Ex Parte Villeneuve et al

Patent Trial and Appeal BoardOct 31, 2012

11118030 (P.T.A.B. Oct. 31, 2012)

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. 11/118,030 04/29/2005 Michel Laurent Villeneuve 65445-107 (05-AE10-581) 7901 100656 7590 10/31/2012 Dykema Gossett PLLC 39577 Woodward Avenue Suite 300 Bloomfield, MI 48304 EXAMINER PICKARD, ALISON K ART UNIT PAPER NUMBER 3674 MAIL DATE DELIVERY MODE 10/31/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MICHEL LAURENT VILLENEUVE and XIAOQING ZHENG ___________ Appeal 2010-008164 Application 11/118,030 Technology Center 3600 ____________ Before STEVEN D.A. McCARTHY, BRETT C. MARTIN and ANNETTE R. REIMERS, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-008164 Application 11/118,030 2 STATEMENT OF THE CASE Michel Laurent Villeneuve and Xiaoqing Zheng (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s decision to reject under 35 U.S.C. § 103(a): (1) claims 1-6, 11-20, 25-33, 35 and 36 as unpatentable over Dawson (US 5,730,447, issued Mar. 24, 1998) and Furumura (US 4,486,026, issued Dec. 4, 1984); (2) claims 7-10 and 21-24 as unpatentable over Dawson, Furumura and Stevenson (US 2,843,403, issued Jul. 15, 1958); (3) claims 1-5, 11, 12, 14-19, 25, 26, 28-33, 35 and 36 as unpatentable over Appellants’ Admitted Prior Art (hereafter “AAPA”), Spec. p. 2-3 and Furumura; and (4) claims 6-8 and 20-22 as unpatentable over AAPA, Furumura and Stevenson. Appellants’ present additional evidence in the Declaration filed under 37 C.F.R. § 1.132 of James F. Gardner, filed May 12, 2008, (hereafter referred to as the “Gardner Declaration”). Claim 34 has been cancelled. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION Appellants’ invention relates to a magnetic seal including hydrodynamic grooves for use in rotating machinery such as turbines. Spec. 2, ll. 6-8 and fig. 1. Claim 1 is illustrative of the claimed invention and reads as follows: 1. A hydrodynamic magnetic seal comprising: a magnetic mating ring; and a sealing ring attracted to the magnetic mating ring, the magnetic attraction between the sealing ring and the magnetic mating ring providing the biasing force that urges the magnetic ring and the sealing ring together the magnetic mating ring and/or the sealing ring Appeal 2010-008164 Application 11/118,030 3 including hydrodynamic grooves configured to create a separation film of air or gas between the magnetic mating ring and the sealing ring to reduce friction. OPINION The obviousness rejection over Dawson and Furumura Each of independent claims 1, 18, 32, 33 and 35 requires a hydrodynamic magnetic seal, wherein the magnetic ring and/or the sealing ring includes hydrodynamic grooves. App. Br., Claims Appendix. The Examiner found that Dawson discloses all the limitations of independent claims 1, 18, 32, 33 and 35 except for the magnetic ring 5 and/or the sealing ring 3 including hydrodynamic grooves to create a fluid film between rings. Ans. 3. The Examiner further found that Furumura discloses a magnetic seal including “the use of grooves (spiral shown Fig. 20b) on the magnetic ring (or on the other ring) to generate a fluid film between the rings and reduce wear.” Id. See also, Furumura, col. 12, ll. 5- 11 and fig. 20a. As such, the Examiner concludes that it would have been obvious to a person having ordinary skill in the art at the time the invention was made “to modify the rings [of Dawson] with the grooves taught by Furumura to create a film and reduce wear, while still maintaining an effective seal.” Id. Appellants argue that Dawson teaches away from Appellants’ claimed invention. App. Br. 9. Specifically, according to Appellants, Dawson teaches away from the inclusion of hydrodynamic grooves, because Dawson “teaches the specific inclusion of flat surfaces on the annular rings for maximum contact between the sealing ring and magnetic ring.” App. Br. 10. See also, Dawson, col. 4, ll. 16-22. Appeal 2010-008164 Application 11/118,030 4 In response, the Examiner takes the position “[t]he use of the grooves would not destroy the reference because a seal is still maintained.” Ans. 7. Appellants counter: one of ordinary skill in the art would not consider it obvious to modify the integrity of the annular interfaces of the elements of a magnetic seal in order to include hydrodynamic grooves, which would not provide a flat surface and/or would not provide maximum contact. The inclusion of grooves is completely contrary to the teachings/experience in the art at the time of the invention, a fact that is expressed within the teachings of Dawson. Whereas, at least one of the mating and sealing rings of Appellants’ invention includes grooves, as opposed to the flat surfaces taught by Dawson, Appellants’ invention does not provide the type of maximum contact clearly taught by Dawson. Reply Br. 5. In this case, although we appreciate the Examiner’s position that modifying the seal of Dawson to include hydrodynamic grooves would still allow a seal to be maintained (see Ans. 7), we agree with Appellants that modifying the seal of Dawson to include hydrodynamic grooves on the first annular surface 16 of sealing ring 10 and/or the second annular surface 17 of stationary ring 5 (see fig. 1 of Dawson), as proposed by the Examiner (see Ans. 3), would prevent maximum contact between sealing ring 10 and stationary ring 5. See App. Br. 10. See also, Reply Br. 5. In other words, modifying the first annular surface 16 of sealing ring 10 and/or the second annular surface 17 of stationary ring 5 of the seal device of Dawson to include hydrodynamic grooves would defeat the purpose of maximum Appeal 2010-008164 Application 11/118,030 5 contact between sealing ring 10 and stationary ring 5, as required by Dawson. See Dawson, col. 4, ll. 16-22. “A reference may be said to teach away when a person of ordinary skill, upon [examining] the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Hence, for the foregoing reasons, a person of ordinary skill in the art would have been discouraged from including hydrodynamic grooves to the first annular surface 16 of sealing ring 10 and/or the second annular surface 17 of stationary ring 5 of Dawson’s seal device, as the Examiner proposes. As such, we agree with Appellants that the modification proposed by the Examiner would not have been obvious to a person of ordinary skill in the art. See App. Br. 10-11. See also, Reply Br. 5. Accordingly, the rejection of independent claims 1, 18, 32, 33 and 35 and their respective dependent claims 2-6, 11-17, 19, 20, 25-31 and 36 as unpatentable over Dawson and Furumura cannot be sustained. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988). 1 The obviousness rejection over Dawson, Furumura and Stevenson The Examiner’s application of Stevenson as a separate additional reference in conjunction with Dawson and Furumura does not remedy the deficiencies of Dawson and Furumura as described above. Hence, the 1 Since we have determined that the modification of Dawson in view of Furumura as proposed by the Examiner would not have been obvious to a person of ordinary skill in the art, we do not reach the evidence of the Gardner Declaration. Appeal 2010-008164 Application 11/118,030 6 rejection of claims 7-10 and 21-24 as unpatentable over Dawson, Furumura and Stevenson likewise cannot be sustained. The obviousness rejection over AAPA and Furumura As noted above, each of independent claims 1, 18, 32, 33 and 35 requires a hydrodynamic magnetic seal, wherein the magnetic ring and/or the sealing ring includes hydrodynamic grooves. App. Br., Claims Appendix. The Examiner found that AAPA discloses all the limitations of independent claims 1, 18, 32, 33 and 35 except for the magnetic seal rings including hydrodynamic grooves. Ans. 4. The Examiner further found that Furumura discloses a magnetic seal including “the use of grooves (spiral shown Fig. 20b) on the magnetic ring (or on the other ring) to generate a fluid film between the rings and reduce wear.” Id. See also, Furumura, col. 12, ll. 5-11 and fig. 20a. As such, the Examiner concludes that it would have been obvious to a person having ordinary skill in the art at the time the invention was made “to modify the rings [of AAPA] with the grooves taught by Furumura to create a film and reduce wear, while still maintaining an effective seal.” Id. Appellants argue that it would not be obvious for a person of ordinary skill in the art “to modify a conventional mechanical seal with hydrodynamic grooves to comprise a magnetic seal.” App. Br. 18. Specifically, Appellants argue: In conventional mechanical seals, mechanical springs are employed to urge the seal ring together, and the closing (i.e., biasing) force will grow Appeal 2010-008164 Application 11/118,030 7 stronger (i.e., increase) as the degree of separation increases. Accordingly, separation between the seals caused by the use of hydrodynamic grooves is not likely to have any adverse effects on the longevity and operation of the conventional mechanical seal. In contrast, in magnetic seals, a magnetic attraction force is used to bias the seal rings together. The biasing force decreases, rather than increases, as the degree of separation increases. In fact, the magnetic attraction force may completely disappear if the separation becomes too large. Id. In response, the Examiner takes the position: Hydrodynamic seals such as Furumura include a biasing device and are configured to ensure enough dynamic pressure is generated during rotation to create the film while also ensuring the faces are biased together closed during rest. It is considered obvious that this teaching/concept would be applied regardless of what biasing device is used. Ans. 10. Appellants counter that Furumura’s use of a biasing device “suggests the unpredictability in connection with the addition of hydrodynamic grooves. Appellants’ invention utilizes the magnetic attraction between the sealing ring and the magnetic mating ring.” Reply Br. 11. At the outset, we note that Appellants’ Specification specifically discloses that in mechanical face seals, which include a stationary sealing ring and a rotating sealing ring, (1) “the seal face of the rotating sealing ring Appeal 2010-008164 Application 11/118,030 8 or the stationary sealing ring may include [hydrodynamic] grooves of some type;” and (2) “the sealing faces of both sealing rings are biased together by mechanical means that may include a spring.” Spec. 2, ll. 15-18. Appellants’ Specification further discloses: In a magnetic face seal, in contrast, the stationary sealing ring is magnetic and attracts the rotating sealing ring. Thus, mechanical means to bias together the sealing faces can be eliminated. There are no hydrodynamic grooves in a magnetic face seal. Instead, the rotating sealing ring includes a carbon element and the seal face of the magnetic sealing ring rubs against the carbon element. Spec. 2, ll. 19-23. In this case, although Furumura discloses a magnetic seal ring 85 and an opposing magnetic or non-magnetic seal ring 87 (see Furumura, col. 11, ll. 22-23 and 33-35, respectively), as acknowledged by both the Examiner and Appellants (see Ans. 10 and Reply Br. 11, respectively), Furumura discloses the use of a biasing device (i.e., O-rings 92) to urge the opposing seal rings 85 and 87 together. See Furumura, col. 10, ll. 52-66 and col. 11, 52-61 and fig. 20a. In other words, Furumura’s seal device utilizes a mechanical biasing device (i.e., O-rings 92), as opposed to magnetic attraction between the seal rings, to bias opposing seal rings 85 and 87 together. Consequently, since Furumura discloses the use of a mechanical device (spring) as opposed to a magnetic force to bias the seal rings together, we find that a person of ordinary skill in the art would not have been motivated to modify the magnetic seal device of AAPA with the Appeal 2010-008164 Application 11/118,030 9 hydrodynamic grooves of Furumura’s mechanical seal device with a reasonable expectation of success. Accordingly, the rejection of independent claims 1, 18, 32, 33 and 35 and their respective dependent claims 2-5, 11, 12, 14-17, 19, 25, 26, 28-31 and 36 as unpatentable over AAPA and Furumura cannot be sustained. The obviousness rejection over AAPA, Furumura and Stevenson The Examiner’s application of Stevenson as a separate additional reference in conjunction with AAPA and Furumura does not remedy the deficiencies of AAPA and Furumura as described above. Hence, the rejection of claims 6-8 and 20-22 as unpatentable over AAPA, Furumura and Stevenson likewise cannot be sustained. DECISION The decision of the Examiner is reversed as to claims 1-33, 35 and 36. REVERSED Klh