Ex Parte Toy

Board of Patent Appeals and Interferences

Apr 21, 2004

10180355 (B.P.A.I. Apr. 21, 2004)

The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte WILLIAM W. TOY
__________
Appeal No. 2004-0931
Application 10/180,355
___________
ON BRIEF
___________
Before COHEN, STAAB, and MCQUADE, Administrative Patent Judges.
MCQUADE, Administrative Patent Judge.
DECISION ON APPEAL
William W. Toy appeals from the final rejection of claims 1
through 3, all of the claims pending in the application.
THE INVENTION
The invention relates to “O-ring seals, and more
specifically to O-rings of elastomeric material that are provided
with a particular slot construction” (specification, page 1).
Representative claim 1 reads as follows:
1. A sealing ring comprising:
a) an annulus of elastic deformable material disposed in a
plane, the annulus having the shape of a circle in radial axial
section, the circle having a center; and
Appeal No. 2004-0931
Application No. 10/180,355
2
b) a single continuous, concentric slot, the slot extending
at right angles to the plane from a surface of the annulus,
through said center, and to a point beyond said center.
THE PRIOR ART
The items relied on by the examiner as evidence of
obviousness are:
Chambers, Jr. et al. 2,729,478 Jan. 03, 1956
(Chambers)
The prior art O-ring illustrated in Figure 3 and described in the
specification of the instant application (the admitted prior art)
THE REJECTION
Claims 1 through 3 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the admitted prior art in view of
Chambers.
Attention is directed to the brief (Paper No. 13) and answer
(Paper No. 14) for the respective positions of the appellant and
examiner regarding the merits of this rejection.
DISCUSSION
The admitted prior art encompasses a deformable O-ring of
elastomeric rubber or rubber-like material. This O-ring meets
all of the limitations in claims 1 through 3 except for those
relating to the slot. As indicated above, claim 1 requires “a
single continuous, concentric slot, the slot extending at right
angles to the plane from a surface of the annulus, through said
Appeal No. 2004-0931
Application No. 10/180,355
3
center, and to a point beyond said center.” Similarly, claim 2
requires “a single continuous, concentric slot, the slot
extending orthogonal to said plane from a surface of the ring
through said center to a point beyond the center of the circle,”
and claim 3 requires “a concentric slot in the ring extending
from a surface of the ring through said center to a point past
said center; the slot having sides that are substantially
perpendicular to said plane.” The admitted prior art O-ring has
no such slot. To cure this deficiency, the examiner turns to
Chambers.
Chambers discloses an O-ring 46 made of Teflon (i.e.,
polytetrafluoroethylene) which is said to be superior in several
respects to O-rings made of relatively soft and readily
deformable rubber or rubber-like material (see columns 1 and 2).
As Teflon is substantially non-deformable, Chambers provides the
O-ring 46 with a circumferential slot 12a extending
perpendicularly to and beyond the central radial plane of the
ring (i.e., past the center of the ring’s circular cross-section)
to allow the ring to be radially deformed (see column 3, lines 64
through 71). This characteristic facilitates the placement of
the ring in a groove and/or about a shaft and enables it to
Appeal No. 2004-0931
Application No. 10/180,355
4
function properly as a packing seal (see, for example, column 1,
line 46, through column 2, line 2).
In proposing to combine the admitted prior art and Chambers,
the examiner submits that it would have been obvious in view of
Chambers “to modify the [admitted prior art] o-ring of
[appellant’s] Figure 3, having a solid annulus, with a single
continuous, concentric slot extending at right angles
(orthogonal) to the plane from the surface of the annulus in
order to permit compression of the o-ring” (answer, page 5). The
flaw in this rationale, however, is that the admitted prior art
O-ring has no need for a slot to be compressed or deformed as it
already possesses this capability. By the same token, Chambers
discloses the slot only in conjunction with an O-ring which,
unlike the admitted prior art O-ring, is substantially non-
deformable and requires the slot to function as intended. The
only suggestion to combine these disparate teachings in the
manner proposed by the examiner stems from hindsight knowledge
derived from the appellant’s disclosure. The use of such
hindsight knowledge to support an obvious rejection is, of
course, impermissible.
Appeal No. 2004-0931
Application No. 10/180,355
5
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 103(a) rejection of claims 1 through 3 as being unpatentable
over the admitted prior art in view of Chambers.
SUMMARY
The decision of the examiner to reject claims 1 through 3 is
reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
) BOARD OF PATENT
)
) APPEALS AND
LAWRENCE J. STAAB )
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
)
JOHN P. MCQUADE )
Administrative Patent Judge )
JPM/kis
Appeal No. 2004-0931
Application No. 10/180,355
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ALVIN S. BLUM
2350 DELMAR PLACE
FORT LAUDERDALE, FL 33301