Ex Parte Otschik et al

Patent Trial and Appeal Board

Jun 30, 2016

12734679 (P.T.A.B. Jun. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121734,679
21874 7590
Locke Lord LLP
P.O. BOX 55874
BOSTON, MA 02205
06/22/2010
07/05/2016
FIRST NAMED INVENTOR
Joachim Otschik
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.
86263US(51994) 9939
EXAMINER
PATEL, VISHAL A
ART UNIT PAPER NUMBER
3675
NOTIFICATION DATE DELIVERY MODE
07/05/2016 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):
patent@lockelord.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOACHIM OTSCHIK, ANDREAS SCHRUFER,
RUDOLF SCHICKTANZ, and MARTIN KIRCHHOF
Appeal2013-010570
Application 12/734,679
Technology Center 3600
Before JOHN C. KERINS, BRANDON J. WARNER, and
LISA M. GUIJT, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Joachim Otschik et al. ("Appellants")1 appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision rejecting claims 1-5, 7, and 8, which
are all the pending claims. Appeal Br. 5. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b). An oral hearing was held on April 21, 2016.
We AFFIRM.
According to Appellants, the real party in interest is Eagleburgmann
Germany Gmbh & Co. KG. Appeal Br. 3.
Appeal2013-010570
Application 12/734,679
CLAIMED SUBJECT MATTER
Appellants' disclosed invention "relates to a seal ring of a seal ring
assembly." Spec. 2.2 Claims 1 and 8 are independent. Claim 1, reproduced
below, is illustrative of the subject matter on appeal.
1. A seal ring of a mechanical seal assembly, comprising:
a base body made of a material including at least one
carbide material, and
a coating provided at the base body and creating a sliding
surface, said coating consisting of a diamond material,
wherein the base body is formed of a two-component
material by embedding particulate regions made of a diamond
material compatible with the diamond material of the coating
into the material comprising at least one carbide material.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Bettles
Stafford
WO 90/09361
EP 0 675 303 Al
REJECTION
Aug. 23, 1990
Oct. 4, 1995
The following rejection is before us for review: Claims 1-5, 7, and 8
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Stafford
and Bettles.
2 We note that Appellants' Specification does not provide line or
paragraph numbering; accordingly, reference herein is made only to page
numbers.
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Application 12/734,679
ANALYSIS
Appellants present argument against the rejection of claims 1-5 (see
Appeal Br. 10-12; Reply Br. 9) and of all claims 1-5, 7, and 8 (see Appeal
Br. 12-14; Reply Br. 10) together, and present additional argument against
the rejection of claim 7 (see Appeal Br. 14; Reply Br. 11) and of claim 8
(see Appeal Br. 15; Reply Br. 11). We select independent claim 1 as
representative of the issues that Appellants present together, with claims 2-5
standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). We
address the additional arguments directed to claims 7 and 8 infra.
Claims 1-5
The Examiner determined that a combination of teachings from
Stafford and Bettles renders obvious the limitations of independent claim 1.
Final Act. 3--4. In particular, the Examiner concluded that it would have
been obvious to one skilled in the art at the time of the invention to have
replaced the ceramic material of the base body in the seal assembly of
Stafford with the ceramic and diamond composite material of Bettles to
provide a "more efficient material for [a] high temperature environment."
Id. (citing Bettles, p. 2). In the Answer, the Examiner expounds on the
reasoning for having the Stafford base body be made of a two-component
material including diamond material, as taught by Bettles, in order to
"provide harder ceramic material [to] withstand elevated temperatures."
Ans. 3--4 (citing Bettles, Abstract).
Appellants argue that the Examiner has failed to establish a proper
prima facie case of obviousness because, according to their contention, a
combination of Stafford and Bettles does not suggest a base body formed of
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a two-component material with embedded "particulate regions" made of a
diamond material, as claimed. See Appeal Br. 10-12; Reply Br. 9. In
response, the Examiner explains that Bettles teaches a composite material
made of ceramic and diamond, where the diamond particles are bound in a
ceramic matrix, such that the composite meets the claim limitation of
diamond materials being embedded in "particulate regions" of the base body
of the combination relied on in the rejection. See Ans. 3--4. The Examiner's
explanation of the findings relied on is reasonable.
Regarding the recited "particulate regions," Appellants do not direct
us to any special meaning or specific requirements for such regions (i.e.,
areas or locations). Appellants do, however, acknowledge that that Bettles
teaches a "uniform mixture" (Reply Br. 9) of diamond materials and ceramic
materials, such that the diamond materials are "randomly and evenly
distributed" (Appeal Br. 11) within the ceramic matrix. Given such a
distribution of the diamond materials, which accords with the Examiner's
reliance on the composite material of Bettles (see Ans. 4), Appellants do not
explain-nor do we discern-how such a uniform distribution of diamond
materials within the ceramic matrix of the entire base body would not
encompass diamond materials within any identified "particulate regions"
within any portion of the base body.
Appellants also argue that the combination of Stafford and Bettles is
improper because, according to their contention, substituting the ceramic and
diamond composite material of Bettles in place of the ceramic material for
the base body of Stafford "would go against the teachings in Bettles and
would render the composite material disclosed in Bettles unsatisfactory for
its intended purpose," to assertedly change its principle of operation. Appeal
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Br. 12; see id. at 12-14; Reply Br. 10. The basis for this contention appears
to be Appellants' assertion that the diamond composite materials taught by
Bettles are often abrasive and tend to be expensive. See Appeal Br. 12-13.
Regardless of whether these assertions are true, however, Appellants'
reliance thereon is misplaced in addressing the rejection presented.
The Examiner did not rely on these attributes (abrasiveness or cost)
for the combination relied on in the rejection, but instead relied on other
attributes taught by Bettles (e.g., harder materials having suitability for high
temperature environments), as discussed supra. See Final Act. 3--4;
Ans. 3--4. Our reviewing court has recognized that a given course of action
often has simultaneous advantages and disadvantages, and this does not
necessarily obviate any or all reasons to combine teachings. See Medichem,
S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (if there are
tradeoffs involved regarding features, such things do not necessarily prevent
the proposed combination); Winner Int'! Royalty Corp. v. Wang, 202 F.3d
1340, 1349 n.8 (Fed. Cir. 2000) ("The fact that the motivating benefit comes
at the expense of another benefit, however, should not nullify its use as a
basis to modify the disclosure of one reference with the teachings of another.
Instead, the benefits, both lost and gained, should be weighed against one
another."). Here, Appellants merely assert potential disadvantages, without
contesting the known advantages provided by the ceramic and diamond
composite materials of Bettles relied on by the Examiner, and do not
persuasively explain why any alleged disadvantages of the proposed
combination would outweigh the Examiner's stated advantages.
After careful consideration of all the evidence, Appellants' arguments
do not apprise us of error in the Examiner's findings or reasoning in support
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of the conclusion of obviousness. Therefore, we sustain the rejection of
independent claim 1under35 U.S.C. § 103(a) as being unpatentable over
Stafford and Bettles. Claims 2-5 fall with claim 1.
Claim 7
With respect to the rejection of claim 7, Appellants' arguments
initially incorporate "the same reasons provided above with respect to
[c]laim 1," discussed in detail supra. Appeal Br. 14; see Reply Br. 11. For
the same reasons, Appellants' arguments directed to claim 1 do not apprise
us of error in the Examiner's findings or conclusion of obviousness for this
claim.
Appellants also argue that the combination of Stafford and Bettles
does not render obvious the recitation in claim 7 of the particulate regions
being "formed on a cross-section of the base body near the coating." Appeal
Br. 14. However, Appellants again acknowledge that the combination relied
upon "would have a base body with a completely uniform diamond
distribution." (Reply Br. 11 ), which corresponds with the Examiner's
reliance on Bettles teaching a composite material with diamond particles
throughout (see Ans. 5). Similar to the analysis supra, given such a
distribution of the diamond materials, Appellants do not explain-nor do we
discern-how such a uniform distribution of diamond materials within the
ceramic matrix of the entire base body would not encompass diamond
materials within any identified "particulate regions" within any portion of
the base body, including "on a cross-section of the base body near the
coating," as recited in claim 7. In other words, although claim 7 requires
that particulate regions with diamond material be formed near the coating,
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the claim does not require such particulate regions to be formed exclusively
near the coating.
Thus, Appellants' additional argument does not apprise us of error in
the Examiner's findings or conclusion of obviousness. Accordingly, for the
foregoing reasons, we sustain the rejection of claim 7 under 35 U.S.C.
§ 103(a) as being unpatentable over Stafford and Bettles.
Claim 8
With respect to the rejection of claim 8, Appellants' arguments
incorporate "the same reasons provided above with respect to [c]laim 1,"
discussed in detail supra. Appeal Br. 15. Specifically, Appellants argue
only that "the combination of Stafford and Bettles does not disclose the
particulate regions as recited in [c]laim 8," for "the reasons already provided
above with respect to [c]laim 1," and that "the proposed combination of
Stafford and Bettles would still render Bettles unsuitable for its intended
purpose, as discussed above." Id. For the same reasons, Appellants'
arguments directed to claim 1 do not apprise us of error in the Examiner's
findings or conclusion of obviousness for this claim.
Appellants also present a new argument for the first time in the Reply
Brief for the patentability of claim 8. Reply Br. 11. Appellants do not,
however, present any showing of good cause for why this new argument was
not presented in the principal Appeal Brief. We further note that the
Response to Argument in the Examiner's Answer (see Ans. 6) that addresses
Appellants' original argument in the principal Appeal Brief appears to
simply reiterate the same initial finding presented in the rejection of record
(see Final Act. 3), from which the instant appeal is taken, such that this new
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argument is not responsive to any new argument raised or position taken in
the Examiner's Answer.
We need not consider this new argument, which is deemed waived,
and we decline to do so here. Ex parte Borden, 93 USPQ 2d 1473, 1474--75
(BPAI 2010) (informative) (clarifying that "the reply brief [is not] an
opportunity to make arguments that could have been made in the principal
brief on appeal to rebut the Examiner's rejections, but were not" and that
"the failure to raise all issues and arguments diligently, in a timely fashion,
has consequences"). The new argument, which relates to whether the
teachings of Bettles can render obvious a ceramic and diamond composite
material to form a base body "including at least one carbide material," where
"the carbide material is selected from the group of materials consisting of
SiC and WC," could have been presented in the principal Appeal Brief to
address the outstanding rejection of record, but was not. Here, the absence
of any opportunity for the Examiner to respond to this untimely argument
precludes meaningful appellate review.
Accordingly, we reiterate that the arguments presented in the principal
Appeal Brief against the rejection of claim 8 do not apprise us of error in the
Examiner's findings or conclusion of obviousness. In conclusion, for the
foregoing reasons, we sustain the rejection of claim 8 under 35 U.S.C.
§ 103(a) as being unpatentable over Stafford and Bettles.
DECISION
We AFFIRM the Examiner's decision rejecting claims 1-5, 7, and 8
under 35 U.S.C. § 103(a) as being unpatentable over Stafford and Bettles.
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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)(l )(iv).
AFFIRMED
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