Ex Parte Albizuri

Patent Trial and Appeal Board

Sep 12, 2016

13859576 (P.T.A.B. Sep. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/859,576 04/09/2013 27896 7590 09/14/2016 EDELL, SHAPIRO & FINNAN, LLC 9801 Washingtonian Blvd. Suite 750 Gaithersburg, MD 20878 FIRST NAMED INVENTOR Ifiigo Albizuri 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 ATTORNEY DOCKET NO. CONFIRMATION NO. SGS0.00209US 1032 EXAMINER NAMAY, DANIEL ELLIOT ART UNIT PAPER NUMBER 3749 NOTIFICATION DATE DELIVERY MODE 09/14/2016 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): epatent@usiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte INIGO ALBIZURI Appeal2015-005604 Application 13/859,5761 Technology Center 3700 Before MICHAEL L. HOELTER, LYNNE H. BROWNE, and THOMAS F. SMEGAL, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from a final rejection of claims 5-10 and 13-18. App. Br. 2. Claims 1--4 have been canceled. App. Br. 27, Claims Appendix. Claims 11, 12, and 19-21 have been objected to. Final Act. 4. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 The present application is a reissue application of U.S. 7,963,763 issued June 21, 2011. When referring to Appellant's Specification, reference will be made to this document, identified as "' 7 63 ". Appeal2015-005604 Application 13/859,576 THE CLAIMED SUBJECT MATTER The disclosed subject matter "relates to a gas valve of the conical rotary plug type attached to an actuating shaft, being the gas valve mounted on the panel of a cooking appliance." '7 63 1: 19-21. Claims 5 and 13 are independent. Claim 5 is illustrative of the claims on appeal and is reproduced below: 5. A valve adapted to regulate the flow of both a natural gas and a liquefied petroleum gas comprising: a valve body having disposed therein a rotatable regulating organ positioned between a valve inlet and a valve outlet, the valve outlet having a first restriction and a second restriction successive to the first restriction, the first restriction comprising a first hole calibrated to provide a given maximum flow rate of the natural gas at a first pressure in the absence of the second restriction, the second restriction removeably attached to the valve outlet, the second restriction comprising a second hole calibrated to provide a given maximum flow rate of the liquefied petroleum gas at a second pressure, the second hole being smaller than the first hole. REFERENCES RELIED ON BY THE EXAMINER Brumbaugh Lee us 2,626, 160 us 5,983,884 Jan.20, 1953 Nov. 16, 1999 THE REJECTION ON APPEAL2 Claims 5-10 and 13-18 are rejected under 35 U.S.C. § 103(a) as unpatentable over Brumbaugh and Lee. 2 "The [r]ejections under []35 U.S.C. § 112, first & second paragraphs, are withdrawn." Final Act. 2. 2 Appeal2015-005604 Application 13/859,576 ANALYSIS Appellant presents the same arguments for claims 5, 6, 13, and 14. App. Br. 9-13, 18-21. We select independent claim 5 for review with claims 6, 13, and 14 standing or falling with claim 5. See 37 C.F.R. § 41.37(c)(l)(iv). Appellant also presents similar arguments for each of claims 7, 9, 15, and 17. App. Br. 13-16, 22-25. We select claim 7 for review with claims 9, 15, and 17 standing or falling with claim 7. Additionally, Appellant presents the same arguments for claims 8, 10, 16, and 18. App. Br. 14--17, 23-26. We select claim 8 for review with claims 10, 16, and 18 standing or falling with claim 8. Claim 5 The Examiner primarily relies on Brumbaugh for disclosing "[a] valve adapted to regulate the flow of both a natural gas and a liquefied petroleum gas." Final Act. 2 (referencing Brumbaugh 1 :33--40). The Examiner also finds that Brumbaugh teaches first and second flow restrictions with the second restriction being removable. Final Act. 3 (referencing Brumbaugh's angled (first) and axial (second) orifices formed in nozzle extension 29 and threaded orifice cap 15 (respectively) as depicted in Figure 6). The Examiner relies on Lee for disclosing a gas valve assembly having first orifices/restrictions/holes 14, 18 and second orifices/restrictions/holes 30, 50, 3 8, 62 "with a second hole downstream & smaller than the first hole." Final Act. 3. The Examiner also finds that each orifice in Lee is "calibrated for a desired maximum heat output I fuel flow rate of the required fuel." Final Act. 3 (referencing Lee 2:48-3:33). The Examiner concludes that their combination would have been obvious for purposes of simplification "when changing from a first fuel I fuel fluid flow to a second fuel I fuel fluid flow." 3 Appeal2015-005604 Application 13/859,576 Final Act. 3. As if to emphasize, the Examiner references Lee's disclosure of providing "means for automatically accommodating the gas flow requirements" of different devices "without removing and replacing an existing orifice having a higher gas flow rate." Lee 4: 1--4; see also Final Act. 3--4. Appellant initially argues Brumbaugh separate from Lee stating, "Brumbaugh fails to disclose any apparatus that includes" the claimed structure (App. Br. 10) when the Examiner relied on the combination of Brumbaugh and Lee for teaching this structure (Final Act. 2--4). Appellant further states, "Lee fails to cure these deficiencies." App. Br. 10; see also Reply Br. 6. "Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Appellant's contentions are not persuasive of Examiner error. Appellant further addresses Lee by stating, "Lee discloses a modular gas cooktop system for use with a single type of gas." App. Br. 10; see also id. at 11. However, the Examiner did not rely on Lee for disclosing a multi- fuel valve; instead, the Examiner relied on Brumbaugh for teaching the use of a valve "adapted to utilize various types of gas." Brumbaugh 1 :37--40; see also Final Act. 2; Ans. 6. Appellant also contends that "a prima facie case of obviousness can only be established upon there being a comparison that includes all of the limitations of the subject claim(s)." App. Br. 10; see also id. at 11. However, it is not made clear by Appellant which limitation has been omitted by the Examiner, or how the stated combination of Brumbaugh and Lee fail to address "all of the limitations of the subject claims(s)." For 4 Appeal2015-005604 Application 13/859,576 example, Appellant recites a claim limitation stating that this limitation is "not found in Brumbaugh." App. Br. 11. Appellant does not seem to recognize that the Examiner relied on Lee for disclosing portions of the cited limitation too. Appellant further states, "Brumbaugh and Lee individually and collectively fail to disclose each and every limitation of claim 5." App. Br. 12. However, as indicated above, when Appellant provides more specifics as to what is missing, Appellant focuses on one reference alone when the Examiner relied a combination of references. Appellant also contends, "[t]o the extent the Examiner is relying on inherency to support the obviousness rejection, he has not satisfied the requirements of an inherency rejection." App. Br. 12; see also Reply Br. 3- 6. The only instance located where the Examiner might have relied on an inherency finding is when the Examiner stated that the size of Brumbaugh' s first orifice "would inherently be calibrated for a given flow rate of natural gas at a first, non-predetermined pressure." Ans. 5. The Examiner stated that this is because it "was well known in the art before the time of the invention [that] the required pressure can be determined from the orifice size and give[n] flow rate." Ans. 5. The Examiner provided evidence to this effect "from Sherwood Industries, Ltd. Enviro Gas Fireplace Service Manual." Ans. 5. In short, the evidence submitted supports the Examiner's findings as to what was "well known in the art" regarding the sizing of an orifice. 3 Appellant does not indication how this evidence fails to provide 3 Appellant also contends that the rejection involving this evidence from Sherwood Industries, Ltd. "constitutes a new ground of rejection." Reply Br. 2-3. We are not in agreement with Appellant since the Examiner was providing evidence as to what was well-known in the art in view of the 5 Appeal2015-005604 Application 13/859,576 such support, and as such, Appellant's arguments regarding "inherency" (App. Br. 12; Reply Br. 3---6) are not persuasive of Examiner error. Appellant further contends, "In the present case, the Examiner has provided no support in Brumbaugh itself for why the two openings indicated on the sidewalls of the nozzle extension 29 must be calibrated for a given flow rate of a natural gas. Inherency requires such a showing." Reply Br. 6. Appellant's contention that the support must be provided "in Brumbaugh itself' is faulty since the Examiner has indicated that calibrating the orifices for a given flow rate is well-known in the art. Ans. 5. Furthermore, the Examiner has indicated where "Brumbaugh itself' teaches a valve that "can be adjusted with all kinds of gas for simmer, full 'on' and various intermediate adjustments." Ans. 5 (referencing Brumbaugh 2: 1-5). Additionally, Lee teaches "a first gas orifice 14 that provides the maximum gas flow rate required" by one device and that the gas flow rate of another device "can be accommodated by including an adapter 10 having an appropriate second gas orifice 62." Lee 4:5-11. In view of these teachings, we are not persuaded by Appellant's contention that "[t]here is absolutely no teaching or suggestion in Brumbaugh or Lee" of the first and second holes being calibrated "to provide a given maximum flow rate" as claimed. See also Reply Br. 7. teachings of Brumbaugh (Ans. 5), and Appellant does not indicate how basing orifice size on fuel characteristics was not something already well- known. Furthermore, even ifthe Examiner's recitation to this Sherwood Industries document was to be considered a new ground, the matter would have been a petitionable matter, not an appealable matter. See 37 C.F.R. § § 1. 181, 41.40. 6 Appeal2015-005604 Application 13/859,576 Accordingly, and based on the record presented, we are not persuaded the Examiner erred in rejecting claim 5 as being obvious over Brumbaugh and Lee. We sustain the Examiner's rejection of claims 5, 6, 13, and 14. Claim 7 Claim 7 depends from claim 5 and includes the additional limitation "wherein the first restriction is formed within a press-in disc that is pressed in the valve outlet." The Examiner finds that Lee's "first restriction (#14) is formed within a press-in disc that is pressed in the valve outlet." Final Act. 4. Furthermore, the Examiner references "a matter of choice in design" and notes an absence, on the part of Appellant, "of any criticality (new or unexpected results produced therefrom) over the prior art of record" regarding this recited formation of the first restriction. Final Act. 4 (referencing Lee, 3:43-56, Figs. 3, 4). Appellant contends, "[t]he [E]xaminer admits that neither Brumbaugh nor Lee teach or otherwise suggest" this limitation; but Appellant does not identify where such an admission by the Examiner can be found, and we were unable to find same in view of the Examiner's stated reliance on Lee, as well as design choice. Accordingly, and based on the record submitted, we are not persuaded the Examiner erred. We sustain the rejection of claims 7, 9, 15, and 17. Claim 8 Claim 8 depends from claim 5 and includes the limitation "wherein the first restriction is formed within a threaded disc that is threaded in the valve outlet." The Examiner finds that Brumbaugh relies on threads for attachment and that "either a threaded or press-in disc [i.e., Lee] can be viewed as nothing more than merely a matter of choice in design." Final 7 Appeal2015-005604 Application 13/859,576 Act. 4. Appellant repeats the contention that the Examiner "admits that neither Brumbaugh nor Lee teach or otherwise suggest" this limitation, but as above, Appellant does not identify where the Examiner expressed such an admission or where Appellant explained the criticality of this recited formation. Appellant also contends that the prima facie case of obviousness "requires at least a suggestion in the prior art of all of the elements of a claim." App. Br. 15. However, Appellant's reliance on "a suggestion in the prior art" is not commensurate with the Supreme Court's holding in KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398 (2007). In KSR, the Court stated that an obviousness analysis cannot be confined "by overemphasis on the importance of published articles and the explicit content of issued patents." KSR, 550 U.S. at 419. Instead, we are instructed that, "there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." KSR, 550 U.S. at 418. Appellant is not persuasive that the Examiner's rejection lacks such articulated reasoning with rational underpinning. We sustain the Examiner's rejection of claims 8, 10, 16, and 18. DECISION The Examiner's rejection of claims 5-10 and 13-18 are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 8