Ex Parte Tarlton

Board of Patent Appeals and Interferences

Mar 14, 2008

09369134 (B.P.A.I. Mar. 14, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ORAN D. TARLTON
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Appeal 2008-0340
Application 09/369,134
Technology Center 3600
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Decided: March 14, 2 008
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Before: MURRIEL E. CRAWFORD, HUBERT C. LORIN and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 (2002) from the final
rejection of claims 3, 4, 6, 10, 11, 13, 21 and 25 under 35 U.S.C. § 103(a)
(2002) as being unpatentable over Fyffe (U.S. Patent 1,426,724) in view of
Ogino (U.S. Patent 5,651,494); and the final rejection of claims 5, 7, 12, 14,

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Application 09/369,134

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22-24 and 26 under section 103(a) as being unpatentable over Fyffe in view
of Ogino and Poe (U.S. Patent 4,563,025). Independent claim 4 is
representative of the Appellant’s claims and reads as follows:

4. A composite metal seal comprising a core of
relatively hard metal, and at least one annular
region of relatively soft metal that is integrally
bonded with the core of relatively hard metal and
that provides an annular sealing surface for
effecting a fluid pressure seal, wherein the annual
[sic, annular] region of relatively soft metal is
welded onto the core of relatively hard metal.

We have jurisdiction under 35 U.S.C. § 6(b) (2002).
We reverse.
The primary issue in this appeal is whether the combined teachings of
Fyffe and Ogino would have suggested a composite metal seal ring having
one or more annular regions of relatively soft metal welded onto an annular
core of relatively hard metal. Fyffe teaches collars for joining metal pipes.
(Fyffe, ll. 9-10). Referring to Fig. 1 of the reference, each of the collars a
and b has a threaded end which fits over an end of one of the pipes g and j as
well as a flared end axially opposite the threaded end. An internal core c of
hard metal fits into a cavity formed by the flared ends of the collars a and b.
(Fyffe, ll. 35-38 and Fig. 1). A seating d of soft metal mates with the
external surface of the core c and is gripped by the interior surface of the
flared end of the collar a. Another seating d of soft metal mates with the
external surface of the core c and is gripped by the interior surface of the
flared end of the collar b. (Id.; Fyffe, ll. 53-62).
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The core c appears to be ring-shaped in the sense that it is spherical
with a cylindrical interior passageway for allowing fluid to pass between the
pipes g and j. The two seatings d appear in Fig. 1 to be annular in shape.
“The core is preferably provided with a central rib or stop h” which appears
to space the two seatings with respect to a longitudinal axis of the core.
(Fyffe, ll. 46-47).
Ogino teaches an apparatus for ultrasonically welding a hard metal
piece to soft metal pieces. A first soft metal piece lies on a workbench. The
hard metal piece lies over the soft metal piece. A layer of metal having high
plastic fluidity covers the hard metal piece. A second soft metal piece lies
atop the hard metal piece. An ultrasonic vibrator presses a horn tip against
the second soft metal piece atop the hard metal piece. (Ogino, col. 2, ll. 26-
46). The ultrasonic vibrator vibrates the horn tip laterally. As the horn tip
vibrates, the stack of metal pieces is gripped between the horn tip and the
workbench. (Ogino, col. 2, ll. 54-60). The lateral vibration of the horn tip
causes the soft metal pieces to bond with the layer of metal covering the
hard metal piece. (Ogino, col. 2, l. 66 – col. 3, l. 2).
The Examiner finds that:

Fyffe fails to disclose that the hard and soft metals
are integrally bonded together. Ogino discloses
integrally bonding of hard metal to soft metal by
welding. It would have been obvious to one
having ordinary skill in the art at the time the
invention was made to have the hard metal and
soft metal of Fyffe to be welding as taught by
Ogino to provide a bond between metals and also
to prevent loss of the soft metal from the hard
metal (column 1, lines 41-43).

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(Ans. 5). With respect to claims 3, 4, 6, 10, 11, 13, 21 and 25, the Appellant
contends that:

In the present application, there is nothing in the
prior art of record to suggest the desirability of
welding the soft metal to the hard metal in the seal
of Fyffe. Fyffe appears to be entirely satisfactory
for its intended purpose of making a metal-to-
metal fluid pressure seal between two hubs.
Moreover, there is nothing in Ogino suggesting
that his ultrasonic welding should be used for
fabricating a pressure seal. Furthermore, it appears
that Ogino’s apparatus of FIG. 2 would need to be
modified somehow for welding of the hard and
soft metal in the seal of Fyffe, due to the fact that
Ogino’s ultrasonic welding method drives the hard
metal into the soft metal, as shown in FIG. 3A and
described in column 2 line 66 to column 3 line 4.

(Br. 11). The Examiner responds that “[t]he argument that Ogino fails in
‘suggesting that his ultrasonic welding should be used for fabricating a
pressure seal’ is not persuasive since Ogino is used to teach only that two
metals can be welded together to provide a bond between the two metals.”
(Ans. 8).
We agree with the Appellant that the Examiner has not articulated a
sufficient reason why one of ordinary skill in the art would have modified
Fyffe’s structure in view of the teachings of Fyffe and Ogino. Each of
claims 3, 4 and 6 recites that the annular region of soft metal is welded onto
the core of relatively hard metal. Each of claims 10, 11, 13, 21 and 25
recites that each of the first and second annular regions of soft metal is
welded onto the annular core of relatively hard metal. For the following
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reasons, one of ordinary skill in the art would not have looked to Ogino’s
ultrasonic welding process to integrally bond parts of a fluid pressure sealing
ring.
There appear to be several problems with using Ogino’s ultrasonic
welding process to weld hard and soft metals in a fluid pressure sealing
ring. One problem is that Ogino’s process is designed for welding hard and
soft metals having geometries significantly different from the cores of
relatively hard metal and the annular regions of relatively soft metal recited
in the claims. Another problem is that close dimensional tolerances appear
to be required to fabricate metal-to-metal contact seals capable of
withstanding high fluid pressures. As the Appellant points out, one of
ordinary skill in the art could not have predicted that Ogino’s welding
process would produce a usable seal because the process may suffer
dimension control problems due to the process driving the core of relatively
hard metal into the region of relatively soft metal. (See Ogino, col. 2, l. 66 –
col. 3, l. 9).
Therefore, we conclude that one of ordinary skill in the art would not
have been led to modify Fyffe’s structure to include an annular region of soft
metal welded onto a core of relatively hard metal as recited in claims 3, 4
and 6 or first and second annular regions of soft metal is welded onto the
core of relatively hard metal as recited in claims 10, 11, 13, 21 and 25 given
Ogino’s welding process. On the record before us, the Appellant has shown
that the Examiner erred in rejecting claims 3, 4, 6, 10, 11 and 13.
With respect to claims 5, 7, 12, 14, 22-24 and 26, the Examiner finds
that Poe teaches grooves in the surface of a sealing ring “to maintain the
integrity of all radial compression to the ring and also to enable the ring to
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remain within elastic limit of the seal ring material.” (Ans. 6). The
Examiner additionally finds that Poe teaches “distribution of stress in a
sealed joint by the use of grooves and lands” on the surface of the seal.
(Ans. 9). Neither of these teachings overcomes our finding that one of
ordinary skill in the art would not have been led to modify Fyffe’s structure
given Ogino’s welding process to arrive at the claimed composite metal seal.
On the record before us, the Appellant has shown that the Examiner erred in
rejecting claims 5, 7, 12, 14, 22-24 and 26.

CONCLUSION OF LAW
On the record before us, the Appellant has shown that the combined
teachings of Fyffe and Ogino would not have provided one of ordinary skill
in the art with reason to modify Fyffe’s structure to include one or more
annular regions of soft metal welded onto a core of relatively hard metal.
Therefore, the Appellant has shown that the Examiner erred in rejecting
claims 3, 4, 6, 10, 11, 13, 21 and 25 under section 103(a) as having been
obvious from Fyffe in view of Ogino. The Appellant also has shown that the
Examiner erred in rejecting claims 5, 7, 12, 14, 22-24 and 26 under section
103(a) as having been obvious from Fyffe in view of Ogino and Poe.

DECISION
We reverse the Examiner’s rejection of claims 3-7, 10-14 and 21-26.

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REVERSED

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Application 09/369,134

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JRG

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