Ex Parte Hentschel et alDownload PDFPatent Trial and Appeal BoardJun 9, 201612984330 (P.T.A.B. Jun. 9, 2016) Copy Citation 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 Copy with citationCopy as parenthetical citation