Ex Parte Verwoerd

Board of Patent Appeals and Interferences

Apr 24, 2012

10550133 (B.P.A.I. Apr. 24, 2012)

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.
10/550,133 10/26/2005 Gerrit H. Verwoerd VERWOERD 1 PCT 1283
25889 7590 04/24/2012
COLLARD & ROE, P.C.
1077 NORTHERN BOULEVARD
ROSLYN, NY 11576
EXAMINER
LEE, GILBERT Y
ART UNIT PAPER NUMBER
3674
MAIL DATE DELIVERY MODE
04/24/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte GERRIT H. VERWOERD
__________

Appeal 2010-007489
Application 10/550,133
Technology Center 3600
___________

Before JAMESON LEE, SALLY C. MEDLEY, and DANIEL S. SONG,
Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL
The real party in interest is Mokveld Valves, B.V. Appellant
(“Verwoerd”) appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 8-13. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
The Applied Prior Art
Reid Pat. 2,859,061 Nov. 4, 1958
Bosch French Pat. 1,391,410 April 4, 1964
Benware Pat. 3,642,248 Feb. 15, 1972
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Application 10/550,133

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Bosch is a French patent. The Examiner has provided a machine-
generated English translation of the reference, one page in length. We refer
to the prior art reference itself as Bosch and the English translation thereof
as “Bosch (translation).”
The Rejections on Appeal
1. Claims 8-13 were finally rejected under 35 U.S.C. § 112, first
paragraph, as lacking written description in the specification.
2. Claims 8-13 were finally rejected under 35 U.S.C. § 103 as
obvious over Bosch, Reid, and Benware.
The Invention
The invention is directed to an annular gap seal for a valve which
includes a cylinder through which fluid flows and in which a piston can be
axially displaced. (Abstract). When the valve is in the blocked position, an
annular gap between the piston and the cylinder can be sealed by the annular
gap seal. Id. The seal lies in a peripheral groove of the cylinder. The
groove has a peripheral lug that projects from both sides toward a middle
plane of the groove. The lug also has an interior surface facing the groove,
radially projecting from a wall of the groove.
The only independent claim is claim 8, reproduced below:
8. A combination valve, piston, cylinder, and annular
gap seal, said annular gap seal blocking a flow of fluid from a
high-pressure side to a low-pressure side of the valve in a
blocked position, the valve having said cylinder which the fluid
may flow through and in which said piston is axially
displaceable, and an annular gap between the piston and the
cylinder being sealable in the blocked position using the
annular gap seal, which lies in a peripheral groove of the
cylinder, the groove having a peripheral lug that projects
toward a middle plane of the groove on both sides, said lug
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Application 10/550,133

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having an interior surface facing the groove that is
upwardly inclined from a wall of the groove toward the
middle plane of the groove, two sealing rings positioned
mirror-symmetrically next to one another in the groove being
provided, said sealing rings having a shoulder corresponding to
a shape of the inclined surface of the lug and contacting the lug
in an area where the lug is inclined, and a sealing surface of a
first sealing ring facing toward the low-pressure side being able
to be pressed fluid-tight against the groove wall by the fluid
from the high-pressure side in the blocked position,

wherein, in the blocked position, the sealing shoulder of the
first sealing ring facing toward the low-pressure side may be
pressed fluid-tight against the peripheral lug, which projects
into the groove toward the central plane of the groove, and a
sealing lip of the first sealing ring facing toward the low-
pressure side may be pressed fluid-tight against the piston by
the fluid from the high-pressure side. (Emphasis added.)

Figures 4a, 4b, and 4c of Verwoerd’s specification are reproduced
below, each showing an annular gap seal including inner sealing ring 24 and
outer sealing ring 25, disposed in a peripheral groove of a cylinder:
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Figure 4a shows a position in which a piston moveable within the
cylinder is not in the vicinity of the annular gap seal and the valve is open
with the sealing surfaces 27 of the annular gap seal projecting slightly out of
the groove. (Spec. 11:1-5). Figure 4b shows a position in which piston 12
has moved to where it contacts the sealing surfaces 27 of the gap seal, and
in which the valve is closed and the pressure is higher upstream than
downstream with respect to the intended fluid flow direction 4.
(Spec. 11:10-18). Figure 4c shows a similar position as in Figure 4b, except
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Application 10/550,133

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that there is undesirable backflow with the pressure higher in the intended
outflow direction than the intended inflow direction. (Spec. 12:17-21).
DISCUSSION
A. The Written Description Rejection of Claims 8-13

Independent claim 8 recites an annular gap seal which lies in a
peripheral groove of a cylinder, and specifies that the groove has “a
peripheral plug that projects toward a middle plane of the groove on both
sides, said lug having an interior surface facing the groove that is upwardly
inclined from a wall of the groove toward the middle plane of the
groove.” The Examiner takes issue with the bolded portion of the above-
quoted recitation. According to the Examiner, the “upwardly inclined”
orientation of the lug has not been disclosed in the specification or claims as
originally filed. With regard to Figures 4a-4c, the Examiner states:
“Although Figures 4a-4c might show the four elements having
corresponding shaped, it is unclear whether the shape is due to
installation/stress or if the shapes are actually preformed.” (Ans. 3:14-16).
To satisfy the written description requirement under 35 U.S.C. § 112,
first paragraph, the specification must convey with reasonable clarity to
those skilled in the art that as of the filing date of the application the inventor
was in possession of the claimed invention. Vas-Cath Inc. v. Mahurkar, 935
F.2d 1555, 1563-64 (Fed.Cir. 1991). The question is whether the application
reasonably would have conveyed to one with ordinary skill in the art that
“the inventor possessed the invention at the time of that original disclosure.”
Pandrol USA, LP v. Airboss Ry. Products, Inc., 424 F.3d 1161, 1165 (Fed.
Cir. 2005). The law, however, does not require the description to be in ipsis
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verbis antecedence in the originally filed application. In re Lukach, 442
F.2d 967, 969 (CCPA 1971).
The specification does not have to explicitly state that the lug
extending from the sidewall is inclined or upwardly inclined if the drawings
clearly show it as such. The drawings are a part of Verwoerd’s original
disclosure. While patent drawings do not define the precise proportions of
the elements and may not be relied on to show particular sizes if the
specification is completely silent on the issue, Hockerson-Halberstadt, Inc.
v. Avia Group International, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000), they
can show relative position and direction. Drawings are evaluated “on the
basis of what they reasonably disclose and suggest to one skilled in the art.”
In re Aslanian, 590 F.2d 911, 914 (CCPA 1979).
Figure 4b is again reproduced below:

In the specification, page 10, lines 6-7, it is stated that a peripheral lug
32 projects axially into the groove 21. Although both reference numerals 32
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and 21 are missing from Figure 4b, it is manifestly evident that at least one
annular structural component, i.e., a lug, extends radially into or in the
direction of the groove containing sealing rings 24 and 25, from the
sidewalls of the groove, and at an angle towards the groove’s opening
adjacent piston 12. That disclosure cannot be reasonably disputed. The
Examiner’s statement that it is unclear whether the lug is actual or an
unintended product of installation stress is unreasonable, especially in light
of explicit description via the drawings in the specification of a radially
extending lug. No reasonable basis has been articulated by the Examiner for
regarding the illustrated inclination as unintended, from the perspective of
one with ordinary skill in the art.
The Examiner further indicates that because the groove is annular, the
“upward” direction as seen from the bottom as shown in Figure 4b becomes
“downward” direction as seen from the top. (Ans. 6:13-18). The Examiner
proposed that Verwoerd change the claimed recitation to “radially
outwardly” rather than “upwardly inclined.” Verwoerd, however, has
provided a complete and persuasive response. Verwoerd explains that in the
context of its specification, it has regarded the base of the groove as bottom
and the opening of the groove leading into the gap between the cylinder and
the piston as top no matter from which direction the groove is viewed. The
explanation has merit. For instance, the specification states (Spec. 10:5-10):
The C-profile 28 forms a sealing shoulder 31 below the sealing
lip 27, which is tailored to the shape of a peripheral lug 32,
which projects axially into the groove 21 and may be pressed
fluid-tight thereon. The C-profile 28 ends in a lower sealing
edge 33, which may be pressed against the groove base 34 of
the groove 21.

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Although the above-quoted text does not refer to the lug, it indicates
that the inventors regard the base of the groove as lower than the opening of
the groove and that that is so regardless of the direction of observation. The
same text also indicates that the sealing shoulder 31 is regarded as lower
than the sealing lip 27, regardless of the direction of observation. From that
perspective of what constitutes up versus down, Figures 4a-4c do each
illustrate a radially projecting lug from the sidewall of the groove, which is
“upwardly inclined from a wall of the groove toward the middle plane of the
groove.” Claim terms must be construed in light of the specification. We
conclude that in light of Appellant’s specification, upwardly inclined from a
wall of the groove means extending toward the groove opening through
which each sealing ring may extend. In any event, we note that the
Examiner does not appear to have construed the meaning of “upwardly
inclined.”
For the foregoing reasons, the rejection of claims 8-13 under
35 U.S.C. § 112, first paragraph, as lacking written description in the
specification as filed cannot be sustained.
B. The Obviousness Rejection of
Claims 8-13 over Bosch, Reid, and Benware

Bosch has been applied by the Examiner as meeting all the
requirements of independent claim 8 except two: (1) while the claimed
peripheral groove has to be formed in the cylinder, Bosch’s peripheral
groove is formed in the piston moving within the cylinder; and (2) that
Bosch’s groove does not have a peripheral lug that projects toward the
middle plane of the groove on both sides and that has an interior surface
upwardly inclined from a wall of the groove, as Verwoerd has claimed.
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Figure 4 of Bosch is reproduced below, which shows a sealing ring in
the form of two C sections placed in a peripheral groove of a piston:

With respect to the first difference about forming the groove in the
cylinder rather than the piston, the Examiner cited Reid as disclosing a
sealing ring between a cylinder and a moveable piston. The Examiner
identified Figure 17 of Reid as an embodiment in which the sealing ring is
placed in a peripheral groove in the moveable piston and Figure 22 as an
embodiment in which the sealing ring is placed in a peripheral groove
formed in the surrounding cylinder. (Ans. 4:17-18). That determination is
supported by Reid’s disclosure. (Reid 4:74 to 5:2; 7:25-29).
Verwoerd argues that the grooves in Reid are not peripheral grooves
as claimed but are completely embedded within components of Reid’s
device without any peripheral opening through which the sealing ring
contained therein can extend to contact another part. (Brief 9:12-19). The
argument is without merit. Figure 17 shows sealing ring 1 in groove 8
within piston 7, which protrudes from an opening in the groove to abut a
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surface of cylinder 10 in which the piston 7 is operable, to form a sealing
contact therewith. (Reid 4:74 to 5:8). Figure 22 shows sealing ring 47
placed in the groove of a stationary member to act as a seal against the
surface of a bordering moveable member 57. (Reid 7:25-29).
In any event, we note that the Bosch reference itself describes that
sealing rings exist which provide a seal between two bodies that move
coaxially one in another, and that “most of the time” the sealing ring is
placed in an annular groove of one of the bodies on its periphery and also on
the sliding track of the other body. (Bosch (translation) 1:1-6). In light of
that teaching, one with ordinary skill in the art would have known that the
seal can be placed in a peripheral groove of either the cylinder or the piston,
to provide a seal between the two components.
With regard to the difference about the claimed groove’s having a
peripheral lug projecting into the groove and having an interior surface
facing the groove which is upwardly inclined from a wall of the groove, the
Examiner cited to Benware, Figure 3 of which is reproduced below:

Figure 3 shows a sealing ring 109 disposed within a peripheral
groove 102 which has flanges 106 and 108 extending from the groove’s
sidewalls 104 and 105 to retain the sealing ring 109 within the groove 102.
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(Benware 4:16-27). The sealing ring 109 has a pair of shoulders 110 and
111 which conform to the shape of and are abuttable against flanges 106 and
108. (Benware 4:37-38). Flanges 106 and 108 form a peripheral lug in the
groove 102 and extend from a side wall 104/105 of the groove.
The Examiner states that in light of Benware’s disclosure of a
peripheral lug which retains the sealing ring in the groove, it would have
been obvious to one with ordinary skill to include such a lug in the structure
of Bosch “to lock the seal in the groove.” (Ans. 5:5-7). The Examiner cited
to the Abstract of Benware, which indicates that the lug 106/108 is provided
for the purpose of locking the sealing ring within the groove.
To support a conclusion of obviousness, there must be some
articulated reasoning with rational underpinning to support the legal
conclusion of obviousness. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
In this case, the Examiner’s articulation reflects an oversimplification of the
issue. Plainly, the C-shaped sealing rings of Bosch are very different from
the ring 109 of Benware. Bosch’s C-shaped rings are tucked deep within the
groove and turns respective bottom corners within the groove in an area
under what appears to be a stabilizer component that presses each ring
against the sidewall of the groove, as shown in Figure 4 reproduced below:

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Bosch states that the sealing ring is held in place by the inherent
elasticity of its extensions. (Bosch (translation) 1:19-20).
In contrast, the sealing ring 109 in Benware sits on top of an inner
O-ring 118 and does not extend down and turn the respective bottom corners
of the groove 102. And it has to be held within the groove by flanges 106
and 108, as is shown in Figure 2 reproduced below:

Because the basic structures are different, it is not apparent why
flanges 106 and 108 of Benware would serve a useful purpose in the groove
of Bosch. In that regard, the Examiner has not articulated any rational
reasoning to support the position that one with ordinary skill in the art would
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have recognized from Bosch that Bosch’s ring has an issue staying within
the groove and that the issue can be addressed by incorporating Benware’s
peripheral flanges 106/108 in Bosch’s groove, especially considering
Bosch’s specific disclosure that its sealing ring is, in fact, held by the
elasticity of its extensions. The Examiner’s conclusion is not supported by
rational reasoning, that in light of the flanges 106 and 108 in Benware, it
would have been obvious to one with ordinary skill in the art to include the
same flanges in Bosch’s groove.
Even if Benware’s flanges 106/108 are incorporated into Bosch’s
groove, the resulting structure does not satisfy Verwoerd’s claim
requirement that the groove’s peripheral lug, i.e., flanges 106 and 108, is
upwardly inclined from a wall of the groove toward the middle plane of the
groove. We have already determined above, as a matter of claim
interpretation, that “upwardly inclined” means inclined toward the groove’s
opening through which the seal extends. Benware’s flanges 106 and 108 are
not upwardly inclined but are horizontally disposed. The Examiner
accounted for that difference, however, by stating that “[a] change in form or
shape is generally recognized as being within the level of ordinary skill in
the art, absent any showing of unexpected results.” (Ans. 5:9-11). The
Examiner’s statement is unreasonably broad. It is not the case that the
Examiner has already presented evidence of numerous flanges having a
variety of shapes that extend from the side wall of a groove. The record
simply does not support the Examiner’s broad statement. It essentially
improperly shifts the burden of proof to Verwoerd as the applicant to prove
entitlement to a patent.
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The Examiner bears the initial burden of presenting a prima facie case
of unpatentability. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). For
reasons discussed above, we conclude that the initial burden has not been
met to support an obviousness rejection of independent claim 8. Claims 9-
12 each depend from claim 8, and claim 13 depends on claim 11.
Accordingly, the obviousness rejection of claims 8-13 cannot be sustained.
Conclusion
The rejection of claims 8-13 under 35 U.S.C. § 112, first paragraph, as
lacking written description in the specification is reversed.
The rejection of claims 8-13 under 35 U.S.C. § 103 as obvious over
Bosch, Reid, and Benware is reversed.
REVERSED

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