Ex Parte Smith - Page 4



                    Appeal No. 2006-2450                                                                                                  
                    Application No. 10/211,828                                                                                            

                    of the first and second rings shoulders with a seal between as disclosed by Rogers would                              
                    more accurately hold the seal of Smith in place.”                                                                     
                            We disagree with the examiner’s reasoning.   Independent claim 1 recites “a seal                              
                    retainer insertable into the receiving chamber; the seal retainer having a first inner ring                           
                    and a second outer ring concentric with the first inner ring; at least part of the first inner                        
                    ring fitting radially inside the second outer ring in an engaged position; the first inner                            
                    ring having a first end abutting the internal shoulder in the receiving chamber; at least                             
                    part of the second outer ring having an externally threaded area to engage the female                                 
                    member.”    Independent claim 10 recites “at least part of the first inner ring held radially                         
                    inside the second outer ring; part of the second ring having external threads to engage the                           
                    receiving chamber.”  Independent claim 17 recites “a first inner ring removably inserted                              
                    through at least part of a concentric second outer ring … the second outer ring having …                              
                    and a threaded area for engaging the female member.”  Thus, each of the independent                                   
                    claims recites two rings within the female body, where one ring is insertable and                                     
                    concentric to the other ring.                                                                                         
                            Smith teaches a hydraulic coupling with a female body, item 60, which contains                                
                    two rings (item 30 and item 50) with two ring seals (items 40 and 61).  The outer of the                              
                    two rings, item 30 has threads which thread into the female member.  Smith does not                                   
                    teach that the rings are arranged such that a first inner ring fits radially inside the second                        
                    outer ring as claimed in claim 1.                                                                                     
                            Rogers teaches a fluid coupling, with a female member (item 33) with a ring (item                             
                    34) around an outer shoulder of the female member which holds the seal (item 38).  We                                 
                    do not find that Rogers teaches two rings and a female member, rather Rogers teaches                                  
                    that the female member has a shoulder which fits inside and is concentric to the one ring.                            
                    This arrangement of female member and ring holds the seal.                                                            
                            It is the burden of the examiner to establish why one having ordinary skill in the                            
                    art would have been led to the claimed invention by the express teachings or suggestions                              
                    found in the prior art, or by the implication contained in such teachings or suggestions.                             
                    In re Sernaker 702 F.2d 989, 995, 217 USPQ 1, 6 (Fed. Cir. 1983).  “The motivation,                                   


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