Ex Parte Lutaud

Patent Trial and Appeal Board

Oct 31, 2012

11189090 (P.T.A.B. Oct. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
11/189,090 07/25/2005 Dominique Lutaud 8470G-000043/DVA 8843
27572 7590 10/31/2012
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
EXAMINER
OMGBA, ESSAMA
ART UNIT PAPER NUMBER
3726
MAIL DATE DELIVERY MODE
10/31/2012 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DOMINIQUE LUTAUD
____________________

Appeal 2010-006308
Application 11/189,090
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, MICHAEL L. HOELTER, and
JOHN W. MORRISON, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/189,090

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STATEMENT OF THE CASE
Dominique Lutaud (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 11-16. Specifically, the Examiner
rejected claims 11, 12, 15, and 16 under 35 U.S.C. § 103(a) as unpatentable
over Appellant’s Admitted Prior Art (AAPA) in view of Tetsuya (JP 2001-
225392, pub. Aug. 21, 2001)1 or Kremer (US 3,776,873, iss. Dec. 4, 1973)
and rejected claims 13 and 14 under 35 U.S.C. § 103(a) as unpatentable over
the AAPA in view of Tetsuya or Kremer, and further in view of Teicher (US
3,455,826, iss. Jul. 15, 1969). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The Claimed Subject Matter
Claim 11, reproduced below, is illustrative of the claimed subject
matter.
11. A method for closing a spiral stage which is bounded by a
screw thread-shaped groove in a sealing lip of a lip sealing ring
and by a surface to be sealed, facing the groove, of a machine
element to be sealed, comprising:
introducing a thixotropic medium, presented in a liquid
form in an agitated container, in at least one partial region of
the groove of the lip sealing ring which is at rest;
automatically solidifying the thixotropic medium after its
introduction into the groove and thereby forming a hermetic
seal in the groove;
subsequently mounting the lip ring on the machine
element;

1 We derive our understanding of the Tetsuya reference from the English
language Abstract entered into the electronic file wrapper of this application
on November 14, 2007 and from the undisputed statements of the Examiner
and Appellant paraphrasing or quoting from the machine translation of the
Tetsuya reference, entered into the electronic file wrapper on July 28, 2008.
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subjecting the mounted lip ring to a pressure test at an
ambient temperature greater than 90° C;
determining whether the mounted lip ring is mounted
correctly or damaged; and
if the lip ring is mounted correctly or undamaged,
liquefying the thixotropic medium during use of the lip ring.
ISSUES
In contesting the rejection of claims 11, 12, 15, and 16 as unpatentable
over the AAPA in view of Tetsuya or Kremer, Appellant groups all of these
claims together. App. Br. 10. Thus, we select claim 11 as representative in
deciding the appeal as to this rejection. Appellant merely relies on the
arguments presented for claim 11 in contesting the rejection of claims 13
and 14 as unpatentable over the AAPA in view of Tetsuya or Kremer, and
further in view of Teicher. Id. Thus, our decision with respect to the
rejection of claim 11 will also be determinative for the rejection of claims 13
and 14.
The following issues are presented in this appeal.
(1) Would it have been obvious to substitute a thixotropic medium in
place of the wax in the AAPA method described in Appellant’s
Specification? App. Br. 9.
(2) If the AAPA method were modified as proposed by the Examiner by
using a thixotropic medium in place of the wax, would the method of
claim 11 result? More specifically, would the modified method
include determining whether the mounted lip ring is mounted
correctly or damaged and, if it is “mounted correctly or undamaged”
as claimed, liquefying the thixotropic medium during use of the lip
ring? Reply Br. 5.
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(3) Does the AAPA teach away from subjecting the lip ring to a pressure
test at an ambient temperature greater than 90o C? Reply Br. 8.
FACTS PERTINENT TO THE ISSUES
FF1 Appellant admits that
the AAPA discloses a lip sealing ring having wax provided
in a groove on the lip sealing ring. Wax is provided in the
groove because, after installation of the lip sealing ring, the
lip sealing ring may be tested to determine whether the lip
sealing ring was properly installed. By providing wax in the
groove, a pressure test may be completed where compressed
air is provided in the space to be sealed. If a rapid pressure
drop is experienced during the test due to the rapid loss of
the compressed air in the space to be sealed, the lip sealing
ring is either installed incorrectly or was damaged during
installation. During this pressure test, the ambient
temperature typically ranges greater than 90°C.
App. Br. 7-8.
FF2 The Examiner found that Tetsuya and Kremer evidence that it was
known in the art “to seal a gap by spraying liquid material having
thixotropic properties in the gap.” Ans. 3-4; see Tetsuya Abstr., p. 1,
(“TITLE: Gasket manufacturing method for sealing precision
mechanical equipments, involves spraying liquid material having
thixotropic property”); Kremer, col. 1, ll. 26-28; col. 4, ll. 29-66; col.
8, ll. 1-6. Appellant does not dispute the Examiner’s findings.
FF3 Tetsuya discloses that the liquid thixotropic material is sprayed on the
surface of a substrate and then hardened by irradiating. Tetsuya
Abstr., p. 1.
FF4 Tetsuya discloses that “hardening of the material is done at a high
temperature.” Tetsuya Abstr., p. 2.
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FF5 The established, ordinary and customary meaning of the term
“thixotropic” is “having a viscosity that decreases when a stress is
applied, as when stirred.” Collins English Dictionary (HarperCollins
Pub. 2003), http://www.thefreedictionary.com/thixotropic (last visited
Oct. 24, 2012).
FF6 The established, ordinary and customary meaning of the term
“thixotropy” is “[t]he property exhibited by certain gels of becoming
fluid when stirred or shaken and returning to the semisolid state upon
standing.” The American Heritage Dictionary of the English
Language (4th ed. 2000),
http://www.thefreedictionary.com/thixotropic (last visited Oct. 24,
2012).
ANALYSIS
Issue (1)
The Examiner found that the “AAPA does not disclose using a
thixotropic medium presented in a liquid form in an agitated container, the
thixotropic medium being introduced in at least one partial region of the
groove by spraying in order to seal the gap.” Ans. 3. The Examiner
reasoned it would have been obvious to substitute the sprayable sealant
taught by Tetsuya or Kremer for the wax used in the AAPA method “in
order to provide a convenient, easy and an economical way of sealing the
gap.” Ans. 4. According to the Examiner, the sealing method taught by
Tetsuya or Kremer would have been “obvious to try” in the AAPA method
“since it would have amounted to choosing from a finite number of
identified, predictable solutions, with a reasonable expectation of success.”
Id.
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Appellant argues that neither Tetsuya nor Kremer discloses that
thixotropic materials withstand ambient temperatures greater than 90o C,
and, consequently, there is no suggestion or motivation to combine the
teachings of either Tetsuya or Kremer with the AAPA. App. Br. 9, 10. For
the reasons that follow, this argument is not convincing.
To support a conclusion of obviousness, examiners are not required to
find and express a specific teaching, suggestion, or motivation for making a
proposed combination, and instead are charged with presenting an apparent
reason to combine teachings, as by, for example, articulating some reasoning
supported by rational underpinnings. KSR Int'l Co. v. Teleflex, Inc., 550
U.S. 398, 418 (2007).
In this case, the Examiner articulated a reason for substituting a
thixotropic medium for the wax in the AAPA method (i.e., to provide a
convenient, easy, and an economical way of sealing the gap). Further, the
teachings of Tetsuya and Kremer relied upon by the Examiner provide
rational underpinnings for the Examiner’s articulated reason. See FF2. The
Examiner also reasoned that the proposed modification would have been
“obvious to try” as the mere selection of a sealing technique “from a finite
number of identified, predictable solutions, with a reasonable expectation of
success.” Ans. 4.
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under § 103.
KSR, 550 U.S. at 421.
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Moreover, Tetsuya’s teaching that the thixotropic material is hardened
“at a high temperature” strongly suggests that it can withstand high
temperatures. See, FF4. Thus, the temperature ranges at which the pressure
test of the AAPA is conducted (see FF1) would not have dissuaded a person
of ordinary skill in the art from considering thixotropic material as a suitable
substitute for the wax in the AAPA method.
For the above reasons, Appellant does not apprise us of error in the
Examiner’s determination that it would have been obvious to substitute a
thixotropic medium in place of the wax in the AAPA method.
Issue (2)
Appellant admits that the AAPA method includes determining
whether the mounted lip ring is mounted correctly or damaged. See FF1.
The Examiner found that “it is widely known that a thixotropic
medium or agent is a substance which can impart to a composition a liquid
state when such composition is shaken or agitated and will solidify when not
agitated” and that, therefore, “it is inherent that the thixotropic medium will
liquefy during use of the lip ring as a result of the shaft rotation and/or the
vibrations created during use.” Ans. 4. The common dictionary definitions
of the terms “thixotropic” and “thixotropy” (see FF5, FF6) belie any notion
that it was not widely known that a thixotropic medium or agent is a
substance which can impart to a composition a liquid state when such
composition is shaken or agitated and will solidify when not agitated.
Moreover, in any event, “[i]nherency is not necessarily coterminous
with knowledge of those of ordinary skill in the art. Artisans of ordinary
skill may not recognize the inherent characteristics or functioning of the
prior art.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir.
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2002); Schering Corp. v. Geneva Pharms., 339 F.3d 1373, 1377 (Fed. Cir.
2003) (rejecting the contention that inherent anticipation requires
recognition in the prior art). Thus, recognition in the art that thixotropic
materials liquefy when agitated and solidify when not agitated need not be
shown to support the Examiner’s finding that the thixotropic material will
inherently solidify during conventional use of the lip ring in the AAPA
method modified as proposed by the Examiner.
Given the well-known properties of thixotropic materials (see FF2,
FF5, FF6), which evidences that a previously solidified thixotropic material
can be liquefied and used to form a seal because such material returns to a
semisolid state upon standing but, at the same time, the very nature of the
material permits it to liquefy upon agitation, the Examiner established a
sound basis to reasonably support the determination that the thixotropic
medium will liquefy during use in a lip ring as a result of the shaft rotation
and/or the vibrations created during use in the AAPA method modified as
proposed by the Examiner. Once the PTO establishes a prima facie case of
anticipation based on inherency, the burden shifts to the appellant to prove
that the prior art does not possess the characteristic at issue. See In re King,
801 F.2d 1324, 1327 (Fed. Cir. 1986). Appellant has not provided adequate
evidence or technical reasoning to show that liquefication of the thixotropic
medium would not inherently occur as a result of shaft rotation and/or
vibrations.2 Thus, Appellant fails to identify error in the Examiner’s
determination.

2 Appellant points out that Tetsuya teaches irradiating the thixotropic
material to cure it (Reply Br. 6; see FF3). However, this is not necessarily
inconsistent with subsequent liquefication from vibration or agitation during
use, as evidenced by Appellant’s claimed method, in which the thixotropic
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Issue (3)
Appellant argues that the AAPA “teaches away from a method where
temperatures are greater than 90o C.” Reply Br. 8. This argument is
unsound. Appellant has already stated on the record that the AAPA method
includes subjecting the mounted lip ring to a pressure test at an ambient
temperature greater than 90° C. FF1.
CONCLUSIONS
1. On the basis of this record, it would have been obvious to substitute a
thixotropic medium in place of the wax in the AAPA method described
in Appellant’s Specification.
2. If the AAPA method were modified as proposed by the Examiner by
using a thixotropic medium in place of the wax, the modified method
would include determining whether the mounted lip ring is mounted
correctly or damaged and, if it is mounted correctly or undamaged,
liquefying the thixotropic medium during use of the lip ring.
3. The AAPA does not teach away from subjecting the lip ring to a pressure
test at an ambient temperature greater than 90o C, and, in fact, teaches
such a step.
In light of these conclusions, Appellant does not apprise us of error in
the rejection of claim 11 as unpatentable over the AAPA in view of Tetsuya
or Kremer. We thus sustain the rejection of claims 11, 12, 15, and 16 as
unpatentable over the AAPA in view of Tetsuya or Kremer. We also sustain
the rejection of claims 13 and 14 as unpatentable over the AAPA in view of
Tetsuya or Kremer, and further in view of Teicher.

medium is solidified after its introduction into the groove and subsequently
liquefied during use. Moreover, the Examiner does not specify that the step
of curing by irradiation be incorporated into the AAPA method. See Ans. 4.
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DECISION
The Examiner’s decision rejecting claims 11-16 is affirmed.
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).
AFFIRMED

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