UNITED STATES PATENT AND TRADEMARK OFFICE
____________________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte LAURENT ALBERT, ANTOINE DUTOT,
and NICOLAS RENARD
____________________
Appeal 2012-002595
Application 12/090,331
Technology Center 3700
____________________
Before MICHAEL W. KIM, GAY ANN SPAHN, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
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Application 12/090,331
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-12, 14, and 15.1 We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
As described in Appellants’ Specification, Appellants invented a
valve that may be used to regulate flow in an exhaust gas recirculation
(EGR) circuit of a combustion engine (Spec. 1, ll. 3-8). Claim 1, reproduced
below, is the only independent claim on appeal, and is representative of the
claims on appeal.
1. A valve comprising:
a first duct;
a second duct into which the first duct opens
at right angles, thereby defining an intersection
that forms a seat for a valve disk that slides in the
second duct at right angles to the seat between a
closed position and an open position,
wherein the valve disk has, facing the seat, a
deviation surface of curvilinear profile having a
narrow base facing toward the seat and widening
away from the seat configured to deflect at right
angles to the first duct a gaseous stream originating
therefrom; and
a connecting portion of the second duct,
1 Our decision will refer to Appellants’ Specification (“Spec.,” filed April
15, 2008), Appeal Brief (“App. Br.,” filed July 12, 2011), and Reply Brief
(“Reply Br.,” filed November 28, 2011), as well as the Examiner’s Answer
(“Ans.,” mailed September 28, 2011).
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Application 12/090,331
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wherein the connecting portion comprises a
flat wall facing the seat,
wherein a narrow space is left between the
flat wall facing the seat and the valve disk in the
open position.
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
claims 1-7, 12, 14, and 15 are rejected under 35 U.S.C. § 102(b) as
anticipated by Fitts (US 1,401,468, iss. Dec. 27, 1921); and
claims 8-11 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Fitts2.
ANALYSIS
Anticipation rejection of claims 1-7, 12, 14, and 15
Appellants argue the Examiner’s rejection of claim 1 is in error
because Fitts does not teach the limitation “the connecting portion comprises
a flat wall facing the seat” as required by independent claim 1 (see App. Br.
8). In the rejection, the Examiner finds that:
Fitts discloses a valve comprising a first
duct (4), a second duct (5), a connecting portion (2,
3, upper wall of element 5 in [F]igure 1)
comprising a flat wall (upper wall of element 5 in
[F]igure 1) facing the seat (3), an intersection that
forms a seat (3), a valve disk (7, 8), two flat walls
(surface of the upper wall of element 5 in [F]igure
2 Although the Examiner’s Answer states that the claims are rejected as
“unpatentable over . . . Fitts . . . in view of engineering expedient [sic]”
(Ans. 6), we understand that claims 8-11 are rejected as unpatentable only
based on Fitts, because the rejection states that the proposed modification is
obvious (id. at 7), and does not rely on either another reference or Official
Notice, for example.
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1 and wall of element 2 surrounding element 13 in
[F]igure 1), an end wall (2) that partially surrounds
the valve disk (7, 8) parallel to the direction of
sliding at a distance from an edge (edge of element
7 and 8) of the valve disk (7, 8) such that for the
open position the end wall (2) defines with the
edge (edge of element 7 and 8) of the valve disk
(7, 8) and the seat (3) a passage (between elements
3 and 8) the cross section of which increases from
a median axis (axis through element 4) of the end
wall (2) toward regions where the end wall (2)
meets the second duct (5), means (14) of operating
the valve disk (7, 8) between its two positions are
controlled in such a way as to bring the valve disk
(7, 8) into close proximity to the flat wall (2) of the
connecting portion (2, 3, upper wall of element 5
in [F]igure 1) lying facing the seat (3), a narrow
space (no exact measure) is left between this flat
wall (upper wall of element 5 in figure 1) facing
the seat (3) and the valve disk (7,8) in the open
position
(Ans. 4-5) (emphasis added). The Examiner does not identify with further
specificity what portion of the “upper wall of element 5 in [F]igure 1” is flat
and faces seat 3 in Fitts, to teach the limitation of claim 1. Instead, the
Examiner relies on a broad interpretation of the term “facing,” stating “the
[E]xaminer’s position [is] that any wall portion that is across from the valve
seat of Fitts . . . partially faces the valve seat” (Ans. 8). Conversely,
Appellants cite the dictionary definition of “face” as “‘to have the front
oriented toward
’” (App. Br. 9, citing Merriam-
Webster’s Collegiate Dictionary (11th ed. 2011)), and argue, with reference
to Fitts’ Figure 1, that:
At most, the upper wall of the duct 5 only
faces the lower wall of the duct 5 . . . and is offset
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from the seat 3 in Fitts. That is, . . . the upper wall
of the duct 5 faces the lower wall of the duct 5
because the front of the upper wall is oriented
toward the lower wall. In this regard, the lower
wall of the duct 5 is the only component of Figure
1 of Fitts that faces the upper wall of the duct 5
(id. at 11) (emphasis added). Inasmuch as we agree that in Fitts that the
upper wall of duct 5 does not have a surface oriented toward seat 3, we find
that the Examiner has not sufficiently established by a preponderance of the
evidence that Fitts teaches a flat wall facing a seat, in combination with the
other limitations of claim 1. Moreover, duct 5 appears to be annular in
shape, which would suggest it had only one continuous wall. We are unclear
as to how one continuous annular wall of duct 5 could face anything not
disposed radially inward of duct 5. On this record, we are therefore
constrained to reverse the rejection of independent claim 1.
Appellants argue claims 2-7, 12, 14, and 15 are allowable for the same
reasons as independent claim 1 (App. Br. 13). We do not sustain the
rejection of the dependent claims for the same reasons as claim 1.
Obviousness rejection of claims 8-11
Among other arguments made by Appellants with respect to claims 8-
11, Appellants argue, “dependent claims 8-11 are patentable over Fitts and
‘engineering expedient’ . . . for at least the same reasons as independent
claim 1” (App. Br. 18). Thus, we do not sustain the rejection of the
dependent claims for the same reasons as claim 1.
DECISION
The Examiner’s rejections of claims 1-12, 14, and 15 under 35 U.S.C.
§§ 102(b) and 103(a) are REVERSED.
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REVERSED
mls
