Magnetic Seal Corp.

Patent Trials and Appeals Board

Mar 1, 2022

2021005252 (P.T.A.B. Mar. 1, 2022)

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. 15/649,246 07/13/2017 Paul Richard Ryan M033 P03167-US2 1032 3017 7590 03/01/2022 BARLOW, JOSEPHS & HOLMES, LTD. 40 WESTMINSTER STREET 3RD FLOOR PROVIDENCE, RI 02903 EXAMINER PATEL, VISHAL A ART UNIT PAPER NUMBER 3675 NOTIFICATION DATE DELIVERY MODE 03/01/2022 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): drj@barjos.com patent@barjos.com sjh@barjos.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PAUL RICHARD RYAN Appeal 2021-005252 Application 15/649,246 Technology Center 3600 Before JEREMY M. PLENZLER, GEORGE R. HOSKINS, and LEE L. STEPINA, Administrative Patent Judges. STEPINA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 2, 4-7, 9, and 11.2 We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42 (2022). Appellant identifies Magnetic Seal Corporation as the real party in interest. Appeal Br. 1. 2 Claims 3, 8, and 10 are cancelled. Appeal Br. 10-11 (Claims App.). Appeal 2021-005252 Application 15/649,246 2 CLAIMED SUBJECT MATTER Appellant’s disclosure is directed to rotary face seals such as may be “used in the aerospace industry, commercial industry, nuclear industry, and other high reliability industries, such as, test equipment and race car engines and transmissions or the like.” Spec. ¶ 4. Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A rotary face seal with magnetic loading which sealingly couples a shaft to a stationary housing, comprising: the stationary housing having a seat; a cup having an inwardly facing groove and a central bore, the cup being disposed in the stationary housing; and the shaft located in the central bore; a seal case residing between the cup and the shaft; an O-ring residing in the inwardly facing groove of the cup to sealingly interface the cup with the seal case providing a secondary seal and allowing axial movement of the seal case within and relative to the cup; a retaining ring connecting the cup to the seal case thereby preventing the seal case from becoming disengaged from the cup; a seal ring at least partially axially aligned with and in communication with the seal case; a rotating mating ring, having a seal face in communication with the seal ring; the rotating mating ring rotating with the shaft; a magnetized band connected to the rotating mating ring; the magnetized band and the seal case being magnetically attracted to and pulled toward each other thereby providing a mechanical puller load assembly in the rotating mating ring thereby urging the seal case toward the rotating mating ring and the seal ring into sealing communication with the seal face of the rotating mating ring, wherein the magnetized band is axially oriented and magnetized with a single pole adjacent to the seal case, and Appeal 2021-005252 Application 15/649,246 3 wherein the seal ring maintains an air gap, in an axial direction, between the seal case and the magnetized band. Appeal Br. 10 (Claims App.). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Baermann US 3,708,177 Jan. 2, 1973 Mullaney US 4,389,051 June 21, 1983 Adams US 4,795,168 Jan. 3, 1989 Villeneuve US 8,474,826 B2 July 2, 2013 Nantua US 2003/0057651 A1 Mar. 27, 2003 REJECTIONS I. Claims 1, 4-6, 9, and 11 are rejected under 35 U.S.C. § 103 as unpatentable over Applicant Admitted Prior Art (“AAPA”),3 Adams, and Nantua. II. Claims 1, 5, 6, 9, and 11 are rejected under 35 U.S.C. § 103 as unpatentable over AAPA, Adams, and Baermann.4 III. Claim 2 is rejected under 35 U.S.C. § 103 as unpatentable over AAPA, Adams, Nantua, and Mullaney. 3 Of the three Figures labeled “PRIOR ART” in the present Application, the Examiner relies primarily on Figures 1 and 2. See Final Act. 4-6. 4 The heading for this rejection does not list dependent claim 4, and the body of the rejection does not specifically discuss claim 4. See Final Act. 7. Nonetheless, the Examiner states that this is an “alternate rejection of claim[s] 1 and 2-6 and 9-10.” Id. Because all of the Examiner’s rejections are reversed and none of Appellant’s arguments deal with the limitations recited in claim 4, we need not determine whether claim 4 is part of this rejection. Appeal 2021-005252 Application 15/649,246 4 IV. Claim 2 is rejected under 35 U.S.C. § 103 as unpatentable over AAPA, Adams, Baermann, and Mullaney. V. Claim 7 is rejected under 35 U.S.C. § 103 as unpatentable over AAPA, Adams, Nantua, and Villeneuve. VI. Claim 7 is rejected under 35 U.S.C. § 103 as unpatentable over AAPA, Adams, Baermann, and Villeneuve. OPINION Rejection I (AAPA, Adams, and Nantua) The Examiner finds that AAPA discloses many of the elements recited in claim 1, but does not disclose a magnetized band and the limitations associated with it recited in the final three clauses of the claim. Final Act. 4-7. The Examiner relies on Adams to disclose “a mechanical seal assembly having a stationary assembly and a rotary assembly with an annular magnetic ring (42) that attracts the rings together, wherein the seal ring maintains an air gap (e.g.[,] an air gap 66), in an axial direction, between the seal case and the magnetized band.” Id. at 6. The Examiner reasons it would have been obvious to replace wave spring 60 of AAPA with an annular magnet as disclosed by Adams to reduce wear and provide a longer life of the seal.5 See id. To further explain the proposed modification to AAPA, the Examiner provides an annotated version of AAPA, Figure 2, including the proposed addition of a magnetized band. Id. at 5. As AAPA, 5 The Examiner also relies on Villeneuve as evidence that “one skilled in the art [would] know to replace mechanical means such as spring by magnetic means as a magnet ring.” Final Act. 6. Appeal 2021-005252 Application 15/649,246 5 Figure 2, is a cross-sectional view, the added magnetized band is represented by two rectangles located to the right of seal ring 58. See id. The Examiner finds the combined disclosures of AAPA and Adams do not teach that the magnetized band should be a “single pole magnet.” Final Act. 6. To remedy this deficiency, the Examiner relies on Nantua to teach “a seal assembly having an attractive load between two sealing rings, the attractive load is provided with a magnet ring placed in a notch (e.g.[,] notch with 6’, [F]igure 3) of a member and the magnet ring is made of one- pole magnet or multi-pole magnet (paragraph 0042).” Id. at 6-7. The Examiner finds Nantua teaches that single pole and multi-pole magnets are interchangeable, and, therefore, a person of ordinary skill in the art would have found it obvious to use a single pole magnet in the version of AAPA modified as proposed by the Examiner. Id. at 7 (citing Nantua ¶ 42). Appellant’s Arguments Appellant first argues that AAPA fails to disclose an air gap as recited in claim 1 because any axial clearance depicted in Figure 2 is not a gap between a magnet and the nearest material that is magnetic. Appeal Br. 4. Appellant argues that the recited “air gap” is a term of art meaning “the ‘axial magnetic attraction gap’ between the magnet and the nearest (closest) material that is magnetic (ferrous).” Id. This argument does not identify Examiner error because, as explained on page 5 of the Final Office Action, even assuming that Appellant’s assertion regarding the definition of “air gap” is correct, the Examiner identifies an air gap in structure resulting from the modification the Examiner proposes to make to AAPA. The Examiner does not rely solely Appeal 2021-005252 Application 15/649,246 6 on AAPA itself to disclose the recited air gap. Rather, the Examiner also finds Adams discloses air gap 66 and identifies the recited air gap in AAPA, Figure 2, after a magnetized band as disclosed by Adams is added. See Final Act. 2, 4-6. The structure identified by the Examiner satisfies Appellant’s asserted definition of the term “air gap” because in the modified version of AAPA, an air gap would exist between AAPA’s seal case 56 and the magnetized band added from Adams as illustrated by the Examiner on page 5 of the Final Action. Next, Appellant asserts: Adams fails to disclose a seal ring, as claimed, that would maintain an air gap, in an axial direction, between a seal case and the magnetized band. Notably, the alleged “gap (66)” of Adams is, at best, maintained by the face ring (44) which is not “at least partially axially aligned with” a seal case, as recited in amended independent claim 1. Appeal Br. 4 (emphasis added). Thus, Appellant argues that Adams does not disclose its face ring being partially axially aligned with a seal case as required by claim 1’s “seal ring.” The Examiner responds that the limitation discussed by Appellant is satisfied by AAPA, Figure 2, because seal ring 58 is axially aligned with seal case 56. See Ans. 5. The Examiner’s finding regarding partial axial alignment of seal ring 58 in AAPA is supported by a preponderance of the evidence. See AAPA, Figure 2. Furthermore, Appellant’s argument attacks Adams as failing to disclose a claim element that the Examiner finds is disclosed in AAPA. Appellant characterizes this argument as addressing the “air gap” limitation recited in claim 1, but the argument does not account for the Examiner’s Appeal 2021-005252 Application 15/649,246 7 proposed use of seal ring 58 disclosed by AAPA. As is clearly shown in the annotated version of AAPA, Figure 2, provided by the Examiner, the requirement for the seal ring to be “partially axially aligned” and the requirement for an air gap in claim 1 are satisfied. See Final Act. 5. Thus, Appellant’s argument does not address the rejection as presented in the Final Office Action. Appellant also argues that the Examiner’s rejection of claim 1 should be reversed because the Examiner relied on improper hindsight insofar as the benefits touted in the Examiner’s stated rationale (see Final Act. 6 (discussing longer seal life and reduced wear)) are discussed in Appellant’s Specification. Appeal Br. 5. This argument is unavailing because the Examiner relies on Adams and Villeneuve to underpin the reasoning for the proposed modification. See Final Act. 6. Paragraph 5 of Appellant’s Specification discusses weakening of the rotary seal’s spring mechanism, and paragraphs 6 and 8 discuss a prior art magnetic seal intended to remedy the problems of mechanical rotary seals, stating, “[k]nown magnets for this purpose are so well known in the art, they do not need to be discussed in detail herein.” The fact that Appellant’s Specification includes admissions regarding the known deficiencies of prior art mechanical seals (and that these deficiencies have been addressed, albeit unsatisfactorily, by prior art magnetic seals) (see Spec. ¶¶ 6-8) does not preclude the Examiner from finding similar motivation for the proposed modification in the teachings of Adams and Villeneuve. Finally, Appellant argues that the Examiner erred by failing to adequately address the requirement in claim 1 regarding the particular orientation of the recited magnetized band, namely, that it be axially oriented Appeal 2021-005252 Application 15/649,246 8 and magnetized with a single pole adjacent to the seal case. Appeal Br. 5. According to Appellant, “the Office Action improperly focuses on ‘single pole magnets,’ not [that] the recited ‘magnetized band is axially oriented and magnetized with a single pole adjacent to the seal case.’” Id. Appellant asserts, “[t]he Office Action alleges that Nantua discloses a ‘single pole magnet;’ however, Nantua does not provide any reasonable basis for [determining] the direction of any of the poles, single or multiple, of any magnet.” Id. (emphasis added). In response, the Examiner reiterates the finding that Nantua discloses a single pole magnet. Ans. 5-6 (citing Nantua ¶¶ 18, 47, 49). The Examiner further finds that Nantua’s magnet has a single pole close to the seal case because one purpose of this magnet is to pull or attract ferromagnetic circular annulus 48.6 Id. In reply, Appellant argues, “the alleged single pole magnet of Nantua could easily have a magnet that has poles which extend radially and still function as recited - thus this limitation does not necessarily flow from the Nantua reference.” Reply Br. 3. In other words, according to Appellant, magnet 6/6’ of Nantua could have one pole on its outer circumference and another pole on its inner circumference, which would contravene the requirement in claim 1 for the magnetic band to be axially oriented and magnetized with a single pole adjacent to the seal case. Id. Appellant’s argument finds support in Baermann and Appellant’s Specification. Specifically, Figures 2 and 3 of Baermann depict magnet 6 The Examiner notes that Appellant is correct in characterizing magnet 6/6’ as an “encoder,” but notes that this is not the sole function of magnet 6/6’. Ans. 6 (citing Nantua ¶¶ 47, 49). Appeal 2021-005252 Application 15/649,246 9 member B with one pole (north) on its outer circumference and another pole (south) on its inner circumference. Additionally, Appellant’s Specification states [t]he magnetic technology results in a design that uses magnetic technology attached to the outside diameter of the rotary annular ring which is attached to the shaft that does not produce eddy currents because it is of a single pole design. The single pole magnetic assembly design is achieved by either axial or radial magnet orientation. Spec. ¶ 15 (emphasis added). Appellant’s Specification appears to indicate that an axial orientation is simply an alternative to a radial orientation, with neither providing any particular benefit over the other. Thus, single pole magnetic rings oriented radially (with one pole radially outward of the other pole), such as the one suggested by Appellant’s argument, are known, and it is plausible that Nantua makes use of such a ring. The Examiner’s rejection relies on an express finding that Nantua teaches the recited axial orientation, rather than reasoning why such an arrangement would have been an obvious choice from two known options. Given the absence of disclosure in Nantua regarding the structure of disk 6, we are left to rely on the Examiner’s reasoning as to why Nantua’s disk 6 must have the “axially oriented and magnetized with a single pole adjacent to the seal case” arrangement recited in claim 1. See Ans. 6. In this regard, the Examiner finds Nantua’s disk 6 (or 6’) attracts the ferromagnetic piece 48 so that permanent force ensures contact between the exterior surface of the moving armature 5 and the interior face of sealing lip 38. See id. Based on this finding, the Examiner concludes “[i]t is noted that a single pole of North or South would be used Appeal 2021-005252 Application 15/649,246 10 depending polarity of [Nantua’s] piece 48 and hence the single pole will be adjacent to seal case 5.” Id. The Examiner’s discussion regarding Nantua does not adequately address the possibility of ferromagnetic piece 48 having the above-noted “radial magnet orientation” described in Baermann and Appellant’s Specification. Such a configuration would appear to maintain a force of attraction between single pole magnet 6/6’ and ferromagnetic piece 48. See Spec. ¶ 15; Baermann, Figs. 2, 3. Accordingly, the Examiner has not established, by a preponderance of the evidence, that Nantua’s single pole magnet 6/6’ has the “axial” (as opposed to “radial”) configuration needed to support the rejection of claim 1. For this reason, we do not sustain the Examiner’s rejection of claim 1, and claims 4-6, 9 and 11 depending therefrom, as unpatentable over AAPA, Adams, and Nantua. Rejection II (AAPA, Adams, and Baermann) The Examiner considers the possibility that claim 1 has a different claim interpretation than the one addressed in Rejection I and addresses this alternate claim interpretation in Rejection II. Final Act. 7. Specifically, Rejection II is based on interpreting claim 1 as requiring (rather than the “axial” configuration) a single pole magnet with one pole around the outer circumference and one pole around the inner circumference (the “radial” configuration). Id. Consequently, Rejection II is similar to Rejection I, except, in Rejection II, the Examiner replaces reliance on the teachings of Nantua with reliance on the teachings of Baermann. See id. at 4-7. The claim interpretations applied in Rejections I and II are mutually exclusive, and the Examiner’s interpretation of claim 1 as requiring the axial Appeal 2021-005252 Application 15/649,246 11 configuration is correct. Accordingly, we do not sustain Rejection II because it is based on an incorrect interpretation of claim 1. Rejections III and V (AAPA, Adams, Nantua, Mullaney, and Villeneuve) The Examiner relies on Mullaney and Villeneuve to disclose the limitations recited in dependent claims 2 and 7, respectively. See Final Act. 8-9. The Examiner does not use the teachings of Mullaney and Villeneuve in any manner that would remedy the deficiency discussed above regarding Rejection I. See id. Accordingly, for the same reasons discussed above regarding Rejection I, we do not sustain Rejections III and V. Rejections IV and VI (AAPA, Adams, Baermann, Mullaney, and Villeneuve) Rejections IV and VI are based on the incorrect claim interpretation applied in Rejection II, and, for the same reason, we do not sustain these rejections. See Final Act. 8-9. CONCLUSION The Examiner’s rejections are reversed. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4-6, 9, 11 103 AAPA, Adams, Nantua 1, 4-6, 9, 11 1, 5, 6, 9, 11 103 AAPA, Adams, Baermann 1, 5, 6, 9, 11 2 103 AAPA, Adams, Nantua, Mullaney 2 Appeal 2021-005252 Application 15/649,246 12 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 2 103 AAPA, Adams, Baermann, Mullaney 2 7 103 AAPA, Adams, Nantua, Villeneuve 7 7 103 AAPA, Adams, Baermann, Villeneuve 7 Overall Outcome 1, 2, 4-7, 9, 11 REVERSED