Ex Parte Hentschel et al

Patent Trial and Appeal Board

Jun 9, 2016

12984330 (P.T.A.B. Jun. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/984,330 01/04/2011
53609 7590 06/13/2016
REINHART BOERNER VAN DEUREN P,C
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
FIRST NAMED INVENTOR
Mark A. Hentschel
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. CONFIRMATION NO.
508007 2102
EXAMINER
FRISTOE JR, JOHN K
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
06/13/2016 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):
RockMail@reinhartlaw.com
PTOL-90A (Rev. 04/07)
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK A. HENTSCHEL, JEROME C. KLOPP,
and JESSE W ARDEH
Appeal2014-004552
Application 12/984,330
Technology Center 3700
Before JAMES P. CAL VE, WILLIAM A. CAPP, and
FREDERICK C. LANEY, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1-12, 19, and 20 as unpatentable under 35 U.S.C.
§ 103(a) over Zukausky (US 4,387,878; iss. June 14, 1983) and Seuret (US
6,820,651 B2; iss. Nov. 23, 2004) and claims 12-18 over Nguyen (US
2010/0019179 Al, pub. Jan. 28, 2010) and Seuret. We have jurisdiction
under 35 U.S.C. § 6(b ).
We REVERSE.
Appeal2014-004552
Application 12/984,330
THE INVENTION
Appellants' invention relates to solenoid operated fluid control valves.
Spec. i-f 1. Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A coil capture weld ring to attach a solenoid coil
assembly to a valve body, comprising:
a body defining a plurality of locking tabs configured for
locking engagement with the solenoid coil assembly;
a weld skirt extending from the body and configured for
attachment to the valve body.
Claim 1
OPINION
Unpatentability of Claims 1-12, 19, and 20
over Zukausky and Seuret
The Examiner finds that Zukausky discloses all of the elements of
claim 1 except for the locking tabs. Final Action 2. In particular, the
Examiner finds that Zukausky element E constitutes a solenoid coil
assembly within the meaning of claim 1. Id. The Examiner relies on Seuret
as disclosing locking tabs. Id. The Examiner concludes that it would have
been obvious to a person of ordinary skill in the art at the time of the
invention to use Seuret's clips to attach the weld ring of Zukausky to a valve
body. Id. According to the Examiner, a person of ordinary skill in the art
would have done this to provide an attachment method that can be easily
released. Id.
Appellants traverse the Examiner's rejection by arguing that
Zukausky fails to disclose a solenoid coil assembly as claimed. Appeal
Br. 4--5. Appellants argue that Zukausky element E does not include a
solenoid coil. Id.
2
Appeal2014-004552
Application 12/984,330
In response, the Examiner states that Zukausky element E meets the
metes and bounds of the term "solenoid coil assembly" because it is
interfaced with and surrounded by the solenoid coil. Ans. 9 (citing
Zukausky Fig. 2, element 94). The Examiner further states that Appellants'
claims do not require that the solenoid coil be part of the solenoid coil
assembly. Id. The Examiner further maintains that Part E upon which
solenoid coil 94 is mounted can be read to be within the broadest reasonable
interpretation of "solenoid coil assembly." Id. We disagree.
Claim 1 is directed to a weld ring to attach a "solenoid coil assembly"
to a valve body. Claims App. A solenoid coil assembly is mentioned in the
preamble. Id. Claim 1 then recites a claim limitation that requires that the
weld ring have locking tabs that are configured for locking engagement with
the "solenoid coil assembly." Id. Whether "solenoid coil assembly"
includes a solenoid coil is largely a matter of claim construction. 1
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under
the broadest reasonable interpretation standard, claim terms are given their
ordinary and customary meaning as would be understood by one of ordinary
skill in the art in the context of the entire disclosure. In re Trans logic Tech.,
Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We have been repeatedly
1 We note that "solenoid coil assembly" is a positively recited limitation of
independent claim 12. Claims App. Our construction of "solenoid coil
assembly" applies to claim 12 as well as to claim 1. See In re Varma, 816
F.3d 1352, 1363 (Fed. Cir. 2016) (the same phrase in different claims of the
same patent should have the same meaning).
3
Appeal2014-004552
Application 12/984,330
admonished by the Federal Circuit that a claim construction during
examination cannot be so broad as to be unreasonable.
"[t]he protocol of giving claims their broadest reasonable
interpretation ... does not include giving claims a legally
incorrect interpretation." In re Skvorecz, 580 F.3d 1262, 1267
(Fed. Cir. 2009); see also In re Suitco Surface, Inc., 603 F.3d
1255, 1260 (Fed. Cir. 2010) ("The broadest-construction rubric
coupled with the term 'comprising' does not give the PTO an
unfettered license to interpret claims to embrace anything
remotely related to the claimed invention."). Rather, "claims
should always be read in light of the specification and teachings
in the underlying patent." Suitco, 603 F.3d at 1260 .... Even
under the broadest reasonable interpretation, the Board's
construction "cannot be divorced from the specification and the
record evidence," In re NTP, Inc., 654 F.3d 1279, 1288 (Fed.
Cir. 2011 ), and "must be consistent with the one that those
skilled in the art would reach," In re Cortright, 165 F.3d 1353,
1358 (Fed. Cir. 1999). A construction that is "unreasonably
broad" and which does not "reasonably reflect the plain
language and disclosure" will not pass muster. Suitco, 603 F.3d
at 1260.
Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015);
See also In re Man Machine Interface Tech. LLC, - F .3d -, 2016 WL
1567181, *4 (Fed. Cir. April 19, 2016). (Board's broad construction
deemed unreasonable in view of the specification's clear teaching).
Appellants' Specification discloses that:
the solenoid coil assembly 108 includes a solenoid coil 110
wound on a bobbin. The coil 110 is then over molded within an
encapsulation, which may be plastic, resin, or other appropriate
encapsulation material based on the operated environment in
which pilot operated solenoid valve is to be installed.
Specification i-f 27 (emphasis added). The Specification further discloses a
particular arrangement of the solenoid coil assembly 108 to locking tabs and
a weld ring:
4
Appeal2014-004552
Application 12/984,330
In the embodiment illustrated in FIG. 1 that utilizes identical
L brackets 112, each L bracket 112 includes a pair of locking
tab receiving locations 114. These locking tab receiving
locations 114 are positioned to receive the pair of locking tabs
116 (see FIG. 2) of the weld ring 106 to secure or capture the
solenoid coil assembly 108 to the valve body 102. The use of
two locking tab receiving locations 114 on identical L brackets
112 also allows installation of the solenoid coil assembly 108 in
an inverted orientation. In embodiments that do not utilize
identical L brackets, only a single locking tab receiving location
on each is needed to receive its respective locking tab 116.
Id. i-f 28. One of the stated purposes of the invention is to provide an
improved solenoid coil capture mechanism. Id. i-f 13. To accomplish this
end, the invention uses a weld ring that is spin welded or ultrasonically
welded to the valve body. Id. i-fi-113-14. The weld ring has locking tabs to
facilitate assembly of the valve and solenoid. Id. i-f 15. Viewed in the
context of Appellants' entire disclosure, a person of ordinary skill in the art
would recognize that the solenoid coil assembly recited in claim 1 includes a
solenoid coil.
Taking into account the proper construction of solenoid coil assembly,
we agree with Appellants that the Examiner erred in finding that element E
of Zukausky is a solenoid coil assembly. Thus, the Examiner also did not
establish that Zukausky discloses a body configured for locking engagement
with a solenoid coil assembly, as claimed. Zukausky element E is a guide
shell that fits over armature assembly D. Zukausky col. 5, 11. 30-47.
Zukausky's guide shell E frictionally engages annular seating portion 34 of
flexible diaphragm A to define a pilot reservoir opposite the valve seat and
slidingly guides the armature assembly D. Id. at col. 2, 1. 46-col. 3, 1. 12.
Thus, in Zukausky, the solenoid coil is encased and enclosed within guide
shell E and flexible diaphragm A. Id. The Examiner, however, finds that
5
Appeal2014-004552
Application 12/984,330
Zukausky's flexible diaphragm A corresponds to the coil capture weld ring
of claim 1. Final Action 2. The Examiner finds that it would have been
obvious to use the clips of Seuret to attach the flexible diaphragm A of
Zukausky (the Examiner's "weld ring") to the valve body of Zukausky. Id.
However, even if this was obvious to do, it would not result in the claimed
structure, which requires a weld skirt configured for attachment to the valve
body (by welding) and then locking tabs configured for engagement with the
solenoid coil assembly. The Examiner connects the weld ring to the valve
body with the locking tabs, rather than attaching the weld ring to the
solenoid coil assembly with the locking tabs, as claimed. 2 Moreover, the
element upon which the Examiner relies to disclose the claimed weld skirt is
flexible diaphragm "A" which is frictionally engaged by guide shell "E" and
also moves relative to valve seat B. Zukausky, 3:39-50, Figs 1, 2. Thus, the
Examiner has not established that flexible diaphragm "A" is "configured for
attachment to the valve body" as claimed.
The Examiner's proposed combination does not result in or render
obvious the structure of claim 1 and, consequently, a person of ordinary skill
in the art would not have achieved the claimed invention by combining the
prior art in the manner proposed by the Examiner. Accordingly, we do not
sustain the rejection of claim 1.
Claims 2-11
Claims 2-11 depend, directly or indirectly, from claim 1. Claims
App. The Examiner's rejection of these claims suffers from the same
infirmity that was identified above with respect to claim 1. Thus, for
2 In the claimed invention, the connection between the weld ring and valve
body is by welding. See Spec. i-f 14.
6
Appeal2014-004552
Application 12/984,330
essentially the same reason expressed above in connection with claim 1, we
do not sustain the rejection of claims 2-11.
Claim 12
Claim 12 is an independent claim that differs in scope from claim 1
primarily in that it positively recites "a solenoid coil assembly." Claims
App. The Examiner's rejection of claim 12 relies on essentially the same
findings of fact that were used to reject claim 1.
The Examiner's rejection of claim 12 suffers from the same
infirmities that were identified above with respect to claim 1. Thus, for
essentially the same reasons expressed above in connection with claim 1, we
do not sustain the unpatentability rejection of claim 12 over Zukausky and
Seuret.
Claims 19 and 20
Claims 19 and 20 depend, directly or indirectly, from claim 12.
Claims App. The Examiner's rejection of these claims suffers from the
same infirmity that was identified above with respect to claims 1 and 12.
Thus, for essentially the same reason expressed above in connection with
claims 1 and 12, we do not sustain the rejection of claims 2-11.
Claim 12
Unpatentability of Claims 12-18
over Nguy en and Seuret
The Examiner finds that Nguyen discloses all of the elements of
claim 12 except for the locking tabs, for which the Examiner again relies on
Seuret. Final Action 6-7. The Examiner concludes that it would have been
obvious to a person of ordinary skill in the art at the time the invention was
made to use the clips of Seuret to attach the weld ring of Nguyen to the
7
Appeal2014-004552
Application 12/984,330
valve body. Id. According to the Examiner, a person of ordinary skill in the
art would have done this to provide an attachment that can be easily
released. Id. In an Advisory Action (mailed Sep. 9, 2013) following the
Final Action (mailed May 23, 2013), the Examiner further explained the
using the clip system Seuret to replace the attachment system of Nguyen
involves a simple substitution to replace one means of attachment for
another with a predictable result.
Appellants traverse the Examiner's rejection by arguing that Nguyen
is silent as to its attachment method. Appeal Br. 8. Appellants' challenge
the Examiner's finding that the element labeled by the Examiner as "B" in
the final action meets the claim limitation directed to a weld ring. Id. at 9.
In response, the Examiner maintains that "[i]t would have been
obvious to one of ordinary skill in the art at the time of invention to use the
clips of Seuret to attach the weld ring of Nguyen to the valve body of
Nguyen in order to provide an attachment method which can be easily
released by pushing in the taught locking tabs to allow easy disassembly."
Ans. 10. The Examiner states that the proposed modification provides the
straightforward benefit of allowing the valve body and weld ring to be easily
attached and detached. Id. The Examiner, however, does not address
Appellants' contention that the element of Nguyen identified by the
Examiner as "B" is not a "weld ring" within the meaning of claim 1.
Nguyen is directed to a solenoid for a pilot operated water valve.
Nguyen, Abstract. In the embodiment of Nguyen relied on by the Examiner,
a solenoid coil 110 is wrapped around bobbin 112 and encapsulated in
plastic 114. Id. i-fi-135, 36, Fig. 1. The encapsulated solenoid coil is
surrounded by ferromagnetic pole frame 118 comprised of L Brackets 122.
8
Appeal2014-004552
Application 12/984,330
Id. As shown by Figure 1, an enclosed spring and plunger assembly is
disposed between opposite sides of the L Brackets 122. Id. The element
that the Examiner identifies as "B" in the final action appears to be an
integral component of valving portion 104 that is disposed adjacent to the
enclosure for the spring and plunger assembly, the L-Brackets 122, and other
unlabeled constituent elements of valving portion 104. Id.
The Examiner has not provided any evidence to refute Appellants'
argument that Nguyen is silent as to the means by which the Examiner's
element "B" is attached to solenoid 102. Indeed, the Examiner brings no
disclosure to our attention that explains how solenoid coil 102 is attached to
valving portion 104. Neither does the Examiner bring to our attention any
disclosure that explains how the apparatus of Nguyen is assembled. We
cannot determine, from the record before us, if the Examiner's element "B"
is a weld ring, much less whether such element "B" plays a role in
connecting solenoid 102 to valving portion 104. Neither can we determine
that solenoid 102 could be easily detached from valving portion 104 if
element "B" was attached to solenoid 102 by means of locking tabs. Under
the circumstances, there is no underlying factual basis to support the
Examiner's conclusion that it would been obvious or a person of ordinary
skill in the art to combine Nguyen and Seuret to achieve the invention of
claim 12.
Accordingly, we do not sustain the unpatentability rejection of
claim 12 over Nguyen and Seuret.
Claims 13-18
Claims 13-18 depend, directly or indirectly, from claim 12. Claims
App. The Examiner's rejection of these claims over Nguyen and Seuret
9
Appeal2014-004552
Application 12/984,330
suffers from the same infirmity that was identified above with respect to the
rejection of claim 12 over the same art. Thus, for essentially the same
reason expressed above in connection with the rejection of claim 12, we do
not sustain the rejection of claims 13-18 over Nguyen and Seuret.
DECISION
The decision of the Examiner to reject claims 1-20 is reversed.
REVERSED
10