Ex Parte Balan et al

Patent Trial and Appeal Board

Sep 30, 2016

12983806 (P.T.A.B. Sep. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/983,806 01/03/2011 Mircea Balan
64833 7590 09/30/2016
FLETCHER YODER (CAMERON INTERNATIONAL CORPORATION)
P.O. BOX 692289
HOUSTON, TX 77269-2289
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.
VAL-031532/
CMRN:Ol66
EXAMINER
1094
FRISTOE JR, JOHN K
ART UNIT PAPER NUMBER
3753
MAILDATE DELIVERY MODE
09/30/2016 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 MIRCEA BALAN and STEVEN BURROWS
Appeal2014-008988
Application 12/983,806
Technology Center 3700
Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Mircea Balan and Steven Burrows (Appellants) appeal under 35
U.S.C. § 134(a) from the Examiner's decision to reject under 35 U.S.C.
§ 103(a): (1) claims 1-5, 7-9, and 18-20 as unpatentable over Stein (US
5,137,259; iss. Aug. 11, 1992) and Davis (US 6,202,981 Bl; iss. Mar. 20,
2001 ); (2) claims 1, 2, 4---6, 8, 10, 11, 18-20, 25, and 26 as unpatentable over
Appeal2014-008988
Application 12/983,806
Kushida (US 4,483,511; iss. Nov. 20, 1984) and Davis; 1'2 (3) claims 10, 11,
21-23, 25, and 27-29 as unpatentable over Kushida, Davis, and Grazioli
(US 4,519,412; iss. May 28, 1985);3 (4) claims 12-17 as unpatentable over
Kushida, Davis, Grazioli, and Stein; and (5) claims 24, 30, and 31 as
unpatentable over Kushida, Davis, Grazioli, and Muchow (US 4,386,756;
iss. June 7, 1983). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
CLAIMED SUBJECT MATTER
The claimed subject matter relates to "systems and methods for
energizing a ball valve seat assembly." Spec. i-f 3; Figs. 3, 7. Claims 1, 10,
and 18 are independent. Claim 1 is illustrative of the claimed subject matter
and recites:
1. A ball valve, comprising:
a body;
an adapter coupled to the body;
a ball disposed between the body and the adapter and
configured to rotate about a radial axis to allow or block a flow
of fluid along a fluid flow path through a body passage and an
adapter passage; and
a first valve seat assembly disposed between the body and
1 The statement of rejection includes claims 10 and 11 which are not discussed
in the body of the rejection. See Final Act. 7, 9. We consider this to be a
typographical error in the statement of the rejection. In addition, we note that
the Examiner relies on a combination ofKushida, Davis, and Grazioli to reject
claims 10 and 11. See Final Act. 12-13.
2 The statement of rejection does not include claims 25 and 26, which are
discussed in the body of the rejection. See Final Act. 7, 11. We consider this
to be a typographical error in the statement of the rejection.
3 The statement of rejection does not include claims 28 and 29, which are
discussed in the body of the rejection. See Final Act. 12, 15, 16. We consider
this to be a typographical error in the statement of the rejection.
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Application 12/983,806
the ball, and a second valve seat assembly disposed between the
adapter and the ball, both the first and second valve seat
assemblies comprising:
a valve seat; and
a one-piece energ1zmg device external from the
valve seat, wherein the one-piece energizing device is configured
to generate an energizing force in an axial direction to force the
valve seat axially against the ball, wherein the energizing force
is substantially directly proportional to an axial movement of the
valve seat with respect to the respective body or adapter, such
that the energizing force changes only in a substantially linear
manner relative to the axial movement over a full range of
movement of the valve seat.
ANALYSIS
Obviousness over Stein and Davis
Independent claim 1 requires that the energizing device be "external
from the valve seat." Appeal Br. 38, Claims App. Similarly, independent
claim 18 requires that the annular spring be "external from the annular seat
ring." Appeal Br. 41, Claims App.
The Examiner finds that, with respect to claim 1, the energizing device
38 of Stein is external from the valve seat (Final Act. 2) and, with respect to
claim 18, the annular spring 3 8 of Stein is external from the annular seat ring
(Final Act. 6). The Examiner further states: "The spring of Stein is not seen
to be formed within the valve seat but rather to be a separate element acting
upon the valve seat." Ans. 20.
Appellants contend: "the spring element 3 8 [of Stein] is embedded
internally within the seal element 26, rather than being disposed external
from the seal element 26." Appeal Br. 1 O; see also Reply Br. 7-8, citing
Figure 4 and col. 3, 11. 14--25 of Stein. In this regard, column 3, lines 13-25
of Stein is as follows (with emphasis added):
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Application 12/983,806
Both the inlet port 16 and the outlet port 18 have seal
retaining grooves 22, 24, respectively. Within the grooves 22,
24 are placed seal elements 26 which have a base portion 28 in
which is placed a slot or groove 30 for holding 0-rings 32. The
0-rings 32 provide the secondary, body seal by means of 0-ring
32 sealing the walls of groove 30 and the gallery 24. The primary
seal is the dynamic combination of the convex edge 34 of a
folded over thin-walled jacket 36 in conjunction with the
supporting spring of the seal element. A pocket is formed in the
thin-walled elastomeric jacket, inside of which is placed a
generally v-shaped spring element 38 which supports the top 34.
Inspection of Figure 4 of Stein coupled with its accompanying text at
column 3, lines 13-25 reveals that Appellants' statement regarding the
disposition of the energizing spring 3 8 is correct. That is, "the spring
element 38 is completely surrounded by the jacket 36 of the seal element 26,
and thus cannot reasonably be interpreted as being external to the seal
element 26." Reply Br. 8. Since claim 1 and claim 18 respectively recite an
energizing device and an annular spring which are external from the valve
seat and external from the annular seat ring, and since the spring 3 8 of Stein
is disposed interiorly of the annular valve seat element 26, Stein does not
satisfy these limitations of claims 1 and 18.
In addition, Davis was not relied on for curing this deficiency in the
Stein reference. As such, the combination of Davis with Stein fails to render
obvious the ball valve recited in claim 1 or the method recited in claim 18.
Accordingly, we do not sustain the Examiner's rejection of claims 1 and 18
or the Examiner's rejection of claims 2-5, 7-9, 19, and 20, which depend
therefrom, as unpatentable over Stein and Davis.
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Application 12/983,806
Obviousness over Kushida and Davis
Claims 1, 2, 4---6, 8, 25, and 26 are argued together and we select
claim 1 for review. See Appeal Br. 18-23. Further, claims 18-20 are
argued together and we select claim 18 for review. See id. at 29-33. See
also 37 C.F.R. § 41.37(c)(l)(iv).
Independent claim 1 requires
wherein the energ1zmg force is substantially directly
proportional to an axial movement of the valve seat with respect
to the respective body or adapter, such that the energizing force
changes only in a substantially linear manner relative to the axial
movement over a full range of movement of the valve seat.
Appeal Br. 38, Claims App. Similarly, independent claim 18 requires
wherein the energizing force is directly proportional to axial
movement of the annular seat ring with respect to the inner bore
of the ball valve, such that the energizing force changes in a
linear manner relative to the axial movement over a full range of
axial movement of the annular seat ring.
Appeal Br. 41, Claims App.
In respect to both claims 1 and 18, the Examiner finds that the annular
spring 14 of Kushida performs in accordance with Hooke's law (F=kx)
because "[t]he fact that a spring will provide an energizing force that is
substantially directly proportional to axial movement is inherent to any
spring as springs provide a force F which is proportional to the displacement
x in the equation F=kx." Final Act. 8, 10. The Examiner elaborates in the
Answer:
Kushida discloses a spring (14) which generates an energizing
force as claimed in Claims 1, 10, and 18. The spring of Kushida
can be inferred to generate a force substantially directly
proportional to movement and which changes only in a
substantially linear manner relative to the axial movement over a
full range of movement as these behaviors are standard to
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Application 12/983,806
springs. Hooke's law is a principle of physics used to describe
spring behavior which states that springs behave in a linear
manner when subjected to a deforming force. In view of Hooke's
law and a basic understanding of spring behavior it is obvious
that the disclosure of Kushida renders Claims 1, 10, and 18
unpatentable.
Ans. 21-22. However, the Examiner concedes that ifthe disclosure of
Kushida is not found to be adequate
Davis teaches the desirability of using springs with linear
regressive load deflections (Col 5 Lines 4-18). Davis teaches
that it is advantageous to use springs with a linear load deflection
in order to have a predictable response when activated. The
distinction of a "substantially linear" spring over an unspecified
spring is in no way non-obvious over a basic understanding of
the art.
Id. at 22.
Appellants contend:
Davis does not teach or suggest that the "linear regressive load
deflection" relates to any valve seat movement, much less a full
range of movement. Davis merely discloses Belleville washers
124 with a conical shape that flattens when compressed under
force, and specifically illustrates these washers 124 used with
bolts 70 that secure flanges 52 and 62 to a butterfly valve 30.
Appeal Br. 19; see also id. at 20.
Appellants further contend that the Davis springs change the principle
of operation of the Kushida springs. See Appeal Br. 22-23.
At the outset, in response to Appellants, the Examiner points out that:
"Davis is not relied on to modify the design of Kushida, merely to endorse
the use of springs having a substantially linear behavior" (Ans. 22) and that
the "Examiner does not rely on the structure of Davis to modify the valve of
Kushida but rather the teachings of Davis that linear regressive springs are
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desirable to specify that the modified springs of Kushida should have a
linear regression" (Id. at 22-23).
In this case, Appellants argue the specifics of the structure of Davis
and its alleged incompatibility with the structure of Kushida without
acknowledging the merits of the teachings in Davis on which the Examiner
relies in making the combination with Kushida. More specifically, the
Examiner points out that Appellants' claimed structure is essentially
disclosed by Kushida but, lest there be any doubt about the concept of
springs exhibiting substantially linear force behavior throughout their full
range of motion, Davis supplies such a teaching. See In re Merck & Co.,
800 F.2d 1091 (Fed. Cir. 1986); In re Keller, 642 F.2d 413 (CCPA 1981)
(one cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references). Further,
obviousness does not require that all of the features of the secondary
reference be bodily incorporated into the primary reference. In re Keller,
642 F.2d 413, 425 (CCPA 1981).
Moreover, the Examiner's proposed modification of Kushida with
Davis (the modified springs of Kushida should have a linear regression) has
rational underpinnings (see KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007)), and Appellants have not persuasively identified error in the
Examiner's rationale for why it would have been obvious to an artisan of
ordinary skill to combine the references' teachings and suggestions.
Appellants further dispute the Examiner's invocation of Hooke's law
to describe the behavior of Kushida's annular spring 14. Among other
things, Appellants argue that Hooke's law fails beyond some limit (Reply
Br. 9) and that "a spring may follow Hooke's law up until a limit of
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Application 12/983,806
proportionality, followed by non-Hookean behavior up until the elastic
limit[], and thus not all spring behavior is linear over a full range of
movement as set forth in the instant claims" (Id. at 10-11 ). Appellants
further assert that "depending on the materials, construction, geometry, and
other considerations, a spring may deviate from a substantially linear
behavior, particularly as the spring moves over greater distances." Id. at 11.
Appellants' arguments concerning Hooke's law are unsupported
attorney argument and speculation, particularly when considering the
physical realities of movement of a ball valve within a ball valve body.
Axial displacement of a ball valve seat is constrained by the limited
tolerance available to the ball valve within the valve body as well as axial
motion restriction imposed by the ball valve stem on the ball valve. In other
words, the ball valve does not have unlimited freedom of axial motion
within the valve body. The ball valve can only move axially until it strikes
the valve body which stops its axial motion. Under such conditions, it is
unlikely that the annular spring 14 of Kushida would become so extended or
contracted as to experience potential non-Hookean or inelastic behavior
throughout its rather limited range of motion. See In re De Blauwe, 736
F.2d 699, 705 (Fed. Cir. 1984) (arguments and conclusions unsupported by
factual evidence carry no evidentiary weight).
Independent claim 1 further requires that the energizing device be
"one-piece." Appeal Br. 38, Claims App. Similarly, independent claim 18
requires that the annular spring be "one-piece." Appeal Br. 41, Claims App.
Regarding claim 1, the Examiner finds that Kushida discloses a one-
piece energizing device (7 5) (Final Act. 8) and, with regard to claim 18, the
Examiner finds that Kushida discloses a one piece annular spring (Id. at 9).
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Application 12/983,806
The Examiner further states: "The spring [ 14] of Kushida is seen to be a
single unitary element (Fig 3). The spring of Kushida is manufactured from
multiple separate pieces, but when in use is formed of a single piece." Ans.
22 (emphasis added).
Appellants argue that, with regard to claims 1 and 18, "the spring
element 75 is part of a multi-piece construction of an annular spring 14. See
Kushida, Abstract; col. 3, lines 38-43. For example, Kushida specifically
teaches that 'biasing means is comprised of a ring and a plurality of spring
elements.' Kushida, Abstract." Appeal Br. 21, 31. Appellants' further argue
with regard to claims 1 and 18 that: "rather than a one-piece structure, the
spring 14 [of Kushida] is a multi-piece assembly of a plurality of spring
elements 15 (e.g., 24 spring elements) and a plurality of connecting rings 16
(e.g., 2 rings)." Reply Br. 12 (referencing Kushida, Figs. 3, 4; col. 3, 11. 14--
254).
While it is not in dispute that the annular spring 14 of Kushida is
manufactured from multiple separate pieces, Appellants do not apprise us of
error in the Examiner's finding that "when in use" the annular spring of
Kushida is formed as a single piece. In this regard, Kushida states: "an
annular spring 14 as shown in FIG. 3 is inserted in the annular cut-out
between the valve seat retainer 7 and a shoulder defined in the inner
periphery of the valve casing 1." Kushida, col. 3, 11. 35-38 (emphasis
added); see also Kushida Figs. 1-3. This passage and these figures from
Kushida evidence that the multiple element spring 14 is unitary or in one
piece when installed in the valve casing, i.e., when in use.
4 Column 3, lines 14--25, of Kushida does not mention the structure of the
annular spring 14.
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Appellants have not explicitly defined the term "one-piece" in the
Specification. Moreover, the Specification does not contain any disclosure
that renders the Examiner's interpretation of that term unreasonable. See In
re Pond, 466 Fed. Appx. 876 (Fed. Cir. 2012) (where the claim required a
"unitary, one-piece" dental tip and the court found that a prior art insert
molded tip (i.e., two components formed together) anticipated this
limitation).
Accordingly, we are not persuaded by Appellants' arguments and, as
such, we sustain the Examiner's rejections of claims 1, 2, 4---6, 8, 18-20, 25,
and 26 as unpatentable over Kushida and Davis.
Obviousness over Kushida, Davis, and Grazioli
The Examiner applies Kushida and Davis to claim 10 similar to the
manner in which those references were applied to claims 1 and 18 discussed
above. See Final Act. 12-13. Further, in addition to the limitations it has in
common with claims 1 and 18, independent claim 10 requires that the
energizing device "is disposed adjacent a lip of the annular seat ring at an
intermediate position at offset distances from both first and second axial
ends of the annular seat ring." Appeal Br. 40, Claims App. The Examiner
finds and concludes that:
Grazioli teaches placing the spring on an annular lip of the seat
ring instead of the end of the seat ring. It would have been an
obvious matter of design preference to one of ordinary skill in
the art at the time of invention to move the spring to the outer
side of the annular seat ring as is taught by Grazioli.
Final Act. 13. 5
5 While the Examiner does not specify from where he derives this teaching
from Grazioli, it appears the Examiner is referencing Figure 2 of that
reference.
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Relatedly, in the Answer the Examiner states: "Examiner relies upon
the teachings of Grazioli to modify the placement of the spring of Kushida
as seen in the above rejection. Examiner maintains that this modification is
obvious in view of Grazioli and that the rejection is proper." Ans. 24.
Appellants do not respond to the Examiner's rejection of claim 10
other than to say "Grazioli is unable to overcome these deficiencies of
Kushida and Davis [in regard to independent claims 1 and 10]." Appeal Br.
34. Since Appellants' argument does not apprise us of Examiner error in the
combination of Kushida, Davis, and Grazioli with regard to claim 10, we
sustain the Examiner's rejection of independent claim 10 and dependent
claims 11, 21-23, 25, and 27-29, the patentability of which was not
separately argued by Appellants. See 37 C.F.R. § 41.37(c)(l)(iv).
Obviousness over Kushida, Davis, Grazioli, and Stein
Appellants argue that "Kushida, Davis, Grazioli, and Stein cannot
support a prima facie case of obviousness of independent claim l 0 and its
dependent claims (including claims 12-17)." Appeal Br. 35. As discussed,
above, however, the combination of Kushida, Davis, and Grazioli renders
claim 10 unpatentable. Further, Appellants do not apprise us of Examiner
error in the Examiner's application of Stein to claims 12-17 as set forth in
the Final Action. Id. Accordingly, we sustain the Examiner's rejection of
claims 12-17 as unpatentable over Kushida, Davis, Grazioli, and Stein.
Obviousness over Kushida, Davis, Grazioli, and Muchow
Claim 24 depends from independent claim 1, while claims 30 and 31
depend from independent claim 10. As discussed above, the combination of
Kushida and Davis renders claim 1 unpatentable, and the combination of
Kushida, Davis, and Grazioli renders claim 10 unpatentable. Further,
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Appellants do not apprise us of error in the Examiner's application of
Muchow to claims 24, 30, and 31 as set forth in the Final Action. Appeal
Br. 36. Accordingly, we sustain the Examiner's rejection of claims 24, 30,
and 31 as unpatentable over Kushida, Davis, Grazioli, and Muchow
DECISION
We REVERSE the decision of the Examiner to reject claims 1-5, 7-9,
and 18-20 as unpatentable over Stein and Davis.
We AFFIRM the decision of the Examiner to reject claims 1, 2, 4---6,
8, 18-20, 25, and 26 as unpatentable over Kushida and Davis.
We AFFIRM the decision of the Examiner to reject claims 10, 11, 21-
23, 25, and 27-29 as unpatentable over Kushida, Davis, and Grazioli.
We AFFIRM the decision of the Examiner to reject claims 12-17 as
unpatentable over Kushida, Davis, Grazioli, and Stein.
We AFFIRM the decision of the Examiner to reject claims 24, 30, and
31 as unpatentable over Kushida, Davis, Grazioli, and Muchow.
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-IN-PART
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