Ex Parte Nisley et al

Board of Patent Appeals and Interferences

Feb 12, 2008

09938793 (B.P.A.I. Feb. 12, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
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Ex parte DONALD L. NISLEY and JAMES E. MICKELSON 8
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Appeal 2007-3876 11
Application 09/938,793 12
Technology Center 3600 13
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Decided: February 12, 2008 16
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Before TERRY J. OWENS, MURRIEL E. CRAWFORD, and DAVID B. 19
WALKER, Administrative Patent Judges. 20
OWENS, Administrative Patent Judge. 21
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DECISION ON APPEAL 23
The Appellants appeal from a rejection of claims 1-10 and 12-21. 24
Claim 11 has been canceled and claims 22-26 stand allowable. 25
THE INVENTION 26
The Appellants claim a bearing assembly having a rotatable flinger 27
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configured to form a single-stage rotating seal.1 Claim 1 is illustrative: 1
1. A bearing assembly, comprising: 2
a bearing insert; 3
a bearing housing adapted to house the bearing insert; 4
a cover removably securable to the bearing housing, wherein the 5
cover extends outwardly beyond an outermost edge of the bearing housing; 6
and 7
a rotatable flinger secured to the cover outwardly beyond the 8
outermost edge of the bearing housing and configured to form a single-stage 9
rotating seal, the rotatable flinger comprising: 10
a first opening therethrough, the first opening being adapted to 11
receive a rotatable shaft and to enable the rotatable flinger to form a 12
compression seal against the rotatable shaft; and 13
an outer flange disposed external to the cover to fling material 14
that comes into contact with the outer flange away from the bearing 15
assembly. 16
THE REFERENCES 17
Tooley US 4,348,067 Sep. 7, 1982 18
Motsch US 4,368,933 Jan. 18, 1983 19
Uhen US 4,781,476 Nov. 1, 1988 20
Grzina US 4,895,460 Jan. 23, 1990 21
Hatch US 4,943,068 Jul. 24, 1990 22
Tripathy US 6,149,158 Nov. 21, 2000 23
THE REJECTIONS 24
The claims stand rejected as follows: claims 1-4, 7, 12-17 and 21 25
under 35 U.S.C. § 102(b) over Grzina and under 35 U.S.C. § 103 over 26
Grzina in view of Hatch; claim 6 under 35 U.S.C. § 103 over Grzina in view 27
of Tripathy; claims 8 and 19-21 under 35 U.S.C. § 103 over Grzina in view 28
of Motsch; claims 9 and 10 under 35 U.S.C. § 103 over Grzina in view of 29

1 The Appellants state that flinger 26 rotates with shaft 12 to use centrifugal
force to throw clear of shaft 12 and cover 24 any liquids or particulates that
contact the flinger, thereby preventing contaminants from entering the
bearing assembly (Spec. 5:19-27).
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Tooley; and claims 5 and 18 under 35 U.S.C. § 103 over Grzina in view of 1
Uhen. 2
OPINION 3
We reverse the Examiner’s rejections. 4
We need to address only the independent claims, i.e., claims 1 5
and 13.2 Claim 1 requires a rotatable flinger “configured to form a single-6
stage rotating seal” and claim 13 requires a rotatable member “configured to 7
form a single-stage rotating seal”. The Appellants’ original disclosure does 8
not include the term “single-stage”. That limitation was added to the claims 9
by amendment (filed July 28, 2005). 10
The Examiner argues that “configured to form a single stage seal” is 11
functional language (Ans. 11). That argument is not well taken because that 12
claim requirement is a structural limitation of the recited rotatable flinger or 13
rotatable member, i.e., it is structurally configured as a single-stage seal. 14
The Examiner argues that the transition term “comprising” opens 15
claims 1 and 13 to the single-stage seal having additional stages (Ans. 11). 16
That is incorrect. If the seal had additional stages it would not be a 17
single-stage seal. The Examiner’s argument that both a bicycle and a 18
unicycle have a single wheel, see id., is incorrect because a bicycle has two 19
wheels, not a single wheel. 20
In the rejection under 35 U.S.C. § 102(b) the Examiner relies upon 21
Grzina’s seal comprising a labyrinth seal (3) and two seal rings (1A, 1B) 22
(fig. 2) as being a single-stage seal (Ans. 5). The Examiner argues that 23

2 The Examiner does not rely upon Tripathy, Motsch, Tooley or Uhen for
any disclosure that remedies the deficiency in Grzina or the combination of
Grzina and Hatch with respect to the independent claims (Ans. 8-11).
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because that seal is only one seal it is a single-stage seal. See id. The 1
Appellants argue that each of Grzina’s labyrinth seal 3 and seal rings 1A and 2
1B is a stage and that, therefore, Grzina’s seal is a three-stage seal (Br. 8; 3
Reply Br. 3-4). 4
The Examiner has not provided evidence that one of ordinary skill in 5
the art would have considered Grzina’s seal comprising labyrinth seal 3 and 6
seal rings 1A and 1B to be a single-stage seal. In the alternative rejection of 7
claims 1 and 13 under 35 U.S.C. § 103 the Examiner relies upon Hatch’s 8
seal as being a single-stage seal (Ans. 8). Hatch, however, states that the 9
seal relied upon by the Examiner as a single-stage seal (i.e., shaft engaging 10
member 15 comprising annular radial ridges or projections 23 and projecting 11
lip element 25 with tip 29) is a two-stage seal (col. 6, ll. 60-61). 12
Thus, the evidence relied upon by the Examiner does not indicate that 13
Grzina’s seal is a single-stage seal. 14
The Examiner has the initial burden of establishing a prima facie case 15
of anticipation by pointing out where all of the claim limitations appear in a 16
single reference. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re 17
King, 801 F.2d 1324, 1327 (Fed. Cir. 1986). Because the Examiner has not 18
established that Grzina discloses a single-stage seal, the Examiner has not 19
carried the burden of establishing a prima facie case of anticipation of the 20
Appellants’ claimed invention. 21
As for the rejection under 35 U.S.C. § 103, the Examiner has not 22
established that the combination of Grzina and Hatch, neither of which has 23
been shown by the Examiner to disclose a single-stage seal, would have 24
rendered a single-stage seal prima facie obvious to one of ordinary skill in 25
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the art. Hence, the Examiner has not established a prima facie case of 1
obviousness of the Appellants’ claimed invention. 2
DECISION 3
The rejections of claims 1-4, 7, 12-17 and 21 under 4
35 U.S.C. § 102(b) over Grzina and under 35 U.S.C. § 103 over Grzina in 5
view of Hatch, claim 6 under 35 U.S.C. § 103 over Grzina in view of 6
Tripathy, claims 8 and 19-21 under 35 U.S.C. § 103 over Grzina in view of 7
Motsch, claims 9 and 10 under 35 U.S.C. § 103 over Grzina in view of 8
Tooley, and claims 5 and 18 under 35 U.S.C. § 103 over Grzina in view of 9
Uhen are reversed. 10
REVERSED 11
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hh 21
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