Ex Parte Marocchini et al

Patent Trial and Appeal Board

Dec 19, 2016

13430115 (P.T.A.B. Dec. 19, 2016)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/430,115 03/26/2012 Francis P. Marocchini 60440US01 2617
87521 7590 12/21/2016
Cantor Colburn LLP - Hamilton Sundstrand
20 Church Street, 22nd Floor
Hartford, CT 06103
EXAMINER
BARRY, DAPHNE MARIE
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
12/21/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANCIS P. MAROCCHINI and SCOTT L. LOTHIAN
Appeal 2015-001688
Application 13/430,115
Technology Center 3700
Before STEFAN STAICOVICI, WILLIAM A. CAPP, and
LEE L. STEPINA, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the non-final
rejection of claims 1—17. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM, but designate our affirmance as a NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
Appeal 2015-001688
Application 13/430,115
THE INVENTION
Appellants’ invention relates to butterfly valves. Spec. 11. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A valve assembly comprising:
a valve body having a valve body central axis;
a valve actuator disposed in an actuator housing and
operably connected to the valve body, the valve actuator located
such that a central axis of the valve actuator is nonparallel to a
the valve body central axis; and
a strut extending from the valve body to the actuator
housing and secured to each of the valve body and the actuator
housing to support the valve actuator in a fixed relationship to
the valve body.
The Examiner relies upon the following as evidence in support of the
rejections:
The following rejections are before us for review:
1. Claims 1,2, and 7—9 are rejected under 35 U.S.C. § 102(b) as
anticipated by Geiselman.
2. Claims 3—6 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Geiselman and Schmidt.
3. Claims 9-11, 16, and 17 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Geiselman and Condello.
4. Claims 12—15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Geiselman, Condello, and Schmidt.
THE REJECTIONS
Condello US 2,910,266
Geiselman US 3,420,500
Schmidt US 7,231,932 B2
Oct. 27, 1959
Jan. 7, 1969
June 19, 2007
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Application 13/430,115
OPINION
Anticipation by Geiselman
Claim 1
The Examiner finds that Geiselman discloses all of the limitations of
claim 1. Non-Final Action 3. In particular, the Examiner finds that
Geiselman discloses: (1) a strut; that (2) extends from the valve body to the
valve actuator, as claimed. Id.
Appellants traverse the Examiner’s rejection by arguing that the
structural feature identified by the Examiner as corresponding to the claimed
strut is a rib or cage that is formed during casting of housing 27 and, thus, is
not is not a “strut” within the meaning of claim 1. Appeal Br. 5. Appellants
further argue that Geiselman’s alleged strut ends at base plate 25 and,
therefore, does not extend to the valve body as required by the claim. Id.
Finally, Appellants argue that base plate 25 is associated with
housing 27 and not valve housing or casing “C,” which the Examiner
identifies as corresponding to the “valve body” in claim 1. Id. Therefore,
according to Appellants, the portion identified by the Examiner (between
base plate 25 and housing 27) “merely supports one portion of the valve
actuator in relation to another portion of the valve actuator.” Id.
The Examiner responds that Geiselman’s base plate is a part of the
valve body because it supports the valve’s shaft and is bolted to the valve
body, which is similar to the cover plate on the opposite side of the valve
body. Ans. 8.
Determining whether claims are anticipated involves a two-step
analysis. In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012). The
first step involves construction of the claims of the patent at issue. Id.
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Application 13/430,115
“During examination, ‘claims ... are to be given their broadest reasonable
interpretation consistent with the specification, and . . . claim language
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art.”’ Id. (quoting In re Am. Acad, of Sci. Tech. Ctr.,
367 F.3d 1359, 1364 (Fed. Cir. 2004)). The second step of an anticipation
analysis involves comparing the claims to prior art. Id. A prior art reference
anticipates a patent claim under 35 U.S.C. § 102(b) if it discloses every
claim limitation. Id. Disclosure of each element is not quite enough as
anticipation also requires the presence in a single prior art disclosure of all
the elements “arranged as in the cl aim A Finisar Corp. v. DirecTVGroup,
Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008).
With respect to the strut element, during prosecution, pending claims
are given their broadest reasonable construction consistent with the
specification. In re Am. Acad, of Sci. Tech Ctr., 367 F.3d at 1364. Under
the broadest reasonable interpretation standard, claim terms are given their
ordinary and customary meaning as would be understood by one of ordinary
skill in the art in the context of the entire disclosure. In re Translogic Tech.,
Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Appellants do not direct our
attention to any language in the Specification that would narrow the meaning
of “strut” to exclude the structure in Geiselman identified by the Examiner
as a strut. Consequently, we agree that the structure identified by the
Examiner (See Non-Final Action 4, annotated figure 1), may properly be
considered a “strut” as broadly, but reasonably construed.
With respect to the limitation in claim 1 directed to the strut
“extending from the valve body to the actuator housing,” we note that
Geiselman discloses an operating mechanism for a butterfly valve.
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Application 13/430,115
Geiselman, col. 1,11. 15—32. Geiselman’s device is comprised of valve
housing or casing “C” which contains the butterfly valve and housing 27
which contains the valve operating mechanisms “O.” Id. at col. 2,1. 64 —
col. 3,1. 47. On opposing sides of valve housing “C” is cover plate 24 and
base plate 25 respectively. Id. Fig. 1. Geiselman further explains that:
At one side, the seal 23 is held in position by a cover plate 24
that is anchored on the housing by bolts 9. The seal 23 on the
other side is held in position in a similar manner by a base
plate 25 associated with the valve operating mechanism and
anchored to the housing C by bolts 26.
Id. at col. 3,11. 34—39. Elsewhere in Geiselman, housing 27 is described as
being “mounted on” base plate 25. Id. at col. 3,11. 41—43. Figure 1 of
Geiselman depicts base plate 25 disposed between valve housing “C” and
valve operating mechanism “O.” See Geiselman, Fig. 1. The base plate is
secured to valve housing “C” by means of bolts 26. Id. at col. 3,11. 37—39.
Furthermore, in light of Geiselman’s disclosure that housing 27 is
“mounted on” base plate 25 (Geiselman, col. 3,11. 41—43), that base plate 25
is “associated with” the valve operating mechanism, and that base plate 25 is
“anchored to” the valve body housing by bolts 26, the Examiner’s finding
that base plate 25 is “part of’ the valve body is not supported by a
preponderance of the evidence. Ans. 8. The Examiner relies on base
plate 25 as being “part of’ the valve body in order to support a finding that
the structure identified by the Examiner as the claimed “strut” extends from
the valve body to the actuator housing and secured to each. Non-Final
Action 3; see also Ans. 8. Inasmuch as we agree with Appellants that
Geiselman’s base plate 25 is more properly associated as part of the valve
actuator operating mechanism “O” instead of the valve housing or casing or
body “C,” (Appeal Br. 5), the structure in Geiselman identified by the
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Application 13/430,115
Examiner as the alleged stmt does not extend from the valve body to the
actuator housing as claimed.
The foregoing, however, does not end our inquiry. As admitted by
Appellants, base plate 25 is associated with the valve operating mechanism
and is anchored to the housing C by bolts 26. Appeal Br. 5. We are of the
opinion that that base plate 25, in combination with the stmcture identified
in the Non-Final Action as the “stmt,” together satisfy the limitation in
claim 1 directed to a “stmt.” The combined stmcture is secured to each of
the valve body and actuator housing with the meaning of claim 1. The
depiction of this stmcture in Figure 1 of Geiselman evidences that it
supports the valve actuator in a fixed relationship to the valve body within
the meaning of claim 1. When the two stmctures are considered together as
a “stmt,” they extend from the valve body to the actuator housing as claimed
in claim 1.
In view of the foregoing, Geiselman discloses all of the limitations of
claim 1 and, therefore, anticipates claim 1. However, because our analysis
and findings deviate somewhat from that of the Examiner, we hereby
designate our affirmance as a NEW GROUND OF REJECTION.
Unpatentability of Claims 3—6 and 9—17
over Combinations Based on Geiselman
Claim 10
Claim 10 is an independent claim that differs in scope from claim 1
primarily in that the actuator is pneumatic. Claims App. The Examiner
relies on Condello as disclosing a pneumatic actuator. Non-Final Action 6.
Appellants do not challenge the Examiner’s finding concerning Condello
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Application 13/430,115
and a pneumatic actuator. Instead, Appellants traverse the rejection solely
based on Geiselman’s failure to disclose the strut limitation. Appeal Br. 6.
Our analysis and determination of this ground of rejection is
controlled by our decision with respect to claim 1. Accordingly, we sustain
the Examiner’s unpatentability rejection of claim 10, but designate our
affirmance as a NEW GROUND OF REJECTION.
Claims 3—6, 9, and 11—17
Appellants do not argue for the separate patentability of claims 3—6, 9,
and 11—17 apart from arguments presented with respect to claims 1 and 10
which we have previously considered. Our determination here is dictated by
the outcome that we have reached herein with respect claims 1 and 10.
Thus, the same reasons detailed above, we sustain the Examiner’s
unpatentability rejection of claims 3—6, 9, and 11—17, but designate the
affirmance as a NEW GROUND REJECTION.
DECISION
The decision of the Examiner to reject claims 1—17 is affirmed, but
the affirmance is designated as a NEW GROUND OF REJECTION.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
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Application 13/430,115
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED. 37 C.F.R, $ 41.50 0?)
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