Ex Parte Rode et alDownload PDFPatent Trial and Appeal BoardJun 27, 201310945074 (P.T.A.B. Jun. 27, 2013) Copy Citation 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. 10/945,074 09/20/2004 John E. Rode 0545.036A 5727 7590 06/28/2013 John Pietrangelo Heslin Rothenberg Farley & Mesiti P.C. 5 Columbia Circle Albany, NY 12203 EXAMINER MACARTHUR, VICTOR L ART UNIT PAPER NUMBER 3679 MAIL DATE DELIVERY MODE 06/28/2013 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 JOHN E. RODE and SEAN E. STRAIT ____________ Appeal 2011-001925 Application 10/945,074 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and JOHN C. KERINS, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-001925 Application 10/945,074 2 STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1 to 3, 5, 6, 10 to 12, 14, 17, 18, 20, and 23 to 29. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. BACKGROUND Appellants’ invention is directed to a ring having a resilient inside diameter that can engage a shaft. Claim 1 is illustrative: 1. A metallic ring for mounting a structure to a shaft, the ring comprising: a cross-section comprising a closed, hollow construction, the cross-section having an outer surface and a wall thickness, at least a portion of the outer surface adapted to engage the structure; an inner diameter sized to contact the shaft when the ring is coaxially mounted on the shaft; and means for allowing the inner diameter of the metallic ring to deform and avoid movement of the shaft relative to the ring when the ring is slidably and coaxially mounted on the shaft; wherein the means comprises the wall thickness of the cross section of the ring sized to deform when the ring is coaxially mounted on the shaft. Appeal 2011-001925 Application 10/945,074 3 Appellants appeal the following rejections: Claims 1, 2, 4 to 6, 17, 18, 23, 25, and 27 to 29 under 35 U.S.C. § 112, second paragraph, as being indefinite. Claims 1, 2, 6, 10 to 12, 14, 17, 18, 20, and 23 to 26 under 35 U.S.C. § 102(b) as anticipated by Meyerhoefer (US 2,457,908; iss. Jan. 4, 1949). Claims 1, 2, 6, 10 to 12, 14, 17, 18, 20, and 23 to 26 under 35 U.S.C. § 102(b) as anticipated by Horner (US 3,007,600; iss. Nov. 7, 1961). Claims 3, 5, and 27 to 29 under 35 U.S.C. § 103(a) as unpatentable over Meyerhoefer. Claims 3, 5, and 27 to 29 under 35 U.S.C. § 103(a) as unpatentable over Horner. ISSUES Did the Examiner err in rejecting claim 1 under 35 U.S.C. § 112, second paragraph, because it is unclear how the final product “ring” can have means for allowing the metallic ring to avoid movement of the shaft relative to the ring when the ring is slidably and coaxially mounted on the shaft? Did the Examiner err in rejecting claim 1 under 35 U.S.C. § 102(b) because Meyerhoefer does not disclose a deformable metallic ring having an inner diameter sized to contact a shaft when the ring is coaxially mounted on the shaft? Did the Examiner err in rejecting claim 1 under 35 U.S.C. § 102(b) because Horner does not disclose a deformable ring having an inner diameter sized to contact a shaft when the ring is coaxially mounted on the shaft and a means for avoiding movement of the shaft relative to the ring? Appeal 2011-001925 Application 10/945,074 4 Did the Examiner err in rejecting claims 3, 5 and 27 to 29 under 35 U.S.C. § 103(a) in view of Meyerhoefer or Horner because the Examiner has not established a reason supported by factual underpinnings to modify the ring disclosed in Meyerhoefer or Horner? PRINCIPLES OF LAW Apparatus claims must distinguish over prior art apparatus by the structure defined by the claims, and not by a process or function performed by the apparatus. A prior art apparatus having the same or obvious structure as a claimed apparatus renders a claimed apparatus unpatentable under Section 102 as long as it is capable of performing the claimed process or function. In re Yanush, 477 F.2d 958, 959 (CCPA 1973); Ex Parte Masham, 2 USPQ2d 1647, 1648 (BPAI 1987). ANALYSIS Indefiniteness The Examiner is of the opinion that it is unclear how the ring recited in claim 1 can avoid movement when slidably and coaxially mounted on the shaft because sliding is a form of movement. In particular, the Examiner states that it is unclear how a means is effective in avoiding movement if the means allows for the ability to slide. We will not sustain this rejection because we agree with the Appellants that it is clear when the claim is read in light of the Specification that claim 1 recites that the slidable and coaxial movement precedes the movement avoidance (paras. [0037] to [0040]). Appeal 2011-001925 Application 10/945,074 5 Anticipation by Meyerhoefer We are not persuaded of error on the part of the Examiner by Appellants' argument that Meyerhoefer does not disclose a ring having an inner diameter sized to contact a shaft when the ring is coaxially mounted on the shaft. We agree with the Examiner that the shaft is not positively recited in the claims and therefore cannot be relied on for patentability. In addition, we find that the ring disclosed in Meyerhoefer is capable of contacting a shaft and this capability is all that is needed to establish anticipation. We are not persuaded of error on the part of the Examiner by Appellants’ argument that Meyerhoefer does not disclose a metallic ring. We agree with the Examiner and find that as Meyerhoefer discloses that the ring is comprised of a resilient material having a polished metal surface (col. 2, ll. 49 to 55). We also agree with the Examiner that the Appellants have not shown that the Meyerhoefer ring is not deformable and that softer metals such as aluminum alloys are deformable. We also note that Meyerhoefer discloses that the ring is formed of resilient material and that only the surface of the ring is comprised of a polished metal. In view of the foregoing, we will sustain the Examiner’s rejection of claim 1. We will also sustain the Examiner’s rejection of claims 2, 6, 10 to 12, 14, and 23, 24, and 26 because these claims stand or fall with claim 1 (Br. 29). We will not sustain this rejection as it is directed to claim 17 and claims 18, 20, and 25 dependent thereon because we agree with the Appellants that Meyerhoefer does not disclose a shaft as required by claim 17. Appeal 2011-001925 Application 10/945,074 6 Anticipation by Horner We are not persuaded of error on the part of the Examiner by Appellants’ argument that Horner does not disclose a ring sized to contact a shaft. We agree with the Examiner that, like the ring disclosed in Meyerhoefer, the Horner ring need only have the capability to contact a shaft to meet this element of the claim. This the ring disclosed in Horner clearly has. We are persuaded of error on the part of the Examiner by Appellants’ argument that the ring disclosed in Horner does not disclose a means for allowing the inner diameter of the metallic ring to deform and avoid movement of the shaft relative to the ring. The Examiner argues that the wall thickness of the Horner ring is the means for allowing the inner diameter to deform to avoid movement of the shaft relative to the metal ring. While the Examiner may be correct that the inner diameter of the metallic ring may deform, the Examiner has not explained how the inner diameter of the Horner ring also avoids movement of a shaft relative to the ring. Therefore, we will not sustain this rejection. Obviousness We will not sustain the Examiner’s rejection under 35 U.S.C. § 103(a) because we agree with the Appellants that the Examiner has not established a reason supported by factual underpinnings to modify the ring disclosed in Meyerhoefer or Horner so as to be shaped as claimed or to substantially prevent rotation of the shaft relative to the ring under load of at least 100 foot pounds of torque. This is so because we find that the Meyerhoefer ring Appeal 2011-001925 Application 10/945,074 7 11 is disclosed as seating in circular bead 10 (Fig. 1) and the Horner ring 10 is disposed to seal planar surfaces (Fig. 2) and neither ring is disclosed as being subject to torque. DECISION We do not sustain the Examiner’s § 112, second paragraph, rejection. We sustain the Examiner’s § 102(b) rejection of claims 1, 2, 6, 10 to 12, and 14 based on Meyerhoefer. We do not sustain the Examiner’s § 102(b) rejection of claims 17, 18, 20, and 25 based on Meyerhoefer. We do not sustain the Examiner’s § 102(b) rejection based on Horner. We do not sustain the Examiner’s § 103(a) rejections based on Meyerhoefer or Horner. 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) (2011). AFFIRMED-IN-PART hh Copy with citationCopy as parenthetical citation