Ex Parte Hayduk

Board of Patent Appeals and Interferences

Oct 20, 2006

10786998 (B.P.A.I. Oct. 20, 2006)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ALEXANDER HAYDUK
____________

Appeal No. 2006-2154
Application No. 10/786,998
Technology Center 3700
____________

ON BRIEF
____________

Before FRANKFORT, OWENS and HORNER, Administrative Patent Judges.
HORNER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the examiner's
final rejection of claims 1-3, all of the claims pending in the application.
We affirm.
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Application No. 10/786,998

BACKGROUND
The appellant's invention relates to a disc slide mounted between a feed
pipeline and a discharge pipeline. As recited in claim 1, the disc slide includes a
casing, a valve seat comprising two sealing discs, a slide plate, and an actuation
element for the slide plate. The valve seat and the slide plate are provided with a
surface made from a material selected from the group consisting of silicon and
quartz glass. Claim 1 is representative of the subject matter on appeal. A copy of
the claims on appeal can be found in the appendix to the appellant’s brief.
The examiner relies upon the following as evidence of unpatentability:
Berchem (Berchem ‘004) 4,968,004 Nov. 06, 1990
Berchem (Berchem ‘427) 5,271,427 Dec. 21, 1993

The appellant seeks our review of the examiner’s rejection of claims 1-3
under 35 U.S.C. § 103(a) as being unpatentable over Berchem ‘427 in view of
Berchem ‘004.
Rather than reiterate in detail the conflicting viewpoints advanced by the
examiner and the appellant regarding this appeal, we make reference to the final
office action (mailed August 18, 2005) and the examiner's answer (mailed March
21, 2006) for the examiner's complete reasoning in support of the rejection and to
the appellant's brief (filed January 23, 2006) and reply brief (filed April 25, 2006)
for the appellant's arguments.

OPINION
In reaching our decision in this appeal, we have carefully considered the
appellant’s specification and claims, the applied prior art, and the respective
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Application No. 10/786,998

positions articulated by the appellant and the examiner. As a consequence of our
review, we make the determinations that follow. It is our view that, after
consideration of the record before us, the subject matter of the invention of claims
1-3 would have been obvious to one of ordinary skill in the art at the time the
invention was made over Berchem ‘427 in view of Berchem ‘004.
In the rejection of independent claim 1, the examiner determined that
Berchem ‘427 discloses all of the elements of the claimed invention except that the
assembly of Berchem ‘427 lacks the shut off element being a slide plate and the
valve seat being two sealing discs. The examiner relies on Berchem ‘004 to show
that a ball valve (as disclosed in Berchem ‘427) is equivalent to a disc slide valve.
The examiner found that it would have been obvious to one having ordinary skill
in the art at the time the invention was made to make the ball valve and valve seat
of Berchem ‘427 as a slide plate with two sealing discs as disclosed by Berchem
‘004, because Berchem ‘004 shows that they are equivalent. (Final Office Action,
p. 2)
The appellant contends that a ball valve and valve seat structure is not
equivalent to a structure using a slide plate with two sealing discs. The appellant
contends that there is no teaching or suggestion in either of the cited references that
the materials used for a ball valve can be successfully imparted to a disc slide.
(Brief, pp. 3-4 and Reply Brief, pp. 1-2)
To determine whether a prima facie case of obviousness has been
established, we are guided by the factors set forth in Graham v. John Deere Co.,
383 U.S. 1, 17 (1966), viz., (1) the scope and content of the prior art; (2) the
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Application No. 10/786,998

differences between the prior art and the claims at issue; and (3) the level of
ordinary skill in the art.1
With regard to the scope and content of the prior art, we agree with the
examiner that Berchem ‘427 discloses a valve seat (8) and shut-off element (2)
made from quartz glass (Final Office Action, p. 2 citing Berchem ‘427, col. 2, lines
5-6 and col. 4, lines 61-63). Specifically, we find that Berchem ‘427 teaches that
valves, such as flap-type valves, gate valves, slide valves, and rotatable cocks,
which act as throttles, are commonly used in flow passages to control pressure or
volume flow rate of the flowable medium (Berchem ‘427, col. 1, lines 32-46).
Berchem ‘427 also teaches that it was known in the art to provide the flow passage
of an assembly with an engineered ceramic to reduce abrasive wear caused by the
composition and hardness of finely divided solids in a flowable medium and the
velocity of the flowable medium (Berchem ‘427, col. 1, lines 58-66). Berchem
‘427 teaches that silicon dioxide is one such engineering ceramic that was
commonly used in flow passages (Berchem ‘427, col. 2, lines 1-7). In the specific
embodiment of the invention described in Berchem ‘427, throttles (1) is a rotatable
cock valve having valve seats (8) and a valve member (2) that can be composed of
an engineering ceramic, such as silicon dioxide (Berchem ‘427, col. 4, lines 61-
63).
We find that Berchem ‘004 also relates to shutoff and control valves
(Berchem ’004, col. 1, lines 27-28). Berchem ‘004 similarly discloses that it was
known in the art to make a valve element and valve seat of an engineering ceramic

1 Although Graham also suggests analysis of secondary considerations such as commercial
success, long felt but unsolved needs, failure of others, etc., the appellant presented no such
evidence of secondary considerations for the Board’s consideration.
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to minimize wear (Berchem’ 004, col. 1, lines 41-49). We agree with the
examiner’s reading of Berchem ‘004, and find that Berchem ‘004 teaches the
equivalency of a ball valve with a disc slide valve (Answer, p. 3) inasmuch as
Berchem ‘004 teaches that the same materials can be used to make both types of
valves. Specifically, Berchem ‘004 teaches that the valve seat of the ball valve
embodiment and the sealing discs of the disc slide embodiment can be made of the
same material (Berchem ‘004, col. 4, lines 62-67 (teaching that the seating rings (5
and 6) of the ball valve embodiment can be made from silicon carbide or zirconium
oxide) and col. 4, lines 39-41 (teaching that the sealing discs (14a and 14b) of the
disc slide embodiment can similarly be made from silicon carbide or zirconium
oxide). We also find that Berchem ‘004 teaches that the same materials can be
used to make the ball of the ball valve embodiment and the slide plate of the disc
slide embodiment (Berchem ‘004, col. 4, lines 3-5 (teaching that the ball (4) of the
ball valve embodiment can be composed of one of: aluminum oxide, silicon
carbide, silicon nitride, or zirconium oxide) and col. 4, lines 41-43 (teaching that
plate (16) of the disc slide embodiment can similarly be made from aluminum
oxide, silicon carbide or silicon nitride).
With regard to the differences between the prior art and the claimed
invention, we find that Berchem ‘427 teaches the use of quartz glass2 for the valve
seat and shut-off element of a ball valve (Berchem, Figure 1). Berchem ‘427 does
not explicitly teach, however, using quartz glass for the valve seat and slide
element of a disc slide valve. As discussed above, although we find that Berchem

2 The appellant does not contest the examiner’s finding that “silicon dioxide is the chemical
name for quartz glass.” (Final Office Action, p. 2 and Brief, p. 4)
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Application No. 10/786,998

‘004 teaches the use of engineering ceramics for the valve seat and movable shut-
off element of a control valve and further teaches that the same materials can be
used in ball valves and disc slide valves, Berchem ‘004 does not explicitly teach
using either silicon or quartz glass for the components of a disc slide valve.
With regard to the level of skill in the art, we find that a person of ordinary
skill in the art would be presumed to know the relevant teachings of Berchem ‘427
and Berchem ‘004. Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d
955, 962, 1 USPQ2d 1196, 1201 (Fed. Cir. 1986) (The person of ordinary skill in
the art is a hypothetical person who is presumed to know the relevant prior art).
As such, a person of ordinary skill in the art would be presumed to know that
engineering ceramics could be used for the valve seat and movable shut-off
element of a ball valve or disc slide valve to reduce wear encountered by abrasive
materials flowing through a flow passage (Berchem ‘004, col. 1, lines 41-49 and
Berchem ‘427, col. 1, lines 58-66). A person of ordinary skill in the art would also
be presumed to know that silicon dioxide, also known as quartz glass, is one of the
engineering ceramic materials that could be used in a control valve (Berchem ‘427,
col. 2, lines 5-6).
As part of our review of the Graham factors, we also considered whether
there was a “teaching, suggestion, or motivation” to modify or combine the prior
art teachings of Berchem ‘427 and Berchem ‘004. As recently described in In re
Kahn, 441 F.3d 977, 78 USPQ2d 1329 (Fed. Cir. 2006):
[T]he “motivation-suggestion-teaching” test asks not
merely what the references disclose, but whether a person
of ordinary skill in the art, possessed with the
understandings and knowledge reflected in the prior art,
and motivated by the general problem facing the
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inventor, would have been led to make the combination
recited in the claims. From this it may be determined
whether the overall disclosures, teachings, and
suggestions of the prior art, and the level of skill in the
art – i.e., the understandings and knowledge of persons
having ordinary skill in the art at the time of the
invention-support the legal conclusion of obviousness.
(internal citations omitted).
Id. at 988, 78 USPQ2d at 1337. We find that a person of ordinary skill in the art,
possessed with the understandings and knowledge reflected in the prior art, would
have been led to make the combination recited in the claims. In particular, both
prior art references acknowledge the common solution of using engineering
ceramics to alleviate wear, and both references disclose that it was known in the art
to use ball valves and disc slide valves for the same purpose.3 Because the
appellant admits that these two prior art valves are used for the same purpose, and
because the prior art Berchem ‘004 reference teaches that the valves can be made
from the same engineering ceramic materials, we hold that it would have been
obvious to one of ordinary skill in the art at the time the invention was made use
quartz glass for the engineering ceramic to reduce wear, as taught by Berchem
‘427, in a disc slide valve. As such, we find that the examiner established a prima
facie showing of obviousness of claim 1. The appellant did not separately argue
the patentability of the remaining rejected dependent claims 2 and 3. As such, we
treat these claims as standing or falling together with claim 1.
The appellant attempts to rebut the examiner’s prima facie showing by
arguing that Berchem ‘004 teaches away from using the same material for the

3 The appellant also admits on page 3 of the Brief that “both structures can be used for the same
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Application No. 10/786,998

valve seat and slide plate of the disc slide valve. The appellant argues that
Berchem ‘004 teaches that the valve seat and slide plate must be made of different
materials to prevent adhesion between them. (Brief, p. 4)
A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the
reference, or would be led in a direction divergent from
the path that was taken by the applicant. The degree of
teaching away will of course depend on the particular
facts; in general, a reference will teach away if it suggests
that the line of development flowing from the reference's
disclosure is unlikely to be productive of the result
sought by the applicant.
In re Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130, 1131 (Fed. Cir. 1994).
Berchem ‘004 is directed to solving a problem of adhesion of a movable
valve element to a valve seat in shutoff and control valves (Berchem ‘004, col. 1,
lines 52-54). Berchem ‘004 teaches, “adhesion [of the valve seat and the valve
element] depend[s] upon the fluid medium traversing the valve” (Berchem ‘004,
col. 1, lines 54-56). The solution proposed by Berchem ‘004 is to use different
materials for the valve element and the valve seat. The teaching from Berchem
‘004 at issue in this case states,
I have found, most surprisingly, that while two low-
roughness surfaces of the same engineering ceramic will
develop the detrimental adhesion between them, when
different engineering ceramics are paired in contact, the
detrimental adhesion practically is eliminated. (Berchem
‘004, col. 2, lines 37-41.)

purpose.”
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While the passage clearly suggests that it is preferable to use different
materials for the valve seat and the slide plate to eliminate adhesion, we find that
Berchem ‘004 does not teach away from using the same material for both the valve
seat and the slide plate. Specifically, although a person seeking to improve the art
of shut-off valves, upon learning from Berchem ‘004 that valves made of all one
material in certain instances are inferior to valve seats and shut-off elements made
of different materials, might well be led to use different materials for improved
valves, Berchem ‘004 also teaches that it was known in the prior art to use the
same engineering ceramics for both parts in shut-off and control valves (Berchem,
col. 1, lines 41-58). As such, the teaching of Berchem ‘004 that it is preferable to
use different materials is not a teaching away. See Gurley, 27 F.3d at 553, 31
USPQ2d at 1132 (“A known or obvious composition does not become patentable
simply because it has been described as somewhat inferior to some other product
for the same use.”)
Further, Berchem ‘004 teaches that the problem of adhesion is dependent
upon the flowable medium passing through the valve (Berchem ‘004, col. 1, lines
54-56). The appellant has presented no evidence that adhesion was even a concern
in the gas-tight fitting of the present invention, and thus has made no showing that
Berchem ‘004 suggests that the use of the same material for the valve seat and slide
plate of the disc slide valve is unlikely to have been productive for the result
sought by the appellant. As such, we find that the statement in Berchem ‘004 to
use separate materials for the valve element and valve seat to prevent adhesion
would not have led one of ordinary skill in the art away from using the teaching in
Berchem ‘004 to replace the silicon dioxide ball valve of Berchem ‘427 with a
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silicon dioxide disc slide valve. Accordingly, we sustain the examiner’s rejection
of claims 1-3.
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CONCLUSION
To summarize, the decision of the examiner to reject claims 1-3 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)(1)(iv).
AFFIRMED

)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
TERRY J. OWENS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LINDA E. HORNER )
Administrative Patent Judge )
Appeal No. 2006-2154 Page 12
Application No. 10/786,998

William Collard
Collard & Roe, P.C.
1077 Northern Boulevard
Roslyn, NY 11576

LEH/ki