Ex Parte Hoang

Board of Patent Appeals and Interferences

Nov 17, 2010

10908166 (B.P.A.I. Nov. 17, 2010)

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.
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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;
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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?
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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.
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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
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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.
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DECISION
The decision of the Examiner to reject claims 1, 2, 4-11, 13, 14 and
16-24 is reversed.

REVERSED

mls

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