Ex Parte Dowd et al

Patent Trial and Appeal Board

Sep 2, 2016

12915099 (P.T.A.B. Sep. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121915,099 10/29/2010
26096 7590 09/07/2016
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
FIRST NAMED INVENTOR
Peter J. Dowd
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.
PA15232US;
67010-526US 1
CONFIRMATION NO.
7008
EXAMINER
JELLETT, MATTHEW WILLIAM
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
09/07/2016 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 PETER J. DOWD, JOHN M. DEHAIS, ROSANNA C. GLYNN,
JAY STRADINGER, MARC E. GAGE, and KEVIN M. RANKIN
Appeal2014-007455
Application 12/915,099
Technology Center 3700
Before LINDA E. HORNER, ERIC C. JESCHKE, and MARK A. GEIER,
Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Peter J. Dowd et al. (Appellants) 1 seek review, under 35 U.S.C.
§ 134(a), of the Examiner's decision to reject claims 7, 9--12, 14--19, and 25.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM, designating the affirmance of the rejection of claim 19
as a NEW GROUND OF REJECTION pursuant to our authority under
37 C.F.R. § 41.50(b).
1 Appellants identify Hamilton Sundstrand Corporation as the real
party in interest. Appeal Br. 1.
Appeal2014-007455
Application 12/915,099
The disclosed subject matter "relates to a composite seal which is to
be used in a butterfly valve." Spec. i-f 1. Claims 7, 12, 17, and 19 are
independent. Claim 7 is reproduced below:
7. A valve disc and shaft comprising:
a valve disc having a seal groove at an outer
periphery;
a shaft for causing said valve disc to rotate,
there being a carbon seal ring assembly in said seal
groove;
the carbon seal ring assembly including a
carbon member extending between spaced ends,
and having a step at an outer periphery, a metal ring
received in said step, said metal ring maintaining
said spaced ends of said carbon member towards
each other;
a spring is positioned at a radially inner
surface of said carbon member to bias said carbon
member radially outwardly and against said metal
ring; and
said metal ring being formed as a part
separate from said valve disc.
REJECTIONS
1. Claims 7, 9, 10, 12, 14, 17, 18, and 25 are rejected under
35 U.S.C. § 103(a) as unpatentable over Strickler (US 4,899,984, issued Feb.
13, 1990), Pintauro (US 6,079,210, issued June 27, 2000), and Kolb (US
8,276,880 B2, issued Oct. 2, 2012).
2. Claims 11 and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Strickler, Pintauro, Kolb, and Sambasivan (US 8,021,758
B2, issued Sept. 20, 2011 ).
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3. Claims 16 and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Strickler, Pintauro, Kolb, and Mendoza (US 8, 172,202
B2, issued May 8, 2012).
DISCUSSION
Rejections 1and2-The rejection of claims 7, 9-12,
14, 15, 17, 18, and 25 under 35 USC§ 103(a)
With regard to the Rejection 1, Appellants argue the patentability of
the three independent claims in these rejections---claims 7, 12, and 17-as a
group and do not provide separate arguments for any dependent claims.
Appeal Br. 3--4. We select claim 7 as representative, with the remaining
claims standing or falling with claim 7. See 37 C.F.R. § 41.37(c)(l)(iv)
(2014). Appellants also appear to rely on the arguments presented against
Rejection 1 in support of the patentability of the dependent claims subject to
Rejection 2. See Appeal Br. 3--4. As such, the outcome of Rejection 2 turns
on our analysis of Rejection 1.
Claim 7 recites, among other limitations, "said metal ring being
formed as a part separate from said valve disc." Appeal Br. 8 (Claims
App.). The Examiner relied on Strickler to address various limitations, but
stated that Strickler does not disclose "a metal ring; and said metal ring
formed as a part separate from said valve disc." Final Act. 5 (dated Oct. 21,
2013). The Examiner found, however, that Kolb teaches "a metal ring (138
Fig 5 and see Col 5 lines 59-61 ); and said metal ring formed as a part
separate from said valve disc (120 Fig 5)." Id. For the requirement that the
ring be "metal," the Examiner concluded that it would have been obvious
to utilize as suggested by Strickler and as taught by Kolb, a metal
material for the ring and disc of the butterfly valve so that when
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Application 12/915,099
exposed to high temperature, the rate of expansion and
contraction of the disc may equal that of the metal seal, especially
considering that it has been held to be within the general skill of
a worker in the art to select a known material on the basis of its
suitability for the intended us[ e] as a matter of obvious design
choice.
Final Act. 5 (emphasis omitted).
For the requirement that the ring be "formed as a part separate from
said valve disc," the Examiner concluded that one of ordinary skill in the art
would in lieu of providing a solid metal ring extending from the
valve body as taught in Strickler, provide the metal ring detached
from the body as taught in Kolb, where providing a separate ring
from the valve disc as taught in the figures of Kolb enables the
seal of Strickler or Kolb to be variably adjusted to meet any
irregularities about circumferential surface of the pipe of
Strickler or Kolb, and further enables the sealing ring of Strickler
to be arranged into the groove of the disc as taught in Kolb at an
off center position and then held in relative position by the
retention spacer (See Kolb Col 2 lines 27 - 36). Additionally,
providing such an arrangement allows any expansion of the
sealing ring under influence of a pressurized fluid flow to be
further limited as taught in Kolb (id).
Final Act. 5-6 (emphasis omitted).
First, Appellants challenge the Examiner's statements (in the block
quotation directly above) regarding two aspects that a separate ring allegedly
"enables." See Appeal Br. 4 (second full paragraph). Appellants argue that
the problem with "these proposed reasons for the combination is that none of
them are supported in the art, and Strickler is not shown to have any of the
concerns that Kolb allegedly solves." Id. According to Appellants, "this
combination is driven solely by hindsight." Id.
Although a conclusion of obviousness must be supported by findings
and analysis establishing a reason to combine the known elements in the
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manner required in the claim at issue, the analysis "need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ." KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007). Thus, that the prior art does not explicitly provide the
reasoning set forth by the Examiner or discuss deficiencies related to such
reasoning does not undermine the Rejection.
Appellants provide additional argument addressing the Examiner's
position that a separate ring "enables the seal of Strickler or Kolb to be
variably adjusted to meet any irregularities about circumferential surface of
the pipe of Strickler or Kolb" (Final Act. 6 (emphasis omitted)), but
Appellants do not provide this argument until the Reply Brief. See Reply
Br. 1-2. For procedural reasons, we will not address this argument. See
37 C.F.R. § 41.41(b)(2) ("Any argument raised in the reply brief which was
not raised in the appeal brief, or is not responsive to an argument raised in
the examiner's answer, including any designated new ground of rejection,
will not be considered by the Board for purposes of the present appeal,
unless good cause is shown."). This argument addresses the rejection as
originally set forth in the Final Office Action, rather than positions raised in
the Answer. Although Appellants quote from the Answer regarding this
aspect of the reasoning (see Reply Br. 1 (quoting "irregularities in the pipe"
from Ans. 13)), the same reasoning was provided in the Final Office Action.
Compare Ans. 13, with Final Act. 6. Appellants have not shown good cause
for failing to provide this argument in the Appeal Brief. See 37 C.F.R.
§ 41.41(b)(2).
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Second, Appellants state that the Examiner "appears to argue that
removing the solid housing of Strickler et al. and adding a separate metal
ring would have some benefit with regard to the rate of expansion." Appeal
Br. 3. According to Appellants, "this ignores the point that Strickler et al.
has no apparent concern with any such problem, and had already held its seal
in place utilizing the solid structure on the valve disc itself." Id. at 3--4.
For the same reasons discussed above, that Strickler does not discuss
the rate of expansion does not undermine the reasoning provided by the
Examiner. In addition, here, the Examiner did not determine that one of
ordinary skill in the art would have modified Strickler based on the
teachings of Kolb in order to provide the additional function (as compared
to Strickler) of holding the seal in place. Thus, that the modified device and
the device in Strickler both hold in place seal 6 in Strickler does not
undermine the Rejection.
We are also not apprised of error based on Appellants' contention that
"there is no benefit shown" to the rationale provided by the Examiner.
Reply Br. 1. With this, Appellants do not persuasively address the reasoning
provided (Final Act. 4---6; Ans. 13). We determine that the Examiner's
reasoning supports a prima facie case of obviousness. See In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992). By not persuasively addressing the
reasoning provided, Appellants have not shown error in the relevant findings
or the conclusion as to obviousness.
Third, Appellants argue that Strickler "is concerned with minimizing
leakage in groove 5, especially between the heel 5' and the seal 6." Appeal
Br. 4 (discussing Strickler Fig. 3). According to Appellants, the "proposed
modification of replacing the heel 5' with a metal ring would space the seal
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6 and the housing 2 from each other" and "would cause leakage between the
metal ring and the housing, because the seal 6 would no longer contact the
surface of the groove 5, thereby rendering the valve unsuitable for its
intended purpose." Id.
Here, Appellants do not identify persuasive evidence or set forth
technical reasoning to support the contention that the proposed modification
would cause leakage. See Ans. 14 (stating that "it is unclear how the
modification of Strickler with the seal of Kolb would cause the valve of
Strickler to leak"). Further, although Appellants are correct that Strickler
generally addresses preventing leakages, Appellants have not identified any
disclosures showing, for example, that the proposed modification would
cause leakage or that Strickler teaches away from the proposed modification.
See, e.g., Strickler, col. 2, 11. 1---6 (discussing how the "two elastic means"
can help prevent leakage). In the passage cited by Appellants (see Reply Br.
2 (discussing Strickler, col. 3, 11. 11-15)), Strickler discusses preventing
certain fluid leakage based on the shape of seal 6, not based on the
configuration of the structure surrounding the seal.
For the reasons above, we sustain the rejection of claim 7 as
unpatentable over the combined teachings relied upon by the Examiner.
Claims 9-12, 14, 15, 17, 18, and 25 fall with claim 7.
Rejection 3 - The rejection of claims 16
and 19 under 35 USC§ 103(a)
A. Claim 16
Claim 16 recites the valve of claim 12, "wherein said valve housing
body having a first portion defining a flow passage receiving said valve disc,
and a second portion extending integrally from said first portion, and
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defining a space to receive said shaft, with said actuator being attached to
said body as a separate housing." Appeal Br. 9 (Claims App.).
The Examiner found that Strickler did not teach the additional
limitations in claim 16, but found that Mendoza satisfied various claimed
aspects. See Final Act. 9--10. As to the requirement for "a second portion
extending integrally from said first portion," the Examiner concluded that it
would have been obvious,
in lieu of possible separate components for the valve housing, to
provide the parts of the valve housing in Mendoza as integral or
in other words a single molded piece, especially considering that
the use of a one piece construction instead of the structure
possibly allegedly disclosed in Mendoza would be merely a
matter of obvious engineering choice.
Final Act. 11-12 (emphasis omitted) (citing In re Larson, 340 F.2d 965, 968
(CCPA 1965)).
First, Appellants state that "[ c ]laim 16 requires the actuator is attached
to the body as a separate housing" and argue that "[t]here is nothing \vithin
the combined references that would meet this." Appeal Br. 4. We are not
apprised of error here because Appellants merely recite certain claim
language and assert that the prior art does not disclose this limitation, but do
not explain why. See 37 C.F.R. § 41.37(c)(l)(iv) ("A statement which
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim."); see also In re Lovin, 652 F.3d
1349, 1356-57 (Fed. Cir. 2011) (holding that "the Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art"). Here, the
Examiner provided an annotated version of Figure 2 of Mendoza, stating
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that "Mendoza does teach (as seen at least in figure 2 below) ... said
actuator (124) being attached to said body as a separate housing." Final Act.
9-10 (emphasis omitted). Appellants have not shown error in this finding.
Second, Appellants state that "[t]he Examiner argues that it would
have been an obvious engineering choice to modify Mendoza to have an
integral housing." Appeal Br. 4--5. Appellants contend that this "ignores the
benefits as set forth in this application with regard to the use of the integral
components." Id. at 5. 2 We are not apprised of error here, however, because
"[i]n determining whether the subject matter of a patent claim is obvious,
neither the particular motivation nor the avowed purpose of the patentee
controls." KSR, 550 U.S. at 419; see also Alcon Research, Ltd. v. Apotex
Inc., 687 F.3d 1362, 1368 (Fed. Cir. 2012) ("We have repeatedly held that
the motivation to modify a prior art reference to arrive at the claimed
invention need not be the same motivation that the patentee had."). "Under
the correct analysis, any need or problem known in the field of endeavor at
the time of invention and addressed by the patent can provide a reason for
combining the elements in the manner claimed." KSR, 550 U.S. at 420.
For these reasons, we sustain the rejection of claim 16.
B. Claim 19
Claim 19 recites, among other limitations:
a center line of said flow passage defines a first distance
to a location on said second portion which is spaced furthest from
2 Although Appellants do not provide a citation regarding the
"benefits," paragraph 15 of the Specification provides: (1) "The actuator
housing portion 13 can be seen to be formed integrally with the valve
housing portion 21 that forms the flow passage 26" and (2) "By forming the
housing portion 13 integrally with the flow passage housing portion 21, a
more robust housing assembly is provided." See also Spec. Fig. 1.
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said center line, and a ratio of said distance to a radius of said
flow passages is between 2.5 and 4.0; and
a ratio of said first distance to a second distance defined
between the center of a bore for receiving the shaft and an end of
said third portion is between 1 and 4.
Appeal Br. 10 (Claims App.).
The Examiner stated that Mendoza
appears (based on a review of the figures) to recognize the above
arrangement where the motor size, motor output, shaft location,
pipe line size and the resulting motor position determine the
distance from the centerline of the pipe to housing outermost
position and determine the distance from the centerline of the
shaft to the foot of the motor as well as these respective
proportionate distances being result effective variables.
Final Act. 13.
Appellants contend that "[p ]rior to alleging that it would be obvious to
optimize a parameter, the Examiner must first show that the parameter to be
optimized is recognized as a result-effective variable." Appeal Br. 6 (citing
In re Antonie, 559 F.2d 618, 620 (CCPA 1977)). Appellants argue that,
"[t]o meet this burden, the rejection must point to objective evidence
disclosing or suggesting the claimed relationship" and that "[a]n Examiner's
explanation of the claimed relationship is insufficient to meet this burden."
Id. Appellants state that "[t]he Examiner must show that a worker of
ordinary skill in this art would recognize modifying the particular claimed
ratios would have some benefit or purpose" and argue that "[t]here is no
such evidence in this file." Id. at 5.
We agree with Appellants that the record does not show that the prior
art recognized the two claimed ratios of dimensions as result-effective
variables. See Antonie, 559 F .2d at 620 ("The PTO and the minority appear
to argue that it would always be obvious for one of ordinary skill in the art to
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try varying every parameter of a system in order to optimize the
effectiveness of the system even if there is no evidence in the record that the
prior art recognized that particular parameter affected the result."
(emphasis added)). Thus, we do not agree with the Examiner's rationale for
why it would have been obvious to optimize the two claimed relationships to
arrive within the specific claimed numerical ranges. See Final Act. 12-13.
We do, however, agree with the conclusion that the limitations at issue
would have been obvious to one of ordinary skill in the art.
Here, Appellants do not dispute that the prior art discloses the
dimensions used to define the two claimed ratios of dimensions. Thus, we
see no error in the Examiner's identification of: (1) the recited "first
distance" (i.e., from "a center line of [a] flow passage ... to a location on
said second portion which is spaced furthest from said center line") using
reference number 2004; (2) the recited "radius of said flow passage[]" using
reference number 2002; and (3) the recited "second distance" (i.e., from "the
center of a bore for receiving the shaft" to "an end of said third portion")
using reference number 2006. See Final Act 10-11 (providing and
discussing an annotated version of Figure 2 of Mendoza). Instead,
Appellants argue that the prior art does not disclose the specific claimed
numerical ranges for the ratios of ( 1) the "first distance" to the "radius of
said flow passage[]" and (2) the "first distance" to the "second distance" and
argue that it would not have been obvious to modify the art to arrive within
those ranges. Appeal Br. 5.
We conclude that it would have been obvious as a matter of design
choice to modify the relied-upon prior art (to the extent necessary) such that
the two claimed ratios of dimensions were within the specific claimed
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numerical ranges because the values within the specific claimed ranges have
not been shown to (1) solve a stated problem, (2) result in a difference in
function, or (3) provide unexpected results, as compared to the relied-upon
prior art. See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (finding that the
use of the claimed feature "would be an obvious matter of design choice"
when it "solves no stated problem" and "presents no novel or unexpected
result" over the disclosed alternatives); In re Rice, 341 F.2d 309, 314 (CCPA
1965) (stating that "Appellants have failed to show that the change in the
[aspects at issue as compared to the prior art] result in a difference in
function or give unexpected results" and stating that "[ s ]uch changes in
design of the various features are no more than obvious variations consistent
with the principles known in that art"); see also Final Act. 3 (stating that "it
is unclear if there is any required criticality to the ranges"); Ans. 16 (stating
that "there is no required criticality to the claimed ratios" and that
"Appellant[ s] merely claim[] ratios which appear to be arbitrarily chosen").
For the reasons above, we sustain the rejection of claim 19. Because
the reasoning and certain findings of fact differ from those of the Examiner,
we designate our affirmance as a new ground of rejection under 37 C.F.R.
§ 41. 50(b) to provide Appellants with a full and fair opportunity to respond
to the rejection, as modified.
DECISION
We AFFIRM the decision to reject claims 7, 9--12, 14--18, and 25.
We AFFIRM the decision to reject claim 19, designating the affirmance as a
NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R.
§ 41.50(b).
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FfNALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
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 prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED; 37 C.F.R. § 41.50(b)
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