Buerkert Werke GmbH

Patent Trials and Appeals Board

Jun 22, 2020

2020000152 (P.T.A.B. Jun. 22, 2020)

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.
14/864,093 09/24/2015 Ralf SCHEIBE 274-003US 8637
74275 7590 06/22/2020
DILWORTH IP, LLC
2 CORPORATE DRIVE, SUITE 206
TRUMBULL, CT 06611
EXAMINER
FOX, JOHN C
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
06/22/2020 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):
docketing@dilworthip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RALF SCHEIBE, CRICIA DE CARVALHO RODEGHERI,
PETER KRIPPNER, and STEFAN SEELECKE

Appeal 2020-000152
Application 14/864,093
Technology Center 3700
____________

Before BIBHU R. MOHANTY, CYNTHIA L. MURPHY, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3, 5, 7, 11, 12, 27, 31, and 32. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Buerkert
Werke GMBH. Appeal Br. 3.
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Application 14/864,093

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BACKGROUND
The Specification discloses that “[t]he invention relates to a
diaphragm valve with which fluid streams can be controlled or switched.”
Spec. 1, ll. 3–4.
CLAIMS
Claims 1, 31, and 32 are the independent claims on appeal. Claim 1 is
illustrative of the appealed claims and recites:
1. A diaphragm valve comprising
a housing with a first housing part and a second housing
part, which second housing part comprises a lid, wherein at least
two fluid openings and at least one valve seat are formed
completely within the first housing part;
one valve element formed separately from the housing as
a flexible diaphragm and located within the housing;
at least one actuator, a spring element and a rocker are
arranged completely within the second housing part; wherein the
rocker is made in one piece and arranged between the at least one
actuator and the valve element,
wherein the actuator contacts both a first end of the rocker
and the lid, the spring element contacts a second end of the
rocker, wherein the spring element is supported on the second
housing part and wherein the spring element pretensions the
actuator,
wherein, in a first, non-activated state, the actuator is
arranged mechanically pretensioned between the second housing
part and the rocker and acts in a directly, vertical, linear direction
on the valve element, wherein the actuator is an electroactive
polymer actuator which is able to shift the rocker and valve
element in order to release and/or close the at least one valve seat
wherein the actuator is an electroactive polymer stack
actuator in which several incompressible, dielectric polymer
layers and electrode layers are stacked alternately on top of each
other, and wherein, when a voltage generating an electric field is
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Application 14/864,093

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applied with a field direction, the polymer layers are compressed
parallel to the field direction thereby providing a stroke travel
along the electroactive polymer actuator.
Appeal Br. 15.
REJECTION
1. The Examiner rejects claims 1, 5, 7, 11, 12, 27, 31, and 32 under
35 U.S.C. § 103 as unpatentable over Futamata2 in view of Smith,3
Polyakov,4 Ams,5 and Pei.6
2. The Examiner rejects claim 3 under 35 U.S.C. § 103 as unpatentable over
Futamata in view of Smith, Polyakov, Ams, Pei, and Arvidsson.7
DISCUSSION
With respect to both rejections on appeal, Appellant groups all claims
together. See Appeal Br. 10–14. We select claim 1 as representative of the
claims, and claims 3, 5, 7, 11, 12, 27, 31, and 32 will stand or fall with claim
1. See 37 C.F.R. 41.37(c)(1)(iv).
With respect to claim 1, the Examiner finds that Futamata teaches “a
three way diaphragm valve” with a first, lower housing; a second, upper
housing; a rocker; and an actuator. Final Act. 2. The Examiner
acknowledges that Futamata uses a solenoid actuator instead of an
electroactive polymer actuator (“EPA”). Id. The Examiner next relies on
Smith’s teaching that EPAs “are ideal replacements for solenoids because

2 Futamata et al., US 9,802,198 B2, iss. Oct. 31, 2017.
3 Smith, US 7,915,789 B2, iss. Mar. 29, 2011.
4 Polyakov et al., US 8,222,799 B2, iss. July 17, 2012.
5 Ams et al., US 8,104,510 B2, iss. Jan. 31, 2012.
6 Pei et al., US 6,812,624 B1, iss. Nov. 2, 2004.
7 Arvidsson et al., US 6,220,299 B1, iss. Apr. 24, 2001.
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Application 14/864,093

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they are smaller and use less electricity.” Id. (citing Smith col. 1, ll. 39–42).
The Examiner then relies on Polyakov’s teaching of “EPAs of various
designs and for various applications.” Id. at 3 (citing Polyakov Figs. 14A,
14B). Finally, the Examiner relies on Pei’s teaching of “an EPA in Figures
7B–7F with alternating single layers of polymers and electrodes to increase
the stroke or force of the actuator.” Id.
In response to Appellant’s arguments, the Examiner also finds that
each of the EPA configurations taught in the prior art produces a force in a
linear or straight line. Ans. 4 (citing Smith Figs. 6A, 6B; Polyakov Figs. 1A,
1B, 14A, 14B). The Examiner also clarifies that the proposed combination
would “use either of the two types of stacked EPAs of Pei in place of the
solenoid of Futamata, as taught by both Smith and Polyakov, either of which
will provide sufficient force to actuate the rocker and valve of Futamata.”
Ans. 6.
After careful consideration of the evidence on the record, we agree
with and adopt the Examiner’s findings with respect to claim 1. See Final
Act. 2–4; see also Ans. 3–6.
Appellant first argues that “Futamata fails to provide a single housing
part that completely contains an actuator, a spring element and a rocker,
Futamata relies on two springs to drive the valve instead of one in the
present valve, etc.” Appeal Br. 11. We are not persuaded. The Examiner
finds that elements 3 and 6 form a second housing part as claimed, which
include the spring element and rocker. Final Act. 2. Appellant does not
explain why the Examiner’s interpretation of Futamata’s structure is
inaccurate or contrary to the claim requirements. In the reply, Appellant
asserts that Futamata’s “actuator does not fit entirely in the same part of the
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Application 14/864,093

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housing as the rocker and spring as required in claim 1” or that Futamata
does not disclose a lid portion. Reply Br. 2. Yet again, Appellant does not
address the Examiner’s finding that the second housing part is made of
multiple elements, and Appellant does not explain why the Examiner errs in
interpreting the claim to allow for the second housing part to be comprised
of multiple elements. Appellant also does not explain adequately why
Futamata’s element 6 does not also provide the function of a lid.
Further, to the extent Appellant discusses the “small, efficient valve of
the invention” and Futamata’s reliance on two springs to drive the valve
(Appeal Br. 11), Appellant does not indicate what language in the claim
requires the valve to have a specific size or efficiency or precludes the
presence of a second spring. For example, Appellant asserts that “without
the present disclosure, it would not necessarily follow that one skilled in the
art, upon simple considering replacing a solenoid in a valve with the present
stacked polymer actuator, would envision the small, simple, energy efficient
valve of the invention.” Appeal Br. 11. Appellant also suggests that
contrasting figures from the art with figures provided in the present
application “shows how much of the structure of the valves would need to be
altered.” Id. Yet, Appellant does not explain what claim requirements are
lacking from the art of record in terms of the size and efficiency of the
device.
Next, Appellant argues that there is “no reason in the cited art for why
one skilled in the art would select the particular stacked actuator of the
present invention, especially when the cited art provides alternatives to the
stacked valve actuators of the invention.” Id. Yet, Appellant does not
appear to address the reasoning provided by the Examiner. The Examiner
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first explains that Smith and Polyakov teach EPA devices that may be used
in place of solenoid actuators. Final Act. 2–3. The Examiner relies on
Smith’s teaching that “a number of design configurations favor the selection
and use” of such technology including “potential force, power density,
power conversion/consumption, size, weight, cost, response time, duty
cycle, service requirements, environmental impact, etc.” Smith col. 1, ll.
30–36. The Examiner relies on Polyakov as teaching the use of an EPA
device in a valve configuration, which provides reduced electricity use and
size as compared to Futamata’s device. Final Act. 3. Next, the Examiner
relies on Pei as teaching the specific stacked arrangement of the claimed
EPA actuator, for which Pei teaches that the stacked configuration may
provide an increased stroke or force. Id.; see also Pei col. 22, ll. 3–17
(teaching the alternating polymer and electrode layers for a stacked
multilayer diaphragm device that “provides cumulative force output of the
individual polymer layers.”). As such, the Examiner has provided sufficient
articulated reasoning with rational underpinnings to support the legal
conclusion of obviousness. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007).
Appellant also asserts that Smith and Polyakov teach actuators that are
different than the claimed actuator because they do not “act in the direct
vertical manner of the present actuator, nor does either employ a rocker.”
Appeal Br. 12. We are not persuaded by this argument because it does not
fairly address the rejection before us, which relies on the specific
configuration of an EPA in Pei. And we disagree with Appellant’s
contention that using Pei’s EPA configuration is “incompatible with Smith
and/or Polyakov, because it is clearly taught in Smith and Polyakov that the
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EPAs therein cannot be stackable in this manner.” Id. at 13. In support,
Appellant asserts that stacking Smith’s or Polyakov’s devices would not
result in the alternating arrangement claimed. Although stacking the specific
devices of Smith or Polyakov may not result in the claimed configuration,
we disagree that this suggests that stacking and alternating polymer layers
and electrode layers as in Pei is not compatible with the configurations of
either Smith or Polyakov. One of ordinary skill in the art would not simply
stack the devices on top of each other to achieve the result of Pei. More
appropriately, one of ordinary skill may seek to alter the interior structure of
such devices to provide alternating layers that compound the force output of
the individual polymer layers. Appellant does not explain adequately how
either Smith or Polyakov would be incompatible with such a modification.
Further, the Examiner makes clear in the Answer the rejection does not
propose to modify either Smith or Polyakov. Rather, Smith and Polyakov
are relied upon to support the Examiner’s determination that one of ordinary
skill in the art would have found it obvious to use an EPA, such as that
taught by Pei, as an appropriate actuator in Futamata’s device.
Based on the foregoing, we are not persuaded of error in the rejection
of claim 1. Accordingly, we sustain the rejection. As noted above, the
remaining claims fall with claim 1, and thus, we also sustain the rejections of
claims 3, 5, 7, 11, 12, 27, 31, and 32.
CONCLUSION
We AFFIRM the rejections of claims 1, 3, 5, 7, 11, 12, 27, 31, and 32.

Appeal 2020-000152
Application 14/864,093

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In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 5, 7, 11,
12, 27, 31, 32
103 Futamata,
Smith,
Polyakov, Ams,
Pei
1, 5, 7, 11,
12, 27, 31,
323

3 103 Futamata,
Smith,
Polyakov, Ams,
Pei, Arvidsson
3
Overall
Outcome
1, 3, 5, 7,
11, 12, 27,
31, 32

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