George Perry. Haynes

Patent Trials and Appeals Board

Jul 2, 2020

2018007419 (P.T.A.B. Jul. 2, 2020)

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.
15/136,118 04/22/2016 George Perry Haynes 2016P00051US 3005
16284 7590 07/02/2020
SKF GmbH
IA & IP
Gunnar-Wester-Strasse 12
Schweinfurt, 97421
GERMANY
EXAMINER
KONERU, LAKSHMI S
ART UNIT PAPER NUMBER
3675
NOTIFICATION DATE DELIVERY MODE
07/02/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
eofficeaction@appcoll.com
ipr@skf.com
skf_notification@jtek-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEORGE PERRY HAYNES
Appeal 2018-0074191
Application 15/136,118
Technology Center 3600

Before LINDA E. HORNER, DANIEL S. SONG, and
ALYSSA A. FINAMORE, Administrative Patent Judges.

FINAMORE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1, 3, and 5–10. We have jurisdiction
under 35 U.S.C. § 6(b). We AFFIRM.

1 The citations herein refer to the Specification filed April 22, 2016
(“Spec.”), Final Office Action mailed August 10, 2017 (“Final Act.”),
Appeal Brief filed February 12, 2018 (“Appeal Br.”), Claims Appendix filed
March 13, 2018 (“Claims App.”), Examiner’s Answer mailed May 18, 2018
(“Ans.”), and Reply Brief filed July 10, 2018 (“Reply Br.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as “KAYDON RING & SEAL, INC.”
Appeal Br. 1.
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SUBJECT MATTER ON APPEAL
The invention “relates to seals, or more particularly to contact
circumferential seals for sealing about rotatable shafts.” Spec. 1:5–6.
Claims 1 and 10 are independent. Claims App. Independent claim 1 is
illustrative of the claimed subject matter, and reproduced below,
emphasizing the limitation at issue.
1. A circumferential shaft seal assembly for sealing about a
shaft rotatable about a central axis, the shaft having an outer
circumferential surface, the seal assembly comprising:
at least two generally arcuate bodies coupleable together
to form a generally annular seal disposeable about the shaft outer
surface, each arcuate body having opposing female and male
circumferential ends, each female end including a recess defined
at least partially by a radially-inner arm and a radially-outer arm
each extending generally circumferentially from a remainder of
the arcuate body, each male end including a projection extending
circumferentially from the remainder of the arcuate body and
sized to be disposeable within the recess of an adjacent arcuate
body to couple the arcuate body with the adjacent arcuate body,
the female end inner arm of each arcuate body being disposed
radially between the shaft outer surface and at least a portion of
the male end projection of the adjacent arcuate body when the
arcuate body is coupled with the adjacent arcuate body;
wherein each arcuate body has at least one lift recess
extending radially outwardly from the body inner circumferential
surface and configured to generate a radially outwardly directed
force to bias the arcuate body from the shaft outer surface during
rotation of the shaft and the inner arm of each arcuate body
female end is configured to generally prevent radially-inward
displacement of the male end of the adjacent arcuate body
coupled with the arcuate body toward the outer surface of the
shaft during rotation.
Id. (emphasis added).

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REJECTION
Claims
Rejected 35 U.S.C. § References/Basis 

1, 3, 5–10 103 Vasagar,3 Iliffe4

ANALYSIS
Independent claims 1 and 10
Appellant argues independent claims 1 and 10 as a group. Appeal
Br. 3–6; Reply Br. We select independent claim 1 as representative, and
independent claim 10 stands or falls with independent claim 1. 37 C.F.R.
§ 41.37(c)(1)(iv).
In rejecting independent claim 1, the Examiner finds Vasagar
discloses the invention substantially as claimed. Final Act. 3. Vasagar
discloses circumferential seal ring segments for creating a seal around a
rotating shaft. Vasagar 1:26–31, 2:40–44. Vasagar’s Figures 9a and 9b,
reproduced below, show a seal ring segment.

3 Vasagar et al., US 8,074,995 B2, issued Dec. 13, 2011 (“Vasagar”).
4 Iliffe, US 2,412,734, issued Dec. 17, 1946.
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Figure 9a is an axial view of seal ring segment 60, and Figure 9b is a view of
the radially-inward surface of the seal ring segment. Id. at 5:64–6:3. As
shown in these figures, and as noted by the Examiner, seal ring segment 60
includes tongue 65 at one end and socket 70 at the opposing end. Id.
at 7:64–8:2; Final Act. 3. Socket 70 of one seal ring segment is adapted to
receive tongue 65 of an adjacent segment so that the seal ring segments fit
together around the circumference of shaft 40. Vasagar 7:64–8:2. Seal ring
segment 60 also includes pockets 130. Id. at 12:1–6.
The Examiner acknowledges Vasagar does not disclose that the
female end has a radially-outer arm and radially-inner arm, as recited in
independent claim 1. Final Act. 3–4. The Examiner finds Iliffe’s segmental
member 11 includes a female end having radially-outer and radially-inner
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arms. Id. at 4–5. The Examiner determines it would have been obvious to
replace Vasagar’s female end with the configuration of Iliffe’s segmental
member to provide better retention of the segments together. Id.
The Examiner provides an annotated version of Iliffe’s Figure 2,
reproduced below, identifying the radially-outer and radially-inner arms of
the segmental member. Id. at 5.

Iliffe’s Figure 2 is a perspective view showing the ends of piston ring 7 and
segmental member 11 positioned between the ends. Iliffe 1:24–25. The
ends of piston ring 7 include tenons 8 that are adapted to fit into slots 19 of
segmental member 11. Id. at 2:8–9. The ends of piston ring 7 also include
portions 17 that fit into slots 18 of segmental member 11. Id. at 2:15–17. In
the annotated figure, the Examiner identifies the portion of segmental
member 11 defining the upper end of slot 18 as the radially-outer arm and
the portion defining the lower end of slot 18, namely projection 15, as the
radially-inner arm.
Appellant argues that there would have been no motivation to
combine the teachings of Vasagar and Iliffe as the Examiner proposes
because Iliffe’s projection 15 serves a completely different purpose from
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that of the claimed invention. Appeal Br. 5–6; Reply Br. 2. According to
Appellant, Iliffe’s projection 15 prevents radially-outward movement of
segmental member 11, not radially-inward displacement of the male end,
i.e., end of piston ring 7, as claimed. Appeal Br. 5–6; Reply Br. 2.
The Examiner’s reason for combining the teachings of the prior art,
however, need not be the same as Appellant’s purpose for the claimed
invention. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) (“In
determining whether the subject matter of a patent claim is obvious, neither
the particular motivation nor the avowed purpose of the patentee controls.”).
The Examiner reasons that it would have been obvious to replace Vasagar’s
female end with that of Iliffe “to provide better retention of the segments
together by providing multiple slots 14, 18, 19 for the corresponding
projections.” Final Act. 5. Both Vasagar’s seal and Iliffe’s piston ring are
formed from a plurality of segments connected together. Vasagar 7:64–8:2,
Figs. 4a, 6; Iliffe 1:35–40; Figs. 1, 2. Vasagar’s seal ring segments 60 are
connected by tongue 65 of one segment received in socket 70 of an adjacent
segment, whereas Iliffe’s segmental member 11 is connected the ends of
piston ring 7 via a plurality of projections and corresponding grooves. Id.
Vasagar and Iliffe disclose different connections, and the Examiner proposes
to substitute one type of connection for another. See KSR, 550 U.S. at 416
(“[W]hen a patent claims a structure already known in the prior art that is
altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result.”).
Furthermore, Vasagar’s seal ring components must be securely connected to
form a seal around the rotating shaft. Iliffe teaches the ends of piston ring 7
and segmental member 11 are specifically designed to retain the segmental
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member between the ends of the ring. Iliffe 2:17–21 (teaching that the
arrangement of segmental member 11, including projection 15, “provid[es]
means for retaining the segmental member 11, which is freely mounted on
the bar 12 in position in the ends of the piston ring 7, in the event of the
piston ring being withdrawn from the cylinder” (emphasis added)). Based
on these teachings, a person of ordinary skill in the art would have
appreciated that modifying Vasagar’s seal ring components to include the
Iliffe’s connection arrangement, as the Examiner proposes, would improve
Vasagar’s seal by providing a better connection between the seal ring
components. Final Act. 4–5; see also KSR, 550 U.S. at 417 (“[I]f a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill.”). For these reasons, Appellant does not apprise us
of error in the Examiner’s reasoning for combining the teachings of Vasagar
and Iliffe.
Appellant also argues Vasagar and Iliffe, considered alone or in
combination, do not teach a radially-inner arm “configured to generally
prevent radially-inward displacement of the male end of the adjacent arcuate
body coupled with the arcuate body toward the outer surface of the shaft
during rotation,” as recited in independent claim 1. Appeal Br. 4–6; Reply
Br. In particular, Appellant contends Iliffe’s projection 15, which the
Examiner considers the radially-inner arm, does not function to prevent
radial-inward displacement of the male member to avoid contact with a
rotating shaft because Iliffe’s piston ring displaces linearly along a piston
without any relative angular movement. Appeal Br. 5–6; Reply Br. 2.
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Appellant also contends tenons 8 of the ends of Iliffe’s piston ring 7 are not
even capable of contacting the surface of the piston groove. Appeal Br. 6;
Reply Br. 2.
Appellant’s argument is not convincing because the Examiner is not
relying solely on Iliffe for disclosing the recited radially-inner arm. Rather,
the Examiner determines the combination of Vasagar and Iliffe would have
resulted in a radially-inner arm that is configured to prevent radially-inward
displacement of the male end. Ans. 9 (“The combination of Vasagar and
Iliffe teaches the seal ring that prevents linear displacement and also
prevents radial displacement of the seal ring of Vasagar due to the inner
radial arm of Iliffe.”).
According to Appellant’s Specification:
[D]ue to positioning of and sizing of the inner arm 20, any
radially-inward biasing on the male end 16 of an arcuate
body 12, such as arising from fluid pressure, inertia and/or spring
force on the outer surface of the body 12, is prevented from
displacing the male end 16 inwardly toward the shaft outer
surface 2.
Spec. 4:14–17. Figure 5, reproduced below, shows the position and size of
inner arm 20.
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Figure 5 is a side plan view of a joint between female end 14 of a first
arcuate member 12 and male end 16 of an adjacent arcuate member 12. Id.
at 2:23–24. Female end 14 includes recess 18 defined at least partially by
radially-inner arm 20 and radially-outer arm 22. Id. at 4:2–4. Male end 16
includes projection 24 that is sized and shaped to be disposeable within
recess 18 of adjacent arcuate body 12 to form joint 15 and couple the
accurate bodies. Id. at 4:4–8. Radially-inner arm 20 of female end 14 is
disposed radially between shaft outer surface 2 and at least a portion of
projection 24 of male end 16. Id. at 4:9–11.
The Examiner proposes to replace Vasagar’s female end with Iliffe’s
segmental member. Final Act. 4–5. In the proposed combination,
projection 15 of Iliffe’s segmental member 11 would be disposed radially
between the shaft and at least a portion of the male member received within
slot 18 of segmental member 11. As projection 15 would be positioned and
sized similarly to Appellant’s radially-inner arm 20, Appellant does not
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persuade us of error in the Examiner’s determination that the combination of
Vasagar and Iliffe would have resulted in a radially-inner arm that is
“configured to generally prevent radially-inward displacement of the male
end of the adjacent arcuate body coupled with the arcuate body toward the
outer surface of the shaft during rotation,” as recited in independent claim 1.
In view of the foregoing, Appellant does not apprise us of error in the
rejection of independent claim 1. We, therefore, sustain the rejection of
independent claim 1, with independent claim 10 falling therewith.

Claims 3 and 5–9
Appellant argues claims 3 and 5–9 are allowable for the same reasons
as independent claim 1. Appeal Br. 6; Reply Br. As set forth above,
Appellant does not apprise us of error in the rejection of independent
claim 1, and we similarly sustain the rejection of claims 3 and 5–9.

CONCLUSION
We sustain the rejection of independent claims 1 and 10. We likewise
sustain the rejection of claims 3 and 5–9.

DECISION SUMMARY
Claims
Rejected 35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1, 3, 5–10 103 Vasagar, Iliffe 1, 3, 5–10

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED