Robert E. Smith

Patent Trials and Appeals Board

Mar 18, 2020

14182180 - (D) (P.T.A.B. Mar. 18, 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.
14/182,180 02/17/2014 Robert E. Smith III 221-0098USD 6722
29855 7590 03/18/2020
Blank Rome LLP - Houston General
717 Texas Avenue, Suite 1400
Houston, TX 77002
EXAMINER
LINFORD, JAMES ALBERT
ART UNIT PAPER NUMBER
3679
NOTIFICATION DATE DELIVERY MODE
03/18/2020 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):
acollins@blankrome.com
houstonpatents@blankrome.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERT E. SMITH, III

Appeal 2019-000254
Application 14/182,180
Technology Center 3600
____________

Before: JOHN C. KERINS, CHARLES N. GREENHUT, and
MICHAEL L. WOODS, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1, 3–8, 22, and 23.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 The term “Appellant” is used herein to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies National Coupling Company as the
real party in interest. Appeal Br. 3.
Appeal 2019-000254
Application 14/182,180

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THE CLAIMED SUBJECT MATTER
Appellant’s invention relates to a probe seal for a female hydraulic
coupling. Claim 1 is illustrative, and is reproduced below:
1. A probe seal for a female hydraulic coupling member
comprising:

a generally ring-shaped body having a first end, an opposing
second end, a generally cylindrical outer surface and a generally
cylindrical inner surface;

a first annular chamber within the ring-shaped body between the
inner surface and the outer surface, the chamber having an inner
wall generally parallel to the inner surface of the ring-shaped
body and an outer wall generally parallel to the inner surface of
the ring-shaped body;

a first fluid passageway connecting the annular chamber with the
inner surface; and,

an annular groove in at least one end of the ring-shaped body
proximate the outer surface.

THE REJECTIONS
The Examiner rejects:
(i) claims 1, 3–5, 7, 8, 22, and 23 under 35 U.S.C. § 102(b) as being
anticipated by Grazioli (US 4,572,515, issued Feb. 25, 1986); and
(ii) claim 6 under 35 U.S.C. § 103 as being unpatentable over
Grazioli.

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Application 14/182,180

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ANALYSIS

Claims 1, 3–5, 7, 8, 22, and 23--Anticipation by Grazioli
Appellant presents arguments for the claims as a group, and presents
separate arguments directed to dependent claims 4 and 5. For the arguments
directed to the claims as a group, we select claim 1 as representative. We
separately address the arguments presented for claims 4 and 5.

Claims 1, 3, 7, 8, 22, and 23
The Examiner finds that Grazioli discloses all limitations presented in
claim 1, including “an annular groove in at least one end of the ring-shaped
body proximate the outer surface.” Final Act. 4–5. For this particular
limitation, the Examiner specifies “(see one of the grooves).” Id. at 5. In
response to Appellant’s argument that the grooves in Grazioli are not in an
end of the ring-shaped body, which we address in detail infra, the Examiner
provides annotated versions of Figures 3 and 4 of Grazioli, which are
reproduced below:
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Application 14/182,180

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Illustrated above are Examiner-annotated versions of Figure 3 (top) and
Figure 4 (bottom) of Grazioli, which are sectional views of a bidirectional
sealing element. Ans. 7. From these annotated drawings, and the
accompanying analysis provided by the Examiner, it is clear that the
Examiner’s position is that the term “end” as used in claim 1 is sufficiently
broad as to include an “end portion” of a ring-shaped body. Ans. 3–13.
Appellant disagrees, arguing that the plain meaning of the term “end”
in the context of the claimed ring-shaped body, must be interpreted as the
terminal surface of the end, as shown in Appellant’s annotation of Figure 3
of Grazioli, reproduced below:
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Illustrated above is an Appellant-annotated version of Figure of Grazioli,
which is a sectional view of a bidirectional sealing element. According to
Appellant, applying this interpretation of the claim term “end,” the grooves
in Grazioli are not in the ends of the ring-shaped body, but are instead in the
outer, circumferential surface of the seal. Appeal Br. 14–15.
Appellant additionally argues that a ring-shaped body is essentially a
cylinder having a relatively large central axial bore, and maintains that a
right cylinder has three surfaces, namely a planar top end, a planar bottom
end, and a curved side surface extending between the top and bottom ends.
Reply Br. 2. The reference to a right cylinder is inapposite, in that, as
Appellant acknowledges, a ring-shaped body differs in shape from a right
cylinder by having a central axial bore, which creates additional surfaces
that are to be taken into account.
Appellant concludes by asserting that,
The “ends” of a cylinder are not portions of its body of arbitrary
extent; they are certain surfaces of that body. The “annular
groove in at least one end of the ring-shaped body proximate the
outer surface” required by claim 1 is unambiguously a groove in
the end surface of the seal body.
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Reply Br. 4.
Appellant’s position is belied by the absence of the term “surface” in
claim 1, whereas, in dependent claim 5, the “surface” is positively recited
pertaining to “a portion of the surface of the first end” and “a portion of the
surface of the second end.” Appeal Br. 19, Claims App. If we were to
construe the term “end” as being limited to “end surface,” this would render
superfluous the presence, twice, of the term “surface” in modifying the term
“end” in claim 5. As we are instructed by our reviewing court to refrain
from claim interpretations that render other terms superfluous, we conclude
that the term “end” in claim 1 is not to be limited to “end surface” as
Appellant argues, but rather, the Examiner’s interpretation of “end” as
including an end portion is within the broadest reasonable interpretation of
the term. Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir.
2007) (additionally citing to earlier cases denouncing claim constructions
that render terms in claims superfluous); see also, Becton, Dickinson and
Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010)
(“Where a claim lists elements separately, the clear implication of the claim
language is that those elements are distinct components of the patented
invention.”) (citations omitted).
Accordingly, Appellant’s arguments directed to claim 1 as not being
anticipated by Grazioli do not apprise us of error in the rejection. The
rejection of claim 1 is sustained. Claims 3, 7, 8, 22, and 23 fall with claim 1.

Claim 4
Claim 4 requires that the outside diameter of the probe seal be greater
at the end of the ring-shaped body than at the middle of the ring-shaped
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body. Appellant argues that, “Grazioli makes no mention of the outside
diameter of bidirectional seal 24 and Figs. 3 and 4 of Grazioli show the same
outside diameter at the ends and the middle of the body of seat 24.”2 Appeal
Br. 16.
The Examiner replies, having reference to the Examiner-annotated
figures reproduced above, that the outside diameter of the Grazioli seal at the
end of the ring-shaped body is established at the outer extent of the sealing
lip designated at numeral 3001, and the diameter there is greater than that at
the middle 4001 of the ring-shaped body. Ans. 14.
Because we above concluded that the claimed “end” is reasonably
construed as being an “end portion,” and because Appellant’s own
construction similarly relies on the outer extent of sealing surface 207 as the
reference point for establishing an outer diameter at the end of the ring-
shaped member, we are not apprised of error in the Examiner’s position
relative to the limitations found in claim 4.
The rejection of claim 4 as being anticipated by Grazioli is sustained.

2 Figures 3 and 4 of Grazioli are devoid of any reference numerals, and
Appellant’s identification of reference numeral 24 pertains to Figures 3 and
4 of European patent EP 0191251, reproduced by Appellant at pages 13–14
of the Appeal Brief. Appellant asserts that this European patent is the
equivalent of the Grazioli patent applied in the rejection. Appeal Br. 13.
We note that the structure illustrated in the reproduced figures is identical or
nearly identical to the structure in Figures 3 and 4 of Grazioli, but do not
take, and do not need to take, a position as to whether the European patent is
equivalent to the applied reference.
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Claim 5
Appellant maintains that Grazioli does not disclose the limitations in
claim 5, which requires portions of the surfaces of the first and second ends
to be at complementary (recited as “complimentary” in claim 5) acute angles
relative to the longitudinal axis of the ring-shaped body, such that the axial
dimension at the outer surface is greater than the axial dimension at the inner
surface. Appeal Br. 16. According to Appellant, the end surfaces of
Grazioli are squared, and thus the axial dimensions of the inner and outer
surfaces are the same. Id.
The Examiner provides a further annotated version of Figure 4 of
Grazioli in attempting to illustrate how Grazioli is interpreted as meeting the
limitations of claim 5. The annotated Figure 4 is reproduced below:

Illustrated above is an Examiner-annotated version Figure 4 of Grazioli,
which is a sectional view of a bidirectional sealing element.
The Examiner identifies portions 6001 and 6001ˈ or 7001 and 7001ˈ
as portions of surface of the ring-like member at which complementary acute
angles are formed, and ultimately finds that the axial dimension at the outer
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surface, measured as 6001ˈˈ or 7001ˈˈ, is greater than the axial dimension at
the inner surface, measured as 8001. Ans. 15.
Appellant has the better position here. Regardless as to whether the
acute angles identified by the Examiner meet the corresponding limitations
in claim 5, the full axial dimension of both the inner and outer surfaces of
the Grazioli ring-like structure is the same, as represented by 6001ˈˈ in the
above Examiner-annotated figure. Grazioli thus does not disclose that the
outer surface has a greater axial dimension than the inner surface, as
required by claim 5.
The rejection of claim 5 as being anticipated by Grazioli is not
sustained.
Claim 6—Unpatentability over Grazioli
Appellant essentially argues that claim 6 is not obvious over Grazioli,
on the basis that claim 1, from which claim 6 depends, is not obvious over
Grazioli. Appeal Br. 17. In that we have determined that the Examiner has
not erred in rejecting claim 1 as being anticipated by Grazioli, and in that
anticipation is the epitome of obviousness, Appellant’s argument fails to
apprise us of error in the rejection of claim 6.3
The rejection is sustained.

CONCLUSION
The rejection of claims 1, 3, 4, 7, 8, 22, and 23 under 35 U.S.C.
§ 102(b) is affirmed.
The rejection of claim 5 under 35 U.S.C. § 102(b) is reversed.

3 In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974); see also In re
Fracalossi, 681 F.2d 792, 794 (CCPA 1982).
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The rejection of claim 6 under 35 U.S.C. § 103(a) is affirmed.

DECISION SUMMARY

In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–5, 7, 8,
22, 23
§ 102(b) Grazioli 1, 3, 4, 7,
8, 22, 23
5
6 § 103(a) Grazioli 6
Overall
Outcome

1, 3, 4, 6–
8, 22, 23
5

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 IN PART