12329749 (P.T.A.B. Nov. 27, 2017)

Ex Parte Millius

Patent Trial and Appeal BoardNov 27, 2017

12329749 (P.T.A.B. Nov. 27, 2017)

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. 12/329,749 12/08/2008 Michael J. Millius 506964 9496 53609 7590 11/29/2017 REINHART BOERNER VAN DEUREN P.C. 2215 PERRYGREEN WAY ROCKFORD, IL 61107 EXAMINER FOX, JOHN C ART UNIT PAPER NUMBER 3753 NOTIFICATION DATE DELIVERY MODE 11/29/2017 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): RockMail@reinhartlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL J. MILLIUS Appeal 2015-004762 Application 12/329,749 Technology Center 3700 Before MICHAEL L. HOELTER, LYNNE H. BROWNE, and THOMAS F. SMEGAL, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE Appellant filed a Request for Rehearing (“Req. Reh’g”) dated October 20, 2017, under 37 C.F.R. § 41.52, of the Decision on Appeal mailed August 22, 2017 (“Decision”). This Decision addressed the Examiner’s final rejection of claims 1—27 under 35 U.S.C. § 103(a). Decision 2, 3. Regarding the rejection of claim 1 (and claims 2—10, 14—17, and 23—27) as unpatentable over Okamoto, the Decision affirmed the Examiner’s rejection thereof. Decision 3—6, 9. Appellant seeks a rehearing of this affirmance of the rejection of these claims based upon “an inconsistency in the Board’s opinion related to claim 1.” Req. Reh’g 2. We do not modify our opinion. Appeal 2015-004762 Application 12/329,749 THE REQUEST FOR REHEARING A request for rehearing “must state with particularity the points believed to have been misapprehended or overlooked by the [Patent Trial and Appeal Board, hereinafter “Board”].” See 37 C.F.R. § 41.52(a)(1). This section also states that arguments not raised in the briefs before the Board and evidence not previously relied upon in the briefs “are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) through (a)(4) of this section.” In addition, a request for rehearing is not an opportunity to express disagreement with a decision without setting forth points believed to have been misapprehended or overlooked by the Board in rendering its Decision. The proper course for an Appellant dissatisfied with a Board decision is to seek judicial review, not to file a request for rehearing to reargue issues that have already been decided. See 35 U.S.C. §§ 141, 145. In the present Request for Rehearing, Appellant submits, “the Board has made a factual error regarding the operation of the valve of the Okamoto reference on which the Board sustained the Examiner’s rejection of claims 1—10, 14—17, and 23—27 as being obvious.” Req. Reh’g 2. More specifically, Appellant contends that there was error “when stating that Okamoto teaches that gas can still flow through the gas flow aperture 3OB even if the upper aperture 30A is blocked [by] the solenoid valve illustrated in FIG. 8 of Okamoto in order to achieve a middle flow rate between the two extremes of fully opened and fully closed.” Req. Reh’g 5. ANALYSIS As stated at page 4 of the Decision, the Board relied upon Figure 8, col. 4,11. 64—65, and col. 5,11. 3—9 of Okamoto in its analysis. Figure 8 is replicated below. 2 Appeal 2015-004762 Application 12/329,749 Figure 8 is a longitudinal cross-sectional view of a fourth embodiment illustrating upper and lower apertures 30A and 3OB in cylinder 9 and aperture 40 in piston valve 5. Okamoto states, “[i]n FIG. 8, a solenoid valve is provided whereby a wide range of flow rate is possible.” Okamoto 4:64—65; see also Decision 4. Okamoto also addresses the operation of this embodiment stating, In FIG. 8, for example, the gas which has passed through the aperture 30A is allowed to pass through the aperture 40 or is stopped by the outer side wall of the piston valve 5, and the gas which has passed through the aperture 30B is allowed to advance over the lowermost end surface of the piston valve 5 or is stopped by the outer side surface of the piston valve 5. Okamoto 5:3—9; see also Req. Reh’g 4, Decision 4. The Decision, as indicated supra, addressed these teachings and this figure stating: 3 Appeal 2015-004762 Application 12/329,749 Appellant’s contention that Okamoto operates in only either the fully open or fully closed condition is not persuasive because Okamoto states that ‘a wide range of flow rate is possible’ with the embodiment depicted in Figure 8. Okamoto 4:64—65. Okamoto states that the uppermost aperture 30A can be opened by the solenoid, or it can be closed by the solenoid. Okamoto 5:3—6. Whether upper aperture 30A is opened or closed, however, Okamoto states, ‘the gas which has passed through the [lower] aperture 30B is allowed to advance,’ or this lower aperture 3OB can itself be blocked too. Okamoto 5:6-9. Thus, Appellant's contention that Okamoto's valve is either fully opened or fully closed disregards Okamoto's explicit teaching that gas can still flow through lower aperture 3 OB even if upper aperture 30A is blocked (i.e., achieving a middle flow rate between the two extremes of fully opened and fully closed). We are thus not persuaded the Examiner erred in relying on Okamoto for disclosing a plurality of open gas flow settings. Decision 4; see also Req. Reh’g 2. This is the crux of Appellant’s Request for Rehearing. Appellant contends that because the operation of a solenoid is described with respect to other embodiments, “that the mode of operation of the solenoid valve in FIG. 8 is the exact same as the solenoid valves in FIGS. 1 and 2.” Req. Reh’g 3. In other words, despite Okamoto’s discussion of the operation of the Figure 8 embodiment replicated above, Appellant contends, “coil 2 can only actuate the piston valve 5 from a first or open position ... to a second or closed position.” Req. Reh’g 3^4. Consequently, as per Appellant, “the only two discrete positions are open or closed” (Req. Reh’g 5), i.e., either apertures 30A and 3OB are both open or, apertures 30A and 30B are both closed. See Req. Reh’g 4. The clear language of Okamoto replicated above does not support this construction. See Okamoto 5:3—9 supra. As stated, Okamoto’s upper aperture 30A can be open or it can be closed, “and” lower aperture 30B can 4 Appeal 2015-004762 Application 12/329,749 be open or it can be closed. Hence, the Decision’s statement that Appellant is “disregard[ing] Okamoto’s explicit teaching that gas can still flow through lower aperture 30B even if upper aperture 30A is blocked (i.e., achieving a middle flow rate between the two extremes of fully opened and fully closed).” Decision 4. Appellant further contends that the “alignment of aperture 40 with aperture 30B is not a ‘discrete open configuration’” as recited. Req. Reh’g 5. This is “because Okamoto makes no teaching or disclosure of being able to [] stop plunger 3 with aperture 40 aligned with aperture 30B, which is necessarily required to meet the limitations.” Req. Reh’g 5. Appellant’s contention is correct to the extent that with respect to the Figure 8 embodiment, Okamoto is silent regarding “aperture 40 aligned with aperture 30B.” However, Appellant is wrong in asserting that such alignment “is necessarily required to meet the limitations.” This is because, in the Figure 8 embodiment, the gas that passes through aperture 30B does not also pass through aperture 40 as Appellant contends (and which may explain Okamoto’s silence on this point). Instead, Okamoto states, “the gas which has passed through the aperture 30B is allowed to advance over the lowermost end surface of the piston valve 5.” Okamoto 5:6—9. Consequently, Okamoto teaches that the gas passing through aperture 30B advances past the lower end surface of valve 5 and not through aperture 40. Thus, with gas passing through aperture 30B while upper aperture 30A may also be open (thereby supplementing gas flow) or only aperture 30B is open (i.e., aperture 30A is closed); Okamoto discloses two different discrete open flow rates as recited. Accordingly, Appellant’s contention regarding Okamoto’s silence about the need to stop plunger 3 at a location so that 5 Appeal 2015-004762 Application 12/329,749 apertures 40 and 3 OB are aligned, and with this stoppage/alignment being necessarily required to satisfy the limitations, is not persuasive. DECISION Appellant’s Request for Rehearing has been granted to the extent that we have reconsidered our Decision in light of the statements made in Appellant’s Request for Rehearing, but is denied with respect to our making any modification to the Decision. No period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). DENIED 6