Ex parte Love

Board of Patent Appeals and Interferences

Sep 20, 2000

09075631 (B.P.A.I. Sep. 20, 2000)

1
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publication and is not binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte H. WORTH LOVE
_____________
Appeal No. 1999-1960
Application No. 09/075,631
______________
ON BRIEF
_______________
Before McCANDLISH, Senior Administrative Patent Judge, and
STAAB, and JENNIFER D. BAHR, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 20-29, all the claims currently pending in
the application. An amendment filed subsequent to the final
rejection has been entered. See the advisory letter mailed
December 11, 1998 (Paper No. 10).
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Application No. 09/075,631
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Appellant’s invention pertains to “a solenoid operated
condensate drain valve operating in real-time response to the
presence of an electrically conductive media in the interior
chamber of the condensate drain valve” (specification, page
5). A further understanding of the invention can be derived
from a reading of exemplary claim 10, which is reproduced in
the appendix to appellant’s brief.
The single reference relied upon by the examiner as
evidence of obviousness is:
Frantz et al. (Frantz) 4,336,821 Jun. 29,
1982 Claims 20-29 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite.
Claims 20-29 stand further rejected under 35 U.S.C. § 103
as being unpatentable over Frantz.
Reference is made to appellant’s main and reply briefs
(Paper Nos. 12 and 14) and to the examiner’s answer (Paper No.
13) for the respective positions of appellant and the examiner
regarding the merits of these rejections. In addition,
appellant relies upon declarations by H. Worth Love and
Alexander Lucitti in support of appellant’s position that the
appealed claims are patentable over the Frantz reference.
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The 35 U.S.C. § 112, second paragraph, rejection
The examiner’s rationale for this rejection is found on
page 4 of the answer and reads as follows:
It is submitted that the recitation
“for operating said solenoid in real-time”
[in claim 20, lines 12-13] is unduly functional
and is not supported by a “means” recitation.
Furthermore “real-time” is hyphenated in claim
20, whereas “real time” is not hyphenated
in the specification. It appears [that] the
recitation of “real-time” is unspecific and is
not specific enough to limit the claim to
a means which operates the solenoid at all
times when the probe senses liquid.
We will not sustain this rejection. First, to the extent
the rejection is based on the premise that the recitation of
the hyphenated term “real-time” in the claims as opposed to
the unhyphenated term “real time” that appears in the
specification introduces an uncertainty into the claims, we do
not agree. In our view, the ordinarily skilled artisan would
consider the terms “real-time” (claims) and “real time”
(specification) to mean one and the same thing, namely, that
the present invention does not incorporate any non-inherent
delays in the response time of the valve to the detection of
condensate, such that the valve opens and closes substantially
instantaneously with the detection by the sensor of the
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presence or absence of condensate within the valve body
(specification, page 14; brief, page 14).
As to the examiner’s determination that the claims are
indefinite because the recitation “for operating said solenoid
in real-time” in claim 20 is unduly functional and not
supported by sufficient structure, it is by now well settled
that there is nothing intrinsically wrong in defining
something by what it does rather than by what it is. In re
Swinehart, 439 F.2d 210, 212, 169 USPQ 226, 228 (CCPA 1971).
Judging from the examiner’s remarks, it appears that his
concern is with the breadth of the claims rather than with any
indefinite language therein. Admittedly, claim 20 covers any
and all drain valves that include an electric control circuit
that connects the sensor and the solenoid and operates the
solenoid in “real-time” response to the sensor’s detection of
condensate, and that meets the requirements called for
elsewhere in the claim. This does not, however, make the
claim indefinite. Instead, it simply makes the claim broad.
Breadth, however, is not be to equated with indefiniteness.
See, for example, In re Miller, 441 F.2d 689, 693, 169 USPQ
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597,
600 (CCPA 1971).
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For these reasons, the standing rejection of the appealed
claims under 35 U.S.C. § 112, second paragraph, will not be
sustained.
The 35 U.S.C. § 103 rejection
The examiner concedes that the solenoid actuated drain
valve of Frantz does not include an electric control circuit
for operating the solenoid in real-time. The examiner
contends, however, that:
[i]t would have been an [sic, a] matter
of design to a person of ordinary skill
in the art at the time the invention was
made to eliminate the time delay of Frantz
et al with the consequent loss [of] the time
delay function in order to operate in
“real-time.” [Final rejection, page 2.]
The examiner further explains this rationale in the
answer
as follows:
One of ordinary skill in the art at the
time the invention was made would have
found it obvious to eliminate the cycled
operation of Frantz et al because elimination
of the cycled operation would result in
the consequent loss of the function of the
cycled operation, namely, minimizing
the loss of air pressure. Therefore,
if one of ordinary skill in the art
is not concerned with the loss of air
pressure, he would have found it obvious
to eliminate the cycled operation.
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[Answer, page 3.]
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In the background section of the specification, Frantz
states that one of the problems with drain valves prior to
Frantz is excessive loss of reservoir pressure (column 1,
lines 31-40). In response to the problem, one of the
objectives of Frantz is to cyclically open and close the valve
for draining the liquid matter with a minimum loss of
reservoir pressure (column 1, lines 50-55). In furtherance of
this objective, Frantz provides a control circuit that
operates with a time delay of about
20 seconds between the time the sensor 58 first detects the
presence of liquid matter and the energizing of the solenoid
58 to open the valve (column 7, line 49 through column 8, line
2). Thereafter the valve continues to cycle between an open
cycle of about 0.2 seconds and a closed cycle of about 20
seconds until the liquid matter is no longer detected by the
sensor
58 (column 8, lines 23-38). According to Frantz, this brief
open and relatively long closed operating cycle ensures that
the loss of reservoir pressure in the operation of the drain
valve is minimal (column 8, lines 38-45 and 56-65).
Based on our above reading of Frantz, we do not think one
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of ordinary skill in the art, in light of that reference’s
teachings, would have indiscriminately eliminated the cycling
operation of that reference, along with its time delay means,
because in so doing it would appear that one would be required
to disregard and abandon one of the expressly stated
objectives of Frantz, namely, to minimize the loss of pressure
in the reservoir. Consequently, the examiner’s attempt to
justify the proposed elimination of the cycling operation of
Frantz by rationalizing that “if one of ordinary skill in the
art is not concerned with the loss of air pressure, he would
have found it obvious to eliminate the cycled operation”
(answer, page 3) is not well taken. In this regard, the
examiner has not explained why one of ordinary skill in the
art, in light of the teachings of Frantz, would have
considered the loss of air pressure to be of no concern. The
Court of Appeals for the Federal Circuit clearly stated that
it is erroneous to consider the references in less than their
entireties, i.e., to disregard disclosures in the references
that diverge from and teach away from the invention at hand.
W. L. Gore and Associates, Inc. v. Garlock, Inc., 721 F.2d
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1540, 1550, 220 USPQ 303, 311 (Fed. Cir. 1983). From our
perspective, this is precisely what the examiner has done in
arriving at a conclusion of obviousness based on the teachings
of Frantz alone.
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As to the view that it would have been obvious to modify
Frantz in the proposed manner by the examiner because it would
merely involve the elimination of the cycled operation with
the consequent loss of function of the cycled operation, it is
true that in In re Karlson, 311 F.2d 581, 584, 136 USPQ 184,
186 (CCPA 1963) the Court stated that “omission of an element
and its function in a combination is an obvious expedient if
the remaining elements perform the same functions as before.”
The Court recognized, however, that this is not a mechanical
rule, and that such language in Karlson was not intended to
short circuit the determination of obviousness mandated by 35
U.S.C.
§ 103. See In re Wright, 343 F.2d 761, 769-70, 145 USPQ 182,
190 (CCPA 1965). Thus, as in reviewing any obviousness
determination, we must first look to the prior art and
ascertain whether the prior art teachings would appear to be
sufficient to one of ordinary skill in the art to suggest
making the claimed modification proposed by the examiner.
See, for example, In re Lalu, 747 F.2d 703, 705, 223 USPQ
1257, 1258 (Fed. Cir. 1984). Here, for the reasons discussed
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above, we consider that Frantz teaches away from eliminating
the cycled operation with its time delay function, such that
the examiner's proposed modification is not fairly suggested
by the reference itself. Moreover, we are in accord with
appellant that eliminating the cycled operation in Frantz
would altogether change the principle of operation of the
Frantz drain valve, which is a further indication that the
proposed modification would not have been obvious in light of
the reference teachings. See In re Ratti, 270 F.2d 810, 813,
123 USPQ 349, 352 (CCPA 1959).
In light of the foregoing, the standing rejection of the
appealed claims as being unpatentable over Frantz will not be
sustained. Since we hold that the examiner has not
established a prima facie case of obviousness, it is
unnecessary for us to consider appellant’s evidence of
nonobviousness (i.e., the declarations of Love and Lucitti).
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Summary
The standing rejections under 35 U.S.C. § 112 and 35
U.S.C. § 103 are reversed.
The decision of the examiner is reversed.
REVERSED
)
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge )
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JENNIFER D. BAHR )
Administrative Patent Judge )
LJS:hh
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Application No. 09/075,631
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Ralph H. Dougherty
DOUGHERTY & ASSOCIATES
Two Fairview Center
6230 Fairview Road, Suite 400
Charlotte, NC 28210