Ex Parte ZahnDownload PDFBoard of Patent Appeals and InterferencesJan 5, 201111178988 (B.P.A.I. Jan. 5, 2011) 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. 11/178,988 07/11/2005 Henry W. Zahn CLA785/05004 2562 24118 7590 01/05/2011 HEAD, JOHNSON & KACHIGIAN 228 W 17TH PLACE TULSA, OK 74119 EXAMINER PATEL, VISHAL A ART UNIT PAPER NUMBER 3676 MAIL DATE DELIVERY MODE 01/05/2011 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 HENRY W. ZAHN ____________________ Appeal 2009-008687 Application 11/178,988 Technology Center 3600 ____________________ Before WILLIAM F. PATE, III, JENNIFER D. BAHR, and FRED A. SILVERBERG, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge SILVERBERG, Opinion Concurring filed by Administrative Patent Judge BAHR SILVERBERG, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-008687 Application 11/178,988 2 STATEMENT OF THE CASE Henry W. Zahn (Appellant) seeks our review under 35 U.S.C. § 134 of the final rejection of claims 1-3 and 7. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. THE INVENTION Appellant’s claimed invention is directed to a seal for a set of reciprocating parts such as for a shock absorber (Spec. 2:4-6). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A dust excluder seal for sealing between an inner cylindrical tube and an outer cylindrical member wherein said outer cylinder member has a terminal edge, and wherein said dust excluder seal is adapted to operate in conjunction with an independent oil seal, which seal comprises: a sealing portion for sealing engagement with said inner cylindrical member and a body portion for securement to said outer cylindrical member wherein said sealing portion is spaced from said independent oil seal; said body portion including a radially extending annular web connecting to said sealing portion, wherein said annular web forms a shoulder to engage said terminal edge of said outer cylindrical member; said sealing portion comprising an oil side beam extending in a direction generally parallel to the path of reciprocation of the inner tube and outer member and terminating in a first dust excluder lip wherein said oil side beam has a coil spring bearing on said oil side beam biasing said first excluder lip to rotate a lip contact point toward an air side; and an air side beam extending in a direction opposite said oil side beam, said air side beam having a second dust Appeal 2009-008687 Application 11/178,988 3 excluder lip for engagement with said inner cylindrical tube spaced from said first dust excluder lip wherein a space is formed between said first lip and said second lip, and wherein said space is filled with grease prior to assembly. THE REJECTIONS The following rejections by the Examiner are before us for review: 1. Claims 1-3 and 7 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. 2. Claims 1-3 are rejected under 35 U.S.C. § 102(b) as being anticipated by Munekata (US 5,649,709, issued Jul. 22, 1997). 3. Claims 1-3 are rejected under 35 U.S.C. § 102(b) as being anticipated by Oldenburg (US 2002/0149154 A1, published Oct. 17, 2002). 4. Claims 1-3 are rejected under 35 U.S.C. § 102(b) as being anticipated by Messenger (US 5,004,248, issued Apr. 2, 1991). 5. Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Munekata. ISSUES2 The issues before us are: (1) whether the Examiner erred in concluding that claims 1-3 and 7 are indefinite for failing to particularly 2 All references to Appellant’s contentions (arguments) are to the Response filed August 20, 2008 (hereinafter “App. Br.”), in response to a communication dated May 23, 2008, indicating, inter alia, that the brief does not present an argument under a separate heading for each ground of rejection. Appeal 2009-008687 Application 11/178,988 4 point out and distinctly claim Appellant’s invention (App. Br. 2); (2) whether the Examiner erred in finding that both Munekata and Messenger describe a first dust excluder lip located on an oil side beam and a second dust excluder lip located on an air side beam, wherein the space formed between the lips is filled with grease, as called for in independent claim 1 (App. Br. 3, 5); and (3) whether the Examiner erred in finding that Oldenburg describes a first dust excluder lip located on an oil side beam and a second dust excluder lip located on an air side beam, as called for in independent claim 1 (App. Br. 5). ANALYSIS Rejection of claims 1-3 and 7 under 35 U.S.C. § 112 Appellant contends that claim 1 is definite (App. Br. 2). The Examiner found that claim 1 was indefinite since the claim calls for a dust excluder seal, but also refers to an oil seal (Ans. 3). The test for definiteness under 35 U.S.C. § 112, second paragraph, is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) We disagree with the Examiner, as we conclude that claim 1 is definite. We conclude that a person having ordinary skill in the art would understand what is claimed in claim 1 when the claim is read in light of the specification, that is, a person having ordinary skill in the art would understand that claim 1 calls for, inter alia, a dust excluder seal that is adapted to operate in conjunction with an independent oil seal, wherein the dust excluder seal includes a sealing portion that is spaced from the oil seal (Spec. 7: 16-19 and Figure 1). Appeal 2009-008687 Application 11/178,988 5 We reverse the rejection under 35 U.S.C. § 112, second paragraph. Rejection of claims 1-3 under 35 U.S.C. § 102(b) as being anticipated by either Munekata, Oldenburg, or Messenger Appellant does not present any separate arguments for the patentability of dependent claims 2 and 3 apart from independent claim 1. Thus, in accordance with 37 C.F.R. § 41.37(c)(1)(vii) (2009), dependent claims 2 and 3 stand or fall with representative claim 1. Munekata rejection Appellant contends that Munekata does not describe (1) “a pair of independently acting dust excluder lips, neither of which is under pressure from an oilfield chamber,” wherein each of the lips has its own independent beam (App. Br. 3-4); (2) two sealing lips (id. at 4); and (3) grease between the lip and the rib (id.). We agree with the Examiner’s findings regarding Munekata (Ans. 3, 4, 7-9) and adopt them as our own. In particular, the Examiner found and we agree that Appellant’s first contention set forth supra regarding the lips being “under pressure from an oilfield chamber” is based upon features not found in claim 1 (Ans. 8). It is well established that limitations not appearing in the claims cannot be relied upon for patentability. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Further, the Examiner has proffered an annotated Figure 1 of Munekata showing the two sealing lips on two different beams (Ans. 8). Appellant has not specifically pointed out why the Examiner’s annotated Figure 1 of Munekata was in error. We find that the Examiner has made a finding, whereupon the burden shifted to Appellant to demonstrate error in the Examiner’s position. See In re King, 801 F.2d 1324, 1327 (Fed. Cir. Appeal 2009-008687 Application 11/178,988 6 1986) (“[A]fter the PTO establishes a prima facie case of anticipation based on inherency, the burden shifts to appellant to ‘prove that the subject matter shown to be in the prior art does not possess the characteristic relied on.’”) We find that Appellant has not met the burden of demonstrating error in the Examiner’s position. We agree with Appellant that Munekata does not describe that there is grease in the space between the first lip (primary sealing lip) 42 and the second lip (dust sealing lip) 56. However, we agree with the Examiner, and Appellant has not disputed, that the seal of Munekata is capable of having grease in the space between the first lip (primary sealing lip) 42 and the second lip (dust sealing lip) 56. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product.”) We affirm the rejection of claim 1 and dependent claims 2, 3 and 7 over Munekata. Oldenburg rejection Appellant contends that Oldenburg does not describe “a pair of independently acting dust excluder lips, neither of which is under pressure from an oilfield chamber and each of which has its own independent beam” (App. Br. 5). We agree with the Examiner’s findings regarding Oldenburg (Ans. 4, 5, 9-11) and adopt them as our own. In particular, the Examiner found and we agree that Appellant’s contention set forth supra regarding the lips being Appeal 2009-008687 Application 11/178,988 7 “under pressure from an oilfield chamber” is based upon features not found in claim 1 (Ans. 10). As we stated supra, it is well established that limitations not appearing in the claims cannot be relied upon for patentability. Further, the Examiner has proffered an annotated Figure 1 of Oldenburg showing the two sealing lips (main sealing lip) 70, (forward sleeve dust lip) 76 on two different beams (Ans. 10). Appellant has not specifically pointed out why the Examiner’s annotated Figure 1 of Oldenburg was in error. As we found supra, the Examiner has made a finding, whereupon the burden shifted to Appellant to demonstrate error in the Examiner’s position. We find that Appellant has not met the burden of demonstrating error in the Examiner’s position. We affirm the rejection of claim 1 and dependent claims 2 and 3 over Oldenburg. Messenger rejection Appellant contends that Messenger does not describe (1) “a pair of independently acting dust excluder lips, neither of which is under pressure from an oilfield chamber and each of which has its own independent beam” (App. Br. 5), and (2) grease in the space between the lips (App. Br. 6). We agree with the Examiner’s findings regarding Messenger (Ans. 5, 6, 11, 12) and adopt them as our own. In particular, the Examiner found and we agree that Appellant’s first contention set forth supra regarding the lips being “under pressure from an oilfield chamber” is based upon features not found in claim 1 (Ans. 11-12). As we stated supra, it is well established that limitations not appearing in the claims cannot be relied upon for patentability. Appeal 2009-008687 Application 11/178,988 8 Further, the Examiner has proffered an annotated Figure 2 of Messenger showing the two sealing lips (seal lip) 46, (seal lip) 48 on two different beams (Ans. 11). Appellant has not specifically pointed out why the Examiner’s annotated Figure 2 of Messenger was in error. As we found supra, the Examiner has made a finding, whereupon the burden shifted to Appellant to demonstrate error in the Examiner’s position. We find that Appellant has not met the burden of demonstrating error in the Examiner’s position. We agree with Appellant that Messenger does not describe that there is grease in the space between the two sealing lips 46, 48. However, we agree with the Examiner, and Appellant has not disputed, that the seal of Messenger is capable of having grease in the space between the two sealing lips 46, 48. We affirm the rejection of claim 1 and dependent claims 2 and 3 over Messenger. Rejection of claim 7 under 35 U.S.C. § 103(a) as being unpatentable over Munekata In contesting the rejection of claim 7 under 35 U.S.C. § 103(a) as being unpatentable over Munekata, Appellant simply relies on the arguments made with respect to the rejection of claim 1 under 35 U.S.C. 102(b) as being anticipated by Munekata (App. Br. 6). For the same reasons set forth supra regarding the rejection of claim 1 over Munekata, we affirm the rejection of claim 7. Appeal 2009-008687 Application 11/178,988 9 CONCLUSIONS The Examiner has erred in concluding that claims 1-3 and 7 are indefinite for failing to particularly point out and distinctly claim Appellant’s invention. The Examiner has not erred in finding that both Munekata and Messenger describe a first dust excluder lip located on an oil side beam and a second dust excluder lip located on an air side beam, wherein the space formed between the lips is filled with grease, as called for in independent claim 1. The Examiner has not erred in finding that Oldenburg describes a first dust excluder lip located on an oil side beam and a second dust excluder lip located on an air side beam, as called for in independent claim 1. DECISION The decision of the Examiner to reject claims 1-3 and 7 over the prior art is affirmed. The decision of the Examiner to reject claims 1-3 and 7 under 35 U.S.C. 112 is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Appeal 2009-008687 Application 11/178,988 10 Bahr, Administrative Patent Judge, concurring. I agree with the decision of the majority to affirm the rejections of claims 1-3 and 7 over the prior art. I do not, however, agree with the decision of the majority to reverse the rejection of claims 1-3 and 7 under 35 U.S.C. § 112, second paragraph, as being indefinite. In my view, claim 1 is ambiguous, in that it is not clear whether claim 1 is directed to a dust excluder seal, or to a combination of a dust excluder seal in combination with an independent oil seal. In my view, either construction is plausible in light of the Specification. The claim limitation “wherein said sealing portion is spaced from said independent oil seal” creates an ambiguity as to whether the claim positively requires an independent oil seal disposed at some spacing from the sealing portion of the dust excluder seal, or simply requires that the sealing portion of the dust excluder seal not be in contact with (and thus be “spaced from”) an independent oil seal (which may or may not be present). If, as in this case, “a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008). Claims 2, 3, and 7 depend from claim 1, and thus incorporate this ambiguity. mls HEAD, JOHNSON & KACHIGIAN 228 W 17TH PLACE TULSA, OK 74119 Copy with citationCopy as parenthetical citation