Ex Parte Koch et al

Patent Trial and Appeal Board

Feb 9, 2018

13487971 (P.T.A.B. Feb. 9, 2018)

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.
13/487,971 06/04/2012 Uwe Koch E68119 1010US.01 1061
(0002.6)
26158 7590 02/13/2018
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
BYRD, EUGENE G
ART UNIT PAPER NUMBER
3675
NOTIFICATION DATE DELIVERY MODE
02/13/2018 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):
IPDocketing @ wbd-u s. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte UWE KOCH, MARTIN SCHUSTER, and
WALTER S CHUHMACHER
Appeal 2017-003890
Application 13/487,971
Technology Center 3600
Before STEFAN STAICOVICI, JILL D. HILL, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Uwe Koch et al. (“Appellants”) appeal under 35 U.S.C. § 134(a) from
the Examiner’s decision rejecting claims 1-12 and 14-20.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify ElringKlinger AG as the real party in interest. Appeal
Br. 1.
Appeal 2017-003890
Application 13/487,971
THE CLAIMED SUBJECT MATTER
Sole independent claim 1, reproduced below, is representative of the
claimed subject matter:
1. A radial shaft seal for sealing between a high pressure side
and a low pressure side in an annular space between a shaft and
a static structural part receiving the shaft, wherein the radial shaft
seal is configured to be rotationally symmetric and is arranged
coaxially to the shaft, comprising
(i) a first sealing ring made from a non-elastic plastic
material comprising a fluorinated polymer, which extends in the
direction of the low pressure side from a first end to a second
end, wherein there is a continuous smooth transition from a
substantially radial orientation of the first end into a substantially
axial orientation of the second end of the first sealing ring, the
second end forming a first sealing lip abutting against the shaft
with an initial stress resulting from a memory effect of the plastic
material,
(ii) a spacer ring, which is arranged axially displaced
relative to the first sealing ring in the direction of the low
pressure side, with a first face directed towards the high pressure
side and a second face directed towards the low pressure side,
and
(iii) an elastic shaped part, which extends in the direction
of the high pressure side from a first end having a surf ace
abutting against the second face of the spacer ring to a second
portion having a first opposing surface facing toward the first
sealing lip and a second opposing surface facing away from the
first sealing lip,
wherein between the spacer ring, the elastic shaped part
and optionally the first sealing lip there is formed a cavity, which
is subjected to the pressure prevailing on the shaft seal's high
pressure side in the direction of which the elastic shaped part
extends, in such a manner that as a result of said pressure
application the first sealing lip is pressed against the shaft by
means of the pressure applied to the second opposing surface of
the elastic shaped part, and the opposing pressure of the high
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Application 13/487,971
pressure side prevailing between the first sealing lip and the shaft
being equalized.
THE REJECTIONS
1) Claims 1-10, 12, and 14-20 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Wilkinson (US 3,637,222, issued Jan. 25,
1972) and Jackson (US 3,687,464, issued Aug. 29, 1972).
2) Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Wilkinson, Jackson, and Iizuka (US 2010/0230905 Al, published
Sept. 16, 2010).
DISCUSSION
Rejection 1
The Examiner finds that Wilkinson discloses most of the limitations
of claim 1 including, inter alia, a sealing ring 15 having a sealing lip 16 that
contacts shaft 10, but relies on Jackson to teach that the material of the
sealing ring is a non-elastic plastic material made from a fluorinated
polymer. Final Act. 2-3. The Examiner considers that it would have been
obvious to a person of ordinary skill in the art to modify the material of
Wilkinson’s seal ring to be a fluorinated polymer, as taught by Jackson, “to
provide a low coefficient of friction and a high thermal stability.” Id. at 3
(citing Jackson 4:3-6). According to the Examiner, the limitation of “a first
sealing lip abutting against the shaft with an initial stress” is
“functional/intended use language” that Wilkinson is capable of performing.
Id. at 3—4.
Appellants argue that Wilkinson’s sealing lip does not exert an initial
stress, because “Wilkinson requires an external force to provide a contact
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Application 13/487,971
pressure between the lip seal and the shaft.” Appeal Br. 5. According to
Appellants, the initial stress recited in claim 1 “results from a deformation of
the original disc shape of the first sealing ring before it is assembled in the
radial shaft seal.” Id. at 6 (citing Spec. 6:9-17).
In response, the Examiner notes that Wilkinson’s lip seal 15 “is free to
flex” and would “provide an initial stress for at least the portion of which the
rib 17 contacts the shaft 10.” Ans. 2. According to the Examiner, “an initial
stress would be generated by the overall weight/gravity of the lip portion 16
and rib 17 from which it extends from the limb 18.” Id. The Examiner
states that whether or not an external force is applied, Wilkinson would need
“at least some sealing ... to keep any residual leaking of fluid/debris from
entering within the housing.” Id.
Appellants reply that the initial stress required by claim 1 is “resulting
from a memory effect of the plastic material,” so that the sealing lip “exerts
a force against the shaft resulting merely from its configuration and material
properties. In other words, the first sealing ring is assembled in the radial
shaft seal under a certain tension.” Reply Br. 1-2. According to Appellants,
a lip seal that is “free to flex” does not have initial stress because initial
stress requires limited flex. Id. at 2. Appellants assert that gravity or “a
contact pressure resulting from weight is not an ‘initial stress resulting from
a memory effect of the plastic material,’ as presently claimed.” Id. at 3.
Appellants’ arguments are persuasive because the initial stress of
claim 1 requires more than simple contact between two members. The
initial stress results from a memory effect of the plastic material that causes
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Application 13/487,971
a deformed material to revert to its original shape.2 Appellants’
Specification discloses that the shape of “the sealing lip[] can ... be
achieved by a subsequent deformation” resulting in “an advantageous initial
stress ... from the so-called memory effect.” Spec. 6:14-17. Thus, we
agree with Appellants that the claimed sealing lip is designed to exert a
sealing force against the shaft based on “its configuration and material
properties.” Reply Br. 2. Although we appreciate that Wilkinson’s lip seal
is “free to flex,” the Examiner does not point to any portion of Wilkinson
that teaches deformation of the lip seal that would result in an initial stress,
as called for by independent claim 1. Moreover, absent any deformation,
merely substituting a fluorinated polymer as taught by Jackson for
Wilkinson’s seal ring material (see Final Act. 3) would not result in an initial
stress, nor make Wilkinson capable of having an initial stress.
Thus, we do not sustain the rejection of claims 1-10, 12, and 14-20
under 35 U.S.C. § 103(a) as unpatentable over Wilkinson and Jackson.
Rejection 2
Claim 11 depends indirectly from claim 1. Appeal Br. 12 (Claims
App.). The Examiner rejects claim 11 based on Wilkinson and Jackson in
combination with the additional disclosure from Iizuka. Final Act. 6-7. The
Examiner does not rely on the additional disclosure from Iizuka to cure the
deficiencies in the Wilkinson and Jackson combination discussed above. Id.
Therefore, we do not sustain the rejection of claim 11.
2 Shape-memory polymers have the ability to return from a deformed state,
induced by an external stimulus, to their original (permanent) shape.
Lendlein and Kelch, Shape-Memory Polymers, Angew. Chem. Int. Ed., vol.
4, issue 12, pp. 2034-2057, June 2002.
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Application 13/487,971
DECISION
The Examiner’s rejection of claims 1-12 and 14-20 is reversed.
REVERSED
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