Ex Parte Giacomini

Board of Patent Appeals and Interferences

Jan 28, 2011

11517257 (B.P.A.I. Jan. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CORRADO GIACOMINI
____________________

Appeal 2009-008800
Application 11/517,257
Technology Center 3700
____________________

Before WILLIAM F. PATE, III, LINDA E. HORNER, and KEN B.
BARRETT, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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Application 11/517,257

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STATEMENT OF THE CASE
Corrado Giacomini (Appellant) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 10-27. We have jurisdiction under 35
U.S.C. § 6(b). We REVERSE.

THE INVENTION
Appellant’s claimed invention pertains to a ball valve having an
integrated quick coupling body (free of internal threads) with a quick
coupling assembly (free of external threads) housed therein. Spec. 3:10-22,
6:24 – 7:11; claims 10, 21. According to Appellant’s Specification,
previously known ball valve bodies had threaded ends into which threaded
quick coupling assemblies were screwed. Spec. 2:1-13. Claim 10,
reproduced below, is representative of the subject matter on appeal.
10. A quick installation valve, comprising:
a ball shutter with an inlet side and an outlet side;
a valve body having a central part housing the ball
shutter, the valve body further including i) an inlet end in fluid
connection with the inlet side of the ball shutter, and ii) an
outlet end in fluid connection with the outlet side of the ball
shutter,
as viewed in cross-section and as viewed from a distal-
most end of the inlet end, the inlet end being entirely free of
threads that begin and terminate prior to the ball shutter,
as viewed in cross-section and as viewed from a distal-
most end of the outlet end, the outlet end being entirely free of
threads that begin and terminate prior to the ball shutter,
the inlet end and the outlet end each defining an
integrated quick coupling body free of internal threads;
a lever control attached to the ball shutter to rotate the
ball shutter about an axis within the valve body; and
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a quick coupling assembly, for housing and tightly
fastening a metal pipe or a plastic hose, housed in each
integrated quick coupling body of the inlet end and of the outlet
end, the quick coupling assembly free of any external coupling
thread.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Hoffman US 1,906,266 May 2, 1933
Priese US 3,288,430 Nov. 29, 1966
Andrea US 4,779,840 Oct. 25, 1988
Vyse US 4,906,031 Mar. 6, 1990
Bunting US 5,588,638 Dec. 31, 1996
Giacomini US 6,296,229 B1 Oct. 2, 2001
Caprera US 2005/0072953 A1 Apr. 7, 2005

The following Examiner’s rejections are before us for review:
1. Claims 10-12, 16, 18-23, and 25-27 are rejected under 35
U.S.C. § 102(b) as being anticipated by Caprera;
2. Claims 10-12, 16, 18-23, and 25-27 are rejected under 35
U.S.C. § 102(b) as being anticipated by Bunting;
3. Claim 13 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Caprera and Hoffman;
4. Claim 14 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Caprera and Priese;
5. Claims 15, 16, and 22 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Caprera and Giacomini;
6. Claims 15-17, 22, and 24 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Caprera and Andrea;
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7. Claims 10-13, 16, 18-23, and 25-27 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Hoffman and Vyse;
8. Claim 14 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hoffman, Vyse, and Priese;
9. Claims 15, 16, and 22 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hoffman, Vyse, and Giacomini; and
10. Claims 15-17, 22, and 24 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Hoffman, Vyse, and Andrea.

OPINION
The rejection of claims 10-12, 16, 18-23, and 25-27 as being anticipated by
Caprera
Independent claim 10 recites:
a quick coupling assembly, for housing and tightly fastening a
metal pipe or a plastic hose, housed in each integrated quick
coupling body of the inlet end and of the outlet end, the quick
coupling assembly free of any external coupling thread.
Independent claim 21 contains a similar recitation but only requires that one
of the valve body ends have an integrated quick coupling body and quick
coupling assembly. The Examiner maintains that “the appellant has
provided no structure to define a ‘quick coupling’ other than that is entirely
free of threads ….” Ans. 11. The Examiner broadly construed Appellant’s
“quick coupling” as a coupling that is entirely free of threads and that may
be coupled quickly. Id.
While we agree with the Examiner’s sentiment that the claims’
minimal structural limitations result in a broadly claimed “quick coupling
body” and “quick coupling assembly,” we nonetheless conclude that the
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Examiner’s construction is unreasonably broad. The record suggests that
“quick coupling” would be understood by one of ordinary skill in the art to
refer to a recognized category of couplings, not, as the Examiner concluded,
simply any threadless coupling capable of being coupled quickly. See, e.g.,
Vyse, col. 1, ll. 7-12; Spec. 1:15-26 (Appellant referring to “known” quick
couplings). The Examiner’s construction is unreasonably broad because it
does not appear to take into account the understanding of the ordinary
artisan.
We turn now to the cited art. The Examiner, applying the improper
construction, found that Caprera discloses “a quick coupling assembly 16
and 18.” Ans. 5. Caprera’s elements 16 and 18 are retaining rings which
retain the valve seat in the valve body. Caprera 2, para. [0017], fig. 1. We
cannot find by a preponderance of the evidence that Caprera’s retaining
rings are “quick coupling assembl[ies]” as that term is used in the art. As
such, we cannot sustain the anticipation rejection based on Caprera.

The rejection of claims 10-12, 16, 18-23, and 25-27 as being anticipated by
Bunting
The Examiner found that Bunting discloses “a quick coupling
assembly 12.” Ans. 6. Bunting’s element 12 is the process piping
connected to the valve, and is depicted as being connected by a bolted
flange 62. Bunting, col. 5, ll. 27-32, fig. 3. We do not find that one of
ordinary skill in the art would consider either the bolted flange or the pipe
itself to be the claimed “quick coupling assembly.” Accordingly, we do not
sustain the anticipation rejection based on Bunting.
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The obviousness rejections with Caprera as the primary reference
In articulating the rejections numbered 3 through 6 above, the
Examiner rejects certain dependent claims as being obvious in light of the
combination of Caprera with either Hoffman, Priese, Giacomini, or Andrea.
The Examiner does not rely on these secondary references in any manner
that cures the deficiency of the underlying anticipation rejection of the
independent claims based on Caprera. Ans. 6-8, 12. As such, we reverse the
rejection of claim 13 as being unpatentable over Caprera and Hoffman; the
rejection of claim 14 as being unpatentable over Caprera and Priese; the
rejection of claims 15, 16, and 22 as being unpatentable over Caprera and
Giacomini; and the rejection of claims 15-17, 22, and 24 as being
unpatentable over Caprera and Andrea.

The rejection of claims 10-13, 16, 18-23, and 25-27 as being unpatentable
over Hoffman and Vyse
The Examiner found, in the Grounds of Rejection section of the
Answer:
Hoffman discloses a quick installation valve 1, having … the
inlet end and the outlet end each defining an integrated quick
coupling body 4 … and a quick coupling assembly 5,6, for
housing and tightly fastening a metal pipe, housed in each
integrated quick coupling body of the inlet end and of the outlet
end. Hoffman lacks the valve being free of threads. Vyse
discloses a quick connect connection free of threads.
Ans. 8. Based on these findings, the Examiner concluded:
It would have been obvious to one having ordinary skill in the
art at the time the invention was made to use the thread free
quick connect connection of Vyse in place of the threads of
Hoffman as a matter of simple substitution and would provide
predictable results.
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Id.; see also id. at 13 (Response to Argument section: “the examiner is
merely substituting one type of connection (threaded connection of
Hoffman) with another (quick coupling connection of Vyse that is entirely
free of threads).”)
It appears that the Examiner’s articulated reason to combine the
references may be based on substituting Hoffman’s threaded “quick
coupling assembly” with Vyse’s connection. However, the Examiner’s
finding regarding Hoffman’s elements 5 and 6 is premised on the previously
discussed unreasonably broad construction. Those elements in Hoffman are
“valve seat members” having external threads for engaging the internal
threads of the valve body and also having internal threads for receiving the
flow lines. Hoffman 1, ll. 38-52, fig. 1. We do not find that one of ordinary
skill would consider Hoffman’s valve seat member to be a “quick coupling
assembly” within the meaning of Appellant’s claimed invention. Thus, the
Examiner’s conclusion of obviousness is premised on an erroneous finding.
Additionally, we cannot agree with the Examiner’s conclusion of
obviousness based on a “simple substitution” rationale because the Examiner
does not adequately address the “integrated” aspect of Appellant’s claimed
invention, and has not clearly articulated how Vyse’s element(s) would be
substituted for Hoffman’s element(s) so as to result in a quick coupling
assembly housed in an integrated quick coupling body as called for by
Appellant’s claims. Cf. App. Br. 25-26 (arguing that the Examiner’s
proposed substitution is flawed because “[t]he teaching of VYSE is to
attach, not incorporate or integrate ….”).
In light of the above, we cannot sustain the rejection of claims 10-13,
16, 18-23, and 25-27 as being obvious in light of Hoffman and Vyse.
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The obviousness rejections based on the combination of Hoffman, Vyse, and
a tertiary reference
In articulating the rejections numbered 8 through 10 above, the
Examiner rejects certain dependent claims as being obvious in light of the
combination of Hoffman and Vyse with either Priese, Giacomini, or Andrea.
The Examiner does not rely on these tertiary references in any manner that
cures the deficiency of the underlying obviousness rejection of the
independent claims based on Hoffman and Vyse. Ans. 9-10, 14. As such,
we reverse the rejection of claim 14 as being unpatentable over Hoffman,
Vyse, and Priese; the rejection of claims 15, 16, and 22 as being
unpatentable over Hoffman, Vyse, and Giacomini; and the rejection of
claims 15-17, 22, and 24 as being unpatentable over Hoffman, Vyse, and
Andrea.

DECISION
The decision of the Examiner to reject claims 10-27 is reversed.

REVERSED

mls

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