Ex Parte Kuzniar

Board of Patent Appeals and Interferences

Jan 29, 2009

10188034 (B.P.A.I. Jan. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte UNITED DOMINION INDUSTRIES, INC.
____________________

Appeal 2008-6053
Application 10/188,034
Technology Center 3700
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Decided: January 29, 2009
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Before JAMESON LEE, SALLY C. MEDLEY, MICHAEL P. TIERNEY,
Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
This is a decision on appeal by the real party in interest, United
Dominion Industries, Inc. (UDI), under 35 U.S.C. § 134(a) from a final
rejection of claims 25-33. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

Appeal 2008-6053
Application 10/188,034

References Relied on by the Examiner
Alderman 4,948,096 Aug. 14, 1990
Albertson 5,472,216 Dec. 5, 1995

The Rejections on Appeal
The Examiner rejected claims 25-33 under 35 U.S.C. § 103(a) as
being unpatentable over Alderman and Albertson.

The Invention
The invention relates to valve assemblies used in a high pressure flow
application such as those in food processing industries. (Spec. ¶¶ 1 & 2.)
Claim 25 is reproduced below (Claims App’x 17:1-10):
25. A valve stem and gasket assembly, comprising:

a valve stem having a body and having an inner end for
connection to an actuator and an opposed outer end;

a first, smaller flange carried on said body adjacent the outer
end and a spaced apart second, larger flange also carried on said body
between said first flange and said second body inner end; and

an annular sealing gasket carried on said body, disposed
between said first and second flanges, said gasket completely made of
a ketone polymer material, wherein said gasket is adapted to be press-
fit over said first flange into position retained between said first and
second flanges.

B. ISSUE
Has UDI shown error in the Examiner’s determination that a person of
ordinary skill in the art would have had adequate reason to form Alderman’s
valve gasket out of a ketone polymer material as taught in Albertson?
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C. FINDINGS OF FACT
1. The problem that UDI’s invention seeks to solve is selecting a
sealing gasket material so that the valve can operate at temperatures above
180 degrees F. (Spec. ¶ 6.)
2. Alderman discloses a valve assembly used in food processing
industries in which the valve is used in a high pressure flow application such
as those in food processing industries. (Alderman 1:6-25.)
3. In Alderman, a valve gasket 14 is made of PTFE or “any
suitable TFE plastic, or of a harder durometer elastomeric material.”
(Alderman 5:60-63.)
4. Albertson discloses a seal ring for a valve stem that effects a
seal between the valve stem and a valve housing. (Albertson 1:5-7.)
5. Albertson discloses that its seal is useful “in a broad range of
industries.” (Albertson 2:50-51.)
6. In Albertson, PTFE and PEEK1 are recognized as alternative
materials for the seal ring that are resistant to a range of operating
temperatures from cryogenic to +500 degrees Fahrenheit. (Albertson 1:39-
2; 4:36-40.)

D. PRINCIPLES OF LAW
A reference may be relied upon as a basis for rejection of the
applicant’s invention if the reference is either in the field of the applicant’s
endeavor or it is reasonably pertinent to the particular problem with which

1 As described in UDI’s specification, “PEEK” refers to a ketone
polymer material known as polyaryletherketones. (Spec. ¶ 30.)
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Application 10/188,034

the inventor was concerned. In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir.
1992).
A basis to combine teachings need not be expressly stated in any prior
art reference. In re Kahn, 441 F.3d 977, 989 (Fed. Cir. 2006). There need
only be an articulated reasoning with rational underpinnings to support a
motivation to combine teachings. Id. at 988. A person of ordinary skill in
the art is also a person of ordinary creativity, not an automaton. KSR Int’l
Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742 (2007).
One cannot show non-obviousness by attacking references
individually where the rejections are based on combinations of references.
In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller,
642 F.2d 413, 426 (CCPA 1981). The test for obviousness is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art. In re Keller, 642 F.2d at 425.
E. ANALYSIS
The Examiner rejected claims 25-33 as unpatentable over Alderman
and Albertson. We focus on the disputed limitations.
UDI disputes that the combination of Alderman and Albertson
satisfies a requirement in each of independent claims 25, 29, and 33 of a
gasket or sealing means that is “completely made of a ketone polymer
material.” (Claims App’x 17:8; 18:8; 19:4-5.)
The Examiner found that Alderman discloses all the limitations of
claims 25-33 with the exception of the above noted limitation. According to
the Examiner, Alderman discloses a gasket made of a type of polymer
known as PTFE rather than a ketone polymer. To remedy the deficiency the
Examiner turned to Albertson. The Examiner found that Albertson discloses
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Application 10/188,034

the use of the ketone polymer PEEK for the gasket of a similar valve stem.
(Ans. 3:10-11.) The Examiner explained (Ans. 3:12-20):
It would have been obvious to one having ordinary skill in the art at
the time the invention was made to have used the material choice of
Albertson et al. (i.e. the ketone-polymer PEEK) with the valve stem
and gasket assembly of Alderman in order to provide a relatively rigid
seal ring with a temperature range from cryogenic to + 500 degrees
Fahrenheit as taught by Albertson et al. (see column 1, lines 39-42).
It should also be noted that Albertson et al. disclose that PTFE and
PEEK are considered equivalent material selection based on both
being relatively rigid, thermoplastic materials with a temperature
range from cryogenic to + 500 degrees Fahrenheit and both being
resistant to a wide range of chemicals.

UDI argues that the teachings of Albertson are not applicable because
Albertson is not analogous art. To that end, UDI argues that the valve stem
of Albertson is not “similar” to the valve stem of UDI’s invention because of
structural variations. (App. Br. 13:8-15:9.)
“Similarity” is not the legal test for determining whether a reference is
from an applicable category of prior art, i.e. “analogous art.” A reference
may be relied upon as a basis for rejection of the applicant’s invention if the
reference is either in the field of the applicant’s endeavor or it is reasonably
pertinent to the particular problem with which the inventor was concerned.
In re Oetiker, 977 F.2d at 1447.
UDI’s invention relates to valve assemblies used in food processing
industries in which the valve is used in a high pressure flow application such
as those in food processing industries. (Spec. ¶¶ 1 & 2.) The problem that
UDI’s invention seeks to solve is selecting a sealing gasket material so that
the valve can operate at temperatures above 180 degrees F. (Spec. ¶ 6.)
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Albertson discloses a seal ring for a valve stem that effects a seal
between the valve stem and a valve housing. (Albertson 1:5-7.) In
Albertson, PTFE and PEEK are recognized as alternative materials for the
seal ring that are resistant to a range of operating temperatures from
cryogenic to +500 degrees Fahrenheit. (Albertson 1:39-2; 4:36-40.)
Albertson’s teaching of a seal material that is resistant to elevated
temperatures is reasonably pertinent to the problem addressed by UDI’s
invention, i.e. that of a gasket that can withstand a temperature greater than
180 degrees Fahrenheit. For at least that reason, a person of ordinary skill in
the art would have viewed Albertson as analogous art. We need not
consider whether Albertson is in the same field of endeavor as UDI’s
invention.
We reject UDI’s argument that Albertson is non-analogous art.
UDI also argues that a person of ordinary skill in the art would not
have combined the teachings of Alderman and Albertson because those
references are related to different industries and their valve arrangements are
structurally dissimilar. (App. Br. 12:1-23; 9:16-11:2.)
UDI’s arguments are not persuasive. Albertson discloses a seal for a
valve stem that is useful “in a broad range of industries.” (Albertson 2:50-
51.) A person of ordinary skill in the art would not have viewed that
disclosure as limiting the teachings of the reference to a particular industry.
Instead, a person of ordinary skill in the art would reasonably have
recognized Albertson’s teachings as applying to a wide range of industries
where a seal is applied to a valve stem, such as the valve stem seals used in
the food processing industry.
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Furthermore, the Examiner has relied on Albertson for its teaching of
the choice of seal material rather than for any structural characteristics of its
seal. In particular, the Examiner pointed to the teaching that PEEK and
PTFE are alternative materials for a valve seal that render the seal resistant
to temperatures ranging from cryogenic to + 500 degrees Fahrenheit. In
light of that teaching, the Examiner determined that a person of ordinary
skill in the art would reasonably expect that a valve seal made of PTFE, such
as Alderman’s valve gasket 14, would function acceptably well and
demonstrate similarly wide range of temperature resistance when made of
PEEK. UDI has not shown error in that determination.
Moreover, UDI’s argument that there is no express motivation in
either Alderman or Albertson to combine their teachings is misplaced.
(App. Br. 10:20-22.) A basis to combine teachings need not be expressly
stated in any prior art reference. In re Kahn, 441 F.3d at 989. There need
only be an articulated reasoning with rational underpinnings to support a
motivation to combine teachings. Id. at 988. Furthermore, a person of
ordinary skill in the art is also a person of ordinary creativity, not an
automaton. KSR Int’l Co., 127 S.Ct. at 1742.
The Examiner’s reasoning for modifying the material of Alderman’s
gasket is based on Albertson’s teaching that PEEK or PTFE are alternative
materials for valve seals. That reasoning is rational as it accounts for the
ordinary skill of a person of ordinary skill and creativity in choosing
between two recognized alternative materials.
UDI further argues that even if the teachings of Alderman and
Albertson are combined, neither of those references alone disclose gaskets
that are completely made of a ketone polymer. According to UDI,
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Alderman discloses that its gasket 14 is made of PTFE (App. Br. 8:5-10) and
Albertson discloses that its seal is formed of two components, a gland
member and an expander ring, where only the gland member is formed of
PEEK. (App. Br. 11:5-11.)
UDI’s argument is misplaced. One cannot show non-obviousness by
attacking references individually where the rejections are based on
combinations of references. In re Merck & Co., Inc., 800 F.2d at 1097; In re
Keller, 642 F.2d at 426. The test for obviousness is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art. In re Keller, 642 F.2d at 425.
Here, the Examiner identified Alderman as disclosing a valve gasket
made completely out of PTFE. The Examiner combined that disclosure with
the teaching of Albertson, which provides that PEEK is a recognized
alternative to PTFE for the material of a valve seal. Whether Albertson’s
seal is or is not entirely formed of PEEK is of no moment. The Examiner
did not rely on the substitution of Albertson’s seal for Alderman’s sealing
gasket. Rather, the Examiner simply relied on Albertson’s teaching that
PTFE and PEEK are recognized alternative materials for seals. The
Examiner determined that taken together, the combined teachings of the
references teach Alderman’s valve gasket completely formed of the PEEK
material taught in Albertson. UDI has not shown error in that determination.
Lastly, UDI argues (App. Br. 13:1-5):
Applicant respectfully points out that dependent claims 14-17,
19-24, 26-28 and 30-33 each include additional features that render
the claimed configuration of elements to be even more limited than
the subject matter of independent claims 13, 18, 25, 29, and 31. At
least in view of these additional features, Applicant stresses that each
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of the dependent claims of the present application are separately
patentable.

Initially, we note that independent claims 13 and 18 and dependent
claims 14-17, and 19-24 have been withdrawn by UDI and are not on appeal.
(App. Br. 2:2.) Furthermore, pursuant to 37 C.F.R. § 41.67(c)(a)(vii), “[a]
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.” Here, UDI
has done even less then merely point out what each dependent claim recites
and instead simply generally asserts that the limitations of those claims are
separately patentability. UDI’s statements are not considered arguments for
the separate patentability of any of the dependent claims listed above.
For all the foregoing reasons, we sustain the rejection of claims 25-33
under 35 U.S.C. § 103(a) as being unpatentable over Alderman and
Albertson.
F. CONCLUSION
UDI has not shown error in the Examiner’s determination that a
person of ordinary skill in the art would have had adequate reason to form
Alderman’s valve gasket out of a ketone polymer material as taught in
Albertson.
G. ORDER
The rejection of claims 25-33 under 35 U.S.C. § 103(a) as being
unpatentable over Alderman and Albertson is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

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AFFIRMED

rvb

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