Ex Parte Morgan et al

Patent Trial and Appeal BoardOct 20, 2017

13281627 (P.T.A.B. Oct. 20, 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. 13/281,627 10/26/2011 Victor J. Morgan 19441-0691 (252921) 9988 13077 7590 10/24/2017 F.versiherk SiitherlanH fTF, EXAMINER Suite 2300 WOLCOTT, BRIAN P 999 Peachtree Street Atlanta, GA 30309 ART UNIT PAPER NUMBER 3745 NOTIFICATION DATE DELIVERY MODE 10/24/2017 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): patentdocket @ eversheds-sutherland. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte VICTOR J. MORGAN, NEELESH N. SARAWATE, and DAVID W. WEBER Appeal 2016-002995 Application 13/281,627 Technology Center 3700 Before: JAMES P. CALVE, GEORGE R. HOSKINS, and LEE L. STEPINA, Administrative Patent Judges. STEPINA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1, 3, 8, 9, 12, and 16—21. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2016-002995 Application 13/281,627 CLAIMED SUBJECT MATTER The claims are directed to a metallic stator seal. Claim 1, reproduced below with emphasis added, is illustrative of the claimed subject matter: 1. A seal assembly for a turbine, consisting of: a first metal shim forming a first outermost layer of the seal assembly; a second metal shim forming a second outermost layer of the seal assembly; and two flexible metal shim layers positioned adjacent to one another and in between the first metal shim and the second metal shim, such that the two flexible metal shim layers are in contact with either the first metal shim or the second metal shim, such that the seal assembly is reversible in that either of the first metal shim or the second metal shim is positionable on a load surface of a seal slot to seal a gap of the load surface through which cooling air flow escapes. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Kawaguchi US 6,220,606 B1 Apr. 24, 2001 Paprotna US 6,733,234 B2 May 11,2004 Sellars US 2010/0143103 A1 June 10,2010 REJECTIONS (I) Claims 1,3,8, and 9 are rejected under 35 U.S.C. § 103(a) as unpatentable over Kawaguchi. (II) Claims 12 and 16—20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Paprotna and Kawaguchi. (III) Claim 21 is rejected under 35 U.S.C. § 103(a) as unpatentable over Kawaguchi and Sellars. 2 Appeal 2016-002995 Application 13/281,627 OPINION Rejection (I) The Examiner finds that Kawaguchi discloses all of the limitations of the seal assembly for a turbine recited in claim V, including that the seal assembly is reversible, stating “shim layers 3 and 4 are symmetrical about intermediate layers 6 and 8 as viewed from Fig 2, therefore, the seal is reversible and would perform equally well with shim 3 (or shim 4) in position adjacent a load surface to seal gap.” Final Act. 3^4. We reproduce Figure 2 of Kawaguchi below. FIG. 2 Figure 2 of Kawaguchi is a sectional view of a metallic gasket. Kawaguchi 2:50-53. Appellants contend that the gasket taught by Kawaguchi does not include all the limitations recited in claim 1 and could not be modified to do so without rendering the gasket inoperable for its intended purpose. See 1 The heading for the rejection of claim 1 indicates that this rejection is based on 35 U.S.C. § 103(a), however, the body of the rejection maps each of the limitations recited in claim 1 to disclosure in Kawaguchi and does not propose any modification to Kawaguchi. See Final Act. 3^4. 3 Appeal 2016-002995 Application 13/281,627 Appeal Br. 5—7. In particular, Appellants contend that Kawaguchi’s seal is intended to be used between a cylinder head and cylinder block of a diesel motor, and the arrangement of intermediate plates 6 and 8 and step 9 causes the gasket in Kawaguchi to perform differently depending on its orientation. Id. In response, the Examiner states that “[t]he outermost shim layers 3 and 4 of Kawaguchi are symmetrical about the compensating portion 12 as viewed in Fig 2 [and] the outermost shim layers 3 and 4 of Kawaguchi are constructed of the same material as indicated by the hatching in Fig 2.” Ans. 8. Therefore, according to the Examiner, Kawaguchi’s seal would perform equally well regardless of which of layers 3 or 4 is positioned against a load surface. Id. In reply, Appellants contend that “simply looking at the outermost layers of a seal to determine reversibility is incorrect and not dispositive of the issue. Certain seals may have identical outermost layers and completely different internal components, and cannot be considered reversible” and “by the Examiner’s definition all seals with the same outermost layers would be reversible.” Reply Br. 3. Appellants also “reiterate[ ] that Kawaguchi is directed to a metallic gasket for positioning between a cylinder head and a cylinder block for diesel motors” and is suited to this function based on the structural relationship between plates 6 and 8. Id. We agree with Appellants’ statement that the seal in Kawaguchi is intended for use between the cylinder head and cylinder block of a diesel engine. See Kawaguchi 1:5—14. We reproduce Figure 1 of Kawaguchi below. 4 Appeal 2016-002995 Application 13/281,627 FIG, I Figure 1 of Kawaguchi is a partially omitted partial plan view showing a metallic gasket, including combustion chamber holes A. See Kawaguchi 2:37—38, 51—65. Although the Examiner discusses, extensively, the internal structure provided by Kawaguchi’s gasket, as shown in Figure 2 (see Final Act. 2-4; Ans. 8—9), Figure 2 of Kawaguchi depicts only an enlarged sectional view of a portion of what is depicted in Figure 1. Figure 2 is not a whole gasket. The Examiner does not adequately explain how the gasket, as a whole, disclosed by Kawaguchi satisfies the requirements set forth in claim 1. In particular, the Examiner does not explain sufficiently how the gasket (not merely the cross-sectional arrangement of layers) provided by Kawaguchi is positionable on a load surface of a seal slot to seal a gap of the load surface through which cooling air flow escapes. Thus, the Examiner erred in finding that Kawaguchi discloses a seal assembly for a turbine that is reversible in 5 Appeal 2016-002995 Application 13/281,627 that either of a first metal shim or a second metal shim is positionable on a load surface of a seal slot to seal a gap of the load surface through which cooling air flow escapes as required by claim 1. To the extent the Examiner determined that it would have been obvious to implement the structure of the cross-sectional arrangement of layers of the gasket depicted in Figure 2 of Kawaguchi in a gasket meeting the above-noted requirement in claim 1, the Examiner sets forth no articulated reasoning with rational underpinnings for such a modification. Accordingly, we reverse the Examiner’s rejection of claim 1, and claims 3, 8, and 9 depending therefrom, as unpatentable over Kawaguchi. Rejections (II) (III) The Examiner finds that Kawaguchi discloses a seal assembly that is reversible such that either of its first and second shims “is positionable on a load surface of a seal slot to seal a gap of the load surface through which cooling air flow escapes” for each of Rejections (II) and (III). Final Act. 6— 7. Accordingly, we reverse Rejections (II) and (III) because these rejections, like Rejection (I), are based on an unsupported finding of fact. DECISION The Examiner’s decision to reject claims 1, 3, 8, 9, 12, and 16—21 is reversed. REVERSED 6