Ex Parte Dehais et alDownload PDFPatent Trial and Appeal BoardSep 29, 201612748707 (P.T.A.B. Sep. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 121748,707 03/29/2010 26096 7590 10/03/2016 CARLSON, GASKEY & OLDS, P.C. 400 WEST MAPLE ROAD SUITE 350 BIRMINGHAM, MI 48009 FIRST NAMED INVENTOR John M. Dehais 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. PA-10342A: 67010-357PUS1 5791 EXAMINER SHAIKH, MERAJ A ART UNIT PAPER NUMBER 3744 NOTIFICATION DATE DELIVERY MODE 10/03/2016 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): ptodocket@cgolaw.com cgolaw@yahoo.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN M. DEHAIS and MIKE T. BURNICKAS Appeal2015-000407 Application 12/748,707 Technology Center 3700 Before CHARLES N. GREENHUT, BRETT C. MARTIN, and JEFFREY A. STEPHENS, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal2015-000407 Application 12/748,707 CLAIMED SUBJECT MATTER The claims are directed to a "valve for use in an aircraft that includes a cabin that requires conditioned air and avionics that may require conditioned air." Abstract. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A valve for use in an aircraft comprising a cabin and avionics, said valve comprising: a single flapper disposed in a housing, said single flapper comprising a flexible material, said housing comprising a first opening in proximity to said flapper for carrying conditioned air to said avionics and a second opening in proximity to said flapper for carrying said conditioned air to said cabin; and an electromechanical device for moving said flapper between a first position to vent said conditioned air to said first opening and not said second opening and a second position to duct said conditioned air to said second opening and not said first openmg. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Harris us 2,035,747 Mar. 31, 1936 Engel us 3,270,529 Sept. 6, 1966 Vesco us 3,554,487 Jan. 12, 1971 Harwood us 4,888,599 Dec. 19, 1989 Cowell us 4,966,005 Oct. 30, 1990 Army us 5, 784,894 July 28, 1998 Dowd us 5,899,805 May 4, 1999 Hawkes us 6,182,699 Feb. 6,2001 Kurian us 7,086,416 Aug. 8,2006 2 Appeal2015-000407 Application 12/748,707 REJECTIONS Claims 1-3, 5, 9-11, 13, 19 and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kurian, Cowell, Dowd, and Hawkes. Ans. 4, 12. Claim 4 stands rejected under 35 U.S.C. § 1 03(a) as being unpatentable over Kurian, Cowell, Dowd, Hawkes, Army, and Harwood. Ans. 7. Claims 6-8 and 14--16 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kurian, Cowell, Dowd, Hawkes, Engel, and Vesco. Ans. 8, 16. Claim 12 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Kurian, Cowell, Dowd, Hawkes, Army, and Harwood. Ans. 15. Claims 17 and 18 stand rejected under 35 U.S.C § 103(a) as being unpatentable over Kurian, Cowell, Dowd, Harris. Ans. 20. OPINION Regarding claim 11 and its dependent claims 2, 3, 5, and 19, the Appellants first argue that the Examiner erred in combining the teachings of Kurian and Hawkes because to do so would "mak[ e] Kurian unsuitable for 1 The Appellants merely present an abbreviated form of the arguments for claim 1 in arguing independent claim 9 and its dependent claims 10, 11, and 13 (App. Br. 4--5). As such, claims 1, 9-11, and 13 stand or fall together. Furthermore, regarding claim 20, which is also dependent from claim 9, the Appellants merely refer to their argument for the same limitation present in claim 1. App. Br. 5. As such, claim 20 also stands or falls with our disposition of claim 1. 3 Appeal2015-000407 Application 12/748,707 its intended purpose" and "would change the principle of operation of Kurian from a device that compensates for misalignment to a device that does not." Reply Br. 1. We find this argument to rely on too narrow an interpretation of the purpose of Kurian. While Kurian discloses a device that has certain advantages relating to compensating for misalignment, as the Appellants suggest, we do not agree that this amounts to the intended purpose. At its base, Kurian' s intended purpose is to provide a diverting duct assembly, similar to that disclosed in Hawkes and the claimed invention. While the Examiner may have proposed a modification that eliminates or at least minimizes a stated advantage of Kurian, this does not ultimately negate the more general purpose of providing a two-way air duct diverter. If one of ordinary skill in the art were merely looking to construct an air duct and were not concerned with misalignment, such a person would still look to Kurian for the basic structure of a duct and then modify it as desired for his/her own purpose as the Examiner proposes. Accordingly, we are not persuaded that the Examiner erred in combining Kurian and Hawkes. The Appellants next argue that the Examiner also erred in combining Kurian with Hawkes in regard to the diverter flap being flexible. Reply Br. 1-2. The Appellants allege that this is so because "Hawkes teaches away from using conventional diverter valves and particularly ones that are rubber because rubber diverter valves are easily deformed." Reply Br. 2. We disagree with the Appellants' assessment of Hawkes' teachings. As originally stated by the Appellants when citing to Hawkes' disclosure, Hawkes teaches that rectangular ducts may be dented easily, and teaches using circular ducts to lessen the issues relating to denting. Id. (emphasis added, citing Hawkes, col. 5, 11. 15-18). There is no disclosure in Hawkes 4 Appeal2015-000407 Application 12/748,707 relating to the undesirable nature of rubber diverter valves due to the possibility of deformation. The Appellants further argue that "Hawkes teaches away from the proposed modification" because "Hawkes discloses in the background a conventional 'rectangular diverter blade of metal or rubber."' Id. (citing Hawkes, col. 1, 11. 49-50). We do not agree that this is a teaching away merely because Hawkes does not specifically state that its elliptical flapper may also be made of rubber. Hawkes lays out as background that conventional rectangular flappers may be made of either metal or rubber and then is merely silent in specifying of what material elliptical flapper 12 is made. The Examiner uses this background teaching to conclude that it would have been obvious to make the flapper 12 of rubber as was disclosed to be known in Hawkes. Lastly, with respect to claim 1, the Appellants argue that Kurian also teaches away from using a flexible material as disclosed in Hawkes because Kurian requires a rigid lever arm assembly l 02 and thus it would be undesirable to have a flapper that flexes. See Reply Br. 2-3. Whether a reference teaches away from a claimed invention is a question of fact. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). "A reference may be said to teach away when a person of ordinary skill, upon reading the reference, ... would be led in a direction divergent from the path that was taken by the applicant." In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (quoting Tee Air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999)). However, "the prior art's mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed .... " In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 5 Appeal2015-000407 Application 12/748,707 2004). Here, we see no disparagement of a flexible flapper, but merely a disclosure of the desirability of a rigid assembly for the flapper device as used in Kurian. Furthermore, as noted above, the Appellants take too narrow a view of the purpose of Kurian. The Examiner merely uses Kurian for the general teachings of a diverting air duct and then utilizes a simpler diverter as taught in Hawkes, which would be a reasonable substitution that would not affect the overarching purpose of Kurian, which is to divert air. Accordingly, we sustain the Examiner's rejection of claims 1-3, 5, 9-11, 13, 19 and 20. Regarding claims 4 and 6-8, the Appellants merely rely on their arguments above with regard to claim 1. App. Br. 4. Likewise, the Appellants rely on their argument for claim 1 with respect to the rejection of claims 12 and 14--16. App. Br. 5. Regarding claim 17 and its dependent claim 18, the Appellants rely on the argument already rejected above relating to Kurian allegedly teaching away from the use of a flexible flapper. App. Br. 5---6. Accordingly, we sustain the rejection of claims 4, 6-8, 12, and 14--18 for the reasons already stated herein. DECISION The Examiner's rejection of claims 1-20 is 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). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 6 Copy with citationCopy as parenthetical citation