Ex Parte Cottom

Patent Trial and Appeal Board

May 16, 2013

12031854 (P.T.A.B. May. 16, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte IAN MARTIN COTTOM
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Appeal 2011-003685
Application 12/031,854
Technology Center 3700
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Before: CHARLES N. GREENHUT, PATRICK R. SCANLON, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-003685
Application 12/031,854

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1
and 4-9. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The claims are directed to a valve. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A valve comprising an inlet port, an outlet port, an exhaust port
and a diaphragm disposed between the inlet and exhaust ports
which is moveable, in response to air pressure within the valve,
between a first position in which it seals the exhaust port and a
second position in which the exhaust port is open, the exhaust
port comprising a plurality of exhaust apertures, there being one
or more projections associated with the exhaust port on which
the diaphragm is able to rest in its first position, wherein the
one or more projections are located radially outwardly of the
exhaust port and extend axially from an area surrounding the
exhaust port, each of the one or more projections comprising a
radially oriented rib and an arc section disposed at a radially
outward end of the rib.

REJECTIONS
Claims 1, 4-6, 8 and 9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lansky (U.S. 3,424,185 iss. Jan. 28, 1969) and Steinberg
(U.S. 5,218,993 iss. Jun. 15, 1993). Ans. 3.
Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Lansky, Steinberg and Lewis (U.S. 1,506,012 iss. Aug. 26, 1924). Ans.
4.

Appeal 2011-003685
Application 12/031,854

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OPINION
The Examiner found that Lansky discloses the basic structure claimed
but without the “radially oriented rib.” In the Office Action of September 4,
2009 the Examiner found that Steinberg discloses “thin radial support ribs
30.” Non-Final Rej. 3; Steinberg fig. 4. As Steinberg’s reference numeral 30
refers to gaps, the Examiner, in the Final Office Action of April 8, 2010
amended this finding to interpret the “radially oriented rib” as Steinberg’s
lands 28. Final Rej. 2; Ans. 4; Steinberg col. 1, l. 66-col. 2, l. 3, fig. 4.
Appellant correctly argues that Steinberg’s wedge shaped land 28 is
not reasonably interpreted as a “rib.” App. Br. 8. Based on Appellant’s
disclosure (Spec. p. 7, para. [00024]; fig. 3 reference numeral 66) and
dictionary definitions of the term (see, e.g., In re Trans Texas Holdings
Corp., 498 F. 3d 1290, 1299 (Fed. Cir. 2007)), we understand the meaning
of rib in this context to be a part or section of an object that resembles a rib
[i.e., the chest-wall forming bone of a vertebrate] in form or function.1
Steinberg also uses the term “rib” to describe a structure 56 that is an
alternative to lands 28. See Steinberg Fig. 9, col. 2, ll. 37-38.
Prior art references may be “indicative of what all those
skilled in the art generally believe a certain term means ...
[and] can often help to demonstrate how a disputed term is
used by those skilled in the art.” Accordingly, the PTO’s
interpretation of claim terms should not be so broad that it
conflicts with the meaning given to identical terms in other
patents from analogous art.

In re Cortright, 165 F. 3d 1353, 1358 (Fed. Cir. 1999) (alteration in
original) (citations omitted). Accordingly, we must agree with Appellant

1 rib 1. (2001). In Chambers 21st Century Dictionary. Retrieved from
http://www.credoreference.com/entry/chambdict/rib_1
Appeal 2011-003685
Application 12/031,854

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that Steinberg’s wedge shaped land 28 is not reasonably interpreted as a
“rib.” The Examiner relies on this incorrect interpretation in rejecting all
claims involved in this appeal.
In the previous two Office Actions the Examiner has consistently
relied on Steinberg’s description of the prior art known to Steinberg as
depicted in Figures 1-5, specifically Figure 4. In response to Appellant’s
arguments on appeal the Examiner apparently cites to Figure 8 of Steinberg
referencing “ribs 8.” Ans. 5. First, the embodiment depicted in Figure 8 of
Steinberg is one that is completely distinct from that on which the Examiner
has heretofore relied. Second, there does not appear to be a reference
numeral 8 in any of the figures associated with that embodiment. While, as
discussed above, that embodiment may have a feature characterized by
Steinberg as “ribs 56,” if it is the Examiner’s intent to place any reliance on
the embodiment depicted in Figure 8 of Steinberg in rejecting the claims on
appeal it cannot be said that Appellant has had sufficient notice of that
position so as to be afforded a fair opportunity to respond. Thus, we cannot
sustain a rejection on any such basis. In re Jung, 637 F. 3d 1356, 1365 (Fed.
Cir. 2011) (citations omitted).

DECISION
The Examiner’s rejections are reversed.

REVERSED

msc