Ex Parte Smathers et al

Patent Trial and Appeal Board

Oct 31, 2013

12380154 (P.T.A.B. Oct. 31, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/380,154 02/24/2009 David B. Smathers 020324 257P2 CON 3177
33805 7590 10/31/2013
WEGMAN, HESSLER & VANDERBURG
6055 ROCKSIDE WOODS BOULEVARD
SUITE 200
CLEVELAND, OH 44131
EXAMINER
BEACH, THOMAS A
ART UNIT PAPER NUMBER
3674
MAIL DATE DELIVERY MODE
10/31/2013 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 DAVID B. SMATHERS and ROBERT S. BAILEY
____________________

Appeal 2011-007341
Application 12/380,154
Technology Center 3600
____________________

Before EDWARD A. BROWN, PATRICK R. SCANLON, and
JILL D. HILL, Administrative Patent Judges.

SCANLON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-007341
Application 12/380,154

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 1-14, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b). Appellants’ representative presented
oral argument on October 22, 2013.
We AFFIRM.
THE INVENTION
Appellants’ invention relates to vacuum seals that include an O-ring
received in a groove. Spec., paras. [0009], [0010]. Claims 1 and 9 are the
independent claims on appeal. Claim 1 reproduced below, is illustrative of
the claimed subject matter.
1. An improved vacuum seal comprising:
an O-ring having a circular cross-section
with a diameter D;
a first mating part having a first sealing
surface with a groove formed therein configured to
receive the O-ring, wherein said groove has a
radially outer side wall, a radially inner side wall
and a bottom wall that extends between said outer
and inner side walls with said bottom wall being
disposed parallel to said first sealing surface, a
groove mouth having a width W in the first sealing
surface between said outer and inner side walls;
and
a second mating part having a second
sealing surface, wherein said second sealing
surface mates with said first sealing surface;
wherein said groove has a modified dovetail
shape with at least one side wall having a
compound slope formed with a first portion
forming an angle of less than 90 degrees with
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respect to the bottom wall, said first portion
connected to said bottom wall to form a junction
therebetween, and a second portion between said
first portion and said first sealing surface, said
second portion extending substantially
perpendicular to said first sealing surface wherein
the cross-sectional area of the O-ring is greater
than the cross-sectional area of said groove.
REFERENCES
The Examiner relies upon the following prior art references:
Bryant
Bertrem
Hosokawa
US 3,575,431
US 3,910,555
US 7,311,311 B2
Apr. 20, 1971
Oct. 7, 1975
Dec. 25, 2007
The Examiner also relies upon Appellants’ Admitted Prior Art
(“AAPA”). See Ans. 3 (citing Spec., paras. [0002]-[0007], figs. 2, 3).
REJECTIONS
The following rejections are before us on appeal:
I. Claims 1-6 and 8-12 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over AAPA, Bryant, and Bertrem. Ans. 3.
II. Claims 7, 13, and 14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over AAPA, Bryant, Bertrem, and Hosokawa. Ans. 4.
ANALYSIS
Rejection I
The Examiner finds that AAPA discloses a single or double dovetail-
shaped groove for receiving an O-ring in which one or both sidewalls form
an angle of less than 90 degrees with respect to the bottom wall but does not
disclose a sidewall having the claimed compound slope. Ans. 3; see Spec.,
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figs 2, 3. The Examiner finds that Bryant discloses a groove for holding an
O-ring that has at least one sidewall comprising a portion forming an angle
of less than 90 degrees with respect to the bottom wall and a portion
extending substantially perpendicular to a sealing surface, and concludes it
would have been obvious to one of ordinary skill in the art to modify the
shape of the sidewalls of the AAPA groove by providing compound
sidewalls as taught by Bryant. Id. at 3-4. Next, the Examiner finds that
Bertrem discloses a dovetail-shaped groove for holding an O-ring that has a
cross-sectional area that is greater than the cross-sectional area of the groove
and concludes it would have been obvious to one of ordinary skill in the art
to modify the combination of AAPA and Bryant to use an O-ring having a
greater cross-sectional area as taught by Bertrem so that the O-ring will
remain securely seated during use. Id. at 4.
Appellants argue that the proposed modification is improper because
it “would change the principle of operation of the prior art invention being
modified.” App. Br. 5 (emphasis added). Specifically, Appellants assert that
the entire thrust of Bryant “is to provide a groove configured to receive an o-
ring or sealing member so as to provide for the desired deflection of
deformation of the o-ring” (id.), and “one can see that it would change the
operation of Bryant to combine it with Bertrem” (id. at 6). Appellants
similarly argue that the proposed modification would render Bryant
inoperable for its intended purpose because Bryant teaches away from an O-
ring that nearly fills the cross-sectional area of the groove as taught by
Bertrem. Reply Br. 4.
We do not find these arguments persuasive. As the Examiner
correctly notes, Bryant is not the prior art invention being modified. Ans. 6
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(“Bryant is not the reference being modified”). Rather, as discussed supra,
the Examiner proposes to modify AAPA in view of the teaching of Bryant.
Because Bryant is not being modified, the proposed modification does not
change Bryant’s principle of operation or render it inoperable for its
intended purpose.
Appellants also argue that Bertrem, which discloses a groove 16
having a bottom 32 with a circular contour, teaches away from the claimed
invention because “the circular surface 32 is essential to the operation of
[Bertrem] and a skilled artisan, after reading Bertrem, would not be led in
the direction of providing a bottom wall, such as that now claimed that is
parallel to the sealing surface.” App. Br. 6; see also Reply Br. 3.
This argument is not persuasive because Bertrem is being relied on for
teaching use of an O-ring having a cross-sectional area greater than that of
its groove. See Ans. 4, 6. This teaching is not dependent on Bertrem’s
curved bottom wall. In other words, one of ordinary skill in the art would
recognize that the benefit of a greater O-ring cross-sectional area (i.e., more
secure retention of the O-ring (see Bertrem, col. 1, ll. 49-52)) would also
apply to grooves having a flat, non-curved bottom wall, such as shown by
AAPA, the prior art being modified. Furthermore, a reference does not
teach away “if it merely expresses a general preference for an alternative
invention but does not ‘criticize, discredit, or otherwise discourage’
investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). Here, Bertrem merely
discloses a preference for a curved bottom wall (Bertrem, col. 2, ll. 28-30);
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Appellants do not identify any disclosure in Bertrem that “criticizes,
discredits, or otherwise discourages” use of a non-curved bottom wall.
Appellants dispute the Examiner’s characterization of Bryant’s seal
ring 36 as an “O-ring,” noting that the generally triangular cross-sectional
shape of the seal ring 38 “is substantially different than an O-ring.” Reply
Br 2. Appellants are apparently taking the position that the term “O-ring”
refers to rings having only circular cross-sections, and excludes any rings
having non-circular cross-sections. However, we note that rather than
simply reciting “an O-ring” (as is done in independent claim 9), claim 1
recites an O-ring “having a circular cross-section.” This additional
descriptive language would seem to suggest that the claim term “O-ring” is
not intended to be limited to rings having circular cross-sections. Otherwise,
the language “having a circular cross-section” would appear to be
superfluous. Furthermore, one of Appellants’ statements seems to
acknowledge that Bryant’s seal ring 36 is an “O-ring.” App. Br. 5 (stating
the entire thrust of Bryant “is to provide a groove configured to receive an o-
ring or sealing member so as to provide for the desired deflection of
deformation of the o-ring”) (emphases added). Nevertheless, assuming
arguendo that Bryant’s seal ring 36 is not an “O-ring” as claimed and the
Examiner has thus mischaracterized the seal ring, we do not find this to be
persuasive that the Examiner’s rejection is in error because AAPA does
show an O-ring 12 that clearly has a circular cross-section (Spec., figs. 2, 3)
and the proposed modification does not alter the shape of the O-ring 12, but
only the shape of the groove.
We also disagree with Appellants’ argument that “the Examiner has
failed to give proper weight to the fact that Bryant teaches away from a
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combination with AAPA and Bertrem.” Reply Br. 2. Specifically,
Appellants do not argue in their Appeal Brief that Bryant teaches away from
the proposed combination. Instead, as noted supra, Appellants argue that
the proposed combination would change the principle of operation of
Bryant.1 Furthermore, the argument that Bryant teaches away from the
combination and the argument that the Examiner’s rejection “is based upon
hindsight reconstruction” (Reply Br. 4) are both raised for the first time in
Appellants’ Reply Brief. As such, these arguments are deemed waived. See
Ex parte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative) (“Any
bases for asserting error, whether factual or legal, that are not raised in the
principal brief are waived.”).
For these reasons, Appellants’ arguments do not apprise us of error,
and we sustain the rejection of claim 1. Appellants rely on the same
arguments made in connection with claim 1 in asserting the patentability of
claim 9 (App. Br. 6) and do not present any additional arguments in
connection with dependent claims 2-6, 8, and 10-12. As such, claims 2-6
and 8-12 fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Rejection II
Appellants do not address the rejection of claims 7, 13, and 14 under
35 U.S.C. § 103(a) as unpatentable over AAPA, Bryant, Bertrem, and
Hosokawa. Therefore, this ground of rejection is summarily sustained. See
Manual of Patent Examining Procedure (MPEP) § 1205.02 (8th ed., Rev. 9,
August 2012) (“If a ground of rejection stated by the examiner is not

1 The Examiner addresses this argument on pages 5-6 of the Examiner’s
Answer.
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addressed in appellant’s brief, that ground of rejection will be summarily
sustained by the Board.”).
DECISION
We affirm the decision of the Examiner rejecting claims 1-14.
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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