Ex Parte London et al

Patent Trials and Appeals BoardFeb 18, 2016

12512367 - (D) (P.T.A.B. Feb. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/512,367 0713012009 John A. London 29293 7590 02/22/2016 FREUDENBERG-NOK GENERAL PARTNERSHIP LEGAL DEPARTMENT 47690 EAST ANCHOR COURT PLYMOUTH, MI 48170-2455 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 08-0031 (84 70-000217) 5566 EXAMINER DO, HAILEY KYUNG AE ART UNIT PAPER NUMBER 3753 NOTIFICATION DATE DELIVERY MODE 02/22/2016 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): fngp@hdp.com mlp@fngp.com PatentPros@fngp.com PTOL-90A (Rev. 04/07) U-NITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN A. LONDON and PA TRICK L. SCHEIB Appeal2013-006591 Application 12/512,3671 Technology Center 3700 Before LYNNE H. BROWNE, JILL D. HILL, and JASON W. MELVIN, Administrative Patent Judges. MELVIN, Administrative Patent Judge. DECISION ON APPEAL This appeal arises under 35 U.S.C. Â§ 134(a), from a rejection of claims 1and5-10.2 We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. 1 Appellants identify Freudenberg-NOK General Partnership as the real party in interest. Appeal Br. 2. 2 The Examiner has noted that claims 21-25 are allowed. Final Act. 6. Claims 2--4 and 11-20 are cancelled. See Appeal Br. 9, 10 (Claims App.). Appeal2013-006591 Application 12/512,367 BACKGROUND The claims are directed to a reduced inertia valve stem seal flange. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1 A valve stem seal including: a rigid cylindrical shell having an outwardly extending flange at a bottom end thereof; a resilient sealing body in contact with said rigid cylindrical shell, said resilient sealing body in constant contact with a valve stem; and said outwardly extending flange of said rigid cylindrical shell includes a first circumferential groove in an upper surface thereof and a second circumferential groove in a lower surface thereof, said first and second circumferential grooves spaced from a junction between said rigid cylindrical shell and said outwardly extending flange. Appeal Br. 9 (Claims App.). EVIDENCE The Examiner relies on the following evidence: Daghe US 4,717,178 Jan. 5, 1988 Kirchner US 5,775,284 July 7, 1998 Martelli WO 2004/109067 Al Dec. 16, 2004 REJECTIONS Appellants seek our review of the following rejections: 1. Claims 1, 5-7, and 10 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Martelli and Daghe. 2 Appeal2013-006591 Application 12/512,367 2. Claims 8 and 9 rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Martelli and Daghe, or over Martelli, Daghe, and Kirchner. DISCUSSION The Examiner concludes that "[i]t would have been obvious to one of ordinary skill in the art to modify the invention of Martelli by employing a circumferential groove in a lower surface of the outwardly extending flange, as taught by Daghe, to lower the load necessary to flex or fracture the weakened grooves." Final Act. 4-5. Appellants argue that a person of ordinary skill in the art "would not look to a fire hydrant coupling as disclosed in Daghe for modifying a valve stem seal of an internal combustion engine as disclosed in Martelli." Appeal Br. 5. The Examiner agrees that "one would not initially look to the art of fire hydrants to find a valve stem seal device" but reasons that "the present invention involves a valve stem seal having frangible connections" and therefore finds that Daghe is applicable to the present claims because "Daghe also involves frangible connections, which is directly pertinent to the problem being solved." Ans. 7. Daghe teaches that one of its objectives is "lessening the force necessary to break the usual frangible barrel coupling means"-i.e., producing a fire hydrant that breaks off with less force when struck by a car and therefore prevents damage to the main valve and barrel sections below the street. Daghe 1 : 14-63. We agree with Appellants that the Examiner has not satisfied the burden of showing unpatentability because Daghe is not analogous to the present invention. The Specification recites that "[ s Jome prior art valve 3 Appeal2013-006591 Application 12/512,367 stem seals have had histories of cracked flanges" and that a valve stem seal lacking a sufficiently flat flange portion "is susceptible to fatigue loading" that "further increase[ es] the likelihood of flange cracking." Spec. ii 5. Thus, the invention described in the Specification attempts to avoid this problem of the flange cracking. Id. at ii 6. "[A] reference is only reasonably pertinent when it 'logically would have commended itself to an inventor's attention in considering his problem."' Circuit Check Inc. v. QXQ Inc., 795 F.3d 1331, 1335 (Fed. Cir. 2015) (quoting In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992)); see also Comaper Corp. v. Antee, Inc., 596 F.3d 1343, 1351 (Fed. Cir. 2010) (noting that whether prior art is analogous depends on "(l) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.") (quoting Clay, 966 F.2d at 658-59). Because the claims at issue here specifically try to avoid the flange cracking, we do not agree with the Examiner that Daghe, which specifically makes the flange easier to crack, is reasonably pertinent to the problem with which Appellants are concerned. Accordingly, we do not sustain the rejection of claims 1 and 5-10. 4 Appeal2013-006591 Application 12/512,367 DECISION For the above reasons, the Examiner's rejection of claims 1 and 5-10 is reversed. REVERSED 5