Ex Parte Zahn

Board of Patent Appeals and Interferences

Jan 5, 2011

11178988 (B.P.A.I. Jan. 5, 2011)

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

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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
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Application 11/178,988

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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.
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Application 11/178,988

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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).
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Application 11/178,988

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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.
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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
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“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.
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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