Ex parte Lewis et al.

Board of Patent Appeals and Interferences

Aug 22, 2001

09122255 (B.P.A.I. Aug. 22, 2001)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte STEPHEN R. LEWIS et al.
____________
Appeal No. 2001-0373
Application No. 09/122,255
____________
ON BRIEF
____________
Before ABRAMS, STAAB, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 to 4, which are all of the claims
pending in this application.
We REVERSE.
Appeal No. 2001-0373
Application No. 09/122,255
Page 2
BACKGROUND
The appellants' invention relates to poppet valves in
fuel supply systems (specification, p. 1). A copy of the
claims under appeal is set forth in the appendix to the
appellants' brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Sorenson 3,762,443 Oct. 2,
1973
Harris 4,580,760 Apr. 8,
1986
Claims 1 to 4 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Harris.
Claims 1 to 4 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Sorenson.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
rejections, we make reference to the final rejection (Paper
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Application No. 09/122,255
Page 3
No. 13, mailed December 1, 1999) and the answer (Paper No. 20,
mailed July 10, 2000) for the examiner's complete reasoning in
support of the rejections, and to the brief (Paper No. 19,
filed May 8, 2000) and reply brief (Paper No. 21, filed August
15, 2000) for the appellants' arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. As a consequence of our review, we find ourselves
in agreement with the position of the appellants as set forth
in the brief (pp. 13-17) and reply brief (pp. 1-7) that claims
1 to 4 are not anticipated by either Harris or Sorenson.
To anticipate a claim, a prior art reference must
disclose every limitation of the claimed invention, either
explicitly or inherently. In re Schreiber, 128 F.3d 1473,
1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). As stated in In
re Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981)
Appeal No. 2001-0373
Application No. 09/122,255
Page 4
(quoting Hansgirg v. Kemmer, 102 F.2d 212, 214, 40 USPQ 665,
667 (CCPA 1939)) (internal citations omitted):
Inherency, however, may not be established by
probabilities or possibilities. The mere fact that a
certain thing may result from a given set of
circumstances is not sufficient. If, however, the
disclosure is sufficient to show that the natural result
flowing from the operation as taught would result in the
performance of the questioned function, it seems to be
well settled that the disclosure should be regarded as
sufficient.
Thus, a prior art reference may anticipate when the claim
limitation or limitations not expressly found in that
reference are nonetheless inherent in it. See In re Oelrich,
666 F.2d at 581, 212 USPQ at 326; Verdegaal Bros., Inc. v. Union
Oil Co., 814 F.2d 628, 630, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987).
Under the principles of inherency, if the prior art necessarily
functions in accordance with, or includes, the claimed limitations,
it anticipates. See In re King, 801 F.2d 1324, 1326, 231 USPQ 136,
138 (Fed. Cir. 1986). However, inherency is not necessarily
coterminous with the knowledge of those of ordinary skill in
the art. See Mehl/Biophile Int'l Corp. v. Milgraum, 192 F.3d
1362, 1365, 52 USPQ2d 1303, 1305-06 (Fed. Cir. 1999); Atlas
Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943,
1946-47 (Fed. Cir. 1999).
Appeal No. 2001-0373
Application No. 09/122,255
Page 5
Claim 1 on appeal is directed to a poppet valve, comprising,
inter alia, (1) a valve body including a bore therein, the bore
having an inlet port for admitting fluid to the bore and at least one
seat; and (2) a spool having an annular groove, the spool disposed in
the bore slideably between a fully open position in which the spool
is spaced from the seat and the seat is fluidly connected to the
inlet port via the annular groove, and a closed position in which the
spool is engaging the seat. Claim 4 on appeal is directed to a
method for configuring a poppet valve for use in a valve including a
valve body, comprising the steps of (1) forming a bore in the valve
body; (2) forming a fluid passage in the valve body, the fluid
passage terminating at an inlet port in the bore to fluidly connect
the fluid passage with the bore via the inlet port; (3) forming a
seat in the bore; (4) forming a spool having a surface, an annular
groove in the surface, and a non-uniform diameter, and configured to
be able to engage with the seat in the bore so as to block fluid
communication past the seat in the bore; and (5) slideably disposing
the spool in the bore, such that the spool is slideable in the bore
between a first position in which the spool is spaced from the seat
so as to provide fluid communication from the inlet port, through the
annular groove, and past the seat, and a second position, in which
Appeal No. 2001-0373
Application No. 09/122,255
Page 6
the spool engages with the seat so as to block fluid communication
past the seat. Claims 1 and 4 both further recite that "when the
spool is at the fully open position the circumference of the inlet
port multiplied by its average distance from the spool does not
substantially exceed the smallest annular cross-sectional area
between the spool and the seat" (the "extent limitation").
Claim 2 on appeal is directed to a poppet valve, comprising,
inter alia, (1) a valve body including a bore therein, the bore
comprising an inlet port for admitting fluid to the bore and at least
one seat; (2) a spool disposed in the bore slideably between at least
a fully open position in which the spool is spaced from the seat, and
a closed position in which the spool is engaging the seat, and (3) an
annular groove in the spool. Claim 2 further recites "pressure
controlling means for keeping static fluid pressure from developing
in the annular groove when the spool is at the fully open position
and fluid is flowing from the inlet port to the seat via the annular
groove" (the "pressure controlling limitation"). Claim 3 depends
from claim 2 and provides that the pressure controlling means
comprises "a configuration of the annular groove such that when the
spool is at the fully open position the circumference of the inlet
Appeal No. 2001-0373
Application No. 09/122,255
Page 7
port multiplied by its average distance from the spool does not
substantially exceed the smallest annular cross-sectional area
between the spool and the seat" (the "extent limitation").
The position of the examiner as set forth in the rejections
before us in this appeal (final rejection, pp. 2-3) is that claims 1
to 4 are anticipated by either the valve shown in Figure 2 of Harris
or the valve shown in Figure 2 of Sorenson since the "extent
limitation" was met by either valve. In the answer (pp. 3-4), the
examiner set forth measurements taken from Figure 2 of Harris using
an engineering scale ruler. From those measurements the examiner
calculated that the "extent limitation" was met by the valve shown in
Figure 2 of Harris. With respect to Sorenson the examiner declared
that it is obvious that the "extent limitation" was met by the valve
shown in Figure 2.
We find the examiner's position to be without merit. First, it
is well-settled that patent drawings are not drawn to scale and
accordingly, an examiner's argument based upon measurement of the
patent drawings are of little value. See In re Chitayat, 408 F.2d
475, 478, 161 USPQ 224, 226 (CCPA 1969); In re Wright, 569 F.2d 1124,
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Application No. 09/122,255
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1127, 193 USPQ 332, 335 (CCPA 1977); Ex parte Oetiker, 23 USPQ2d
1651, 1653 (Bd. of Pat. App. & Int. 1990), rev'd on other grounds, In
re Oetiker, 977 F.2d 1443 24 USPQ2d 1443 (Fed. Cir. 1992). Second,
after reviewing the disclosures of both Harris and Sorenson, we
conclude there is no disclosure in either reference that their
respective valves necessarily function in accordance with, or
includes, the above-noted claimed limitations (i.e., the "extent
limitation" or the "pressure controlling limitation").
Since all the limitations of claims 1 to 4 are not disclosed in
either Harris or Sorenson for the reasons set forth above, the
decision of the examiner to reject claims 1 to 4 under 35
U.S.C. § 102(b) is reversed.
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Application No. 09/122,255
Page 9
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 to 4 under 35 U.S.C. § 102(b) is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2001-0373
Application No. 09/122,255
Page 10
CATERPILLAR INC
ATTN ERIC M. BRAM
IP DEPT - AB6490
100 N E ADAMS STREET
PEORIA, IL 61629-6490
Appeal No. 2001-0373
Application No. 09/122,255
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