Ex Parte VerwoerdDownload PDFBoard of Patent Appeals and InterferencesApr 24, 201210550133 (B.P.A.I. Apr. 24, 2012) 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. 10/550,133 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 Appeal No. 2010-007489 Application 10/550,133 2 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 Appeal No. 2010-007489 Application 10/550,133 3 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: Appeal No. 2010-007489 Application 10/550,133 4 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 Appeal No. 2010-007489 Application 10/550,133 5 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 Appeal No. 2010-007489 Application 10/550,133 6 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 Appeal No. 2010-007489 Application 10/550,133 7 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. Appeal No. 2010-007489 Application 10/550,133 8 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. Appeal No. 2010-007489 Application 10/550,133 9 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 Appeal No. 2010-007489 Application 10/550,133 10 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. Appeal No. 2010-007489 Application 10/550,133 11 (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: Appeal No. 2010-007489 Application 10/550,133 12 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 Appeal No. 2010-007489 Application 10/550,133 13 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. Appeal No. 2010-007489 Application 10/550,133 14 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 ak Copy with citationCopy as parenthetical citation