Brad L. Noll et al.

Patent Trials and Appeals Board

Aug 28, 2019

14630039 - (D) (P.T.A.B. Aug. 28, 2019)

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.
14/630,039 02/24/2015 Brad L. Noll 214467-9010-US03 1010
23409 7590 08/28/2019
MICHAEL BEST & FRIEDRICH LLP (Mke)
100 E WISCONSIN AVENUE
Suite 3300
MILWAUKEE, WI 53202
EXAMINER
BARSS, KEVIN R
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
08/28/2019 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):
mkeipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BRAD L. NOLL, CHRIS CORRAL, and
WILLIAM M. ORR
____________________

Appeal 2018-004472
Application 14/630,039
Technology Center 3700
____________________

Before EDWARD A. BROWN, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.

PESLAK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 21–40.1 We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM and ENTER NEW GROUNDS OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).

1 Zurn Industries, LLC is the applicant and is identified as the real party in
interest. Appeal Br. 1.
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Application 14/630,039

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THE CLAIMED SUBJECT MATTER
Appellants’ invention “relates to backflow prevention assemblies and
valves and, in particular, to replacement valves and assemblies.” Spec. ¶ 2.
Claims 21, 31, and 37 are independent. Claim 21, reproduced below, is
illustrative of the claimed subject matter.
21. A method of manufacturing a backflow prevention
assembly comprising the steps of:
receiving a measured length of an existing backflow
prevention assembly between a fluid supply conduit to a fluid
exit conduit, wherein the existing backflow prevention
assembly includes an inlet shut-off valve, a backflow
prevention valve, and an outlet shut-off valve;
obtaining a replacement backflow prevention valve
having a length different than the existing backflow prevention
valve;
obtaining an inlet shut-off valve and an outlet shut-off
valve;
securing the replacement backflow prevention valve
between the outlet shutoff valve and inlet shut-off valve to form
a replacement backflow prevention assembly, such that a length
of the replacement backflow prevention assembly, including the
replacement backflow prevention valve, the inlet shut-off valve,
and the outlet shut-off valve, is equal to the measured length of
the existing backflow prevention assembly;
obtaining certification of the replacement backflow
prevention assembly, including the replacement backflow
prevention valve, the inlet shut-off valve, and the outlet shut-off
valve by a certifying authority; and
providing an entire certified replacement backflow
prevention assembly, including the replacement backflow
prevention valve, the inlet shut-off valve, and outlet shut-off
valve to a replacement site, wherein the existing backflow
prevention assembly is installed.
Claims Appendix A-1.
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Application 14/630,039

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REJECTIONS
1) The Examiner rejected claims 21–24, 27–32, 35–37, and 40 under
35 U.S.C. § 103 as unpatentable over Wilkins® a Zurn® Company,
Model 450 Double Check Value Assembly 2 pages
(2006)(“Wilkins”) and Watts® Regulator Co., Watts Spools and
Flanges for Blackflow Preventers, 4 pages (2002)(“Watts”).
2) The Examiner rejected claims 25, 26, 33, 34, 38, and 39 under 35
U.S.C. § 103 as unpatentable over Wilkins, Watts, and Grove (US
2,586,942, issued Feb. 26, 1952).

DISCUSSION
Rejection 1
Claim 21, 22–24 and 27–30
Independent claim 21 requires that a replacement backflow prevention
valve have a different length than an existing backflow replacement valve.
Appeal Br. A-1 (Claims App.). The Examiner finds, inter alia, that
“Wilkins discloses two variable length assemblies” where the “[a]ssembly
includes inlet and outlet shutoff valves.” Final Act. 6. The Examiner also
finds that “both Wilkins and Watts literature discloses that the components
are manufactured to AWWA standards.” Id. at 8.
Appellants concede that Wilkins discloses two assemblies of different
lengths, but contend the rejection does not establish that the lengths of the
valves in Wilkin’s assemblies differ in length as required by claim 21.
Appeal Br. 11. Appellants further contend that “neither of the Wilkins or
Watts publications, alone or in combination, teach or suggest whole
replacement backflow prevention assembly certification” and that Watts
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merely describes “the certification of individual components.” Id. at 12; see
also id. at 10.
In the Answer, the Examiner does not squarely address Appellants’
contention that Wilkins does not disclose valves of differing lengths, but
asserts that “it is considered to be within the ordinary skill in the art to be
able to determine and choose from the various lengths and sizes in the
literature the proper equipment required for the particular replacement
situation in question.” Ans. 20. For the following reasons, we sustain the
rejection, but designate our affirmance as a new ground of rejection.
Appellants’ Specification discloses a variety of certifying agencies
that include “the Foundation for Cross-connection Control and Hydraulic
Research (FCCCHR), American Society of Sanitary Engineers (ASSE), The
American Water Works Association (AWWA), The International
Association of Plumbing and Mechanical Officials (IAPMO), Underwriters
Laboratories (UL), and Canadian Standards Association (CSA).” Spec.
¶ 25. Although Wilkins does not use the word “certified,” it similarly
discloses that its assemblies are in compliance2 with the standards of several
of the same agencies, i.e., ASSE, AWWA, UL, FCCCHR. Wilkins, 1.
Appellants do not persuasively argue that Wilkins’ disclosure that its
assemblies are provided in compliance with standards is materially different
than the method disclosed in Appellants’ Specification that “[t]he assembly
200 is simply manufactured, certified by a relevant certifying authority, and
shipped to a customer ready for installation.” Spec. ¶ 28.
Additionally, we do not agree with the Examiner that the broadest

2 An ordinary definition of compliance is “conformity in fulfilling official
requirements.” https://www.merriam-webster.com/dictionary/compliance.
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reasonable interpretation of certification in the claims requires that “a
certificate” be obtained from the manufacturer (Final Act. 8), but, rather, the
certification limitation is satisfied by whatever practice a certifying agency
allows a manufacturer to indicate that its product is in compliance with the
agency’s official requirements. See Wilkins (“ASSE® Listed,” “AWWA
Compliant,” “UL® Classified,” “C-UL® Classified,” “FM® Approved,”
“Approved by the Foundation for Cross Connection Control and Hydraulic
Research at the University of Southern California”). Therefore, we find
unpersuasive Appellants’ arguments that Wilkins alone does not disclose
certification of its disclosed assemblies regardless of whether those
assemblies are intended to replace an existing assembly or intended for new
construction.
Watts, however, specifically uses the word “certified” in connection
with ISO 9001. Watts, 1. Although Appellants argue that neither Wilkins
nor Watts teaches or suggests certification of the entire replacement
backflow prevention assembly, that argument is not persuasive because it is
an attack on Wilkins and Watts individually where the rejection is based on
the combined teachings of Wilkins and Watts. See In re Keller, 642 F.2d
413, 425 (CCPA 1981)(One cannot show non-obviousness by attacking
references individually when the rejection is based on a combination of
references.)
To the extent that Appellants are contending the Examiner’s findings
concerning certification are based on improper hindsight (Appeal Br. 9–10),
we note that Wilkins discloses standards compliance for its assemblies,
which we find is substantially equivalent to the certification requirement in
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the claims, and Watts specifically discloses certification in connection with
the ISO 9001 requirements.
With respect to the length of the backflow prevention replacement
valve, claim 21 recites that a backflow prevention assembly “includes an
inlet shut-off valve, a backflow prevention valve, and an outlet shut-off
valve.” Appeal Br. A-1 (Claims App.). An exemplary embodiment of such
a back flow prevention assembly 100 is shown in Appellants’ Figure 4.
Spec. Fig. 4. As can be seen from Figure 4, the back flow prevention
assembly includes back flow prevention valve 105 and inlet and outlet
shutoff valves. See Spec. ¶ 25, Fig. 4.
Wilkins discloses two assemblies, each including a backflow
prevention valve and inlet and outlet shutoff valves, and each having a
different overall length “A.” Wilkins 1. However, Wilkins does not
disclose whether the backflow prevention valves which are inside the two
assemblies have different lengths or are the same length. See id.
Consequently, a preponderance of the evidence does not support the
Examiner’s finding that Wilkins’ two disclosed assemblies include back
flow prevention valves of differing lengths.
However, the assemblies disclosed in Wilkins include a limited
number of components that can be adjusted to vary the length of the overall
assembly. One of those components is a backflow prevention valve. See
Wilkins, 1 (“Designed for installation on potable water lines to protect
against both backsiphonage and backpressure of polluted water into the
potable water supply.”). We, thus, determine that it would have been
obvious to one of ordinary skill in the art, based on the disclosure of
different length assemblies in Wilkins, to “obtain[ing] a replacement
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backflow prevention valve having a different length than the existing
backflow prevention valve” as one variable to determine the “length of the
replacement backflow prevention assembly . . . equal to the measured length
of the existing backflow prevention assembly” as required by claim 21.
Based on the foregoing, we sustain the rejection of claim 21 and dependent
claims 22–24 and 27–30. Because our findings and reasoning differ
somewhat from the Examiner’s, we designate our affirmance as a new
ground of rejection under 37 C.F.R. § 41.50(b).
Claims 31, 32, 35, and 36
Appellants first contend that the rejection of claim 31 is in error
because “nothing in the Wilkins publication or the Watts publication
describes full removal of the assembly where an assembly having a
different-sized valve is being replaced.” Appeal Br. 12. Claim 31 does not
require replacement of “a differently-sized valve.” This contention is, thus,
not persuasive because it is not commensurate in scope with claim 31.
Appellants repeat the same arguments with respect to certification of
the assembly as discussed above for claim 21. Appeal Br. 13. For the
reasons discussed above in connection with claim 21, this contention is not
persuasive.
We are not apprised of error in the rejection of claim 31 and therefore
sustain the rejection. Appellants do not offer additional arguments for the
patentability of claims 32, 35 and 36 which depend from claim 31. Appeal
Br. 14. We, thus, sustain the rejection of claims 32, 35, and 36.
Claims 37 and 40
Claim 37 is an apparatus claim directed to a “replacement backflow
prevention assembly.” Appeal Br. A-6 (Claims App.). Appellants argue
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that the Examiner has not established the claim limitation “wherein the
entire replacement backflow prevention assembly is certified.” Id. at 13.
This claim limitation appears to be part of the process of manufacturing the
claimed assembly.3 Product-by-process limitations such “as ‘intermixed,’
‘ground in place,’ ‘press fitted,’ ‘etched,’ and ‘welded’” are “capable of
construction as structural rather than process limitations.” In re Garnero,
412 F.2d 276, 279 (CCPA 1969). The determinative question is whether the
“product defined by claim [37] is patentably distinguishable over” the prior
art in view of the structural limitations in the claim. Id. The requirement
that the entire replacement backflow prevention assembly is certified does
not appear to impart a structural limitation to the assembly as recited in
claim 37. Further, Appellants have not persuasively argued that the
limitation is structural. See Appeal Br. 13. In a case such as this, the law
shifts to Appellants the burden of producing evidence that the claimed
structure and the prior art structure are not identical. In re Thorpe, 777 F.2d
695, 697–98 (Fed. Cir. 1985). Consequently, we enter a new ground of
rejection against claim 37 and provide Appellants with the opportunity to
establish with evidence that the term “certified” imparts patentably distinct
structure to the assembly recited in claim 37.
Similar to claim 21, claim 37 recites that “the replacement backflow
prevention valve comprises a length that is different than a length of an
existing backflow prevention valve of an existing backflow prevention
assembly.” Appeal Br. A-6 (Claims App.). The Examiner relies on the
same findings based on Wilkins as in the rejection of claim 21 to establish
this claim limitation. Appeal Br. 15. For the same reasons as discussed

3 Or, more particularly the history of the assembly.
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above, in connection with claim 21, these findings are in error. Nonetheless,
we likewise determine that it would have been obvious to one of ordinary
skill in the art, based on the disclosure of different length assemblies in
Wilkins, to provide a “replacement backflow prevention valve compris[ing]
a different length than a length of an existing backflow a prevention valve”
as a variable to provide a length of the replacement backflow prevention
assembly “equal to that of the existing backflow prevention assembly,” as
required by claim 37.
Based on all of the foregoing reasons, we sustain the rejection of
claim 37 and dependent claim 40 and designate our affirmance as a new
ground of rejection.
Rejection 2
Claims 25 and 26 depend indirectly from claim 21. Appeal Br. A-2–
A-3 (Claims App.). Appellants do not argue separately for the patentability
of these dependent claims. Id.at 14. For the reasons, discussed above in
connection with claim 21, we sustain the rejection of claims 25 and 26, but
designate our affirmance as a new ground of rejection.
Claims 33 and 34 depend from claim 31. Id. at A-4. Appellants do
not argue separately for the patentability of these dependent claims. Id.at 14.
We, thus, sustain the rejection of claims 33 and 34.
Claims 38 and 39 depend from claim 37. Id. at A-6. Appellants do
not argue separately for the patentability of these dependent claims. Id.at 14.
For the reasons discussed above in connection with claim 37, we sustain the
rejection of claims 38 and 39, but designate our affirmance as a new ground
of rejection.
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DECISION
The Examiner’s decision rejecting claims 21––40 is affirmed.
We enter new grounds of rejection against claims 21–30 and 37–40.

FINALITY OF DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides:
When the Board enters such a non-final decision, [Appellants], within
two months from the date of the decision, must exercise one of the following
two options with respect to the new ground of rejection to avoid termination
of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to
the examiner. The new ground of rejection is binding upon the
Examiner unless an amendment or new Evidence not
previously of Record is made which, in the opinion of the
examiner, overcomes the new ground of rejection designated in
this decision. Should the examiner reject the claims,
[Appellants] may again appeal to the Board pursuant to this
subpart.

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and
state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
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rejection and also state all other grounds upon which rehearing
is sought.

Further guidance on responding to new grounds of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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)(1)(iv).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)