Ex Parte Hoang

Patent Trial and Appeal Board

Aug 17, 2015

12515531 (P.T.A.B. Aug. 17, 2015)

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.
12/515,531 05/19/2009 Loc Gia Hoang OTD-030418
(CMRN:0061)SWA
1592
64833 7590 08/18/2015
FLETCHER YODER (CAMERON INTERNATIONAL CORPORATION)
P.O. BOX 692289
HOUSTON, TX 77269-2289
EXAMINER
FOX, JOHN C
ART UNIT PAPER NUMBER
3753
MAIL DATE DELIVERY MODE
08/18/2015 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte LOC GIA HOANG
____________________

Appeal 2013-007488
Application 12/515,531
Technology Center 3700
____________________

Before JOHN C. KERINS, LYNNE H. BROWNE, and
MICHAEL L. WOODS, Administrative Patent Judges.

WOODS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Loc Gia Hoang (“Appellant”) seeks our review under 35 U.S.C. § 134
of rejected claims 1–3, 6, 10, 12–15, 17, and 19–24. Appeal Br. 2. Claims
4, 5, 7–9, 11, 16, 18, 25, and 26 are withdrawn. Id. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
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CLAIMED SUBJECT MATTER
Appellant’s invention “relates to devices . . . for directing the flow of
fluid between different fluid pathways of a fluidic circuit.” Spec. 1, para. 4.
Claims 1, 10, and 17 are the independent claims and claims 1 and 3 are
reproduced below, with emphasis on certain claim limitations at issue in this
appeal.
1. A diverter valve comprising:
a housing assembly comprising a plurality of ports; and
a drum assembly disposed in the housing and comprising,
a plurality of passages for selectively coupling the
ports,
wherein an axial position of the drum assembly
with respect to the ports determines which ports are
active and which parts are dormant, and each passage of
the plurality of passages is unobstructed along an entire
length of the passage.

3. The diverter valve of claim 1, wherein the drum is
configured to route fluid through a first of the plurality of
passages in a first axial position and to route fluid through a
second of the plurality of passages in a second axial position,
wherein the plurality of passages each comprise a radius of
curvature that is at least five times the respective diameter.

Appeal Br. 18, Claims App. (emphasis added).

THE REJECTIONS
I. Claims 1–3, 6, 10, 12–15, 17, and 19–24 stand rejected under
35 U.S.C. § 102(b) as anticipated by Michie (US 2,991,803, issued July 11,
1961). Final Act. 3 (mailed Sept. 17, 2012).
II. Claims 1–3, 6, 10, 12–15, 17, and 19–24 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Michie. Final Act. 4.
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ANALYSIS
Rejection I: Anticipated by Michie
In rejecting the pending claims as anticipated by Michie, the
Examiner finds that Michie’s diverter valve discloses the claimed diverter
valve (as recited in independent claim 1), diverter drum (as recited in
independent claim 10), and diverter valve system (as recited in independent
claim 17), and their respective dependent claims. Final Act. 3 (citing
Michie, Fig. 4). In particular, the Examiner finds that Michie’s valve has
pipes 29, 30, and 31, which connect an inlet port to three circumferentially
spaced outlet ports 19, 20, and 21. Id.; see also Ans. 5 (citing Michie, Figs.
6 and 8).
Figure 4 of Michie is reproduced below:

Figure 4 depicts Michie’s diverter valve 11 for selectively connecting
inlet port 18 to one of outlet ports 19, 20, and 21, via a corresponding bridge
pipe 29, 30, or 31. Michie, col. 2, l. 28–col. 3, l. 8.
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In contesting the rejection, Appellant presents several arguments,
which we address separately, below.

Claims 1, 2, 6, 10, 12, and 13
In contesting the rejection of claims 1, 2, 6, 10, 12, and 13, Appellant
argues independent claims 1 and 10 together and does not present arguments
for the patentability of claims 2, 6, 12, and 13 apart from those presented for
claims 1 and 10. See Appeal Br. 7–12. Accordingly, we select claim 1 as
the representative claim to decide the appeal of the rejection of these claims,
with claims 2, 6, 10, 12, and 13 standing or falling with claim 1. See
37 C.F.R. § 41.37(c)(1)(iv).
In contesting the rejection of claim 1, Appellant asserts that Michie
does not teach or suggest the claimed passages as each being “unobstructed
along an entire length of the passage,” as recited in the claim. Appeal Br. 7
(emphasis omitted). In particular, Appellant asserts that Michie’s valve 35
partially obstructs the pipes regardless of the valve position. Id. (citing
Michie, col. 2, ll. 63–65, and col. 3, ll. 23–26).
In response to Appellant’s argument, the Examiner explains that
Appellant misunderstands the operation of Michie, including valve 35. Ans.
4. The Examiner cites to Michie’s Figures 6 and 8 and explains that valves
35 do not obstruct pipes 29, 30, and 31 “in any way, at any time, either fully
or partially.” See id. at 4–5.

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Figures 6 and 8 of Michie are reproduced below:

Figures 6 and 8 depict Michie’s seal valves 35, which are hingedly
connected to valve plug 13, thereby moving with it, to seal off diverting
outlets 20 and 21 when valve 11 is in the normal position and connecting
inlet port 18 to outlet port 19. Michie, col. 3, ll. 23–26; see also id. at Fig. 4.
Upon reviewing the record, we agree with the Examiner’s findings.
In particular, when valve 11 is positioned to provide fluid communication
between inlet port 18 and one of the selective outlet ports 19, 20, or 21,
valve 35 does not obstruct the flow path as valve 35 does not reside in any
one of bridge pipes 29, 30, or 31. See id. In other words, and as correctly
found by the Examiner, valve 35 is incapable of obstructing, even partially,
an open flow path. See Ans. 4–5.
For the foregoing reasons, Appellant’s argument has failed to
convince us of error in the Examiner’s rejection of claim 1. As such, we
sustain the rejection of claim 1, and claims 2, 6, 10, 12, and 13, which fall
with claim 1, as anticipated by Michie.

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Claims 17, 19–21, and 23
In contesting the rejection of claims 17, 19–21, and 23, Appellant
does not present arguments for the patentability of claims 19–21 and 23
apart from those presented for independent claim 17. See Appeal Br. 7–12.
Accordingly, we select claim 17 as the representative claim to decide the
appeal of the rejection of these claims, with claims 19–21 and 23 standing or
falling with claim 17.
In contesting the rejection of claim 17, Appellant presents two
arguments, which we address separately, below.
First, Appellant asserts that Michie’s valve 35 obstructs Michie’s pipe
sections and would prevent passage of a pig, as recited in claim 17. Appeal
Br. 8.
For the reasons discussed supra, Appellant’s argument is premised on
a misunderstanding of Michie. In particular, Michie’s valves 35 do not
obstruct Michie’s pipe sections and, contrary to Appellant’s assertion, would
not obstruct passage of a pig.
Second, Appellant asserts that the claim limitation, “configured to
pass a pig,” requires that the first and second bend pipes have certain
“characteristics of the diameters” not disclosed in Michie. See Appeal Br.
11 (in contesting the rejection of claim 17, referring to arguments presented
in contesting the rejection of claim 15); see also id. at 10–11 (contesting the
rejection of claim 15). Appellant further asserts that Michie relates to
moving small particles or objects, such as grains and bolts, via airstreams,
and that the Examiner errs in finding this system as being capable of
accommodating a pig. See id. at 10 (citing Michie, col. 1, ll. 13 and 24–25).
Appellant further asserts that Michie cannot “contain a fluid flow” and “any
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attempted use of Michie’s valve for a fluid flow would result in leakage and
loss of the fluid.” Reply Br. 6.
In response to Appellant’s second argument, the Examiner explains
that claim 17 does not positively recite a pig, and because Michie’s pipes
“are round and unobstructed when fluid is flowing through them” Michie’s
valve is “clearly capable of passing a small pig therethrough.” Ans. 6.
Upon reviewing the record, we agree with the Examiner’s finding.
Claims directed to an apparatus must be distinguished from the prior
art in terms of structure rather than function. See In re Schreiber, 128 F.3d
1473, 1477–78 (Fed. Cir. 1997). In order to satisfy the functional limitations
in an apparatus claim, the prior art apparatus must be capable of performing
the claimed function. Id. at 1478.
In the present case, the Examiner found that Michie’s pipes are
capable of passing a small pig, thereby meeting the relevant claim limitation.
Ans. 6. Furthermore, Appellant has failed to controvert this finding with
persuasive evidence or technical reasoning to convince us that the
Examiner’s finding is incorrect. See Appeal Br. 10–11. At the outset,
simply because Michie does not explicitly disclose passage of a pig does not
convince us, without more, that Michie’s valve is not capable of passing a
pig, as recited in the claim. See id. With respect to Appellant’s assertion
that Michie’s valve could not contain fluid flow without leaking and losing
fluid, Appellant does not establish, with evidentiary support, that Michie’s
valve is incapable of containing a fluid flow. See Reply Br. 6. To the
contrary, Michie’s system is designed for fluid flow, namely, air streams.
See, e.g., Michie, col. 1, ll. 11–14.
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For the foregoing reasons, Appellant’s arguments have failed to
convince us of error in the Examiner’s rejection of claim 17. As such, we
sustain the rejection of claim 17, and claims 19–21 and 23, which fall with
claim 17, as anticipated by Michie.

Claim 3
Claim 3 depends from claim 1 and further recites, in relevant part,
“wherein the plurality of passages each comprise a radius of curvature that is
at least five times the respective diameter.” Appeal Br. 18, Claims App.
In rejecting claim 3, the Examiner finds that “[t]he radius of curvature
of pipes 30 and 31 is read as being 5 times the pipe diameter in view” of
Michie’s Figure 4. Final Act. 3.
In contesting the rejection of claim 3, Appellant asserts that
“proportions of features in a drawing are not evidence of actual proportions
when drawings are not to scale.” Appeal Br. 9 (citing MPEP § 2125 and
Hockerson-Halberstadt, Inc. v. Avia Group Int’l, 222 F.3d 951, 956 (Fed.
Cir. 2000)). Appellant asserts that it was improper for the Examiner to rely
on proportions of Michie’s Figure 4, because “Michie is silent as to any
dimensions, proportions, radii of curvature, or the like, with regard to pipes
29, 30, and 31.” Reply Br. 3 (citing MPEP § 2125).
In response to Appellant’s argument, the Examiner explains that the
rejection is not premised on “scale measurements of the drawings of Michie
but [instead relies] on the structure readily evident in the illustrated
embodiment.” Ans. 6.
While we are mindful that Hockerson-Halberstadt cautioned that
patent drawings not designated as being drawn to scale cannot be relied
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upon to define precise proportions of elements if the specification is
completely silent on the issue, that does not mean, “that things patent
drawings show clearly are to be disregarded.” In re Mraz, 455 F.2d 1069,
1072 (CCPA 1972); Hockerson-Halberstadt, 222 F.3d at 956.
In the present case, we do not find the Hockerson-Halberstadt
decision to be closest on point to the situation presented here. In that case,
our reviewing court precluded a patentee from escaping a prosecution
history estoppel situation, involving claim construction, by refusing to allow
the patentee to rely on its own patent drawings as evidencing that a
statement made during prosecution, giving rise to the estoppel, was
erroneous. Hockerson-Halberstadt, 222 F.3d at 956. Rather, the Court held
that persons of ordinary skill in the art, being aware that figures in a patent
are not drawn to scale unless otherwise indicated, would understand the
arguments in the prosecution history as clearly disclaiming a groove having
a width greater than the combined width of the fins, regardless of the fact
that the drawings included embodiments illustrating such a groove/fin
relationship. Id. In effect, the Court refused to grant the patentee a
“mulligan” absent clear evidence that the arguments were completely
contrary to what the patent disclosed, so as to maintain the integrity of the
public notice function provided by the patent and its prosecution history. Id.
at 957.
The Wright and Nystrom cases serve as additional precedent for the
proposition that it is error to rely on that which is illustrated in the drawings
as disclosing precise proportions or particular sizes of elements so illustrated
if the specification is completely silent as to such proportions or sizes. In re
Wright, 569 F.2d 1124 (CCPA 1977); Nystrom v. TREX Co., 424 F.3d 1136
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(Fed. Cir. 2005). In Wright, the CCPA found unpersuasive arguments that a
comparison of the application drawings to those in a prior art patent showed
that a chime length of a whiskey barrel in the latter would be roughly ½ to 1
inch in length. Wright, 569 F.2d at 1127. The Court there cautioned that
arguments based on measurements obtained from patent drawings are
regarded as having little value where the patent does not disclose that the
drawings are to scale and absent any disclosure of quantitative values. Id.
In Nystrom, the Federal Circuit reversed a judgment of invalidity that was
founded upon evidence in the form of computer-generated models of deck
boards illustrated in a prior art patent, and computations performed on those
models to determine a curvature-to-width ratio of the boards. Nystrom, 424
F.3d at 1148. In effect, these cases involved considerable and careful
evaluation of illustrations in prior art references in order to demonstrate that
the prior art met a dimensional limitation of a claim. Findings or
conclusions based upon such evaluation were disfavored or assigned little
weight when the prior art references lacked explicit disclosure that the
drawings are to scale or that the particular elements at issue possessed some
dimensional relationship.
We find the Mraz decision to be more on point than both the Wright
and Nystrom cases. The Mraz case involved a claim that included an edging
roll having a groove therein formed by inwardly converging inclined
surfaces, with the angle of the inclines not exceeding 15°. Mraz, 435 F.2d at
1070. A prior art reference to Wilson, asserted to disclose this claim feature,
and illustrating (but not explicitly disclosing in writing) an angle of incline
of about 6°, was characterized by the Court as, “focus[ing] on the edge rolls,
showing them with great particularity and showing the grooves thereon to
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have an angularity well within the range recited in appellant’s claims.”1 Id.
at 1072. This was contrasted with and distinguished from a situation in an
earlier decision, In re Wilson, in which “the attempted reliance was not only
on a patent drawing per se, it was on a greatly enlarged section of a small
drawing obviously never intended to show the dimensions of anything.”
Mraz, 435 F.2d at 1072; In re Wilson, 312 F.2d 449 (CCPA 1963).
Here, while the written disclosure of Michie is silent with respect to
whether the drawings are or are not to scale, a person of ordinary skill in the
art would understand that Michie’s Figure 4, which we find includes great
detail, as illustrating a radius of curvature well above the claimed lower limit
of “at least five times the respective pipe diameter” of pipes 29, 30, and 31.
Accordingly, we find it was not error on the Examiner’s part to rely on
Figure 4 of Michie as disclosing the claimed radius of curvature as this
claimed structure is “readily evident in the illustrated embodiment” of this
figure. Ans. 6; Final Act. 3.
For the foregoing reasons, Appellant’s arguments have failed to
convince us of error in the Examiner’s rejection of claim 3. As such, we
sustain the rejection of claim 3 as anticipated by Michie.

Claims 14 and 22
In contesting the rejection of claims 14 and 22, Appellant simply
recites certain claim limitations and relies on arguments presented with
respect to claim 3. Appeal Br. 9–10 and 11–12.

1 The angle of incline was presumably determined through the simple use of
a protractor.
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Because Appellant does not set forth any additional substantive
arguments separate from those discussed supra, Appellant does not apprise
us of error in the Examiner’s rejection of claim 14 or 22. Thus, we sustain
the rejections of claims 14 and 22 as anticipated by Michie.

Claim 15
In contesting the rejection of claim 15, Appellant relies on the same
unpersuasive argument discussed above in relation to claim 17. See id. at
10–11. In particular, Appellant argues that Michie’s pipes are not capable of
accepting a pig. See id. For the same reasons discussed supra, including
those relating to claims 17 and 14, Appellant’s arguments do not convince us
of error in the Examiner’s rejection of claim 15.
As such, we sustain the rejection of claim 15 as anticipated by Michie.

Claim 24
Appellant contests the rejection of claim 24 in the Reply Brief, even
though no separate argument was made for the patentability of this claim in
the Appeal Brief. Compare Reply Br. 7, with Appeal Br. 6–17.
Furthermore, Appellant has not shown good cause to explain why this
argument was not raised in the Appeal Brief. See Reply Br. 7. Accordingly,
and as set forth in the Patent Rules, we do not consider Appellant’s
argument, as such argument is not timely. 37 C.F.R. § 41.41(b)(2) (“Any
argument raised in the reply brief which was not raised in the appeal brief, or
is not responsive to an argument raised in the examiner's answer, . . . will not
be considered by the Board for purposes of the present appeal, unless good
cause is shown.”).
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Accordingly, we sustain the rejection of claim 24 as anticipated by
Michie.

Rejection II: Unpatentable over Michie
In rejecting the pending claims as unpatentable over Michie, the
Examiner, in the alternative to Rejection I, determines that “[t]he provision
of a radius of curvature of at least 5 times the pipe diameter is considered to
be an obvious matter of design choice in view of the radius of curvature and
diameter shown in the drawings.”2 Final Act. 4; see also Ans. 7.
In contesting the rejection, Appellant asserts that the Examiner “has
not provided any reasoning to support the assertion of design choice other
than the drawings.” Reply Br. 4.
Upon reviewing the record, we agree with Appellant. In particular,
the standing rejection lacks the requisite articulated reasoning needed to
support the legal conclusion that the claims are obvious. See KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007) (holding that the key to supporting
any prima facie conclusion of obviousness under 35 U.S.C. § 103 is a clear
articulation of the reason(s) why the claimed invention would have been
obvious).
Notwithstanding, given that we find that the claims are anticipated by
Michie, the claims also are unpatentable as being obvious over Michie, in

2 We note that even though the standing rejection lists claims 1–3, 6, 10,
12–15, 17, and 19–24 as unpatentable over Michie, the Examiner’s legal
determination with respect to the claimed radius of curvature is only relevant
to dependent claims 3, 14, 15 (through its dependency to claim 14), and 22.
Compare Final Act. 4, with Appeal Br. 18–20, Claims App.
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that anticipation is the epitome of obviousness. In re Baxter Travenol Labs
952 F.2d 388, 391 (Fed. Cir. 1991).
As such, we sustain the rejection of claims 1–3, 6, 10, 12–15, 17, and
19–24 as unpatentable over Michie.

SUMMARY
The Examiner’s decision to reject claims 1–3, 6, 10, 12–15, 17, and
19–24 under 35 U.S.C. § 102(b) as anticipated by Michie is affirmed.
The Examiner’s decision to reject claims 1–3, 6, 10, 12–15, 17, and
19–24 under 35 U.S.C. § 103(a) as unpatentable over Michie is affirmed.

AFFIRMED

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