Ex Parte Smith

Patent Trial and Appeal Board

Mar 21, 2017

12027472 (P.T.A.B. Mar. 21, 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.
12/027,472 02/07/2008 Robert E. Smith III 221-0089US 4915
29855 7590
Blank Rome LLP
717 Texas Avenue, Suite 1400
Houston, TX 77002
EXAMINER
STODOLA, DANIEL P
ART UNIT PAPER NUMBER
3679
NOTIFICATION DATE DELIVERY MODE
03/23/2017 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):
hou stonpatents @ blankrome .com
mbrininger @ blankrome. com
smcdermott@blankrome.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT E. SMITH III
Appeal 2015-001068
Application 12/027,472
Technology Center 3600
Before JENNIFER D. BAHR, GEORGE R. HOSKINS, and
BRANDON J. WARNER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Robert E. Smith III (Appellant)1 appeals under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 1—29. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies National Coupling Company as the real party in
interest. Br. 3.
Appeal 2015-001068
Application 12/027,472
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A seal for a female hydraulic coupling member comprising:
a generally cylindrical body having a central axial bore;
a first section of the generally cylindrical body having an
outer surface with a first larger outer diameter;
a second section of the generally cylindrical body having
an outer surface with a second smaller outer diameter;
a first angled surface between the outer surface of the first
section and the outer surface of the second section, the first
angled surface disposed at an acute angle to the longitudinal axis
of the generally cylindrical body;
an opposing second angled surface at one end of the
generally cylindrical body;
a first generally ring-shaped circumferential protrusion
situated between the first angled surface and the outer surface of
the first section that protrudes both axially and radially from the
first angled surface and the outer surface of the first section such
that both the outside diameter and at least one axial dimension of
the generally cylindrical body are increased;
a second generally ring-shaped circumferential protrusion
situated at one end of the generally cylindrical body and between
the second angled surface and the outer surface of the first
section that protrudes both axially and radially from the second
angled surface and the outer surface of the first section such that
both the outside diameter and at least one axial dimension of the
generally cylindrical seat body are increased.
REJECTIONS
I. Claims 1—16 and 29 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Smith (US 2005/0029749 Al, pub. Feb. 10, 2005)
and Jennings (US 4,471,965, iss. Sept. 18, 1984).
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Application 12/027,472
II. Claims 17—28 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Smith, Jennings, and Gittleman (US 3,479,066,
iss. Nov. 18, 1969).
DISCUSSION
Rejection I
Appellant argues for patentability of claims 1—16 subject to this
ground of rejection as a group. Br. 14—17. Appellant presents a separate
argument for claim 29. Id. at 18—19. We select claim 1 as representative of
claims 1—16, and claims 2—16 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(l)(iv). We address claim 29 separately.
Claims 1—16:
The Examiner finds that Smith discloses a seal (bore liner) as called
for in claim 1, except:
Smith fails to explicitly disclose the first generally ring-
shaped circumferential protrusion protrudes both axially and
radially from the first angled surface; at least one axial dimension
of the generally cylindrical body is increased by the first
protrusion; the second generally ring-shaped circumferential
protrusion is situated at one end of the generally cylindrical body,
protrudes both axially and radially from the second angled
surface, and at least one axial dimension of the generally
cylindrical body is increased by the second protrusion.
Ans. 4.
The Examiner finds that Jennings discloses first and second generally
ring-shaped protrusions (sealing lips 1166,116d) that protrude both axially
and radially from first and second angled surfaces, respectively, with at least
one axial dimension being increased by each of the protrusions. Id.
The Examiner determines it would have been obvious to modify Smith’s
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Application 12/027,472
seal “to include protrusions/lips located as taught by Jennings in order to
facilitate engaging a cylindrical surface in an interference fit manner.” Id.
(citing Jennings 4:15—18); see Jennings, Fig. 9, 4:15—18 (describing “four
sealing lips 116a, 1166,116c and 116<2 each with a rounded surface for
engaging a cylindrical surface such as 114a, 110a and 112a in an
interference fit manner”).
Appellant contends that “[t]he ‘rounded surfaces’ illustrated in Fig. 9
of Jennings protrude only in a radial direction” and “actually decrease the
axial dimension of the seal body,” contrary to what is required in claim 1.
Br. 17. In support of this contention, Appellant presents an annotated
version of Figure 9 of Jennings {id. at 18), which is reproduced below.
TF*IE3 _ S3
The annotated figure is a reproduction of Jennings’s Figure 9, which
illustrates a seal system comprising annular seal element 116, annotated with
a line “B” denoting what Appellant characterizes as “the extension of the
upper, angled surface of the seal body”; a line “A” denoting what Appellant
characterizes as “the extension of the outer surface of the seal body (less
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Application 12/027,472
‘outwardly extending annular web 116e’)”; a line “C2” extending normal to
the longitudinal axis of seal element 116 and intersecting with lines “A” and
“B” at the point of their intersection; and a line “Cl” denoting “the actual
upper extent of the seal body.” Id. at 17. According to Appellant, line “C2”
“would be the upper extent of the seal body but for the ‘rounded surfaces’”
and, “[t]hus, the ‘rounded surfaces’ of Jennings actually decrease the axial
dimension of the seal body.” Id.
In response, the Examiner presents her own annotated version of
Figure 9 of Jennings, which is reproduced below, to illustrate that Jennings’s
sealing lips 1166 and 116<2 do protrude axially from angled surfaces of seal
element 116 such that at least one axial dimension of the generally
cylindrical body is increased by each sealing lip. Ans. 21.
■^•IO
The Examiner’s annotated figure is a reproduction of Jennings’s
Figure 9 labelling what the Examiner considers to be the first “Angled
Surface” and the second “Angled Surface”; the length of the “Outer surface”
without the protrusions (sealing lips 1166, 116d); and the “Axial length with
protrusions.”
We find the Examiner’s representation of the portions of Jennings’s
seal element corresponding to the “angled” surfaces to be reasonable. The
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Application 12/027,472
Examiner’s annotated figure shows by a preponderance of the evidence that
Jennings’s protrusions (sealing lips) protrude axially from the angled
surfaces such that at least one axial dimension of the generally cylindrical
sealing element is increased by each of the protrusions.
Thus, Appellant fails to apprise us of error in the rejection of claim 1.
Accordingly, we sustain the rejection of claim 1 and claims 2—16, which fall
with claim 1, under 35 U.S.C. § 103(a) as unpatentable over Smith and
Jennings.
Claim 29:
Appellant takes issue with the Examiner’s finding that Jennings
discloses first and second protrusions having “a circular cross section in a
portion of their cross section which substantially exceeds 180 degrees” (Ans.
9). Br. 18—19. Appellant contends that Figure 9 of Jennings shows “only a
semicircular cross section (i.e., 180°) in the curved portion of the sealing lip
(and definitely not ‘a circular cross section in a portion of its cross section
which substantially exceeds 180 degrees,’ as required by claim 29).’”
Br. 19. According to Appellant, this is confirmed by Jennings’s description
of each of the rounded surfaces of the sealing lips engaging a cylindrical
surface in an interference fit manner. Id. (citing Jennings 4:10—18).
Appellant submits that because “[t]he ‘cylindrical surface’ is radially
disposed around the seal,” “there would be no need for the ‘rounded
surfaces’ to extend to the axial portions of the ‘sealing lips’ inasmuch as
those portions have no sealing function.” Id.
In response, the Examiner presents an annotated excerpt, reproduced
below, from Figure 9 of Jennings to illustrate that the rounded/circular
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Appeal 2015-001068
Application 12/027,472
surface of the protrusions extends substantially more than 180 degrees.
Ans. 21.
The Examiner’s annotated except is an expanded reproduction of
Jennings’s Figure 9 showing the right half of sealing element 116, with a
curved arrow added to denote the extent of the rounded surface of lower
sealing lip (“protrusion”) 116<2. The Examiner comments that “[t]he surface
that Appellant considers to be the angled surface seems to be either an
imperfection in the line quality or the transition between the angled surface
and the protrusion.” Id. at 21—22.
Figure 9 of Jennings depicts the rounded surface of lower protrusion
116<2 extending over substantially more than 180 degrees of its cross section
and transitioning into the lower angled surface labeled in the other annotated
figure (reproduced and discussed above) on page 21 of the Answer. Thus,
Jennings discloses by a preponderance of the evidence protrusions having “a
circular cross section in a portion of their cross section which substantially
exceeds 180 degrees,” as required in claim 29.
For the above reasons, Appellant does not apprise us of error in the
rejection of claim 29 under 35 U.S.C. § 103(a) as unpatentable over Smith
and Jennings, which we, thus, sustain.
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Application 12/027,472
Rejection II
Appellant argues for patentability of claims 17—28 subject to this
ground of rejection as a group. Br. 20-21. We select claim 17 as
representative of this group, and claims 18—28 stand or fall with claim 17.
The Examiner acknowledges that the combination of Smith and
Jennings lacks “a groove in the body at the juncture of the angled shoulder
and the first bore section sized and spaced such that the first protrusion on
the seal fits within the groove when the seal is fully seated in the coupling
member.” Ans. 10. The Examiner finds that “Gittleman discloses a pipe
coupling . . . having a groove (142) in the body (140) corresponding to the
location of protrusion (160) on the seal (156) which fits within the groove
when the seal is fully seated in the coupling member.” Id. (citing Gittleman,
Fig. 20). The Examiner determines it would have been obvious “to modify
the bore liner of the combination of Smith and Jennings to include a groove
corresponding to the seal projection as taught by Gittleman in order to locate
the seal and to ensure proper sealing.” Id. (citing Gittleman 7:60—65).
Appellant does not specifically contest either the Examiner’s findings
or the Examiner’s reasoning in combining Gittleman with Smith and
Jennings. Rather, Appellant argues that Gittleman’s ribs “protrude only in a
radial direction” and, thus, like Smith and Jennings in Appellant’s view, do
not describe “a seal body having axial protrusions.” Br. 20. Appellant’s
argument that Gittleman’s ribs protrude only in a radial direction attacks
Gittleman individually, and, thus, does not identify error in the rejection.
Further, for the reasons set forth above, we do not agree with Appellant that
Jennings fails to describe a seal body having axial protrusions.
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Application 12/027,472
Appellant adds that “[n]one of the cited references describes a
hydraulic coupling body, seal retainer or seal carrier having a groove at the
juncture of an angled shoulder and a section of a bore.” Id. This argument
also fails to identify error in the rejection because it attacks the references
individually, rather than as combined in the Examiner’s rejection.
For the above reasons, Appellant fails to apprise us of error in the
rejection of claim 17. Accordingly, we sustain the rejection of claim 17 and
claims 18—28, which fall with claim 17, under 35 U.S.C. § 103(a) as
unpatentable over Smith, Jennings, and Gittleman.
DECISION
The Examiner’s decision rejecting claims 1—29 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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