Ex Parte Zahn

Board of Patent Appeals and Interferences

Jun 8, 2010

10990183 (B.P.A.I. Jun. 8, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HENRY W. ZAHN
____________

Appeal 2009-007786
Application 10/990,183
Technology Center 3600
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Decided: June 9, 2010
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Before WILLIAM F. PATE, III, STEVEN D.A. McCARTHY, and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Henry W. Zahn (Appellant) appeals under 35 U.S.C. § 134 (2006)
from the Examiner’s decision rejecting claims 3, 7, 13, and 14. Claims 1, 2,
4-6, 8-12, and 15 have been canceled. We have jurisdiction over this appeal
under 35 U.S.C. § 6 (2006).

THE INVENTION
Appellants’ invention relates to a seal for a shock absorber in a front
wheel suspension of a two-wheeled recreational vehicle. Spec. 2, ll. 2-4 and
fig. 1.
Claim 13 is representative of the claimed invention and reads as
follows:
13. A seal for sealing between a pair of reciprocatory members,
adapted to reciprocate with respect to each other and adapted to
withstand a cavity pressure, comprising:
a sealing portion for sealing engagement with one of the
reciprocatory members and a body portion for securement to the other
of the members;
said body portion including an annular web for connecting to
said sealing portion;
said sealing portion comprising an oil side beam extending in a
direction generally parallel to the path of reciprocation of the
members;
said oil side beam having a first sealing lip for engagement with
the one reciprocatory member and a second sealing lip for
engagement with the one reciprocatory member spaced from said first
lip;
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said oil side beam having a narrowed neck between said first
and second sealing lips facilitating independent action of said lips,
wherein said sliding friction forces are balanced equally between said
first sealing lip and said second sealing lip;
a coil spring bearing on said oil side beam adjacent said second
lip and biasing said second lip into engagement with the one
reciprocatory member assisting equal balancing of said sliding forces;
means to balance said total lip forces (FT) between said first and
second sealing lips by distributing the lip forces (Ff) between the lips
wherein said total lip forces (FT) include rubber hoop forces (FR)
resulting from expansion when installed on a shaft, beam deflection
forces (FB) resulting from rubber beam deflection of said oil side
beam, negative influencing force (FI) on one said lip caused by
engagement of the other said lip onto the sealing surface, cavity force
(FP) due to lip force from varying cavity pressure, and spring tension
forces (FS) resulting from radial force applied by the coil spring;
an air side beam extending in a direction opposite the oil side
beam and generally parallel to the path of reciprocation of the
members, said air side beam having a third fluid sealing lip for sealing
engagement with the one reciprocatory member at a location spaced
from said first and second lips; and
a coil spring around said air side beam biasing said third fluid
sealing lip into engagement with said one reciprocating member.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Downes US 2003/0019692 A1 Jan. 30, 2003
Takebayashi US 6,676,132 B1 Jan. 13, 2004

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Appellant presents additional evidence in the Declaration of Henry W.
Zahn1,2 and the testimonials filed Oct. 26, 2006.
The following rejections are before us for review:
The Examiner rejected claims 3, 7, 13, and 14 under 35 U.S.C. § 112,
first paragraph, for failing to comply with the written description
requirement.
The Examiner rejected claims 3, 7, 13, and 14 under 35 U.S.C. § 112,
second paragraph, as being indefinite.
The Examiner rejected claims 3, 13, and 14 under 35 U.S.C. § 102(b)
as anticipated by Downes.
The Examiner rejected claim 7 under 35 U.S.C. § 103(a) as
unpatentable over Downes and Takebayashi.

THE ISSUES
1. Does the originally filed application support the limitation that the
sliding friction forces are “balanced equally” between the first and
second sealing lips, as called for by each of independent claims 13
and 14?
2. Does the limitation “means to balance said total lip forces (FT)
between said first and second sealing lips by distributing the lip forces
(Ff) between the lips,” as recited in each of independent claims 13 and
14, render the claims indefinite under 35 U.S.C. § 112, second
paragraph?

1 For the purpose of this appeal we shall consider that the Declaration
of Henry W. Zahn (the inventor of this application), filed Oct. 26, 2002, was
filed under 37 C.F.R. § 1.132. See MPEP § 716.
2 Hereafter referred to as the” Zahn Declaration.”
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3. Does Downes teach balancing the total lip forces between the first
sealing lip D and the second sealing lip E, as required by each of
independent claims 13 and 14?

SUMMARY OF DECISION
We AFFIRM.

OPINION
Issue (1)
Each of claims 3, 7, 13, and 14 requires the limitation that the sliding
friction forces are “balanced equally” between the first and second sealing
lips. The Examiner points to the Specification to show that in contrast to the
claimed invention, the Specification states that the frictional forces are
balanced “substantially equally.” Ans. 3. See also Spec. 10, ll. 6-8.
According to the Examiner “being ‘equal” and ‘substantially equal’ are not
the same.” Ans. 3.
To satisfy the written description requirement, the disclosure must
convey with reasonable clarity to skilled artisans that Appellant was in
possession of the claimed invention as of the filing date. Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). In this case, the use of
the term “substantially,” often used in conjunction with another term to
describe a particular characteristic of the claimed invention, is a broad term.
In re Nehrenberg, 280 F.2d 161, 165 (CCPA 1960). Accordingly, the
qualifying term “substantially” modifies the term “equally” to include
sliding friction forces that are “balanced equally” between the first and
second sealing lips. In other words, “substantially equal” sliding friction
forces include sliding friction forces that are “equal.” Hence, we find that
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the Specification conveys with reasonable clarity to a person of ordinary
skill in the art that the sliding friction forces are “balanced equally” between
the first and second sealing lips. Therefore, the rejection of claims 3, 7, 13,
and 14 under 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement, cannot be sustained.

Issue (2)
The Examiner takes the position that it is not clear “how the lip forces
are distributed.” Ans. 3. However, it is well established that 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) (citations omitted). In this case, the
Specification specifically states that “[t]he present seal design effectively
balances oil side drag forces between the two oil seal lips 30 and 34.” Spec.
12, ll. 23-24. Emphasis added. The Specification further describes a
preferred embodiment of a seal having the dimensions and material
properties shown in the table on Page 12. Since the Specification clearly
describes the dimensions and material properties of a seal that balances the
oil side drag forces, we conclude that the claim language, when read in light
of the Specification, clearly describes how the lip forces are distributed.
Even were it assumed that the Examiner correctly found that the
Specification fails to clearly disclose how the lip forces are distributed, the
working example discloses a structure corresponding to the “means to
balance said total lip forces (FT) between said first and second sealing lips by
distributing the lip forces (Ff) between the lips.” Accordingly, we conclude
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that claims 3, 7, 13, and 14 are not indefinite under 35 U.S.C. § 112, second
paragraph. Hence, the rejection of claims 3, 7, 13, and 14 likewise cannot be
sustained.
Issue (3)
Appellant argues that Downes does not teach the limitation of
“balancing of the total lip forces between the first sealing lip and the second
sealing lip.” Br. 9. In response, the Examiner appears to take the position
that because there is no substantial difference between the construction of
Appellant’s seal and the seal of Downes, the operation of Appellant’s seal is
the same as Downes’ seal. See Ans. 8. We agree with the Examiner.
At the outset, we note the similarity between Appellant’s Figure 3 and
Downes’ Figure 2. Like Appellant’s claimed seal, the seal of Downes
includes a sealing portion A, a body portion B, an annular web connecting A
and B, an oil side beam C, a first sealing lip D, a second sealing lip E, a
narrowed neck F, a coil spring G, an air side beam H, a third fluid sealing lip
I, and a coil spring J. See Ans. 4, 5, and 10. Hence, we find no substantial
difference between the construction of Appellant’s seal and the seal of
Downes.
Accordingly, just as in Appellant’s seal, where the seal design (i.e.,
dimensions and material properties) balances the total lip forces between the
first and second sealing lips, the elements A-I of Downes’ seal likewise
balance the total lip forces between the first and second sealing lips D and E,
respectively. Once a prima facie case of anticipation has been established,
the burden shifts to the Appellant to prove that the prior art product does not
necessarily or inherently possess the characteristics of the claimed product.
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In re Best, 562 F.2d 1252, 1255 (CCPA 1977).3 See also In re Spada, 911
F.2d 705, 708-09 (Fed. Cir. 1990). We find nothing in Downes and
Appellant has not pointed to any portion of Downes that would have led a
person of ordinary skill in the art to conclude that the elements A-I of
Downes’ seal are less likely than Appellant’s to balance the total lip forces
between the first and second sealing lips.
For the above reasons, we conclude that the teachings of Downes
reasonably support the Examiner’s position that the elements A-I of
Downes’ seal balance the total lip forces between the first and second
sealing lips D and E, respectively, so as to shift the burden to Appellant to
show that this is not the case. Appellant has not come forward with any
evidence to satisfy this burden. The Zahn Declaration is unpersuasive
because it refers to the teachings of Yamanka and Takebayashi, which are
not relevant to the instant anticipation rejection over the teachings of
Downes. See Br., Evidence Appendix. Similarly, the testimonials filed Oct.
26, 2006, that discuss the high durability and performance of Appellant’s
seal, are likewise unpersuasive because the testimonials likewise do not
address alleged defects in the disclosure of Downes.
Lastly, Appellant argues that the element I of Downes does not
constitute a “third fluid sealing lip,” as required by each of independent
claims 13 and 14. Br. 10. Pointing to sealing lip 22 of Downes, Appellant
opines that element I is a dust lip. Id. Although we appreciate Appellant’s

3 "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."
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position that sealing lip 22 of Downes constitutes a dust lip, nonetheless, we
find Appellant’s argument unpersuasive because element I of Downes is
different than sealing lip 22, that is, both sealing lip 22 and element I are part
of seal 20 of Downes. Accordingly, we agree with the Examiner that,
“sealing lip ‘I’ is separate from sealing lip 22.” Ans. 10.
With respect to claim 3, Appellant does not make additional
arguments separate from the arguments presented above. Br. 11. In
conclusion, for the foregoing reasons, the rejection of claims 3, 13, and 14
under 35 U.S.C. § 102(b) as anticipated by Downes is sustained.
Similarly, with respect to claim 7, Appellant does not make additional
arguments separate from the arguments presented above. Br. 11.
Furthermore, as noted above, neither the Zahn Declaration nor the
testimonials filed Oct. 26, 2006 is persuasive because neither addresses any
alleged defects in the disclosure of Downes.
The testimonials filed Oct. 26, 2006 apparently seek to prove
secondary considerations of non-obviousness, namely, unexpected results.
See Br., Evidence Appendix. When an article is said to achieve unexpected
(i.e., superior) results, those results must logically be shown as superior
compared to the results achieved with other articles. Moreover, an applicant
relying on comparative tests to rebut a prima facie case of obviousness must
compare his claimed invention to the closest prior art. In re De Blauwe, 736
F.2d 699, 705 (Fed. Cir. 1984). In this case, the Power Sport Industries, Inc.
testimonial compares Appellant’s seal (Clark Max Life) with merely a stock
seal and not with the seal of Downes as modified in view of Takebayashi.
The testimonial of Mr. John Morrow does not even compare Appellant’s
seal with another seal, but merely tests Appellant’s seal. As such, we agree
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with the Examiner that the statements in the Zahn Declaration and the
testimonials filed Oct. 26, 2006 are merely conclusory. See Ans. 8. The
probative value of the teachings of Downes and Takebayashi as evidence of
obviousness outweigh any probative value of the Zahn Declaration and
testimonials as evidence of nonobviousness.
Accordingly, the rejection of claim 7 as unpatentable over the
combined teachings of Downes and Takebayashi, is likewise sustained.

CONCLUSIONS
1. The originally filed application supports the limitation that the sliding
friction forces are “balanced equally” between the first and second
sealing lips.
2. The limitation “means to balance said total lip forces (FT) between
said first and second sealing lips by distributing the lip forces (Ff)
between the lips,” does not render the claims indefinite under 35
U.S.C. § 112, second paragraph.
3. Downes teaches balancing the total lip forces between the first sealing
lip D and the second sealing lip E.

DECISION
The Examiner’s decision to reject claims 3, 7, 13, and 14 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

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