Ex parte Millard

Board of Patent Appeals and Interferences

Apr 15, 1999

08543153 (B.P.A.I. Apr. 15, 1999)

Application for patent filed October 13, 1995. 1
According to the appellant, the application is a continuation
of Application No. 08/087,774, filed November 12, 1993, now
abandoned. According to the appellant, Application No.
08/087,774 was the national stage application of
PCT/GB92/00069, filed January 14, 1992. In addition,
PCT/GB92/00069 claimed priority of British Application No.
9100903.5, filed January 16, 1991.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte BARRY J. MILLARD
____________
Appeal No. 1998-1928
Application No. 08/543,1531
____________
ON BRIEF
____________
Before CALVERT, ABRAMS, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
Appeal No. 1998-1928
Application No. 08/543,153
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 2 through 14, which are all of the claims
pending in this application.
We AFFIRM-IN-PART.
Appeal No. 1998-1928 Page 3
Application No. 08/543,153
We note that claim 14 does not provide proper antecedent2
basis for "the inner axially extending circumferential face,"
"the ring member," "the resilient ring member," and "the
groove bottom."
BACKGROUND
The appellant's invention relates to a rotary valve seal
assembly. An understanding of the invention can be derived
from a reading of claims 2 through 14, a copy of which appears
in the appendix to the appellant's brief.2
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Johnson, Jr. 2,631,907 Mar. 17,
1953
Storms 3,612,545 Oct. 12,
1971
Duffy 5,165,702 Nov. 24,
1992
(filed May 20, 1991)
Claims 2 through 7, 10, 11 and 14 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Storms.
Appeal No. 1998-1928 Page 4
Application No. 08/543,153
We note that the 115° included angle referred to on page3
9, lines 11-12, of the specification is not in harmony with
the 155° included angle referred to on page 3, lines 25-26, of
(continued...)
Claims 8 and 9 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Storms in view of Johnson, Jr.
Claims 12 and 13 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Duffy in view of Storms.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the examiner's answer (Paper
No. 21, mailed November 6, 1997) for the examiner's complete
reasoning in support of the rejections, and to the appellant's
brief (Paper No. 20, filed October 14, 1997) and reply brief
(Paper No. 22, filed January 5, 1998) for the appellant's
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and3
Appeal No. 1998-1928 Page 5
Application No. 08/543,153
(...continued)3
the specification and claim 9.
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
The anticipation issue
We sustain the rejection of claims 2 through 7, 10, 11
and 14 under 35 U.S.C. § 102(b).
Initially we note that anticipation by a prior art
reference does not require either the inventive concept of the
claimed subject matter or the recognition of inherent
properties that may be possessed by the prior art reference.
See Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 633,
2 USPQ2d 1051, 1054 (Fed. Cir.), cert. denied, 484 U.S. 827
(1987). A prior art reference anticipates the subject of a
claim when the reference discloses every feature of the
claimed invention, either explicitly or inherently (see Hazani
v. Int'l Trade Comm'n, 126 F.3d 1473, 1477, 44 USPQ2d 1358,
Appeal No. 1998-1928 Page 6
Application No. 08/543,153
1361 (Fed. Cir. 1997) and RCA Corp. v. Applied Digital Data
Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.
Cir. 1984)); however, the law of anticipation does not require
that the reference teach what the appellants are claiming, but
only that the claims on appeal "read on" something disclosed
in the reference (see Kalman v. Kimberly-Clark Corp., 713 F.2d
760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied,
465 U.S. 1026 (1984)).
The appellant argues (brief, pp. 6-8, and reply brief,
pp. 1-5) that certain features of claims 14, 7, 10 and 11 were
not disclosed in Storms. We do not agree.
With regard to claim 14, the appellant argues (brief, pp.
6-7, and reply brief, pp. 1-5) that the recited
resilient ring member means located in abutment with the
inner axially extending circumferential face of the seal
body for urging said outer circumferential face radially
outward sufficiently to maintain sealing abutment between
said outer circumferential face and the bore
is not disclosed by Storms. Specifically, the appellant
points out that the ring 35 of Storms is incapable of urging
the seal element 25 radially outwardly. We disagree. In
Appeal No. 1998-1928 Page 7
Application No. 08/543,153
determining whether or not the ring 35 of Storms is capable of
urging the seal element 25 radially outwardly, we must
consider all the teachings of Storms, particularly the
teachings of Storms cited by the appellant in the reply brief
(pp. 3-5), and especially Storms' teaching (column 3, lines
54-58) that
[c]ontrary to most split rings used in conjunction with
seal elements, the restrainer ring does not operate as an
energizing member in that it does not urge the seal
element into sealing engagement through its own resilient
character to any great extent.
When considering all the teachings of Storms, we reach the
conclusion that to a small extent (i.e., not a great extent)
the ring 35 of Storms does urge the seal element 25 radially
outwardly. Thus, the appellant's argument with regard to
claim 14 does not persuade us of any error in the examiner's
rejection.
With regard to claim 7, the appellant argues (brief, pp.
7-8) that the combination recited in claim 7 is not disclosed
by Storms. We do not agree. We agree with the appellant that
Storms does not disclose the inner circumferential face of the
seal element 25 and the outer circumferential face of the ring
Appeal No. 1998-1928 Page 8
Application No. 08/543,153
35 having complimentary profiles which when engaged in
abutment axially centralize the ring 35 and seal element 25.
However, Storms does disclose (column 3, lines 45-49 and
column 4, lines 4-24) that the outer peripheral surface 35a of
the ring 35 is in opposed contacting relationship with the
inner peripheral surface of the seal element 25 and that it is
preferred that upon installation, there be a tight fit, and
preferably an interference fit. Accordingly, Storms does
disclose the inner circumferential face of the seal element 25
and the outer circumferential face of the ring 35 having
complimentary profiles which inherently prevents relative
axial movement between the ring 35 and seal element 25. Claim
7 is readable on Storms since claim 7 requires only that the
complimentary profiles centralize the ring member and seal
body and/or prevent relative axial movement between the ring
member and seal body. Thus, the appellant's argument with
regard to claim 7 does not persuade us of any error in the
examiner's rejection.
With regard to claim 10, the appellant states (brief, p.
8) that the limitations recited in claim 10 are not disclosed
Appeal No. 1998-1928 Page 9
Application No. 08/543,153
by Storms. We do not agree. As shown in Figures 1 and 5 of
Storms, the combined radial height of the ring 35 and seal
element 25 is greater than the axial width of the seal element
25. Thus, the appellant's argument with regard to claim 10
does not persuade us of any error in the examiner's rejection.
With regard to claim 11, the appellant asserts (brief, p.
8) that claim 11 is not met by Storms. We do not agree. We
agree with the appellant that the radially extending end face
of Storms' seal element 25 does not extend the entire combined
radial height of the ring 35 and seal element 25. However, as
shown in Figures 1 and 5, the radially extending end face of
Storms' seal element 25 does extend the majority of the
combined radial height of the ring 35 and seal element 25.
Claim 11 is readable on Storms since claim 11 requires only
that the radially extending end face of the seal body extend
the entire or majority of the combined radial height of the
ring and seal body. Thus, the appellant's argument with
regard to claim 11 does not persuade us of any error in the
examiner's rejection.
Appeal No. 1998-1928 Page 10
Application No. 08/543,153
For the reasons stated above, the decision of the
examiner to reject claims 2 through 7, 10, 11 and 14 under 35
U.S.C.
§ 102(b) is affirmed.
The obviousness issues
We sustain the rejection of claims 12 and 13 under 35
U.S.C. § 103, but not the rejection of claims 8 and 9.
The test for obviousness is what the combined teachings
of the references would have suggested to one of ordinary
skill in the art. See In re Young, 927 F.2d 588, 591, 18
USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981).
Claims 12 and 13
The examiner found (answer, pp. 4-5) that
[i]n discussing the prior art, Duffy discloses a known
power steering mechanism and valve substantially as
claimed. It is noted that the filing date of Duffy is
not earlier than Appellant's priority date, however,
Duffy discloses that the assembly was disclosed in patent
4,570,736 which issued in 1986, well before Appellant's
priority date.
Appeal No. 1998-1928 Page 11
Application No. 08/543,153
The examiner then determined (answer, p. 5) that
[i]t would have been obvious to use the seal disclosed by
Storms in the assembly of Duffy, since Duffy is silent
regarding the details of the seal and since Storms
discloses that this seal is desirable for use in
hydraulic systems.
The appellant argues (brief, p. 9) that there is no
disclosure in Duffy that cures the deficiencies of Storms
discussed previously in the anticipation rejection and that
the filing date of Duffy is not earlier than the appellant's
priority date. We find that the appellant's argument does not
persuade us of any error in the examiner's rejection of claims
12 and 13. In that regard, we note as discussed above that
there were no deficiencies in Storms with regard to the
anticipation rejection of parent claim 14. While the filing
date of Duffy is not earlier than the appellant's priority
date, we believe that the examiner's reliance of the known
power steering mechanism (see column 1, lines 5-51 of Duffy)
disclosed in patent 4,570,736 is tantamount to applying U.S.
Patent No. 4,570,736 (issued February 18, 1986) itself.
Accordingly, the appellant's priority date of January 16, 1991
is insufficient to remove the known power steering mechanism
Appeal No. 1998-1928 Page 12
Application No. 08/543,153
disclosed in patent 4,570,736 set forth in Duffy's "BACKGROUND
OF THE INVENTION" as available prior art under 35 U.S.C. §
103.
For the reasons stated above, the decision of the
examiner to reject claims 12 and 13 under 35 U.S.C. § 103 is
affirmed.
Appeal No. 1998-1928 Page 13
Application No. 08/543,153
Claims 8 and 9
The examiner found (answer, p. 4) that
Storms does not disclose that the ring member and seal
body have inclined surfaces. Johnson, however, discloses
a similar seal having inclined surfaces, as shown in
figure 6.
The examiner then determined (answer, p. 4) that
[i]t would have been obvious to modify Storms, by making
the surfaces inclined, as taught by Johnson, thereby
limiting relative movement between the ring member and
seal body.
The appellant argues (brief, p. 8) that the applied prior
art does not suggest the claimed subject matter. We agree.
As set forth above, obviousness is tested by "what the
combined teachings of the references would have suggested to
those of ordinary skill in the art." But it "cannot be
established by combining the teachings of the prior art to
produce the claimed invention, absent some teaching or
suggestion supporting the combination." ACS Hosp. Sys., Inc.
v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933
(Fed. Cir. 1984). And "teachings of references can be
combined only if there is some suggestion or incentive to do
Appeal No. 1998-1928 Page 14
Application No. 08/543,153
so." Id. Here, the prior art contains none. In fact, the
advantages of utilizing "opposed surfaces inclined relative to
the axis of the ring member/seal body" are not appreciated by
the prior art applied by the examiner.
Instead, it appears to us that the examiner relied on
hindsight in reaching his obviousness determination. However,
our reviewing court has said, "To imbue one of ordinary skill
in the art with knowledge of the invention in suit, when no
prior art reference or references of record convey or suggest
that knowledge, is to fall victim to the insidious effect of a
hindsight syndrome wherein that which only the inventor taught
is used against its teacher." W. L. Gore & Assoc. v. Garlock,
Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir.
1983), cert. denied, 469 U.S. 851 (1984). It is essential
that "the decisionmaker forget what he or she has been taught
at trial about the claimed invention and cast the mind back to
the time the invention was made . . . to occupy the mind of
one skilled in the art who is presented only with the
references, and who is normally guided by the then-accepted
wisdom in the art." Id. Since the limitation "opposed
Appeal No. 1998-1928 Page 15
Application No. 08/543,153
surfaces inclined relative to the axis of the ring member/seal
body" of claim 8 is not taught or suggested by the applied
prior art, we will not sustain the
35 U.S.C. § 103 rejection of claims 8 and 9.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 2 through 7, 10, 11 and 14 under 35 U.S.C. § 102(b) is
affirmed; the decision of the examiner to reject claims 12 and
13 under 35 U.S.C. § 103 is affirmed; and the decision of the
examiner to reject claims 8 and 9 under 35 U.S.C. § 103 is
reversed.
Appeal No. 1998-1928 Page 16
Application No. 08/543,153
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 1998-1928 Page 17
Application No. 08/543,153
FINNEGAN HENDERSON FARABOW
GARRETT AND DUNNER
1300 I STREET NW
WASHINGTON, DC 20005-3315
APPEAL NO. 1998-1928 - JUDGE NASE
APPLICATION NO. 08/543,153
APJ NASE
APJ ABRAMS
APJ CALVERT
DECISION: AFFIRMED-IN-PART
Prepared By: Gloria Henderson
DRAFT TYPED: 13 Apr 99
FINAL TYPED: