Ex Parte Beichl

Patent Trial and Appeal BoardOct 31, 2012

10540203 (P.T.A.B. Oct. 31, 2012)

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. 10/540,203 08/17/2005 Stefan Beichl 5038.1004 6597 23280 7590 10/31/2012 Davidson, Davidson & Kappel, LLC 485 7th Avenue 14th Floor New York, NY 10018 EXAMINER LEE, GILBERT Y ART UNIT PAPER NUMBER 3674 MAIL DATE DELIVERY MODE 10/31/2012 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 PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte STEFAN BEICHL ____________________ Appeal 2010-009818 Application 10/540,203 Technology Center 3600 ____________________ Before: STEVEN D.A. MCCARTHY, CHARLES N. GREENHUT, and SCOTT E. KAMHOLZ, Administrative Patent Judges. KAMHOLZ, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-009818 Application 10/540,203 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 20-23 and 25-40. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. THE CLAIMED SUBJECT MATTER The claims are directed to sealing arrangements. Claim 20, reproduced below, is illustrative of the claimed subject matter: 20. A sealing arrangement, comprising: at least one first sealing device including an annular seal; a second sealing device including a brush seal; wherein the first and second sealing devices are placed between axially symmetrical components symmetrical about an axis, and the second sealing device is positioned so as to be axially offset from the first sealing device; and wherein the annular seal is a metallic piston-ring seal having a separation site. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Hagle Turnquist US 5,074,748 US 6,105,967 Dec. 24, 1991 Aug. 22, 2000 Kono Beichl US 2002/0140174 A1 US 2004/0188943 A1 Oct. 3, 2002 Sep. 30, 2004 REJECTIONS Appellant seeks our review of the following rejections: Claims 20-23, 25, 27, and 30-36 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Turnquist and Kono. Ans. 4. Appeal 2010-009818 Application 10/540,203 3 Claims 26, 28, and 29 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Turnquist, Kono, and Beichl. Ans. 7. Claims 37-40 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Turnquist, Kono, and Hagle. Ans. 9.1,2 ANALYSIS 1. Rejection of claims 20-23, 25, 27, and 30-36 for obviousness over Turnquist and Kono. Appellant argues these claims as a group. We therefore select claim 20 as representative and decide the appeal with respect to all claims in this group on the basis of claim 20 alone; see 37 C.F.R. § 41.37(c)(1)(vii) (2011). The Examiner found that Turnquist discloses all limitations of claim 20, including the annular seal, but does not specify that the annular seal is a piston-ring seal. Ans. 4-5. The Examiner also found that Appellant’s Specification does not define “piston-ring seal” or indicate that a “piston- ring seal” necessarily has any particular structure beyond a ring seal with a separation site. Ans. 11. The Examiner further found that Kono discloses that an annular seal can be either split or segmented. Ans. 5. The Examiner concluded that it would have been obvious to make Turnquist’s annular seal a split seal in view of Kono’s teachings “in order to allow enlargement 1 A rejection of claims 20-23 and 25 under 35 U.S.C. § 112, second paragraph, was withdrawn by the Examiner. Ans. 4. 2 Appellant lists a rejection of claims 21-23, 38, and 39 under 35 U.S.C. § 112, first paragraph, among the grounds of rejection to be reviewed on appeal (App. Br. 3).This rejection (see Non-Final Rej. Jun. 25, 2008) appears to have been withdrawn by the Examiner and is not before us for review. Appeal 2010-009818 Application 10/540,203 4 through combination of split-body parts.” Ans. 5 (citing Kono, col. 1, ll. 9- 13). Appellant does not challenge the Examiner’s findings regarding what Turnquist discloses; rather, Appellant argues that (a) Kono fails to teach or suggest that an “ ‘annular seal is a metallic piston-ring seal having a separation site.’ ”; (b) the combination of Kono and Turnquist would result in a sealing arrangement “consisting of two brush seals,” not the claimed piston-ring seal and brush seal; (c) Turnquist describes welding the brush segment and seal ring segments to one another (quoting Turnquist, col. 5, ll. 45-48); and (d) Turnquist “would not want a piston-ring seal as it segments its backing plate 38, as well as its seal ring 14” (citing Turnquist, col. 1, lines 65 et seq.). App. Br. 6. In response, the Examiner finds that the term “piston-ring seal” is “generally used to describe a seal that is provided for a part that reciprocates along an axis of an enclosing wall” but that “[A]ppellant’s invention does not necessarily fit that definition.” Ans. 11. The Examiner finds that the only structural limitation imposed by reciting “piston-ring seal” is the presence of a “separation site” in the seal, because Appellant does not provide any other definition of the term “piston-ring seal.” Id. Appellant argues in reply that (e) Kono’s seal is a brush seal and so the “ ‘splits’ shown in Kono cannot provide the claimed separation site of the annular seal”; (f) a brush seal is not the same as an annular seal, citing to paragraph [0009] of the Specification; (g) a brush seal is not a metallic piston ring seal, citing to an argument presented in an Amendment dated Jun. 26, 2007; and (h) “a piston ring seal is a particular type of annular seal, Appeal 2010-009818 Application 10/540,203 5 regardless of whether or not it is used to seal a piston, or some other element. It is not a brush seal.” Reply Br. 2. Appellant’s arguments do not apprise us of error in the rejection. Appellant’s arguments (a), (b), (e), and (f) (as listed above) are premised on incorporating more from Kono than the Examiner relies upon; the arguments are therefore non-responsive to the rejection. The Examiner cited Kono for the general teaching that a seal may be split in order to allow its enlargement, not for the particular type of seal that could accommodate splits. Appellant has not explained why Kono’s teaching of splits would not be applicable to Turnquist’s annular seal. Appellant’s argument (c) is merely a statement of fact; Appellant does not explain why welding would prevent incorporating a separation site into Turnquist’s annular seal. Appellant’s remaining arguments (d), (g), and (h) are each premised on a construction of the term “piston-ring seal” that is not supported by a preponderance of the evidence of record. The Examiner correctly found that the term “piston-ring seal” is not defined in Appellant’s Specification and that the only structure Appellant describes as a “piston-ring seal” is a ring seal with at least one separation. Ans. 11. Appellant does not dispute the Examiner’s construction of “piston-ring seal”; indeed, Appellant agrees that a “piston ring seal is an adjustable split metal ring seal”; see Reply Br. 2 (quoting Amendment of Jun. 26, 2007, p. 6). Appellant does not specify any structural feature of a “piston-ring seal” that would distinguish Turnquist’s annular seal from the claimed piston-ring seal. For these reasons, Appellant has not identified reversible error in the rejection. Appeal 2010-009818 Application 10/540,203 6 2. Rejection of claims 26, 28, 29 for obviousness over Turnquist, Kono, and Beichl Although Appellant purports to argue these claims separately, Appellant relies solely on arguments similar to those addressed above. App. Br. 7; Reply Br. 3. We affirm this rejection for reasons similar to those given above. 3. Rejection of claims 37-40 for obviousness over Turnquist, Kono, and Hagle Although Appellant purports to argue these claims separately, Appellant relies solely on arguments similar to those addressed above. App. Br. 708; Reply Br. 3. We affirm this rejection for reasons similar to those given above. DECISION For the above reasons, the Examiner’s rejection of claims 20-23 and 25-40 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)(1)(iv). AFFIRMED mls