Ex Parte Diouf

Patent Trial and Appeal Board

Jan 11, 2018

13963468 (P.T.A.B. Jan. 11, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/963,468 08/09/2013 CHEIKH DIOUF EM-86432 9760
24131 7590 01/16/2018
LERNER GREENBERG STEMER LLP
P O BOX 2480
HOLLYWOOD, EL 33022-2480
EXAMINER
MURPHY, KEVIN F
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
01/16/2018 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):
boxoa@patentusa.com
docket @ paten tusa. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHEIKH DIOUF
Appeal 2017-001980
Application 13/963,468
Technology Center 3700
Before JOHN C. KERINS, EDWARD A. BROWN, and
LYNNE H. BROWNE, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Cheikh Diouf (Appellant) appeals under 35 U.S.C. § 134 from the
rejection of claims 1—7 and 9—12. We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.
Appeal 2017-001980
Application 13/963,468
CLAIMED SUBJECT MATTER
Independent claim 1, reproduced below, is representative of the
claimed subject matter:
1. An injector for a urea-water solution, the injector
comprising:
a main body having a fitting for the urea-water solution;
and
a valve having a valve drive and a separate feed pipe for
the urea-water solution, said separate feed pipe extending at least
partly through said main body; and
at least one spring element biasing said valve together with
said valve drive against said main body.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hofmann
Mayer
Dallmeyer
Martin
US 6,539,708 B1 Apr. 1,2003
US 2004/0101450 A1 May 27, 2004
US 2005/0040259 A1 Feb. 24, 2005
US 2009/0179087 A1 July 16, 2009
REJECTIONS
I. Claims 1, 2, 4—7, 9, and 11 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Hofmann.
II. Claims 1, 6, and 9-12 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Mayer.
III. Claims 1—7, 9, and 11 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Hofmann and Dallmeyer.
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Application 13/963,468
IV. Claims 1—4, 6,1,9, 11, and 12 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Martin and Dallmeyer.
DISCUSSION
Rejection I
The Examiner finds that Hofmann discloses each and every limitation
of claim 1. See Final Act. 2—3. In particular, the Examiner finds that
Hofmann discloses a valve (valve rod 60). Id. at 3; see Hofmann, Fig. 3.
Appellant contends that “[t]he element ‘60’ is a valve rod (not the
‘valve’, as alleged in the examiner’s allegation), which is merely the internal
component of the valve (12) that open/closes the valve (12).” Appeal Br. 5.
In support of this contention, Appellant argues that “a valve rod alone
without any other component (such as a valve seat) cannot be considered a
valve.” Id. at 5—6 (emphasis omitted).
Responding to this argument, the Examiner notes that “the claims do
not recite a valve seat or any other component.” Ans. 13. The Examiner
further notes that “appellant’s specification as filed does not mention a valve
seat as part of the valve.” Id. In addition, the Examiner proffers a definition
of “valve” as “‘a device for controlling the passage of fluid through a pipe or
duct’.” Id. However, the Examiner does not indicate the source of this
definition.
In construing claim terms, we apply “the broadest reasonable meaning
of the words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in [Appellant’s] specification.” In re Morris, 127 F.3d 1048, 1054
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Appeal 2017-001980
Application 13/963,468
(Fed. Cir. 1997). During examination of a patent application, pending
claims are given their broadest reasonable construction consistent with the
specification. In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004); In re Prater, 415 F.2d 1393, 140A-05 (CCPA 1969). The
ordinary and customary meaning of a claim term is the meaning that the
term would have to a person of ordinary skill in the art in question at the
time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1319 (Fed.
Cir. 2005) (en banc).
An ordinary and customary meaning of the claim term “valve” is “[1]
any of numerous mechanical devices by which the flow of liquid, gas, or
loose material in bulk may be started, stopped, or regulated by a movable
part that opens, shuts, or partially obstructs one or more ports or
passageways; [2] also : the movable part of such a device.” Merriam-
webster.com, http://www.merriam-webster.com/dictionary/valve. In this
case, Appellant interprets the claim term “valve” in accordance with the first
definition, whereas, the Examiner interprets the claim term in accordance
with the second definition. As noted supra, in order to determine which of
these definitions corresponds to the broadest reasonable interpretation of the
claim term valve, we must determine which definition is consistent with the
use of this claim term in the Specification.
Throughout the Specification, the valve is described as comprising
numerous components including a valve element, a controllably actuable
piston, and a plug connector. See, e.g., Spec. 1 8. The valve is also
described as including a plurality of intake pipes. See id. at 116. One
skilled in the art would understand from reading these and other portions of
the Specification and viewing the drawings that, as used in the Specification,
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Appeal 2017-001980
Application 13/963,468
the claim term valve refers to the entire device, not just the movable part.
Accordingly, a claim construction which interprets the claim term valve as
merely requiring the movable part of a valve is an unreasonably broad
interpretation of this claim term.
As the Examiner has applied such an unreasonably broad
interpretation of the claim term valve in finding that Hofmann’s valve rod 60
corresponds to the claimed valve, the Examiner’s finding is in error. For this
reason, we do not sustain the Examiner’s decision rejecting claim 1, and
claims 2, 4—7, and 9-11 which depend therefrom, as anticipated by
Hofmann.
Rejection II
The Examiner finds that Mayer discloses each and every limitation of
claim 1. See Final Act. 6. In particular, the Examiner finds that Mayer
discloses a valve (valve member 74). See id. However, Mayer’s valve
member 74 is only an internal component of Mayer’s valve metering valve
24. Thus, Mayer’s valve member 74, like Hofmann’s valve rod 60, is not a
valve in accordance with the broadest reasonable interpretation of the claim
term valve.
Accordingly, we do not sustain the Examiner’s decision rejecting
claim 1, and claims 6 and 9-12 which depend therefrom, as anticipated by
Mayer.
Rejection III
The Examiner finds that Hofmann discloses an injector as discussed
supra. Final Act. 8. The Examiner further finds that Dallmeyer discloses a
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Application 13/963,468
valve (closure member 112B). Id. However, Dallmeyer’s closure member
112B, like Hofmann’s valve rod 60, is not a valve in accordance with the
broadest reasonable interpretation of the claim term valve. Thus, Dallmeyer
does not cure the deficiency in Hofmann discussed supra.
For this reason, we do not sustain the Examiner’s decision rejecting
claims 1—7, 9, and 11 as unpatentable over Hofmann and Dallmeyer.
Rejection IV
The Examiner finds that Martin discloses an injector comprising a
valve (end 28). Final Act. 9 (citing Martin, Fig. 2). However, Martin’s end
28 is part of metering plug 26. Thus, Martin’s end 28, like Hofmann’s valve
rod 60, is not a valve in accordance with the broadest reasonable
interpretation of the claim term valve. Furthermore, as discussed supra,
Dallmeyer does not disclose a valve in accordance with the broadest
reasonable interpretation of this claim term. Thus, Dallmeyer cannot cure
this deficiency in Martin.
Accordingly, we do not sustain the Examiner’s decision rejecting
claims 1—4, 6, 7, 9, 11, and 12 as unpatentable over Martin and Dallmeyer.
DECISION
The Examiner’s rejections of claims 1—7 and 9—12 are REVERSED.
REVERSED
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