Ex Parte 6923387 et al

Patent Trial and Appeal Board

May 24, 2018

90013791 (P.T.A.B. May. 24, 2018)

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.
90/013,791 08/08/2016 6923387 141953.00301 5774
136404 7590 05/24/2018
Pepper Hamilton LLP/Boston
Attn: Boston IP Docketing Department
125 High Street
19th Floor
Boston, MA 02110-2736
EXAMINER
FETSUGA, ROBERT M
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
05/24/2018 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 ORBITAL AUSTRALIA PTY LTD1
Appellant, Patent Owner
____________________

Appeal 2018-002197
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Patent No. US 6,923,387 B22
Technology Center 3900
____________________

Before JEFFREY B. ROBERTSON, DANIEL S. SONG, and
KEN B. BARRETT, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

1 Orbital Australia Pty Ltd, as the owner, and Orbital Fluid Technologies
Inc., as a licensee, are the real parties in interest (Appeal Brief (hereinafter
“App. Br.”) 1).
2 Issued August 2, 2005 (hereinafter “the ’387 patent”).
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The Patent Owner appeals under 35 U.S.C. §§ 134(b) and 306 from a
Final Rejection of original claim 6, and claims 20–30, newly added during
this proceeding, which ultimately depend from claim 6 (App. Br. 2). We
have jurisdiction under 35 U.S.C. §§ 134(b) and 306.
In addition to the Appeal Brief, the Patent Owner also relies on a
Reply Brief (hereinafter “Reply Br.”), and a Declaration of Dr. Christopher
White dated January 30, 2017 (hereinafter “Decl. White”). Because this
evidence is referred to in the briefs and Answer, we cite to the portions of
the briefs and Answer where this evidence is discussed. An Oral Hearing
with the Patent Owner’s representative was held before the Patent Trial and
Appeal Board on May 9, 2018, a transcript of which will be entered into the
electronic record in due course.
We are informed that claims 1, 2, 4, 5, 7–10, 13–16, 18, and 19 of the
’387 patent were previously canceled by the Patent Office as a result of inter
partes reviews IPR2015-012543, IPR2015-01255, and IPR2015-01256 (App.
Br. 1). We are further informed that the ’387 patent is the subject of
litigation styled Orbital Australia Pty Ltd et al v. Daimler AG et al, Case
No. 2:15-cv-12398 (E.D. Mich.), which has been stayed (App. Br. 1).
The invention is directed to an injector nozzle for a fuel injected
internal combustion engine (Abst.). Claim 6 ultimately depends from
canceled claims 1 and 5. Claim 6, rewritten in independent form for

3 In IPR2015-01254, the Petitioner asserted that most of the claims of the
’387 patentare anticipated by Sczomak, but did not set forth any analysis as
to claim 6. Hence, the Inter Partes Review instituted did not include claim
6. See IPR2015-01254, Institution of Inter Partes Review (Paper 9), 2 n.1;
see also Petition (Paper 3) 29.
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convenience,4 with deletions in double brackets, together with the recitations
of claims 1 and 5 in single brackets, reads as follows (App. Br. 20 (emphasis
added)):
6. An injector nozzle [[according to claim 5,]] [for a fuel
injected internal combustion engine, said injector nozzle
including a port having a valve seat surface and valve member
having a seating surface, said valve member being movable
relative to the port to respectively provide a nozzle passage
between the valve seat surface and the seating surface for the
delivery of fuel there-through or sealed contact there-between
to prevent said delivery of fuel, the valve member including an
outer valve surface located adjacent the seating surface and
external to the port, wherein a sharp edge is provided on the
valve member at the transition between the seating surface and
the outer valve surface thereof, for controlling the formation of
deposits at or adjacent an exit of the nozzle passage;
wherein the port includes an outer port surface
surrounding and located adjacent to the valve seat surface, and
a sharp edge is provided at the transition between the valve seat
surface and the outer port surface;]
wherein the angle between the valve seat surface and the
outer port surface of the port at the sharp edge transition is at
least substantially 90 degrees.

REJECTIONS
1. The Examiner rejects claims 6, 20, 21, 23, 24, 26–28, and 30
under 35 U.S.C. § 102(b) as anticipated by Sczomak (US 4,693,424,
iss. Sept. 15, 1987).
2. The Examiner rejects claims 6, 20–22, 25–28, and 30 under
35 U.S.C. § 103(a) as unpatentable over Sczomak in view of

4 Claim 6 has not been amended during this reexamination proceeding.
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Masubuchi et al., (JP 04-30266, pub. Mar. 11, 1992 (hereinafter
“Masubuchi”) (citations to the English translation of record).
3. The Examiner rejects claim 29 under 35 U.S.C. § 103(a) as
unpatentable over Sczomak in view of Caley (US 5,551,638, iss. Sept.
3, 1996).

We REVERSE.

ISSUES
The following issues have been raised in the present appeal.
1. Whether the Examiner erred in interpreting claim 6 and its
recitation of “at least substantially 90 degrees.”
2. Whether the Examiner erred in finding that Sczomak discloses
“at least substantially 90 degrees.”

ANALYSIS
Claim Construction
The Patent Owner and the Examiner disagree as to the meaning of the
limitation “at least substantially 90 degrees” in claim 6. The Examiner
initially states that claim construction of this limitation is not required in
view of its plain wording that “defines uncomplicated subject matter.”
(Final Act. 5; see also Ans. 7). Nevertheless, the Examiner determines that
this claim limitation could not reasonably be interpreted to encompass
obtuse angles because the Specification of the ’387 patent “lack[s]
support . . . when taken as a whole.” (Final Act. 6). In that regard, the
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Examiner determines that “a ‘sharp edge’ formed by surfaces oriented at
‘obtuse angles’ would appear an unreasonable interpretation when
considering the edges 20, 25 associated with the inventive embodiments
depicted in FIGS. 3 and 4 in [the ’387 patent] (col. 7, 11. 12-29).” (Final
Act. 7; see also Ans. 8). Accordingly, “[i]t is the examiner’s position that
the claim terminology ‘at least substantially 90 degrees’ would not exclude
an acute angle (i.e. less than 90 degrees), especially when that language is
interpreted in light of the [’387 patent’s] disclosure,” but “interpretation of
the noted claim terminology which includes an obtuse angle would be
inconsistent with the [’387 patent’s] disclosure.” (Ans. 5).
The Patent Owner disagrees and argues that the Examiner’s reasoning
“conflates the distinction . . . between the micro-level radius of curvature
(i.e., ‘sharpness’) at the transition between adjacent surfaces and the macro-
level geometric angle between the same adjacent surfaces.” (App. Br. 9).
The Patent Owner argues that the plain language of the claim encompasses
angles greater than 90º, i.e., obtuse angles (App. Br. 8), and that the
Examiner’s interpretation does not “attribute any meaning whatsoever to the
claim’s recitation of ‘at least.’” (App. Br. 9). The Patent Owner argues that
the claim also “encompass[es] certain acute angles (namely, those acute
angles that are only slightly less than 90 degrees.” (Reply Br. 2). The
Patent Owner further points out that claim 6 was originally filed so that this
claim language is part of the Specification (see generally Reply Br. 10).
We agree with the Patent Owner. The claim language is clear that the
angle between the recited surfaces are “at least substantially 90 degrees,”
thereby reciting an angular range that encompasses both less than, and
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greater than, 90º. While the recitation “at least” specifically sets forth a
minimum angle, the recitation “substantially” also places a limit on this
minimum angle. As the Patent Owner points out, this claim was filed with
the original application that issued as the ’387 patent, and thus, is part of the
original disclosure, and is not inconsistent therewith as the Examiner
determines. The Examiner’s exclusion of obtuse angles appears to ignore
the “at least” recitation of claim 6 as argued by the Patent Owner, and the
fact that claim 6 is part of the original disclosure. Accordingly, we interpret
claim 6 to encompass any angle that is “at least substantially 90º,” whether
that angle is acute or obtuse.
The Patent Owner also relies on evidence in the form of declaration
testimony of Dr. White to interpret what “substantially” means to one of
ordinary skill in the art when referring to an angular dimension (App. Br. 7–
8). In particular, Dr. White declares that:
In light of the ’387 Patent specification’s discussion of
“machining” the port and valve member to have the recited
characteristics, for example, via lapping or grinding of various
surfaces (see e.g., col. 3, 11. 17-27 and col. 6, 1. 63 through col.
7, 1. 11, and col. 7, 11. 30-34), a person of ordinary skill in the
art would have understood the term “at least substantially 90
degrees” within the meaning of the ’387 Patent to be an angle
that is within standard machining tolerances of 90 degrees.
(Declaration of Christopher White, dated January 30, 2017 (hereinafter
“Decl. White”) ¶ 16).
Dr. White refers to machining tolerances promulgated by ISO, which
is the International Organization for Standardization, and declares that “a
machinist would understand that even the largest permissible deviation of an
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angular dimension having an unspecified tolerance (i.e., in the tolerance
class ‘very coarse’) would only be ± 3°.” (Decl. White ¶ 17).
Accordingly, the Patent Owner argues that a person of ordinary skill in the
art would understand that “the lower bound of the claimed angle between the
surfaces would be no smaller than 87 degrees” (App. Br. 8).
The Examiner peripherally addresses the meaning of the term
“substantially” to one of ordinary skill in the art and the testimony of Dr.
White relied upon by the Patent Owner in the context of addressing obtuse
angles, stating that Dr. White’s testimony and reasoning is:
not commensurate with the [’387 patent’s] disclosure (nor with
the prior art) in that the level of skill in the fuel injector nozzle
art would not be restricted to a person who is simply familiar
with standard tolerances associated with various machining
processes. In this regard, the desired result of ‘reducing droplet
impingement’ on nozzle surfaces is not dependent upon
machining tolerances.”
(Final Act. 6 (citing ’387 patent col. 7, ll. 35–56); see also Ans. 7–8).
Initially, we do not agree with the Declarant’s apparent assertion that
a person of ordinary skill in the art is a “machinist,” and agree with the
Examiner that a person of ordinary skill would not be restricted to a person
having familiarity with standard tolerances associated with machining.
Instead, in view of the applied prior art of record, we find that a person of
ordinary skill is a mechanical engineer with experience in designing fuel
injectors. (See generally Sczomak, col. 6, ll. 32–45; Caley, col. 1, ll. 26–40,
col. 3, ll. 7–16, col. 5, ll. 35–39). Cf. Okajima v. Bourdeau, 261 F.3d 1350,
1355 (Fed. Cir. 2001); Union Carbide Corp. v. American Can Co., 724 F.2d
1567, 1573 (Fed. Cir. 1984).
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Nevertheless, in view of the disclosure in the ’387 patent as well as
the disclosures of Sczomak and Caley with respect to angular dimensions,
and to lesser extent, the disclosure of Masubuchi, it is evident by
preponderance of the evidence, including the declaration of Dr. White, that a
person of ordinary skill in the art of fuel injector design would have been
familiar with, and mindful of, machining tolerances in manufacturing of a
fuel injector and its components. In that regard, although the desired result
of reducing droplet impingement may or may not be dependent upon
machining tolerances, that does not diminish the need for understanding
what the term “substantially” recited within claim 6 means to a person of
ordinary skill in the art in view of the Specification of the ’387 patent.
The Examiner further determines that:
The argued terminology of claim 6 is related to matters of
degree rather than to a technical aspect. The words “at least
substantially” are not restricted to use in the fuel injector art.
Moreover, the words “at least substantially” are relative, and in
the context of claim 6 can be readily reconciled with the
invention described in [the ’387 patent].
(Ans. 8).
While we agree with the Examiner that the term “at least
substantially” is a term of degree, is not restricted to the fuel injector art, and
is consistent with the invention described in the Specification, such
considerations point to the importance of determining what the term means
to a person of ordinary skill in the art and in the context of fuel injector
design because terms of degree vary depending on the art and context in
which the term is used. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004)(Claims are to be given their broadest reasonable
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interpretation consistent with the specification, reading claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art.); cf. Seattle Box Co. v. Industrial Crating & Packing, Inc., 731 F.2d
818, 826 (Fed. Cir. 1984) (When a claim uses a word of degree, like
“substantially,” the Specification must be examined to determine whether
some standard for measuring that degree is provided and whether one of
ordinary skill in the art would understand what is claimed when the claim is
read in light of the Specification). The Examiner’s analysis does not
adequately address what the claim term “substantially” means to one of
ordinary skill in the art of fuel injector design. Accordingly, in view of the
somewhat limited evidence before us, we find persuasive, Dr. White’s
testimony that “substantially” recited in claim 6 would be understood by one
of ordinary skill in the art in the context of machining tolerances.
As noted, Dr. White’s testimony also referred to and relied upon a
specific source of machining tolerance specification, namely ISO, and in
particular, the “very coarse” tolerance of ±3º set forth in ISO-2768-1 (Decl.
White ¶ 17; see also id. at App’x. B; Reply Br. 5–7)). It is not entirely clear
why the “very coarse” tolerance would be applicable instead of some tighter
tolerance specification such as “fine,” which is ±1º, or “medium,” which is
±1º30’. (Id.). We understand Dr. White’s testimony to be relying on the
“very coarse” tolerances as “the largest permissible deviation” associated
with the term “substantially.” (Decl. White ¶ 17.) In that regard, Dr. White
also declares that “a person skilled in the art would appreciate that fuel
injector nozzles generally require high-precision machining (i.e., very tight
tolerances).” (Decl. White ¶ 17; see also App. Br. 8). Nevertheless, as will
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be evident from the discussion infra as to the prior art rejections, the
selection of the “very coarse” tolerance is inconsequential.
Thus, for the reasons discussed above, we adopt the Patent Owner’s
claim construction that the limitation “substantially 90 degrees” means an
angle that is at least 87º to one of ordinary skill in the art of fuel injector
design for the purposes of this appeal.

Rejection 1: Anticipation by Sczomak
The Examiner rejects claims 6, 20, 21, 23, 24, 26–28, and 30, finding
that “[t]he port edge [of Sczomak] is ‘at least substantially 90 degrees.’”
(Final Act. 3). Specifically, the Examiner finds that the “substantially 90
degrees” limitation “does not distinguish the angles illustrated in Figs. 3–5
in Sczomak. In Figs. 3–5, the angle defined by surfaces 43/44 [between
valve seat surface and chamfer on the valve] is physically measurable and is
very close to 90°.” (Final Act. 7–8). The Examiner explains that the
Specification of Sczomak also discloses that surfaces 30 and 44 are
substantially parallel, that the differential angle between surfaces 27 and 43
should be about or less than 2 degrees, and that surfaces 27 and 30 define a
knife edge (Final Act. 8; see also Ans. 13). Based thereon, the Examiner
finds that:
when considering the teachings in Sczomak, it is reasonably
apparent that an approximately 88° “knife edge” angle defined
by surfaces 27/30 would result. Compared to claim 6, the 88°
angle clearly satisfies the “at least substantially 90 degrees”
requirement.
(Final Act. 8).
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The Patent Owner disagrees and observes that the Examiner appears
to rely on the drawings of Sczomak, but argues that such reliance is
improper because its drawings are not disclosed as being to scale, and in
fact, are disclosed as being not to scale (App. Br. 10; see also id. at 14;
Reply Br. 14). The Patent Owner further argues that “the explicit purpose of
Sczomak’s drawings were to show the general configuration of features, not
to provide any measurable lengths or angles of these features,” and that
“such measurements plainly fail to account for, and indeed contradict,
Sczomak’s corresponding disclosure that geometrically constrains the
possible ranges of angles schematically depicted in the drawings.” (App. Br.
14). In particular, the Patent Owner relies on analysis set forth by Dr. White
concluding that based on the particular angles disclosed in the text of
Sczomak’s specification, the pertinent angle is actually 74º + 0.15’ to 79º +
0.15’, which is clearly not “at least substantially 90 degrees.” (App. Br. 12–
13; see also Decl. White ¶¶ 23–26).
We generally agree with the Patent Owner because it is speculative as
to whether Sczomak actually discloses that the angle between valve seat
surface 27 and outer port surface 30 is “at least substantially 90 degrees” as
interpreted above.
The Examiner explains that:
anticipation of claim 6 is not based upon the Sczomak
illustrations being drawn to scale. . . . Instead, anticipation is
based upon the Sczomak description as embodied in the
drawing figures.
(Final Act. 8).
The Examiner further explains that:
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the outstanding anticipation rejection is not attempting to rely
upon either “precise proportions” or “particular sizes”. Instead,
the “very close to 90°” measurement (Final Office Action at 8)
was made simply to confirm that the angle defined by surfaces
27/30, as clearly depicted in Figs. 4 and 5 in Sczomak, was
indeed acute and near 90°.
(Ans. 12–13).
Therefore, while the Examiner’s rejection in the Final Action is based
on the angle between valve seat surface 43/chamfer 44 of Sczomak and its
disclosure of 2º difference between valve seat surface 43 and valve seat 27,
the Answer appears to also alternatively rely on the illustrated angle between
valve seat 27 and chamfer 30 of the port itself.
As to the latter position, it is clear that the Examiner is relying on
Figures 4 and 5 of Sczomak. Although drawings can be relied upon for what
they reasonably disclose and suggest to one of ordinary skill in the art, see In
re Aslanian, 590 F.2d 911, 914 (CCPA 1979); In re Mraz, 455 F.2d 1069,
1072 (CCPA 1972), it is also clear, and there is no dispute between the
Patent Owner and the Examiner, that Figures 4 and 5 of Sczomak illustrate
an acute angle formed between the pertinent surfaces (see Sczomak, Figs. 4,
5). As such, the question in view of the above discussed claim interpretation
is whether Figures 4 and 5 of Sczomak can be said to actually disclose the
pertinent angle as being at least 87º, i.e., whether such angle is determinable
from the figures. We answer that in the negative and disagree with the
Examiner’s finding to the contrary.
As noted by the Patent Owner, patent drawings not designated as
being drawn to scale cannot be relied upon to define precise proportions of
elements if the specification is completely silent on the issue. Hockerson-
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Halberstadt, Inc. v. Avia Group Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir.
2000). While we are not persuaded by the Patent Owner’s arguments based
on Sczomak’s disclosure that Figures 4 and 5 are enlarged, exaggerated
sectional views, because it is clear that the referenced exaggeration is with
respect to maximum overlap between the seat and the valve (Sczomak, col.
2, ll. 20–24; col. 4, ll. 2–7), Sczomak does not disclose that the pertinent
angle is to scale. Indeed, it is not evident what the angle between the
pertinent surfaces is without measuring Figures 4 and 5 of Sczomak, which
is improper in view of the lack of indication that these figures are drawn to
scale.
According to the Examiner:
the inclusion therewith of the degree modifier “substantially”
would normally indicate that claim 6 clearly encompasses acute
angles (i.e. less than 90 degrees) and is not restricted to obtuse
angles. Brief at 13. Consequently, even under the claim
construction implied in the Brief, claim 6 would not distinguish
the acute angle defined by surfaces 27/30 as depicted in Figs. 4
and 5 in Sczomak. MPEP 2125 (Drawings and pictures can
anticipate claims if they clearly show the structure which is
claimed.)
(Ans. 11).
However, this line of reasoning does not take into consideration of the
meaning of “substantially” to one of ordinary skill in the art as discussed
above.
We also do not discern an adequate basis for the Examiner’s assertion
that the Specification of Sczomak and these figures discloses an angle that is
“approximately 88º.” (Final Act. 8). This assertion is based on Sczomak’s
disclosure that:
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Preferably the differential angle between the included
angles of the valve seat 27 and that of the valve seat surface 43,
should be about or preferably less than 2°, whereby sealing will
always occur at least at the outer edge of the valve seat 27 or at
the outer edge of the valve seat surface 43 and, preferably at
both their outer annular edges.
(Sczomak, col. 4, ll. 23–29).
As noted, the Examiner’s rejection is that because Sczomak discloses
that surfaces 30 and 44 are substantially parallel and that the differential
angle between surfaces 27 and 43 should be about or less than 2 degrees
(Final Act. 8; see also Ans. 13), the pertinent angle between valve seat
surface 27 and chamfer 30 must be approximately 88º. This line of
reasoning is also fundamentally premised on determining that the angle
between valve seat surface 43 and chamfer 44 is 90º based on the drawings
of Figures 4 and 5 (see Final Act. 8 (“[i]n Figs. 3–5, the angle defined by
surfaces 43/44 is physically measurable and is very close to 90º.”)).
Significantly, in this articulation of the rejection, the Examiner
selectively relies on the 2º difference between valve seat surface 43 and
valve seat 27 as disclosed in Sczomak, while ignoring the additional
disclosure of 149º angling of valve seat 27 and 151º angling of valve seat
surface 43 within the same paragraph of Sczomak (Sczomak, col. 4, ll. 23–
32), which Dr. White testifies, results in an angle of 74º + 0.15’ to 79º +
0.15’ (App. Br. 12 see also Decl. White ¶ 24). The Examiner’s rejection
does not reconcile the disclosed angling of valve seat 27 and valve seat
surface 43, with the disclosed 2º difference between them.
Finally, the Examiner’s explanation that “the determined 74-79° range
for angle [between valve seat surface 27 and the outer port surface 30]
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simply reflects one of many embodiments which would be encompassed by
the Sczomak disclosure.” (Final Act. 9–10; see also Ans. 12). While that
may or may not be correct, that reasoning does not adequately address the
limitation “at least substantially 90 degrees” as interpreted above.
Therefore, in view of the above considerations, we reverse this
anticipation rejection of claim 6. In so doing, we need not determine what
the angle disclosed in Sczomak actually is, because it is sufficient to
determine that the Examiner failed to establish that Sczomak discloses “at
least substantially 90 degrees” as claimed. The Patent Owner also relies on
dependency on claim 6 for patentability of claims 20, 21, 23, 24, 26–28, and
30 (App. Br. 15). Accordingly, this anticipation rejection of these dependent
claims are reversed as well.

Rejection 2: Obvious in View of Sczomak and Masubuchi
The Examiner rejects claims 6, 20–22, 25–28, and 30 as unpatentable
over the combination of Sczomak and Masubuchi (Final Act. 4). In addition
to the findings relative to Sczomak, the Examiner also finds that:
Masubuchi teaches a fuel nozzle comprising a port 9 including
a seat surface 10 and an outer surface 14 which together form a
sharp edge having an acute angle ß. . . . The acute angles
reduce the adherence of fuel, and consequently, control the
formation of fuel deposits (pg. 5, 11. 3–12).
(Final Act. 4).
The Examiner concludes that “it would have been obvious to one of
ordinary skill in the fuel nozzle art to associate an acute angle with the seat
and outer surfaces of both the port and the valve member in Sczomak (to the
extent not already present), in order to further reduce and/or control the
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formation of fuel deposits.” (Final Act. 4–5). The Examiner finds that “both
disclosures are concerned with utilizing a sharp edge(s) to control fuel
deposits” so Masubuchi does not teach away from the suggested
combination (Final Act. 11).
The Patent Owner relies on arguments submitted with respect to
Sczomak (App. Br. 17), and argues that “the Examiner’s reliance on
Masubuchi does not cure the deficiencies of the rejection based on Sczomak
alone” because it fails to disclose the “at least substantially 90 degrees
limitation of claim 6 (App. Br. 15), and that “both Sczomak and Masubuchi
disclose that the relevant angle should be acute in order to obtain the benefits
purportedly provided by their respective nozzles.” (App. Br. 16).
According to the Patent Owner, Masubuchi’s disclosure that providing an
acute angle reduces the formation of fuel deposits “only serves to reaffirm
Sczomak’s provision of an acute angle between the relevant surfaces, and
further demonstrates that a person skilled in the art would be led away” from
the angle recited in claim 6 (App. Br. 18).
We generally agree with the Patent Owner that the Examiner’s
reliance of Masubuchi does not address the deficiencies discussed with
respect to Sczomak. In that regard, in addition to Masubuchi’s teaching with
respect to acute angles, Figure 2 thereof discloses an even more acute angle
between the port outer surface and the valve seat surface than that of
Sczomak (compare Masubuchi, Fig. 2 with Sczomak Figs. 4, 5).
Accordingly, if anything, the combination of these references appears to
suggest making Sczomak’s pertinent surfaces more acute, contrary to the
claim language that requires the pertinent angle to be “at least substantially
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90 degrees.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“A reference
may be said to teach away when a person of ordinary skill, upon reading 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.”). The Examiner’s articulated reason for the
rejection does not provide any further basis to make the pertinent angle to be
“at least substantially 90 degrees,” and thus, is insufficient.
Therefore, in view of the above considerations, we reverse this
rejection relative to claim 6. The Patent Owner relies on dependency on
claim 6 for patentability of claims 20–22, 25–28, and 30 (App. Br. 18).
Accordingly, this obviousness rejection of these dependent claims are
reversed as well.

Rejection 3: Claim 29
The Examiner rejects claim 29 as unpatentable over Sczomak and
Caley (Final Act. 5). The Patent Owner relies on dependency on claim 6 for
patentability of claim 29 (App. Br. 19). The Examiner merely relies on
Caley for disclosing a projection as recited in claim 29, and does not remedy
the deficiencies discussed above relative to Sczomak and Masubuchi (Final
Act. 5). Therefore, this rejection of claim 29 is also reversed.

CONCLUSION
Rejections 1–3 are REVERSED.

REVERSED