Ex Parte Gregory

Board of Patent Appeals and Interferences

Oct 25, 2011

11044391 (B.P.A.I. Oct. 25, 2011)

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.
11/044,391 01/26/2005 Damian Gregory 2270 300 001 9102
7590 10/25/2011
Terry L. Miller
Law Office of Terry L. Miller
24832 Via San Fernando
Mission Viejo, CA 92692
EXAMINER
FOX, JOHN C
ART UNIT PAPER NUMBER
3753
MAIL DATE DELIVERY MODE
10/25/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DAMIAN GREGORY
____________________

Appeal 2009-012145
Application 11/044,391
Technology Center 3700
____________________

Before WILLIAM F. PATE III, LINDA E. HORNER, and
FRED A. SILVERBERG, Administrative Patent Judges.

SILVERBERG, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Damian Gregory (Appellant) seeks our review under 35 U.S.C. § 134
of the final rejection of claims 3, 4, 6-8 and 10-13. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

THE INVENTION
Appellant’s claimed invention is directed to a motorcycle fuel valve
having a closed position, an on position and a reserve operative position
(Spec. 1: para. [002]).
Claim 3, reproduced below, is representative of the subject matter on
appeal.
3. An improved motorcycle fuel valve for installation to a
motorcycle fuel tank to control discharge of fuel therefrom, said
fuel valve comprising:
an elongate valve body including facility for sealingly attaching
to a threaded nipple at the bottom of said fuel tank in a generally
vertical orientation, and defining an outlet externally of said fuel tank,
said valve body carrying a ported elongate tubular stand pipe portion
projecting generally vertically upwardly within said fuel tank and fuel
therein so that said stand pipe portion is surrounded by fuel, said valve
body and stand pipe portion thereof cooperatively defining a stepped
through bore including a larger diameter cylindrical portion within
said valve body and a smaller diameter portion within said stand pipe
portion, and said stand pipe portion defining a vertically spaced apart
first pair of ports communicating fuel into said stand pipe portion;
a stepped and ported elongate tubular valve member
rotationally received into said stepped through bore including a larger
diameter portion freely rotational within said larger diameter bore
portion, and a smaller diameter portion freely rotationally received
into said stand pipe portion to define a radial clearance therein and
defining a central passage communicating with said outlet, and said
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stand pipe portion defining a vertically spaced apart second pair of
ports communicating to said central passage;
said valve member being rotational among three positions
relative to said valve body, including a closed position in which none
of said first pair of ports communicates with said second pair of ports,
an open position in which the upper one of said first and said second
pairs of ports communicate with one another, and a reserve position in
which the lower one of each of said first and second pair of ports
communicate with one another;
further including a pair of radially and axially extending and
continuous resilient tubular ported seal members interposed in and
extending radially across said radial clearance between said stand pipe
portion and about said elongate tubular valve member and fixedly
positioned onto said tubular valve member intermediate the length
thereof and rotational therewith, said pair of tubular ported seal
members each being continuous axially and circumferentially and
open at opposite ends thereof and defining a respective single radial
opening which forms a seal port rotationally aligning permanently
with a respective one of the second pair of ports of said valve member
and being rotational relative to the other of said pair of
communicating ports of said stand pipe portion whereby when said
communicating ports of said stand pipe portion and valve member are
not aligned rotationally with one another said tubular seal members
each respectively seals fuel flow through the other of said
communicating ports so that fuel surrounding said stand pipe portion
cannot flow into said stand pipe portion of said fuel valve.

THE REJECTIONS
The following rejections by the Examiner are before us for review:
1. Claims 3 and 4 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Golan (US 6,129,338, issued Oct. 10, 2000) in view
of Aurther (US 4,328,833, issued May 11, 1982).
2. Claims 6 and 10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Golan in view of Pezzarossi (US 4,628,962, issued
Dec. 16, 1986).
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3. Claims 13 and, in the alternative, claims 6 and 10, are rejected under
35 U.S.C. § 103(a) as being unpatentable over Golan in view of
Hoeptner (US 4,890,644, issued Jan. 2, 1990), and further in view of
Pezzarossi.
4. Claims 7, 8, 11 and 12, are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Golan in view of Hoeptner and Pezzarossi, and
further in view of Wolcott (US 2,377,473, issued Jun. 5, 1945).

ISSUES
The issues before us are: (1) whether the Examiner erred in
concluding that the combined teachings of Golan and Aurther would have
rendered obvious a tubular sleeve/seal member rotatable with a valve
member and defining a single opening which forms a seal port, as called for
in independent claims 3 and 4 (App. Br. 10); and (2) whether the Examiner
erred in concluding that the combined teachings of Golan and Pezzarossi
would have rendered obvious a valve member having, and the step of
providing a valve member having, a resilient seal member including rib
portions that sealingly engage both a tubular part and a stand pipe portion,
as called for in independent claims 6 and 13, and independent claim 10
(App. Br. 11-15).

ANALYSIS
Rejection of claims 3 and 4 over Golan and Aurther
Independent claims 3 and 4 call for, inter alia, a tubular sleeve
member rotatable with a valve member and defining a single opening which
forms a seal port. Independent claim 4 calls for, inter alia, similar language.
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Appellant contends that (1) “Golan has no seals or seal members on
the piston (i.e., the valving member) other than the O-ring 97 received in
groove 98” (App. Br. 8) (Bold added), and (2) in Golan, fuel flow at ports
232-236 is merely restricted, not sealed (Reply Br. 2).
We agree with the Examiner’s findings and conclusion of obviousness
and adopt them as our own.
The Examiner found that (1) “Golan teaches a rotary fuel valve [200]
including circumferentially spaced ports 236, 238 in the rotor 226 and
circumferentially aligned ports 232, 234 in the stator [stem] 222, see Figures
15 and 17” (Ans. 3) (Bold added), (2) “the Golan rotor seals around the
stator ports by the outer surface of the rotor rather than by a separate seal
member” (id.). In particular, we find that Golan describes maintaining an
effective seal between the inside of the stem 222 and the outside of the
piston (valve member) 226 (col. 6, ll. 6-9).
We agree with the Examiner that Golan describes seals at all of the
ports since Golan describes an effective seal between the inside of stem 222
and the outside of the piston 226 is maintained (Ans. 5).
Appellant contends that the combined teachings of Golan and Aurther
do not describe a sleeve member which is tubular or sleeve-like, is rotational
with a valving member and has a single opening, aperture or port (App. Br.
10).
The Examiner found that Aurther shows a plug valve with a separate
seal member comprising elements 36-41 affixed to the plug and having axial
and circumferential ribs (Ans. 3). In particular, we find that Aurther
describes a valve 10 having a body 11 and a rotor 12, the rotor 12 includes
passages 14, 15, and a seal structure extending about the rotor 12, wherein
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the seal structure includes seal rings 36, 37 and strands 38, 39, 40, with the
rings and strands defining a cage and slidingly engaging a bore to seal
between the body 11and the rotor 12 (col. 2, ll. 12-35, 40-63; figs 6, 8),
wherein the seal ring and strands are carried in grooves in the rotor 12 (col.
2, ll. 64-68).
Appellant’s Specification does not assign or suggest a particular
definition to the term “tubular” or otherwise indicate that this term is used in
a manner other than its ordinary and customary meaning. Therefore, in
determining the ordinary and customary meaning of the claim term “tubular”
as viewed by a person of ordinary skill in the art, it is appropriate to consult
a general dictionary definition of the word “tubular” for guidance. Comaper
Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010).
The ordinary meaning of the word “tubular” includes “having the
form of or consisting of a tube” and the ordinary and customary meaning of
the word “tube” includes “any of various usu. cylindrical structures or
devices.”1 This definition is consistent with Appellant’s Specification,
which describes, with reference to Figure 4B, a sealing collar 54 that
includes “a pair of axially spaced apart and radially projecting ring portions
58, which are respectively disposed one above and one below the respective
port 56a and 56b” and “a pair of circumferentially spaced apart, axially
extending rib portions 60 which are similarly disposed one on each side of
the respective port 56a and 56b” where “[t]he rib portions 60 join with the
ring portions 58 both top and bottom.” Spec. 6: para. [027], bold added. As
such, the seal member described in Appellant’s Specification is a similar
open cage assembly as the seal member disclosed in Aurther. The

1 MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY (10th ed. 1996)
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Appellant’s proffered definition of “tubular” as requiring a sleeve-like
member is inconsistent with Appellant’s Specification, which discloses an
open-cage construction.
We agree with the Examiner that Aurther’s seal member (see figs. 6,
8) is cylindrical in shape and is, thus, tubular (Ans. 6).
We conclude that when the teachings of Golan are combined with the
teachings of Aurther, the tubular cage seal 36-41 would be attached to the
rotatable piston (valve member) 226, surround the ports 236, 238 and define
a single opening, as called for in independent claims 3 and 4.
Thus, we see no error in the Examiner’s analysis and conclude that it
would have been obvious to a person having ordinary skill in the art to have
combined the teachings of Golan and Aurther by substituting in Golan for
the seal between the inside of the stem 222 and the outside of the piston 226
at the ports 232, 234, 236, 238; the tubular cage seal that would be attached
to Golan’s piston 226 at ports 236, 238 as taught by Aurther at 36-41.
We find that providing a separate tubular seal around ports could
reasonably have been predicted to yield the result of defined sealing around
the ports. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007)
(“when a patent claims a structure already known in the prior art that is
altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result.”)
Thus, we affirm the rejection of independent claims 3 and 4.

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Rejection of claims 6 and 10 over Golan and Pezzarossi; claims 13 and, in
the alternative, claims 6 and 10, over Golan, Hoeptner and Pezzarossi; and
claims 7, 8, 11 and 12 over Golan, Hoeptner, Pezzarossi, and Wolcott
Regarding independent claims 6 and 10, the Examiner found that (1)
“Golan shows the claimed fuel valve except for the structure of the seals”
(Ans. 4), and (2) “Pezzarossi shows a rotary plug valve with a tubular seal
member 19, having flexible axial and circumferential ribs” (id.) (Bold
added).
Regarding independent claims 6 and 10, the Examiner concluded that
“[i]t would have been obvious . . . to have used such ribs as taught by
Pezzarossi in the valve of Golan to similarly seal the ports of the valve of
Golan and under the rationale set forth in KSR v. Teleflex, . . . that the simple
substitution of one known element for another to obtain predictable results is
obvious” (id.).
Appellant contends that:
[t]he Office Action does not point out why one skilled in the
relevant arts would combine ribs appearing on the inside of
Pezzarossi's cup-like seal member with the piston of Golan, nor
how such ribs could be fitted into the structure of Golan, which
has no space for such a seal or seal member.
(App. Br. 11).
Appellant contends that “the cup-like seal of Pezzarossi is non-
rotational, while the piston of Golan must rotate[. . . , with] no explanation in
the Office Action of how this gulf or difference in the functions of the two
references is to be bridged” (id.).
Regarding independent claim 13, and in the alternative, independent
claims 6 and 10, the Examiner also (1) found that “Pezzarossi shows a
similar valve with a tubular seal 19, having flexible axial and circumferential
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ribs” (Ans. 4) (Bold added), and (2) concluded that “[i]t would have been
obvious for one of ordinary skill in the art at the time the invention was
made to have used such ribs to desirably prevent leakage at the ports of
Golan, as modified” (id.).
As set forth supra, the rejections of independent claims 6, 10 and 13,
and dependent claims 7, 8, 11 and 12 are all, at least, similarly based on the
combined teachings of Golan and Pezzarossi.
As set forth supra, Golan describes in regards to the embodiment of
Figure 14, a valve 200 including a stem 222, a piston 226, a normal fuel inlet
port 236 and a normal fuel outlet port 242, a reserve fuel inlet port 238 and a
reserve fuel outlet port 240, wherein an effective seal is maintained between
the inside of the stem 222 and the outside of the piston 226.
Pezzarossi describes a seal sleeve 19 having inwardly directed ribs
111, 113 framing an outlet opening 107 (col. 3, ll. 22-42).
We agree with Appellants (App. Br. 11) and conclude that the
Examiner has not articulated a reasonable basis with rational underpinnings
as to how Golan and Pezzarossi could be combined to render the claimed
subject matter prima facie obvious. For example, no rational basis has been
stated and it is unclear to us how Pezzarossi’s inwardly directed ribs 111,
113 could be fitted into the structure of Golan, which has no space for such a
seal or seal member.
The Examiner has not relied on Hoeptner or Wolcott, either alone or
in combination, for any teaching that would remedy the deficiency in the
combined teachings of Golan and Pezzarossi (Ans. 4-5).
Thus, we are constrained to reverse the rejection of claims 6-8 and 10-
13. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[R]ejections
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on obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.”) In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“The legal conclusion of
obviousness must be supported by facts. Where the legal conclusion is not
supported by facts it cannot stand.”)

CONCLUSIONS
The Examiner has not erred in concluding that the combined teachings
of Golan and Aurther would have rendered obvious a tubular sleeve member
rotatable with a valve member and defining a single opening which forms a
seal port, as called for in independent claims 3 and 4.
The Examiner has erred in concluding that the combined teachings of
Golan and Pezzarossi would have rendered obvious a valve member having,
and the step of providing a valve member having, a resilient seal member
including rib portions that sealingly engage both a tubular part and a stand
pipe portion, as called for in independent claims 6 and 13, and independent
claim 10.

DECISION
The decision of the Examiner to reject claims 3 and 4 is affirmed.
The decision of the Examiner to reject claims 6-8 and 10-13 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).

AFFIRMED-IN-PART
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