Ex Parte London et al

Patent Trials and Appeals Board

Feb 18, 2016

12512367 - (D) (P.T.A.B. Feb. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/512,367 0713012009 John A. London
29293 7590 02/22/2016
FREUDENBERG-NOK GENERAL PARTNERSHIP
LEGAL DEPARTMENT
47690 EAST ANCHOR COURT
PLYMOUTH, MI 48170-2455
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.
08-0031 (84 70-000217) 5566
EXAMINER
DO, HAILEY KYUNG AE
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
02/22/2016 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):
fngp@hdp.com
mlp@fngp.com
PatentPros@fngp.com
PTOL-90A (Rev. 04/07)
U-NITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN A. LONDON and PA TRICK L. SCHEIB
Appeal2013-006591
Application 12/512,3671
Technology Center 3700
Before LYNNE H. BROWNE, JILL D. HILL, and JASON W. MELVIN,
Administrative Patent Judges.
MELVIN, Administrative Patent Judge.
DECISION ON APPEAL
This appeal arises under 35 U.S.C. § 134(a), from a rejection of
claims 1and5-10.2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify Freudenberg-NOK General Partnership as the real
party in interest. Appeal Br. 2.
2 The Examiner has noted that claims 21-25 are allowed. Final Act. 6.
Claims 2--4 and 11-20 are cancelled. See Appeal Br. 9, 10 (Claims App.).
Appeal2013-006591
Application 12/512,367
BACKGROUND
The claims are directed to a reduced inertia valve stem seal flange.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1 A valve stem seal including:
a rigid cylindrical shell having an outwardly extending
flange at a bottom end thereof;
a resilient sealing body in contact with said rigid cylindrical
shell, said resilient sealing body in constant contact with
a valve stem; and
said outwardly extending flange of said rigid cylindrical
shell includes a first circumferential groove in an upper
surface thereof and a second circumferential groove in a
lower surface thereof, said first and second
circumferential grooves spaced from a junction between
said rigid cylindrical shell and said outwardly extending
flange.
Appeal Br. 9 (Claims App.).
EVIDENCE
The Examiner relies on the following evidence:
Daghe US 4,717,178 Jan. 5, 1988
Kirchner US 5,775,284 July 7, 1998
Martelli WO 2004/109067 Al Dec. 16, 2004
REJECTIONS
Appellants seek our review of the following rejections:
1. Claims 1, 5-7, and 10 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Martelli and Daghe.
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Appeal2013-006591
Application 12/512,367
2. Claims 8 and 9 rejected under 35 U.S.C. § 103(a) as being
unpatentable over Martelli and Daghe, or over Martelli, Daghe,
and Kirchner.
DISCUSSION
The Examiner concludes that "[i]t would have been obvious to one of
ordinary skill in the art to modify the invention of Martelli by employing a
circumferential groove in a lower surface of the outwardly extending flange,
as taught by Daghe, to lower the load necessary to flex or fracture the
weakened grooves." Final Act. 4-5. Appellants argue that a person of
ordinary skill in the art "would not look to a fire hydrant coupling as
disclosed in Daghe for modifying a valve stem seal of an internal
combustion engine as disclosed in Martelli." Appeal Br. 5. The Examiner
agrees that "one would not initially look to the art of fire hydrants to find a
valve stem seal device" but reasons that "the present invention involves a
valve stem seal having frangible connections" and therefore finds that Daghe
is applicable to the present claims because "Daghe also involves frangible
connections, which is directly pertinent to the problem being solved."
Ans. 7. Daghe teaches that one of its objectives is "lessening the force
necessary to break the usual frangible barrel coupling means"-i.e.,
producing a fire hydrant that breaks off with less force when struck by a car
and therefore prevents damage to the main valve and barrel sections below
the street. Daghe 1 : 14-63.
We agree with Appellants that the Examiner has not satisfied the
burden of showing unpatentability because Daghe is not analogous to the
present invention. The Specification recites that "[ s Jome prior art valve
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Appeal2013-006591
Application 12/512,367
stem seals have had histories of cracked flanges" and that a valve stem seal
lacking a sufficiently flat flange portion "is susceptible to fatigue loading"
that "further increase[ es] the likelihood of flange cracking." Spec. ii 5.
Thus, the invention described in the Specification attempts to avoid this
problem of the flange cracking. Id. at ii 6. "[A] reference is only reasonably
pertinent when it 'logically would have commended itself to an inventor's
attention in considering his problem."' Circuit Check Inc. v. QXQ Inc., 795
F.3d 1331, 1335 (Fed. Cir. 2015) (quoting In re Clay, 966 F.2d 656, 659
(Fed. Cir. 1992)); see also Comaper Corp. v. Antee, Inc., 596 F.3d 1343,
1351 (Fed. Cir. 2010) (noting that whether prior art is analogous depends on
"(l) whether the art is from the same field of endeavor, regardless of the
problem addressed, and (2) if the reference is not within the field of the
inventor's endeavor, whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved.") (quoting Clay, 966
F.2d at 658-59). Because the claims at issue here specifically try to avoid
the flange cracking, we do not agree with the Examiner that Daghe, which
specifically makes the flange easier to crack, is reasonably pertinent to the
problem with which Appellants are concerned.
Accordingly, we do not sustain the rejection of claims 1 and 5-10.
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Appeal2013-006591
Application 12/512,367
DECISION
For the above reasons, the Examiner's rejection of claims 1 and 5-10
is reversed.
REVERSED
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