Ex Parte Bell

Patent Trial and Appeal Board

Sep 28, 2016

13050752 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/050,752 03/17/2011 Thomas M. Bell
64833 7590 09/29/2016
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.
OTD-031447 US
(CMRN:Ol33)
CONFIRMATION NO.
3207
EXAMINER
MCCALISTER, WILLIAM M
ART UNIT PAPER NUMBER
3753
MAILDATE DELIVERY MODE
09/29/2016 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 THOMAS M. BELL
Appeal2014-009335
Application 13/050,752 1
Technology Center 3700
Before JOHN C. KERINS, AMANDA F. WIEKER, and
FREDERICK C. LANEY, Administrative Patent Judges.
LANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Thomas M. Bell (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner's final decision rejecting claims 1-9, 22, 23, and 25-34.2 We
have jurisdiction over this appeal under 35 U.S.C. § 6(b ).
SUMMARY OF DECISION
We AFFIRM, and enter NEW GROUNDS OF REJECTION.
1 According to Appellant, the real party in interest is Cameron International
Corporation. Appeal Br. 2 (filed April 7, 2014).
2 Claims 10-21 and 24 have been canceled. Id.
Appeal2014-009335
Application 13/050,752
INVENTION
Appellant's invention relates to a "pressure-regulating device for such
systems that exhibits improved sensitivity and deadband performance."
Spec. ,-r 1.
Claims 1 and 25 are independent claims. Claims 1 and 25, reproduced
below, are illustrative of the claimed subject matter:
1. A system comprising:
a spring-loaded hydraulic pressure regulator having a
maximum deadband of less than 200 pounds per square inch
when coupled to a source of pressurized fluid having a supply
pressure of at least 1000 pounds per square inch, the spring-
loaded hydraulic pressure regulator comprising:
a housing having first and second inner chambers;
a spring disposed within the second inner chamber;
a sensing piston disposed within the housing and
responsive to pressure within the first inner chamber and to a
biasing force generated by the spring; and
at least one supply seal ring disposed within the first
inner chamber.
25. A system comprising:
a spring-loaded hydraulic pressure regulator, comprising:
a housing having first and second chambers;
a first spring disposed within the second chamber;
a single sensing piston disposed within the housing,
wherein the single sensing piston comprises a portion extending
into the second chamber, and the single sensing piston is
responsive to a pressurized fluid within the first chamber and to
a biasing force generated by the first spring; and
a first and second supply seal rings disposed within the
first chamber, wherein the first and second supply seal rings are
configured to selectively allow the pressurized fluid to enter the
first chamber.
Appeal Br. 17, 19 (Claims App.).
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Application 13/050,752
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 1---6, 8, 22, and 23 under 35
U.S.C. § 112, second paragraph, as being indefinite for failing
to particularly point out and distinctly claim the subject matter
which the inventor regards as the invention.
II. The Examiner rejected claims 25, 26, and 29-34 under 35
U.S.C. § 102(b) as anticipated or, in the alternative, regarding
claim 26, as being unpatentable under 35 U.S.C. § 103(a), over
Bell (US 2008/0011355 Al, pub. Jan. 17, 2008).
III. The Examiner rejected claims 27 and 28 under 35 U.S.C.
§ 103(a) as being unpatentable over Bell and Geissinger (US
1,654,642, iss. Jan. 3, 1928).
IV. The Examiner rejected claims 1-9, 22, and 23 under 35 U.S.C.
§ 102(b) as anticipated or, in the alternative, as being
unpatentable under 35 U.S.C. § 103(a), over Bell alone or, a
further alternative, unpatentable over Bell and Nakajima (US
6,176,256 Bl, iss. Jan. 23, 2001).
ANALYSIS
Rejection I
For claim 1, the Examiner determines,
reasonable artisans could disagree as to what limiting effect
should be given to the limitation "having a maximum deadband
of less than 200 pounds per square inch when coupled to a source
of pressurized fluid having a supply pressure of at least 1000
pounds per square inch". Particularly, it is unclear whether this
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Application 13/050,752
limitation should be treated as part of the preamble or as part of
the body.
Final Act. 3 (emphasis omitted). We disagree. Appellant correctly asserts
that the quoted language "is definite as it sets out and circumscribes a
particular subject matter (i.e., a specific type of spring-loaded hydraulic
pressure regulator) with a reasonable degree of clarity." Appeal Br. 7.
The Examiner recognizes appropriately that the "recitation of 'A
system comprising[:]' indicates that the [subsequently recited] limitation is
part of the body of the claim." Final Act. 3. Nevertheless, the Examiner
finds ambiguity is created because "the 'system' is only claimed to comprise
a regulator, it appears that the claim is drawn only to a regulator, rather than
a system, and therefore that this limitation is part of the preamble." Id. The
plain meaning of "system," however, simply connotes the following parts
are intended to move and/or work together. See System Definition,
MERRIAM-WEBSTER.COM, http://www.merriam-
webster.com/dictionary/system (last visited on Sept. 23, 2016). Claim 1
clearly describes a regulator including a combination of parts that are
intended to move and/or work together and, as such, there is nothing
ambiguous with describing, in the preamble, the claimed regulator as a
"system." The element reciting, "a spring-loaded hydraulic pressure
regulator having a maximum deadband of less than 200 pounds per square
inch ... " is clearly part of the claimed system. Therefore, we do not find a
rational underpinning supports the Examiner's rejection of claim 1 as
indefinite.
For claim 22, the Examiner determines, "it is unclear whether the
plurality of supply seal rings of claim 22 include the supply ring of claim 1."
Final Act. 3. The Examiner further explains,
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the issue is how many supply rings are required of claim 22. To
explain, claim 22 could require a plurality of seal rings in
addition to the at least one seal ring required of claim 1 (since
claim 22 does not require --the at least one seal ring comprising
a plurality of seal rings--, or the like). That is, claim 22 could be
interpreted to require at least three seal rings, rather than at least
two seal rings.
Ans. 13. Claims 1 and 22 recite, in relevant part, "at least one supply seal
ring disposed within the first inner chamber," and "a plurality of supply seal
rings disposed within the first inner chamber and configured to selectively
allow the pressurized fluid to enter the first inner chamber," respectively.
We do not agree claim 22 "could be interpreted to require at least three seal
rings" because it is unambiguous that "a plurality of supply seal rings"
recited in the dependent claim necessarily subsumes the "at least one supply
seal ring" recited in the independent claim. In other words, a skilled artisan
would readily understand claim 22 further limits claim 1 by requiring a
regulator to have at least two supply seal rings disposed within the first
chamber, among other things.
For the foregoing reasons, we do not sustain the Examiner's rejection
of claims 1---6, 8, 22, and 23 under 35 U.S.C. § 112, second paragraph, as
being indefinite.
Rejection II
Claim 25 and 29-34
The Examiner finds Bell discloses each and every element of claim
25. Final Act. 4--5. Appellant is a named inventor on Bell. See Bell (76)
(front page of patent, listing inventors). Appellant does not challenge the
Examiner's findings regarding claim 25, except as to whether Bell discloses,
"a single sensing piston disposed within the housing." Appeal Br. 10-11.
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Appellant's argument is that the exemplary pressure regulator 24 in Bell has
two pistons (i.e., a supply piston 64 and a vent piston 68), therefore, Bell
fails to disclose the "single piston" configuration claim 25 requires. Id. To
further the argument, Appellant asserts, "it would not be obvious [t]o
combine the pistons 64 and 68 [of Bell] in a single piston" because "Bell
teaches away from a single piston." Id. at 11. Appellant's argument is
unpersuasive, for the following reasons.
To start, Appellant has already conceded Bell has a written
description that clearly allows a skilled artisan to recognize a single piston
design was within the scope of the disclosure. In claim 21 of Bell, Appellant
(as a named inventor) claims a pressure regulator comprising, "at least one
piston disposed within the interior volume and configured to move therein,"
"a supply seal ring coupled to the at least one piston," and "a vent seal ring
coupled to the at least one piston." Bell para. 48 (claim 21) (emphasis
added). To make that claim, and be faithful to the duty of candor, Appellant
had to represent that the written disclosure clearly allows skilled artisans to
recognize the invention includes a single-piston design. In re Gosteli, 872
F.2d 1008, 1012 (Fed. Cir. 1989) (holding that the written description of a
patent must "clearly allow persons of ordinary skill in the art to recognize
that he or she invented what is claimed"). In other words, when Appellant
sought the Bell patent, Appellant conceded that the written description of
Bell discloses, to a skilled artisan, a single-piston pressure regulator
including a supply/vent seal ring coupled to it, by claiming as much.
Now, before us, Appellant argues Bell does not disclose a single-
piston pressure regulator, a single-piston pressure regulator would not have
been obvious in view of Bell, and, in fact, Bell teaches away from a single-
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piston pressure regulator. Appeal Br. 10-11. Appellant's current position is
meritless. Bell teaches that a commonly known type of hydraulic pressure
regulator included "a control piston that moves back and forth to open and
close both supply ports and vent ports of the regulator in response to the
magnitude of pressure within the regulator." Bell para. 5. Although the
exemplary embodiment in Bell has a two-piston design, Bell teaches to a
skilled artisan that the disclosure is equally applicable to a single-piston
design:
However, in other embodiments, ... the vent piston 68 may have
a configuration in which it does not extend through the supply
piston 64 or the upper end cap 3 6 in full accordance with the
present techniques.
Id. at para. 32 (emphasis added). To a skilled artisan, the above statement,
in context, is describing an alternative embodiment that incorporates the
disclosed techniques using the commonly known single-piston design,
which has a vent piston that does not extend through the supply piston or the
upper end cap. That fact is buttressed by the fact that Bell actually claims a
pressure regulator comprising, "at least one piston disposed within the
interior volume and configured to move therein," "a supply seal ring coupled
to the at least one piston," and "a vent seal ring coupled to the at least one
piston." Bell para. 48 (claim 21 ).
Regarding the excerpts Appellant cites to suggest Bell teaches away
from a single-piston design (see Appeal Br. 10-11 (citing Bell paras. 40-
41) ), it has been established that "[a] reference is no less anticipatory if, after
disclosing the invention, the reference then disparages it. Thus, the question
of whether a reference 'teaches away' from the invention is inapplicable to
an anticipation analysis." Bristol-Myers Squibb Co. v. Ben Venue Labs.,
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Inc., 246 F.3d 1368, 1378 (Fed. Cir. 2001) (alteration in original) (quoting
Celeritas Techs., Ltd. v. Rockwell Int'! Corp., 150 F.3d 1354, 1361 (Fed.
Cir. 1998)). Although Bell describes some advantages gained with the
exemplary two-piston embodiment over a single-piston embodiment (see
Bell paras. 40-41 ), it does not criticize, discredit, or otherwise discourage
using a single-piston design. "A known or obvious [product] does not
become patentable simply because it has been described as somewhat
inferior to some other product forthe same use." In re Gurley, 27 F.3d 551,
553 (Fed. Cir. 1994). Bell discloses all that it would have reasonably
suggested to one having ordinary skill the art, including nonpreferred
embodiments. Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed.
Cir. 1989).
Because a preponderance of the evidence supports the Examiner's
finding that Bell discloses a single-piston pressure regulator, in full
accordance with the techniques illuminated through the exemplary two-
piston design, Appellant has not shown persuasively the Examiner rejected
claim 25 improperly. Therefore, we sustain the Examiner's rejection of
claim 25 as anticipated by Bell. Appellant does not allege any other
patentable distinctions for claims 29-34 and, as a result, we likewise sustain
the Examiner's anticipation rejection of those claims.
Because our decision may be viewed as including new rationale, and
to ensure Appellant is provided a fair opportunity to respond, we designate
our affirmance of the anticipation rejection of claims 25 and 29-34 as a
NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b).
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Claim 26
In addition to the argument made for claim 25, Appellant contends
claim 26 is patentable because Bell fails to disclose, or render obvious, a
single sensing piston including "a first aperture completely through the
single sensing piston," which is "configured to receive the first and second
supply seal rings." Appeal Br. 11-12. In Bell, the exemplary embodiment
discloses a vent seal ring (108) configuration having an aperture completely
through the piston to receive the vent seal rings, but the supply seal ring (84)
configuration has two apertures, each partially through the piston, that
receive the supply seal rings. See Bell Fig. 5. Both configurations rely on a
spring to create a driving force against the seal ring enabling it to block the
flow of a fluid from an associated port (i.e., 94, 118) and, as such, are
interchangeable equivalents. See, e.g., id. at paras. 35-37. Appellant argues
that it would not have been obvious to make the supply real ring
configuration the same as the vent seal ring configuration because it would
cause the spring between the supply seal rings to contact the shaft of the vent
piston ( 68) and increase the frictional forces on the vent piston, which would
reduce the sensitivity of, as well as possibly damage, the vent piston.
Appeal Br. 12. Again, Appellant points out that Bell teaches an advantage
of the two-piston design is the reduced frictional forces on the vent piston
movement, thereby enhancing its sensitivity. Id. (citing Bell para. 40).
Appellant does not identify any other reason a skilled artisan would not have
viewed the modification as simply a design choice substituting one known
configuration for another known configuration that performs the same
function in a similar application.
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As noted above regarding claim 21, we reject Appellant's argument
that a skilled artisan would have viewed Bell as only disclosing a two-piston
design. As such, Appellant's sole argument regarding the potentially
adverse implication the Examiner's proposed modification would have on
the two-piston design is unpersuasive. In the context of the single-piston
design Bell discloses, a skilled artisan would not have perceived any of the
adverse effects Appellant alleges because "the vent piston 68 ... [would]
not extend through the supply piston 64 or the upper end cap 36 in full
accordance with the present techniques." See Bell para. 32 (italics emphasis
added). Absent the concern of interfering with the vent piston, modifying
the supply real ring configuration to be the same as the vent seal ring
configuration would have been rudimentary, a known alternative well within
the grasp of a skilled artisan at the time of the invention. Therefore, we
sustain the Examiner's obviousness rejection of claim 26.
Because our decision may be viewed as including new rationale, and
to ensure Appellant is provided a fair opportunity to respond, we designate
our affirmance of claim 26 as a NEW GROUND OF REJECTION pursuant
to 37 C.F.R. § 41.50(b).
Rejection III
Appellant does not raise a separate argument of patentability for
claims 27 and 28, but instead relies on the alleged deficiencies of Bell for
claim 25. For the reasons discussed above (supra Rejection II), we do not
agree Bell is deficient. Therefore, we sustain the Examiner's rejection of
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claims 27 and 28 and designate our atlirmance as a NEW GROUND OF
REJECTION.
Rejection IV
For claim 1, Appellant contends the Examiner has failed to establish a
prima facie showing that the prior art discloses, "a spring-loaded hydraulic
pressure regulator having a maximum deadband of less than 200 pounds per
square inch when coupled to a source of pressurized fluid having a supply
pressure of at least 1000 pounds per square inch." Appeal Br. 13. Appellant
asserts that language is not part of the preamble, but instead an unconditional
functional requirement defining the characteristics of the claimed "spring-
loaded hydraulic pressure regulator." Id. at 13-14. We agree with
Appellant. Appellant is "free to recite features of an apparatus either
structurally or functionally," but choosing to use functional language comes
with a risk. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997).
Appellant may be required to prove the prior art does not possess the
claimed functional characteristics when the Examiner provides a sound basis
for believing the functional limitations may, in fact, be an inherent
characteristic of the prior art. Id. (citing In re Swinehart, 439 F.2d 210, 213
(CCPA 1971)). The Examiner may establish a sound basis for such a belief
by demonstrating the structural elements performing the functional
limitations in the claimed apparatus are the same as those disclosed in the
prior art. Id. (holding the Examiner was "justified" in concluding that the
functional limitations were inherently disclosed because the prior art
structure was shown to be "the same general shape" as the claimed structure
recited to perform the functional limitations). Moreover, a sound basis does
not tum on absolute certainty; rather, a sound basis requires the Examiner
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"to make sufficient factual findings, such that it can reasonably infer that the
prior art product and that of the patent at issue are the same." Howmedica
Osteonics Corp. v. Zimmer Inc.,_F.3d_, 2016 WL 760552, at *7 (Fed.
Cir. Feb. 26, 2016). "Such a burden-shifting framework is fair because of
'the PTO' s inability to manufacture products or to obtain and compare prior
art products."' Id. at *6.
We are not persuaded the Examiner erred by finding Bell anticipates
claim 1 because the Examiner provides a sound basis for believing the
functional limitations are an inherent characteristic of Bell. Significantly,
Appellant does not dispute any of the Examiner's factual findings (see Final
Act. 8) regarding how Bell discloses the structural features claim 1 recites.
Appeal Br. 13-14. The Examiner has thus established that the structural
elements performing the functional limitations in claim 1 are the same as
those disclosed in the prior art. Therefore, the Examiner has made the
necessary factual findings to reasonably infer the pressure regulator of Bell
and the pressure regulator of claim 1 are the same. See Howmedica
Osteonics Corp., _F.3d_, 2016 WL 760552, at *7.
As a result, the Examiner made a prima facie case Bell anticipates
claim 1 and shifted the burden to Appellant to prove the prior art does not
possess the claimed functional characteristics. Appellant has offered no
evidence that the pressure regulator of Bell does not have "a maximum
deadband of less than 200 pounds per square inch when coupled to a source
of pressurized fluid having a supply pressure of at least 1000 pounds per
square inch." Shifting the burden in this case is especially appropriate since
Appellant is also a named inventor of Bell and particularly well situated to
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have access to evidence, if any exists, showing Bell does not possess the
claimed functional characteristics.
Appellant contends the Examiner acknowledges that Bell does not
appear to disclose that characteristic. Appeal Br. 13 (citing Final Act. 7-8).
We disagree with Appellant's interpretation of the Examiner's remarks. We
understand the Examiner as finding Bell does not expressly describe those
characteristics, rather than suggesting the structure of Bell does not possess
the claimed functional characteristics. Consistent with our understanding,
the Examiner represents in the Answer that there are no distinguishing
structural features between Bell and the structural recitations of claim 1.
Ans. 15. The Examiner further notes "if all claim limitations are found in
the art as applied, the applied art would be seen as meeting the functional
language to the same extent as applicant's device as claimed." Id.
For the foregoing reasons, we are not persuaded the Examiner's
finding that Bell anticipates claim 1 was erroneous. Appellant does not
separately argue the patentability of dependent claims 2-7, 9, 22, and 23,
instead electing to group them with claim 1. Appeal Br. 13-14. Therefore,
we sustain the Examiner's finding that Bell anticipates claims 1-7, 9, 22,
and 23.
Regarding claim 8, Appellant argues the Examiner's rejection was
improper because "Bell does not disclose, 'only a single sensing piston."'
Id. at 15-16. For the reasons discussed above regarding claim 25 (see supra,
Rejection II), we do not agree Bell fails to make that disclosure. Therefore,
we also sustain the Examiner's finding that Bell anticipates claim 8.
Because our decision may be viewed as including new rationale, and
to ensure Appellant is provided a fair opportunity to respond, we designate
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our atlirmance of claims 1-9, 22, and 23 as a NEW GROUND OF
REJECTION pursuant to 37 C.F.R. § 41.50(b).
DECISION
We reverse the Examiner's indefiniteness rejection of claims 1---6, 8,
22, and 23.
We affirm the Examiner's anticipation rejection of claims 25, 26, and
29-34, but we designate our affirmance as a NEW GROUND OF
REJECTION pursuant to 37 C.F.R. § 41.50(b).
We affirm the Examiner's obviousness rejection of claims 27 and 28,
but we designate our affirmance as a NEW GROUND OF REJECTION
pursuant to 37 C.F.R. § 41.50(b).
We affirm the Examiner's anticipation rejection of claims 1-9, 22,
and 23, but we designate our affirmance as a NEW GROUND OF
REJECTION pursuant to 37 C.F.R. § 41.50(b).
37 C.F.R. § 41.50(b) provides that "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the proceeding will be remanded
to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record ....
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED; 37 C.F.R. § 41.50(b)
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