Ex Parte 7717471 et al

Patent Trial and Appeal Board

May 16, 2014

95001446 (P.T.A.B. May. 16, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,446 09/17/2010 7717471 083217 6327
7590 03/27/2015
Dennis R. Daley
MERCHANT & GOULD P.C.
P.O. BOX 2903
Minneapolis, MN 55402-0903
EXAMINER
KAUFMAN, JOSEPH A
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
03/27/2015 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
____________

CEJN AB,
Requester and Respondent,

v.

Westerndorf Manufacturing Co., Inc.,
Patent Owner and Appellant
____________

Appeal 2013-007688
Reexamination Control 95/001,446
Patent 7,717,471 B2
Technology Center 3900
____________

Before RICHARD E. SCHAFER, RICHARD M. LEBOVITZ, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appeal 2013-007688
Reexamination Control 95/001,446
Patent 7,717,471 B2

2
Patent Owner Westerndorf Manufacturing Co., Inc. requests rehearing
under 37 C.F.R. § 41.79 of the Decision on Appeal (“Decision”) mailed
May 16, 2014, in which we affirmed the Examiner’s decision to reject
claims 1-29 of U.S. Patent 7,717,471 B2 (hereinafter, “the ’471 Patent”) on
various grounds. (Decision 4-6, 18; Request for Rehearing (“Req. R’hg”)
dated June 16, 2014.) Requester submitted comments on Patent Owner’s
Request for Rehearing on June 26, 2014 (hereinafter “Requester
Comments”).
Patent Owner contends that the Board misapprehended or overlooked
the following two points with respect to the rejection of claims 26 and 27
under 35 USC § 103(a) over Truchet1 in view of Gray,2 Truchet in view of
Mahaney,3 Truchet in view of Mailleux,4 or Truchet in view of Arosio,5
(Rejection numbered 25 in the Decision 6):
1. The relevant law concerning obviousness (Req. R’hg 1-6); and
2. Patent Owner’s arguments regarding Truchet. (Req. R’hg 7-9.)

Point 1
Patent Owner contends that the Board overlooked the law of
obviousness in that the Board’s summary of the Examiner’s position lacks
sufficient explanation supporting the modification of Truchet. Patent Owner
contends also that the Examiner does not explain sufficiently how the

1 U.S. Patent 4,611,831, issued Sept. 16, 1986.
2 U.S. Patent 5,417,459, issued May 23, 1995
3 U.S. Patent 5,507,530, issued Apr. 16, 1996
4 U.S. Patent 5,984,371, issued Nov. 16, 1999
5 U.S. Patent 5,316,347, issued May 31, 1994
Appeal 2013-007688
Reexamination Control 95/001,446
Patent 7,717,471 B2

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modifications made to Truchet would simplify the operation of the device,
and that the explanation by the Examiner is factually incorrect. (Req.
R’hg 2-3.) Specifically, Patent Owner contends that the fluid is removed
from the mold and lines of Truchet before engagement/disengagement of the
coupling mechanism, and as a result, one of ordinary skill in the art would
have to further modify Truchet to allow the lines to be always filled with
cooling fluid. (Req. R’hg 3.) Patent Owner contends that such a
modification would require the operation of the hydraulic installation of
Truchet to be changed completely. (Req. R’hg 3-6.)

Point 2
Patent Owner contends that the Board misapprehended its arguments
regarding Truchet because Patent Owner did not argue that the fluid in
Truchet is limited to water. (Req. R’hg 7.) Rather, Patent Owner argues
that the Board overlooked the explanation that Truchet would not have been
considered to disclose or suggest a circuit for powering hydraulic cylinders,
particularly in view of the difference in power ratings between Truchet’s
circuit and the hydraulic cylinder powering circuits disclosed by Arosio,
Mahaney, Mailleux, or Gray. (Req. R’hg 7-8.) Again, Patent Owner argues
that the operation of the circuit taught by Truchet would have to be modified
in order to render the circuit of Truchet combined with the hydraulic line
couplers of the prior art operable. (Req. R’hg 9.)

Appeal 2013-007688
Reexamination Control 95/001,446
Patent 7,717,471 B2

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Requester contends that Board did not misapprehend or overlook the
law or Patent Owner’s arguments in the Decision. (Requester Comments 1-
2.)
DISCUSSION
Because Points 1 and 2 are related, we discuss them together. We
have considered Patent Owner’s arguments carefully and we are not
persuaded that we misunderstood or overlooked the relevant law of
obviousness or Patent Owner’s arguments regarding Truchet. With respect
to the Examiner’s reasoning supporting the combination of Truchet, we do
not subscribe to Patent Owner’s view that the Examiner’s rationale is not
explained sufficiently. The Examiner explained that Truchet’s line couplers
lack the closed and open flow when the couplers are disengaged or engaged
respectively. (RAN 36.) The Examiner explained that Gray, Mahaney,
Mailleux, and Arioso each disclosed hydraulic couplers that stop the flow of
fluid when disengaged and open the flow when engaged. (RAN 36.) Thus,
in view of the fact-finding by the Examiner, the reasoning set forth to
support the obviousness conclusion, namely “in order to allow for
activation/deactivation of the flow through the lines as the lines are
engaged/disengaged respectively, which would simplify the operation of the
device” is, in our view, supported and explained sufficiently on this record.
(RAN 36.) As stated in the Decision, we find the Examiner’s rationale to be
consistent with that purpose disclosed in Truchet of a “device [that] is of
‘economical and reliable construction’ and simple to use in the sense of
‘avoiding trail [sic] and error or hesitation by the operator.’ (Col. 1, 11. 12-
16.)” (Decision 12.) .
Appeal 2013-007688
Reexamination Control 95/001,446
Patent 7,717,471 B2

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Patent Owner’s contentions regarding the extent of modification
required in Truchet to modify the device disclosed therein to include
hydraulic line couplers are also unpersuasive. Again, Patent Owner focuses
on the cooling fluid aspect of the specific embodiment disclosed in Truchet
as well as the difference in power ratings of this specific embodiment and
the hydraulic cylinder powering circuits disclosed by Arosio, Mahaney,
Mailleux, or Gray. However, as we stated in the Decision, “Truchet
discloses devices for use in ‘many different applications, such as, for
example, pneumatic or hydraulic installations.’ (Col. 1, 11. 8-11.)”
(Decision 12; see also Decision 13-14.) Thus, Truchet’s disclosure is not
limited to the specific device exemplified therein. Accordingly, Patent
Owner’s arguments that the modification suggested by the Examiner would
make it more difficult to operate the system of Truchet are not persuasive.
(Req. R’hg 5-6.)
Indeed, Patent Owner’s arguments appear to be focused on bodily
incorporation of the hydraulic line couplers of the secondary references into
the exemplified device disclosed in Truchet, which is not the test for
obviousness. (See Decision 13.) It is well established that “it is not
necessary that the inventions of the references be physically combinable to
render obvious the invention under review.” In re Sneed, 710 F.2d 1544,
1550 (Fed. Cir. 1983). In addition, “[c]ombining the teachings of references
does not involve an ability to combine their specific structures.” In re
Nievelt, 482 F.2d 965, 968 (CCPA 1973) (emphasis in original).

Appeal 2013-007688
Reexamination Control 95/001,446
Patent 7,717,471 B2

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Therefore, we decline to make any changes in the Decision mailed
May 16, 2014. Accordingly, the Request for Rehearing is denied.

DENIED

PATENT OWNER:
DENNIS R. DALEY
MERCHANT & GOULD P.C.
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903

DENNIS DALEY, MERCHANT & GOULD P.C.
3200 IDS CENTER
80 S. 8th STREET
MINNEAPOLIS, MN 55402-0903

THIRD-PARTY REQUESTER:
ALBIHNS STOCKHOLM AB
BOX 5581, LINNEGATAN 2
SE-11485 STOCKHOLM; SWEDEN
STOCKHOLM, SWEDEN

TIMOTHY PLATT IPQ IP SPECIALISTS AB
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