Ex Parte Kamibayashiyama et al

Patent Trial and Appeal BoardMar 23, 2017

13102083 (P.T.A.B. Mar. 23, 2017)

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. 13/102,083 05/06/2011 Julian F. Kamibayashiyama P255P0058USA 6333 49458 7590 DON W. BULSON (PARK) RENNER, OTTO, BOISSELLE & SKLAR, LLP 1621 EUCLID AVENUE / 19TH FLOOR CLEVELAND, OH 44115 EXAMINER WARREN, STACY N ART UNIT PAPER NUMBER 3678 NOTIFICATION DATE DELIVERY MODE 03/27/2017 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): ipdocket @ rennerotto. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JULIAN F. KAMIBAYASHIYAMA and JEFFREY D. NAVARRO Appeal 2015-004639 Application 13/102,083 Technology Center 3600 Before: CHARLES N. GREENHUT, JEFFREY A. STEPHENS, and PAUL J. KORNICZKY, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1— 4, 6, 7, 9-13, 26, 28, 29, and 33—38. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. Appeal 2015-004639 Application 13/102,083 CLAIMED SUBJECT MATTER The claims are directed to a seal. Claim 1, reproduced below, is illustrative of the claimed subject matter: A seal for contact against a mating member, the seal comprising an annular seal member formed of an elastomeric polymeric material and having a longitudinal axis, the seal member having a longitudinally facing annular sealing surface surrounding a central opening through the seal and a radially facing annular fluid repelling surface contiguous with the sealing surface, the fluid repelling surface having a pattern of microstructures formed thereinto, the microstructures rendering the fluid repelling surface as being hydrophobic or superhydrophobic, and the fluid repelling surface terminating at a curved surface of the fluid repelling surface that tangentially transitions to the sealing surface. REJECTION1 Claims 1—4, 6, 7, 9-13, 26, 28, 29, and 33—38 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Papenguth (US 3,215,442) in view of Extrand (WO 2007/035511). McLeod (US 2007/0261224 Al) was additionally cited by the Examiner in the Answer (Ans. 4) in rebuttal to Appellants’ argument (App. Br. 11) that there would not have been a reasonable expectation of success in including microstructures in rubber. OPINION Appellants present arguments for claims 1 (App. Br. 6—12), 13 (App. Br. 12—13), 34, and 37 (App. Br. 13). The issues relating to independent 1 The Examiner withdrew a rejection under 35 U.S.C. § 112, second paragraph. Adv. Act. Jan. 1, 2015. 2 Appeal 2015-004639 Application 13/102,083 claims 34 and 37 appear to be the same as those regarding independent claim 1 (App. Br. 13). There does not appear to be any disagreement that Papenguth discloses a seal structure as broadly recited in independent claim 1. See Final Act. 3^4; App. Br. 9. Appellants and the Examiner agree that Papenguth lacks a fluid repelling surface having a pattern of microstructures. Final Act. 4; App. Br. 9. Appellants and the Examiner also agree that Extrand uses microstructures on lyophobic or ultralyophobic surfaces to provide anisotropic wetting qualities, which Extrand extolls for, among other things, “reducing fluid friction and turbulence.” Final Act. 4 (citing Extrand 3:27—28, 19:25—28); App. Br. 10. The Examiner found that these stated benefits in Extrand would have predictably provided similar benefits in Papenguth, and that this would have motivated one skilled in the art to include Extrand’s fluid repelling surface with microstructures in Papenguth’s seal. Appellants’ contentions are concisely summarized: (1) there is no motivation provided in Papenguth or in Extrand for a combination of the references, (2) there is no teaching or suggestion in the references that Papenguth could be modified by Extrand, and (3) to the extent one could or would modify Papenguth with Extrand, the result would still not include all of the features as recited in claim 1. App. Br. 8. Regarding the first of Appellants’ contentions, Appellants initially assert that “Papenguth has nothing to do with and does not require a seal member with a fluid repelling surface, let alone require any fluid repelling surface.” App. Br. 9. Although this argument does not address the specific motivation articulated by the Examiner in support of the proposed 3 Appeal 2015-004639 Application 13/102,083 combination, the Examiner also correctly points out that this assertion is unlikely to be factually accurate because repelling fluid from the seal is likely to improve its sealing capabilities and reduce the likelihood of leaks. Ans. 3. Finding motivation to combine the prior art teachings is a question of fact. In re Kahn, 441 F. 3d 977, 985 (Fed. Cir. 2006) (citing In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000)). Although Appellants maintain their argument (Reply Br. 3), Appellants have not pointed to any factual evidence or articulated any technical reasoning to apprise us of error in the Examiner’s reasonable position. Appellants turn to the reasoning initially articulated by the Examiner (above) for the proposed combination: “Papenguth is not at all concerned with controlling flow conditions through Papenguth’s pipe flanges 20 and 21 and makes no mention of controlling such flow conditions.” App. Br. 10. However, there is no requirement that a motivating benefit aid in achieving the main, or expressly stated, purpose of the prior art device being modified. “[A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed” KSR Inti. v. Teleflex 550 U.S. 398, 420 (2007). As Extrand (see above) makes clear, friction and turbulence are common conditions given consideration in a wide variety of fluid transfer applications. With regard to their first argument, Appellants lastly contend that “the seal has little if any impact on flow conditions through the fitting, which is the focus of Extrand.” App. Br. 11. This assertion is unsupported by any facts or reasoning of record. Extrand makes it very clear that even small protuberances can have significant impacts on fluid flow characteristics. See 4 Appeal 2015-004639 Application 13/102,083 Final Act. 4 (citing Extrand (element 144 depicted in Figure 13b and discussed at pp. 12, 17)). We turn to Appellants’ second contention that there is “no basis to conclude that the [Extrand] microstructures could be successfully used with a resilient material.” App. Br. 11. The Examiner correctly points out that Extrand expressly describes “wetted portions” having anisotropic properties. Ans. 3 (citing Extrand 19:24—32). Although Extrand states that “[mjicroscale asperities according to the invention may be formed using known molding and stamping methods by texturing the tooling of the mold or stamp used in the process” (Extrand 4:12—14), Appellants contend Extrand only contemplates use with rigid components. Reply Br. 4—5. In the embodiment depicted in Figure 3 of Extrand, this may be correct because there do not appear to be any resilient components. However, reference numeral 28, cited by the Examiner, is used generically by Extrand to refer to the anisotropic wetting fluid contact surface. Extrand states, “[t]he term ‘fluid contact surface’ refers broadly to any surface or portion thereof of a fluid handling component that may be in contact with a fluid.” Extrand 7:18—19. We note that in the embodiment depicted in Figure 5, Extrand identifies a fluid contact surface as including a diaphragm, which is generally known to be typically composed of rubber or a rubber-like resilient material. See Extrand 8:8—17. In any case, the Examiner introduces McLeod to rebut Appellants’ argument and demonstrate that it was well- known that microstructures could be formed on resilient materials, in particular rubber, which may be used in seals or gaskets. Ans. 4 (citing McLeod paras. 26, 58). Appellants argue that there would have been no motivation to combine McLeod because McLeod is used for a different purpose. Reply Br. 7—9. Appellants’ argument does not relate to the 5 Appeal 2015-004639 Application 13/102,083 purpose for which the Examiner cited McLeod—demonstrating a reasonable expectation of success in applying Extrand’s microstructures to a resilient or rubber component, Papenguth’s seal 12. McLeod’s use of microstructures for an arguably different purpose does not detract from the Examiner’s finding regarding the likelihood of successfully incorporating microstructures into Papenguth’s seal 12. The reasoning to combine the microstructures was derived from Extrand and need not be repeated in McLeod to support the Examiner’s proposed combination. “Non obviousness cannot be shown by attacking references individually when the rejection is predicated upon the teachings of a combination of references.” See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citation omitted). Appellants’ final contention is that the results of combining Papenguth with Extrand “would be merely providing microstructures on the inner diameter of Papenguth’s pipe flanges 20 and 21.” App. Br. 11. The basis for Appellants’ assertion in this regard is essentially the same as that underlying Appellants’ second contention: “Extrand does not make any mention of providing microstructures on resilient materials, let alone on seals.” App. Br. 12. We disagree with this argument for the reasons discussed above. Further, the fact that it may have been obvious to provide microstructures on Papenguth’s pipe flanges 20, 21 is not necessarily any indication that it would not have been obvious to provide microstructures on Papenguth’s seal 12 as well. For the foregoing reasons we sustain the Examiner’s rejection of claims 1, 34, and 37 and of those dependent claims not separately argued. We turn to claim 13. Claim construction is a question of law based on underlying facts. Neither the Examiner nor Appellants direct our attention 6 Appeal 2015-004639 Application 13/102,083 to any evidence supporting their respective positions regarding the broadest reasonable interpretation of the term “dynamic seal.” Although the PTO must give claims their broadest reasonable interpretation, this interpretation must be consistent with the one that those skilled in the art would reach. In re Cortright, 165 F. 3d 1353, 1358 (Fed. Cir. 1999). We cannot agree with the Examiner that one skilled in the art would understand the term “dynamic seal” to relate only to the intended use of the seal. See Ans. 6. While the term is indicative of the seal’s use, we understand this term, in its ordinary and customary usage, to refer to a seal used against a surface in repetitious or continuous motion.2 Even considering the initial joining of Papenguth’s pipe flanges or variations in their spacing resulting from excess pressure (Ans. 5), Papenguth’s seal cannot reasonably be said to satisfy this definition. App. Br. 12. As the Examiner provides no further evidence that one skilled in the art would understand Papenguth’s seal as a “dynamic seal,” the rejection of claim 13 cannot be sustained on the ground set forth by the Examiner. DECISION The Examiner’s rejection of claims 1—4, 6, 7, 9-12, 26, 28, 29, and 33—38 is affirmed. The Examiner’s rejection of claim 13 is reversed. 2 seal (in Mechanical engineering and manufacture) (2001) in R. L. Timings, & P. Twigg, Dictionary of engineering terms, Butterworth- Heinemann. London, UK: Routledge. Retrieved from http:// search, credoreference. com/ content/entry/bhidet/ seal_in_mechanical_e ngineering_and_manufaeture/0, last accessed Mar. 10, 2017; see also http://www.globalspec.com/leammore/mechanical_components/seals/dynam ic_seals, last accessed Mar. 10, 2017. 7 Appeal 2015-004639 Application 13/102,083 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)(l)(iv). AFFIRMED-IN-PART 8