one another in accordion-like fashion when
compressed, as claimed (“a compressible portion comprising at least
two articulating portions and a hinge portion therebetween, … each
of the at least two articulating portions bending at the hinge[,] thereby
folding opposite one another in an accordion-like fashion when
compressed by the valve guide”).
(v) The shape and elastomeric properties of the seal 26 inherently allow
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the seal 26 to engage the guide 22 without substantially deforming the
lip 56 or interfering with the stem 20, as claimed (“sealingly engaging
the valve guide and configured to articulate to accept the valve guide
without substantially deforming said lip or interfering with said
stem”).
With respect to the fifth point, above, we note Appellant’s argument
that Hegemier teaches the opposite of the claim language, “sealingly
engaging the valve guide and configured to articulate to accept the valve
guide without substantially deforming said lip or interfering with said stem.”
(App. Br. 12-13). Appellant contends that Hegemier alternatively discloses
the first articulating portion as “firmly biased radially inwardly to make
contact with the outer circumference 30 of the valve stem 20.” (Id. (quoting
Hegemier, col. 3, ll. 60-64) (emphasis omitted)).
This argument is not persuasive for two reasons. First, we disagree
with Appellant’s contention that frustroconical base 68 (or “first articulating
portion”) does, in fact, contact the stem 20. Hegemier’s Fig. 3 plainly
illustrates the first articulating portion as being spaced apart from the stem
20. Moreover, the cited text of Hegemier only indicates that the retainer 28
helps the o-ring 64 urge the upper portion 52 of the seal 26 against the stem
20. There is no description of the seal’s lower portion being in contact with
a stem, but rather only descriptions of the seal’s lower portion being in
contact with a guide. (Col. 1, ll. 25-28; col. 2, ll. 23-26).
Second, even if we were to assume, arguendo, that Hegemier did
disclose the frustroconical base 68 being in contact with the valve stem, this
fact would not preclude Hegemier’s structure from corresponding to the
disputed claim language. Claim 1 does not state that the first articulating
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portion must be spaced apart from the valve stem. Rather, the claim
language states that the articulating portions are “sealingly engaging the
valve guide and configured to articulate to accept the valve guide without
substantially deforming said lip or interfering with said stem” (emphasis
added).
Appellant’s Specification does not provide any express definition or
objective standard to explain what is meant by the claim language
“substantially deforming said lip or interfering with said stem.” Appellant
does admit, though, that the adjective “substantially” modifies the claim
term “interfering” as well as “deforming” (App. Br. 12). That is, the claim
language does not preclude articulating portions that interfere with the stem
to some degree – only articulating portions that substantially interfere. We
therefore interpret this claim language to merely require the compressible
portion be able to articulate to accept the valve guide in a manner that
permits the valve stem to operate within the valve as intended. Any
arguments for a narrower construction could potentially raise questions
regarding the definiteness of the language “without substantially deforming
said lip or interfering with said stem.”

CONCLUSIONS
Appellant has shown that the Examiner erred in rejecting claims 1, 4,
5, 7-9, 11, 13-15, 17, 18, and 20 under 35 U.S.C. § 103(a) as obvious over
Binford, Lowe, and Hegemier.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject
independent claim 1 under 35 U.S.C. § 102(b) as anticipated by Hegemier.

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Although we decline to reject every claim under our discretionary
authority under 37 C.F.R. § 41.50(b), we emphasize that our decision does
not mean that the remaining claims are necessarily patentable. Rather, we
merely leave the patentability determination of these claims to the Examiner.
See MPEP § 1213.02.

DECISION
The Examiner’s decision rejecting claims 1, 4, 5, 7-9, 11, 13-15, 17,
18, and 20 is reversed.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection for claim 1 under 35 U.S.C. § 102(b).
Regulation 37 C.F.R. § 41.50(b) (2007) states that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Furthermore, 37 C.F.R. § 41.50(b) also provides that Appellants,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must
exercise one of the following two options with respect to the new grounds of
rejection to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner….
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record….

Appeal 2009-015144
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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)(1)(iv).

REVERSED
37 C.F.R. § 41.50(b)

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