Ex Parte HoangDownload PDFBoard of Patent Appeals and InterferencesNov 17, 201010908166 (B.P.A.I. Nov. 17, 2010) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte LOC G. HOANG ____________ Appeal 2009-009611 Application 10/908,166 Technology Center 3700 ____________ Before JOHN C. KERINS, STEFAN STAICOVICI and KEN B. BARRETT, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-009611 Application 10/908,166 2 STATEMENT OF THE CASE Loc G. Hoang (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1, 2, 4-11, 13, 14 and 16- 24, the only claims pending in the application. Claims 3, 12 and 15 were previously canceled. We have jurisdiction under 35 U.S.C. § 6(b) (2002). We REVERSE. THE INVENTION Appellant’s invention is directed to a subsea valve system having a linear actuator to operate the valve, and a hydraulic override assembly. Claim 1, reproduced below, is illustrative of Appellant’s invention: 1. A subsea valve system locatable and operable subsea comprising: a closure member that is linearly translatable within a valve body; a hydraulic override assembly comprising a first end that is connected to the valve body and a first rod member that is connected to the closure member; a linear actuator connected to a second end of the hydraulic override assembly and operable subsea; wherein the linear actuator comprises a second rod member that is moveably disposed within a housing; wherein the second rod member is extendable to linearly translate the first rod member and the closure member and hold the closure member in an open position; Appeal 2009-009611 Application 10/908,166 3 wherein the hydraulic override assembly is operable subsea to linearly translate the closure member independent of the operation of the linear actuator and hold the closure member in a closed position; and wherein a portion of the housing of the linear actuator partially defines a hydraulic chamber of the hydraulic override assembly. THE REJECTIONS The Examiner has rejected: (i) claims 1, 4-6, 11, 13, 16, 21 and 22 under 35 U.S.C. § 102(b) as being anticipated by Sundararajan (US 6,684,897 B2, issued February 3, 2004); (ii) claims 2, 14 and 24 under 35 U.S.C. § 103(a) as being unpatentable over Sundararajan in view of Buchta (US 4,295,390, issued October 20, 1981); and (iii) claims 7-10, 17-20 and 23 under 35 U.S.C. § 103(a) as being unpatentable over Sundararajan in view of Hoang (US 2003/0116733, published June 26, 2003). ISSUE Did the Examiner err in finding that elements 36 and 38 in the Sundararajan patent can reasonably be regarded as being a portion of a housing of the linear actuator in Sundararajan that is connected to a second end of a hydraulic assembly, as opposed to being part of the hydraulic assembly itself? Appeal 2009-009611 Application 10/908,166 4 ANALYSIS Claims 1, 4-6, 11, 13, 16, 21 and 22--Anticipation by Sundararajan Independent Claim 1 requires, inter alia, that “a portion of the housing of the linear actuator partially defines a hydraulic chamber of the hydraulic override assembly.” (Appeal Br., Claims Appendix). The Examiner found that the structure in Sundararajan corresponding to the claimed linear actuator included elements 86, 84, 51, 50, 38 and 36. (Ans. 3). More specifically, the Examiner found that elements 38 and 36 comprise the portion of the linear actuator that at least partially defines the hydraulic chamber of the hydraulic override assembly. (Ans. 4). In response to Appellant’s assignment of error to this finding, the Examiner maintained that, “[t]he elements (36, 38) are considered to be a part of the linear actuator since they provide structural and functional support of the manual override (80).” (Ans. 9). We agree with Appellant (see Reply Br. 14) that there is no apparent justification for construing one element in a reference as being part of another simply because the one structurally or functionally supports the other. In this vein, we note that it is necessary to properly construe what an applied reference fairly teaches or discloses. See, e.g., In re Fracalossi and Wajer, 681 F.2d 792 (CCPA 1982) (reference is prior art not only for specifically disclosed embodiments, but also all that it fairly teaches). In the present case, elements 36 and 38 in Sundararajan are identified as a “hydraulic cylinder housing” monolithically formed with an “upper flange portion”, respectively. (Sundararajan, col. 7, ll. 11-15). As such, elements 36 and 38 are clearly part of the hydraulic assembly, and not part of the linear actuator connected to a second end of the hydraulic assembly. Appeal 2009-009611 Application 10/908,166 5 A review of Figure 2 of Sundararajan and the supporting written disclosure evidences that the only portion of the Sundararajan device in which hydraulic pressure is used to actuate the valve is within hydraulic cylinder 40 that is bounded by hydraulic cylinder housing 36. If those elements were considered to be components of the linear actuator, the remaining components of the apparatus would have no hydraulic actuation component, and could thus not properly be considered to correspond to the claimed hydraulic assembly. (Sundararajan, Fig. 2; col. 7, ll. 56-63). Independent claim 5 requires that a portion of the housing of the linear actuator be disposed within the piston of the hydraulic override assembly. (Appeal Br., Claims Appendix). The Examiner made no finding that this limitation is present in the Sundararajan structure, and it appears that it is not. The Examiner repeats the finding made with respect to claim 1 that the purported portion of the linear actuator (elements 36, 38) at least partially defines hydraulic chamber 40. This limitation is not present in claim 5, but even if it were, the finding as to the components in Sundararajan that correspond to the structure is in error, as discussed above. Independent claim 11 requires that a portion of the housing of the linear actuator be disposed within the piston of the hydraulic override assembly and that it sealingly engage the body. (Appeal Br., Claims Appendix). The Examiner again erroneously finds that elements 36 and 38 of Sundararajan comprise a portion of the linear actuator. Independent claim 21 requires that a portion of the housing of the linear actuator be disposed within the recited means for utilizing hydraulic pressure. (Appeal Br., Claims Appendix). The Examiner again erroneously Appeal 2009-009611 Application 10/908,166 6 finds that elements 36 and 38 of Sundararajan comprise a portion of the linear actuator. The rejection of independent claims 1, 5, 11 and 21, and of claims 4, 6, 13, 16 and 22, depending from those claims, as anticipated by Sundararajan, will not be sustained. Claims 2, 14 and 24--Obviousness--Sundararajan in view of Buchta The Examiner does not rely on the teachings of Buchta in any manner that would serve to overcome the deficiencies of the Sundararajan reference in order to arrive at the conclusion that the subject matter of claims 2, 14, and 24 would have been obvious to a person of ordinary skill in the art. Claims 7-10, 17-20 and 23--Obviousness--Sundararajan in view of Hoang The Examiner does not rely on the teachings of Hoang in any manner that would serve to overcome the deficiencies of the Sundararajan reference in order to arrive at the conclusion that the subject matter of claims 7-10, 17- 20 and 23 would have been obvious to a person of ordinary skill in the art. CONCLUSIONS The findings set forth by the Examiner, in rejecting claims 1, 4-6, 11, 13, 16, 21 and 22 as being anticipated by Sundararajan, do not adequately establish that Sundararajan discloses a subsea valve system in which elements 36 and 38 can reasonably be regarded as being a portion of a housing of the linear actuator that is connected to a second end of a hydraulic assembly, as opposed to being part of the hydraulic assembly itself. The findings and conclusions set forth by the Examiner with respect to the obviousness rejections of claims 2, 7-10, 14, 17-20, 23 and 24 also are deficient in the same respect. Appeal 2009-009611 Application 10/908,166 7 DECISION The decision of the Examiner to reject claims 1, 2, 4-11, 13, 14 and 16-24 is reversed. REVERSED mls CONLEY ROSE, P.C. DAVID A. ROSE P.O. BOX 3267 HOUSTON, TEXAS 77253-3267 Copy with citationCopy as parenthetical citation