Ex Parte Deaton

Board of Patent Appeals and Interferences

Aug 22, 2008

10958438 (B.P.A.I. Aug. 22, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THOMAS M. DEATON
____________

Appeal 2008-1977
Application 10/958,438
Technology Center 3700
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Decided: August 22, 2008
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Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Thomas M. Deaton (Appellant) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-17. We have jurisdiction under
35 U.S.C. § 6(b) (2002).
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SUMMARY OF DECISION
We AFFIRM-IN-PART.1

THE INVENTION
The claimed invention relates to an apparatus and method for moving
a shiftable valve member from an open to a closed position (Specification
1:8-9).
Claim 10, reproduced below, is representative of the subject matter on
appeal.
10. A safety valve usable with a well,
comprising:
a housing having a longitudinal bore;
a flapper valve member pivotably mounted
to the housing to have an open position and a
closed position; and
at least one elastically deformable member
disposed being elongated about a path that follows
the circumference of said longitudinal bore and
being non-coiled along its entire length to provide
a biasing force directed to moving the flapper
valve member to the closed position.

THE PRIOR ART
The Examiner relies upon the following as evidence of
unpatentability:
Hare US 5,137,090 Aug. 11, 1992
Williams GB 2 345 742 A Jul. 19, 2000

1 Our decision will refer to Appellant’s Appeal Brief (“App. Br.,” filed Jan.
19, 2007), Reply Brief (“Reply Br.,” filed Aug. 17, 2007), and the
Examiner’s Answer (“Answer,” mailed Jun. 19, 2007).
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THE REJECTIONS
The following rejections are before us for review:
Claims 10, 11, 14, and 15 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Hare.
Claims 1-17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Williams.

ISSUES
The first issue is whether Hare describes an elastically deformable
member disposed in a manner that is elongated about a path that follows the
circumference of a longitudinal bore and being non-coiled along its entire
length.
The second issue is whether Williams’ second spring is non-coiled.

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
1. The Appellant’s Specification discloses exemplary elastically
deformable members 64 extend “at least partially around the
circumference of the housing bore 44.” (Specification 14:13-19.)
Figure 4 shows exemplary elastically deformable members 64 having
generally a semi-circular shape. (Specification 13:13-18.)
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Appellant’s Figure 4 is reproduced below.

Appellant’s Figure 4 is said to depict elastically deformable members
64 extending around bore 44 in a generally semi-circular shape.
2. The Appellant’s Specification does not define the claim term “non-
coiled.” The Appellant’s Specification does not define the claim term
“elongated.”
3. “Coil,” when used as a verb, means “to wind into rings or spirals.”
When used as a noun, it means “a series of loops” or “a single loop of
such a coil.” Webster’s Ninth New Collegiate Dictionary 257 (1987).
4. “Elongate,” when used as a verb, means “to extend the length of.”
When used as an adjective means, it means “stretched out.”
Webster’s Ninth New Collegiate Dictionary 404 (1987).
5. Hare describes a subsurface tubing safety valve with an improved
mechanism to close the flapper of the valve. This improved
mechanism comprises a spring that engages an arm outwardly from its
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pivotal axis. (Hare, col. 1, ll. 53-68.) As shown in figure 4 the
improved mechanism fits within a circular bore.
6. Figure 5 shows a perspective, exploded view of the arm and spring for
urging the flapper to a closed position.
Williams Figure 5 is reproduced below:

Williams’ Figure 5 is said to depict an arm and spring to close a
flapper.
7. Hare describes its spring 31 is a curved beam type of spring. The
spring 31 comprises an intermediate arcuate section 36 having slots 37
formed therethrough to provide individually flexible, curved beams
throughout the length of the body portion. As shown in figure 5,
reproduced above, the slots 37 are laterally staggered so that vertically
adjacent beams overlap one another throughout the length of the body
portion. The slots that extend inwardly from opposite sides of the
body portion 36 are spaced apart from one another by short legs 38.
(Hare, col. 4, ll. 24-34.)
Spring
Arm
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8. Hare describes when threaded bolt 41 is properly secured to the lower
end of spring 31 the spring 31 is placed in tension so as to act upon
the end 34 of the “U” shaped arm to swing the arm in a clockwise
direction in order to swing the flapper to its closed position. (Hare,
col. 4, ll. 45-49.)
9. Williams describes a flapper return spring arrangement. As shown in
figure 4, the torsion spring pair 56 and 58 is disposed
circumferentially about the flapper base 60. (Williams, 5:22-23.) The
torsion springs 56 and 58 are guided through the centrally extending
alignment rods 70 and 72 for full support along the springs’ length.
(Williams, 6:19-20.) In response to the torsional force applied by tabs
66 and 68, torsion springs 56 and 58 wind more tightly around the
alignment rods 70 and 72. (Williams, 7:1-4.)

PRINCIPLES OF LAW
Claim Interpretation
Claims define that which Appellant regards to be their invention. In
re Moore, 439 F.2d 1232, 1235 (CCPA 1971). It is the Appellant’s burden
to precisely define the invention, not the PTO’s. In re Morris, 127 F.3d
1048, 1056 (Fed. Cir. 1997). The Appellant always has the opportunity to
amend the claims during prosecution, and broad interpretation by the
Examiner reduces the possibility that the claim, once issued, will be
interpreted more broadly than is justified. In re Prater, 415 F.2d 1393,
1404-05 (CCPA 1969). We determine the scope of the claims in patent
applications not solely on the basis of the claim language, but upon giving
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claims “their broadest reasonable interpretation consistent with the
specification” and “in light of the specification as it would be interpreted by
one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004).
Anticipation
Anticipation is a question of fact. In re Schreiber, 128 F.3d 1473,
1477 (Fed. Cir. 1997). Anticipation is determined by first construing the
claims and then comparing the properly construed claims to the prior art. In
re Cruciferous Sprout Litigation, 301 F.3d 1343, 1346 (Fed. Cir. 2002). “A
claim is anticipated only if each and every element as set forth in the claim is
found, either expressly or inherently described, in a single prior art
reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987). However,
[t]he law of anticipation does not require that the
reference “teach” what the subject patent teaches
.... [I]t is only necessary that the claims under
attack, as construed by the court, “read on”
something disclosed in the reference, i.e., all
limitations of the claim are found in the reference,
or “fully met” by it.

Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772 (Fed. Cir. 1983).
Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,
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1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, and (3) the level of skill in the art. Graham v. John Deere Co., 383
U.S. 1, 17-18 (1966). See also KSR, 127 S.Ct. at 1734 (“While the sequence
of these questions might be reordered in any particular case, the [Graham]
factors continue to define the inquiry that controls.”) The Court in Graham
further noted that evidence of secondary considerations “might be utilized to
give light to the circumstances surrounding the origin of the subject matter
sought to be patented.” 383 U.S. at 17-18.
In rejecting claims under 35 U.S.C. § 103(a), the Examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see also In re Piasecki, 745
F.2d 1468, 1472 (Fed. Cir. 1984). All the claim limitations must be taught
or suggested by the prior art to establish a prima facie case of obviousness.
In re Royka, 490 F.2d 981, 984-85 (CCPA 1974).

ANALYSIS
Claim analysis
The issues to be resolved in this appeal depend on properly construing
the claims. Specifically, we must construe the phrase “one elastically
deformable member disposed being elongated about a path that follows the
circumference of said longitudinal bore and being non-coiled along its entire
length.” We note that the Appellant has not provided an analysis in the
Appeal Brief as to how this phrase should be construed. Nonetheless, we
construe the phrase in accordance with the principles of claim interpretation
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stated supra. To better understand the meaning of the phrase, we will
analyze the four elements and features covered by the phrase: A) “elastically
deformable member”; B) “disposed … about a path that follows the
circumference of said longitudinal bore”; C) “being non-coiled along its
entire length”; and D) “being elongated.”
A) Elastically deformable member
That the term “elastically deformable member” reads on a structure
that recovers to its original shape when released after being distorted such as
a “spring” is not disputed.
B) Disposed about a path that follows the circumference of said longitudinal
bore
The Appellant’s Specification discloses: “Referring again to Figure 4,
the exemplary elastically deformable members 64 extend into a cavity, or
cavities, 94 formed in the valve housing 36 at least partially around the
circumference of the housing bore 44.”2 (Specification 14:13-15)(emphasis
added.)(FF 1.) Figure 4 shows the elastically deformable member following
a path that extends half way around the circumference of the bore. (FF 1.)
However, the Specification’s disclosure is broader than what Figure 4

2 See also Specification 16:22 to 17:2

The elastically deformable member 64
includes left and right legs 67, 69 extending
generally laterally from the left and right sides 80a,
80b of the pivotable arm assembly 80,
respectively, and into a cavity, or cavities, 94
(Figure 10) formed in the valve housing 36 at least
partially around the circumference of the bore 44.

(Emphasis added.)
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shows. The Specification only requires the elastically deformable member
to follow a path of partially around the circumference of the bore.
Accordingly, one of ordinary skill in the art would understand the claim
phrase “disposed about a path that follows the circumference of said
longitudinal bore,” when read in light of the Specification, to require a
deformable elastically member to follow a path that at least partially follows
a path around the circumference of the bore.
C) Non-coiled along its entire length
When the Specification is silent as to a definition (FF 2), we give the
term its ordinary and plain meaning as would be understood by one of
ordinary skill in the art. In this case, a standard dictionary definition is
representative of what one of ordinary skill in the art would understand as
the ordinary and plain meaning.
The term “coil” when used as a verb means: “to wind into rings or
spirals.” When used as a noun “coil” means, “a series of loops” or “a single
loop of such a coil.” (FF 3.) Accordingly, “non-coiled” would mean to one
of ordinary skill in the art not wound into rings, loops, or spirals.
D) Being elongated
The Specification is silent as to the meaning of “elongated.” (FF 2.)
Again, the standard dictionary definition is representative. When “elongate”
is used as a verb it means, “to extend the length of.” When “elongate” used
as an adjective it means, “stretched out.” (FF 4.)

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Broadest Reasonable Interpretation
In light of the above analysis, we conclude that claim phrase “one
elastically deformable member disposed being elongated about a path that
follows the circumference of said longitudinal bore and being non-coiled
along its entire length,” when given the broadest reasonable construction in
light of the Specification as it would be interpreted by one of ordinary skill
in the art, encompasses an elongated member being extended the length of,
that follows the contour of the bore, and is not wound into rings, loops, or
spirals.
Anticipation
The Examiner finds claims 10, 11, 14, and 15 only require a single
biasing device. (Answer 3.) In addition, the Examiner finds Hare’s spring
31 is “non-coiled.” (Id.) Accordingly, the Examiner finds Hare anticipates
the claimed inventions of claims 10, 11, 14, and 15. (Id.)
The Appellant contends, for claim 10, what Hare discloses is a spring
31 “which is not elongated about a path that follows the circumference of a
longitudinal bore of a housing;” and instead the spring 31 “is elongated
along the axis of the valve and not along a path that follows the
circumference of a longitudinal bore of the housing that contains the valve.”
(App. Br. 15 and see also Reply Br. 2.) For claim 14, the Appellant
contends the spring 31 is curved and thus not substantially flat when not
deformed. (Id.) The Appellant has grouped claims 11 and 15 with claims
10 and 14, respectively. As such, we select claims 10 and 14 as the
representative claims for each group and claims 11 and 15 will stand or fall
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with their respective representative claim. 37 C.F.R. § 41.37(c)(1)(vii)
(2007).
The Appellant’s contentions are not persuasive as to showing an error
on the part of the Examiner in rejecting claims 10, 11, 14, and 15. Hare
describes a safety valve having a longitudinal bore, a flapper valve member,
and at least one elastically deformable member (spring 31). (FF 5-6.) Hare
describes the spring 31 as “curved beams” having “intermediate arcuate
sections 36.” (FF 7.) Both of the terms “curved” and “arcuate” would
describe a structure that is curved. The bore is circular, thus curved, as
shown in the drawings of Hare. (FF 5.) Therefore, the spring 31 is curved
to follow the circular shape of the bore, which means the spring 31 follows
the circumference of the bore.3 Thus, Hare describes an elongated
deformable member disposed about a path that follows the circumference of
the longitudinal bore, as such a structure would be understood by one of
ordinary skill in the art.
Following the dictionary definition of “coiled” as being representative
of how one of ordinary skill in the art would understand meaning of
“coiled,” see FF 3, spring 31 would not be considered a “coiled” spring. If
not understood as “coiled” by one of ordinary skill in the art, then spring 31
is “non-coiled” to one of ordinary skill in the art. Accordingly, Hare
describes a “non-coiled” spring, i.e., elastically deformable member. As
shown in figure 5, the spring 31 is “non-coiled” along its entire length. (FF
6.) Thus, Hare describes an elastically deformable member that is not
wound into rings, loops, or spirals along its entire length.

3 The Appellant has not contended the bore described in Hare is not a
longitudinal bore as would be understood by one of ordinary skill in the art.
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Hence, Hare describes an elastically deformable member that follows
the contour of the bore and is not wound into rings, loops, or spirals.
In the Reply Brief, the Appellant emphasizes the contention that the
deformable member is elongated about the path that follows the
circumference of the longitudinal bore and Hare fails to disclose this feature.
(Reply Br. 2.) We are not persuaded by this contention because the term is
being used as a verb in the claim and we have construed this term when used
as a verb to mean to one of ordinary skill in the art that the member is
“extended the length of” (FF 4). Hare describes such a feature with its
spring 31. Spring 31 when the valve is open is in tension (FF 8). To pull the
valve closed the spring returns to its relaxed state, which is wider than its
tension state, and thus “elongates” in the direction of bore circumference.
Therefore, Hare describes an elongated member being extended the
length of, that follows the contour of the bore, and is not wound into rings,
loops, or spirals.
The Appellant contends Hare’s spring is not substantially flat when
deformed. (App. Br. 15 and Reply Br. 2.) We are not persuaded by this
contention in showing that the Examiner erred in rejecting claim 14.
“Substantially flat” is a term of degree. When a word of degree is used, it is
necessary to determine whether the Specification provides some standard for
measuring that degree. See Seattle Box Company, Inc. v. Industrial Crating
& Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984). In this case, no
standard of meaning of “substantially flat” is provided. Therefore, as
broadly reasonable interpretation should be used. In this case, “substantially
flat” would broadly reasonably mean “consisting of or relating to flatness.”
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The issue becomes does Hare describe a spring consisting of or relating to
flatness? Viewing figure 5 of Hare and Hare’s description of the spring 31
(FF 6-7), Hare’s spring is not wound in a circular or semi circle, (we have
already concluded it meets the “non-coiled” limitation in claim 10) therefore
as this term of degree would be reasonably understood to one of ordinary
skill in the art at the time of the invention Hare’s spring description would
be considered a spring that has the consistency of or relation to flatness.
Accordingly, we will sustain the Examiner rejection of claims 10, 11,
14, and 15 as being anticipated by Hare.
Obviousness
The Examiner finds the torsion springs 56 or 58 satisfy the claim
limitation of the second spring having at least one elastically deformable
member being “non-coiled.” (Answer 3.) The Examiner finds, in part, that
while Williams does not disclose a “non-coiled” spring, such a spring would
be an obvious matter of design choice. (Answer 5.)
The Appellant contends the torsion springs 56 and 58 are coiled
springs, thereby Williams fails to disclose the “non-coiled” limitation of
claim 1.4,5 (App. Br. 17.) The same contention is raised for claims 3 and

4 Claim 2 depends from claim 1.
5 Because our reasoning for not sustaining the Examiner’s obviousness
rejection is based on an error with respect to claim analysis and the
application of the prior art to the claims as the claims should be properly
interpreted, we need not reach the Appellant’s contentions raised in the
Reply Brief with respect to: whether the Examiner using the Appellant’s
disclosure against the Appellant, the concession by the Examiner that the
Specification adequately describes the claimed invention, and the Examiner
use of “design choice” to find the claims obvious.
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10.6 (App. Br. 18.) For claim 14, the Appellant contends the torsion spring
in Williams is not substantially flat when not deformed. (App. Br. 19.)
Williams describes a flapper return spring arrangement. As shown in
figure 4, the torsion springs 56 and 58 are disposed circumferentially about
the flapper base 60. The torsion springs 56 and 58 are guided through the
centrally extending alignment rods 70 and 72 for full support along the
springs’ length. In response to the torsional force applied by tabs 66 and 68,
torsion springs 56 and 58 wind more tightly around the alignment rods 70
and 72. (FF 9.) Williams identifies the springs as “torsion springs”
throughout the disclosure. Williams explains the workings of the springs 56
and 58 such that the springs “wind more tightly” around the rods 70 and 72.
These rods are located within the springs 56 and 58, see figure 4. As such,
the springs 56 and 58 meet the definition of “coiled” as we have found
above (FF 3) and accordingly are not “non-coiled” as required by the claim.
In addition, the springs 56 and 58 are not “substantially flat,” as one of
ordinary skill in the art would understand that term of degree. One of
ordinary skill in the art would consider something that is “substantially flat”
as consisting of or relating to flatness. One of ordinary skill in the art would
not reasonably consider the torsion springs described in Williams as
consisting of or relating to flatness as the term of degree “substantially flat”
would require.

6 Claims 4-9 depend from claim 3. Claims 11-13 depend from claim 10.
Claims 16 and 17 depend from claim 14. The Appellant raises the same
contention with respect to claims 10 and 14 and our analysis on how the
Examiner has erred in rejecting the claims with Williams applies to all
claims rejected with Williams.
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Accordingly, we will not sustain the Examiner’s rejection of claims 1-
17 as being obvious with Williams.

CONCLUSIONS OF LAW
We conclude that the Appellant has not shown that the Examiner
erred in rejecting claims 10, 11, 14, and 15 as being anticipated by Hare.
We conclude that the Appellant has shown that the Examiner erred in
rejecting claims 1-17 as being unpatentable over Williams

DECISION
The Examiner’s decision to reject claims 10, 11, 14, and 15 is
affirmed.
The Examiner’s decision to reject claims 1-17 as being unpatentable
over Williams is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART

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