Ex Parte Lutz

Patent Trial and Appeal Board

Mar 14, 2013

11354781 (P.T.A.B. Mar. 14, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DIETER LUTZ
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Appeal 2010-007127
Application 11/354,781
Technology Center 3700
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Before: JOHN C. KERINS, STEFAN STAICOVICI, and
CHARLES N. GREENHUT, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-007127
Application 11/354,781
2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
6. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The claims are directed to a method for adjusting the throttling action
of a valve. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1 Method for manufacturing a valve comprising a through
channel and a valve disk which covers the channel and deforms
to throttle a fluid passing through the channel, method
comprising:
forming at least one bending axis in the disk by using a
laser beam to locally heat the disk in order to cause partial local
melting, wherein the at least one bending axis in the disk
minimizes deviations from a predetermined throttling action.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Nicholls
Frackiewicz
US 4,121,704
US 5,228,324
Oct. 24, 1978
Jul. 20, 1993

REJECTION
Claims 1-6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nicholls in view of Frackiewicz. Ans. 3.

Appeal 2010-007127
Application 11/354,781
3
OPINION
The Examiner incorrectly interpreted the valve disk of claim 1 to
encompass limit stop 7 of Nicholls. Ans. 3, citing Nicholls, fig. 1. Element 7
of Nicholls, identified by the Examiner as the “valve disk,” is referred to by
Nicholls as a “limit stop” which limits the flex of the valve member 4. See
Nicholls, col. 1, ll. 54-55, fig. 1. The Examiner’s interpretation conflicts
with the ordinary meaning of the term as it would be understood by one
skilled in the art. Nicholls teaches that “valve members 4 and 5 . . . are in the
form of resiliently flexible annular discs.” See col. 2, ll. 3-7 (emphasis
added). Nicholls additionally teaches that discs 4 and 5 are valve discs
which “flex and lift off seat 17” when “downward movement of the piston
causes liquid to flow upwardly through the piston and through the holes in
the seat member 2.” See Nicholls col. 2, ll. 13-18. Therefore, a person of
ordinary skill in the art, based on the disclosure of Nicholls, would be led to
understand that the “valve disk” recited in claim 1 reads on valve discs 4 or
5, as opposed to limit stop 7 proposed by the Examiner. Although the PTO
must give claims their broadest reasonable interpretation, this interpretation
must be consistent with the one that those skilled in the art would reach. In
re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999).
Prior art references may be ‘indicative of what all those skilled
in the art generally believe a certain term means ... [and] can
often help to demonstrate how a disputed term is used by those
skilled in the art.’ ... Accordingly, the PTO’s interpretation of
claim terms should not be so broad that it conflicts with the
meaning given to identical terms in other patents from
analogous art.
Id. (internal citations omitted).
Further, limit stop 7 of Nicholls fails to “cover[] the channel [of the
valve] and deform[] to throttle a fluid passing through the channel [of the
Appeal 2010-007127
Application 11/354,781
4
valve].” The body of the claim relies on the preamble for antecedent basis
for the “valve disk.” The preamble limits the disk to a particular type of
structure used in the method—one that deforms to throttle a fluid. As the
Appellant chose to use both the preamble and the body of the claim to define
the subject matter of the claimed invention, the preamble is limiting. See
e.g., C.W. Zumbiel Co., Inc. v. Kappos 702 F.3d 1371, 1385 (Fed. Cir.
2012); Bicon, Inc. v. Straumann Co., 441 F.3d 945, 952-53 (Fed. Cir. 2006)
(“when the limitations in the body of the claim ‘rely upon and derive
antecedent basis from the preamble, then the preamble may act as a
necessary component of the claimed invention’” (citations omitted)).
Since this improper interpretation forms the basis for the Examiner’s
rejection of claims 1-6, we are constrained to reverse this rejection.

DECISION
The Examiner’s rejection of claims 1-6 is reversed.

REVERSED

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