Ex Parte Nguyen et al

Patent Trial and Appeal Board

Aug 17, 2016

12354541 (P.T.A.B. Aug. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/354,541 01115/2009
53609 7590 08/19/2016
REINHART BOERNER VAN DEUREN P,C
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
FIRST NAMED INVENTOR
Tam Nguyen
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
507097 4979
EXAMINER
CHAUDRY, ATIF H
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
08/19/2016 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):
RockMail@reinhartlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAM NGUYEN and JAMES D. KIMBLE
Appeal2014-005600
Application 12/3 54,541
Technology Center 3700
Before JENNIFER D. BAHR, JOHN C. KERINS, and
GEORGE R. HOSKINS, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Tam Nguyen and James D. Kimble (Appellants) appeal under
35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 3, 5-8,
and 16-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal2014-005600
Application 12/3 54,541
THE CLAIMED SUBJECT MATTER
Claim 5, reproduced below, is illustrative of the claimed subject
matter.
5. A variable flow digital gas valve, comprising:
a housing defining an inlet, an outlet, and an inlet gas
manifold positioned therebetween;
a plurality of gas control orifices positioned in the housing
to provide fluid communication between the inlet gas manifold
and the outlet, each of the plurality of gas control orifices having
a different size than the other gas control orifices;
a plurality of solenoid coil assemblies associated with the
plurality of gas control orifices, each solenoid coil assembly
including a plunger slidably positioned within a coil, the plunger
having affixed to an end thereof a valve seal, the plunger and
valve seal being held in a quiescent position prohibiting fluid
communication between the inlet gas manifold and the outlet
through its associated gas control orifice by a valve spring; and
wherein the size of each succeeding gas control orifice is
twice the size of a preceding gas control orifice; and
wherein the plurality of solenoid coil assemblies are
mounted to the housing in an opposing configuration.
REJECTIONS
I. Claims 5, 6, 17, and 18 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Fomuto (US 4,725,040, iss. Feb. 16, 1988)
and Jerde '533 (US 4,019,533, iss. Apr. 26, 1977).
II. Claim 3 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Fomuto, Jerde '533, and Beam
(US 4,768,544, iss. Sept. 6, 1988).
III. Claim 16 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Fomuto, Jerde '533, and Fritsch
(US 6,405,752 Bl, iss. June 18, 2002).
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IV. Claims 7, 8, 19, and 20 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Fomuto and Beam.
V. Claims 5, 6, 17, and 18 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Jerde '394 (US 3,905,394, iss. Sept. 16,
1975), Fomuto, and Jerde '533. 1
VI. Claim 3 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Jerde '394, Fomuto, Jerde '533, and Beam.
VII. Claims 7, 8, 19, and 20 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Jerde '394, Fomuto, and Beam.
DISCUSSION
Rejections I-III
Appellants' independent claim 5 is directed to "[a] variable flow
digital gas valve, comprising," inter alia, "a housing defining an inlet, an
outlet ... [and] a plurality of solenoid coil assemblies ... mounted to the
housing in an opposing configuration." Claims App. 1. Independent claim
17, which is also directed to "[a] variable flow digital gas valve," requires
"at least two solenoid coil assemblies ... mounted to the housing in an
opposing configuration." Id. at 2-3.
The Examiner finds that Fomuto discloses, in Fig. 1, "a variable flow
gas valve, comprising," inter alia, "a housing defining an inlet 14, outlets
(downstream ends of 20a-20c) ... [and] a plurality of solenoid coil
assemblies ... each ... including a plunger 30 slidably positioned within a
1 The Examiner refers to Jerde '394 as "Jerde390" in the Final Action and in
the Answer. See, e.g., Final Act. 11-21, 24; Ans. 25. Appellants refer to
this document as "Jerde '390." See, e.g., Appeal Br. 13.
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coil." Final Act. 3. The Examiner finds that Fomuto "fails to show the
valves [that is, the solenoid coil assemblies] in an opposing configuration,"
but that Jerde '533 "teaches variable orifices multiple valve housing [sic]
with valves disposed in opposing configuration." Id. at 4 (citing Jerde '533,
Fig. 1).
The Examiner determines that it would have been obvious to modify
Fomuto's Figure 1 embodiment by providing it "with valves in an opposing
configuration as taught by [Jerde '533] as an art recognized substitute valve
arrangement yielding predictable results." Id.
Appellants submit:
To apply the [Jerde '533] teaching to Fomuto would require
taking the Fomuto valves that are over the top of its plate 12 and
moving them to the underside of plate 12. But, simply moving
valves to the opposite side of the base would not place the valves
in an opposed configuration. They would merely be on opposite
sides of plate 12 in Fomuto.
Appeal Br. 6.
Appellants contend that in order to modify F omuto as proposed by the
Examiner, "there would have to be a complete reducting of the exhaust
manifold of Fomuto to accommodate the proposed configuration as set forth
in the Office Action. Such a realignment of valves and their reducting
would have no reasonable expectation of success." Id. at 7.
In responding to Appellants' arguments, the Examiner insists that "it
would have been obvious to ... perform the necessary structural adaptations
as appropriate in the modification of Fomuto in view of Jerde '533" and that
"[t]he Examiner did not suggest 'moving Fomuto['s] valves to the underside
of plate 12' but suggested that it was obvious to merely re-arrange (along
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with associated modifications of structural details) Fomuto['s] valves in
view of Jerde '533." Ans. 22-23.
Appellants contend, and we agree, that "[t]he Examiner has not
explained [with sufficient specificity] what 'mere re-arrangement (along
with associated modifications of structural details)' he is proposing." Reply
Br. 7. Fomuto's Figures 1 and 2 depict inlet 14 located in the central region
of base 12 and outlets 20a, 20b, 20c disposed on base 12 radially outwardly
of inlet 14. Fomuto's Figure 4 depicts a similar arrangement, with base 112
having inlet 114 and common discharge opening 139 for outlets 120 on the
same side of the base as inlet 114. See Fomuto, Figs. 1, 2, 4; col. 1, 11. 61-
66; col. 3, 11. 24--26. Jerde '533, on the other hand, discloses a digital valve
assembly in which inlet 24 is disposed centrally on one end of the valve
housing and outlet opening 51 is disposed centrally on an opposite end of the
housing from inlet 24. See Jerde '533, Fig. 2. Given this very different
configuration of inlet and outlet locations on the digital valve of Jerde '533
as compared to those of Fomuto, it is not apparent how the opposed
arrangement of controlling valves and their associated solenoid coils 61
taught in Jerde '533 is "an art recognized substitute valve arrangement [to
Fomuto's valve arrangement] yielding predictable results" as characterized
by the Examiner. Final Act. 4. Furthermore, the Examiner fails to explain,
with sufficient specificity, how one of ordinary skill in the art would re-
arrange the solenoid coil assemblies of Fomuto to have an opposed
configuration as taught by Jerde '533 to yield an operable digital valve
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having its inlet and outlet(s) disposed on the housing as depicted in either
Figure 4 or Figures 1 and 2 ofFomuto.2
For the above reasons, the Examiner fails to articulate the necessary
findings and reasoning to establish that Fomuto and Jerde '533 render
obvious the subject matter of independent claims 5 and 17. Accordingly, we
do not sustain the rejection of claims 5 and 17 or their dependent claims 6
and 18 under 35 U.S.C. § 103(a) as unpatentable over Fomuto and Jerde
'533.
Claims 3 and 16 depend from claims 5 and 17, respectively, and, thus,
also incorporate the limitations of claims 5 and 17 discussed above. Claims
App. 1, 2. In rejecting these claims, the Examiner does not articulate any
additional findings or reasoning, or rely on any teachings in Beam or Fritsch,
that would remedy the aforementioned deficiency in the Examiner's
proposed combination of Fomuto and Jerde '533. See Final Act. 6-7. Thus,
we do not sustain the rejection of claim 3 under 35 U.S.C. § 103(a) as
unpatentable over Fomuto, Jerde '533, and Beam, nor do we sustain the
rejection of claim 16 under 35 U.S.C. § 103(a) as unpatentable over Fomuto,
Jerde '533, and Fritsch.
Rejection IV
Appellants argue for patentability of claims 7, 8, 19, and 20 subject to
this ground of rejection as a group. Appeal Br. 10-13. We select claim 7 as
representative of this group, and claims 8, 19, and 20 stand or fall with
claim 7. See 37 C.F.R. § 41.37(c)(l)(iv).
2 In the event of further prosecution of the subject matter of claims 5 and 1 7,
the Examiner may wish to consider whether Jerde '5 3 3 anticipates (or
renders obvious, either alone or in view of other prior art) the subject matter
of these claims.
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The Examiner finds that Fomuto's Figure 1 embodiment satisfies all
of the limitations of claim 7, with the exception of "a single outlet" and the
"plurality of coil assemblies mounted to the housing in an in-line
configuration." Final Act. 8-9.
The Examiner determines that it would have been obvious to provide
the Figure 1 embodiment of Fomuto's device "with a combined outlet as
taught by [the Figure 4 embodiment of F omuto] in order to improve
exhausted fluid management." Id. at 9. Appellants do not contest this
determination. See Appeal Br. 10-13.
The Examiner finds that Beam discloses a variable flow digital valve
comprising a plurality of valves 14--18, further "comprising: a housing
defining an inlet 86, an outlet 88 having a linear gas flow axis, a plurality of
gas control orifices positioned ... to provide fluid communication between
the inlet gas manifold and the outlet, each of the ... orifices having a
different size than the other ... orifices," and a "plurality of actuator
assemblies mounted to the housing in a linear in-line configuration parallel
to the linear axis of gas flow through the outlet." Final Act. 9. The
Examiner determines that it would have been obvious, in view of Beam, to
modify Fomuto's device to provide the "plurality of actuator assemblies
mounted to the housing in an in-line configuration parallel to [the] outlet
axis as taught by Beam ... as an art-recognized substitute actuator layout
arrangement yielding predictable results." Id.
Appellants argue that Beam discloses a linear in-line configuration of
solenoid coils that is perpendicular, and not parallel, to the linear axis of gas
flow through the outlet, as required in claim 7. Appeal Br. 12 (providing an
annotated reproduction of Beam's Figure 1 showing what Appellants
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Application 12/3 54,541
characterize as the linear in-line configuration of the solenoid coil
assemblies and the linear axis of gas flow through the outlet). Thus,
Appellants contend that the parallel arrangement recited in claim 7 cannot be
rendered obvious by the combination of Fomuto and Beam. Id. at 13.
Appellants' contention focuses on the portion of Beam's outlet passage 28
that takes a 90 degree tum from the linear axis defined by the portion of the
outlet passage including outlet passages 88, 74, and 42, rather than on the
linear axis defined by outlet passages 88, 74, and 42. Appellants argue that
the Examiner's reliance on the linear axis defined through Beam's outlet
passage 88, which is parallel to the linear in-line configuration of the
actuators for valves 14--18, fails to consider the teachings of Beam as a
whole. Reply Br. 14.
Appellants' arguments are not persuasive. Figure 1 of Beam
illustrates the plurality of actuator assemblies mounted to the housing in a
linear in-line configuration parallel to the linear axis of gas flow through
outlet passage 88, as well as through outlet passages 74 and 42. Beam's
linear in-line actuator assembly configuration is also parallel to the linear
axis of gas flow through inlet passages 40, 72, and 86, which is parallel to
the linear axis of gas flow through outlet passages 88, 74, and 42. A person
having ordinary skill in the art would have readily appreciated that such an
arrangement could be incorporated into the housing of F omuto' s exhaust gas
recirculation valve assembly, in which gas flows into an inlet (14 or 114) in
the housing and then reverses direction and exits the housing in a direction
parallel to, but in reverse of, the inlet flow. The fact that Beam discloses a
gas flow outlet passage that ultimately takes a 90 degree tum from the linear
axis defined by outlet passages 88, 7 4, and 42 does not undermine the
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Examiner's conclusion of obviousness. Obviousness does not require that
all of the features of the secondary reference be bodily incorporated into the
primary reference. See In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Moreover, the artisan is not compelled to blindly follow the teaching of one
prior art reference over the other without the exercise of independent
judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed.
Cir. 1984). "A person of ordinary skill is also a person of ordinary
creativity, not an automaton." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
421 (2007). Given the locations of the inlet and outlet on Fomuto's housing,
a person skilled in the art would have had no reason to incorporate the 90
degree tum of the inlet and outlet passages taught by Beam in either the inlet
passage or the outlet passage of Fomuto.
For the above reasons, Appellants fail to apprise us of error in the
rejection of claim 7. Accordingly, we sustain the rejection of claims 7, 8,
19, and 20 under 35 U.S.C. § 103(a) as unpatentable over Fomuto and
Beam.
Rejection V
The Examiner sets forth an alternative rejection of claims 5, 6, 17, and
18 under 35 U.S.C. § 103(a) based on the combined teachings of Jerde '394,
Fomuto, and Jerde '533. Final Act. 11-16. In contesting this rejection,
Appellants group claims 5, 6, 17, and 18 together. Appeal Br. 13-16.
Pursuant to 37 C.F.R. § 41.37(c)(l)(iv), we select claim 5 as representative,
and claims 6, 17, and 18 stand or fall with claim 5.
The Examiner finds that Jerde '394 discloses a variable flow digital
gas valve substantially as recited in claim 5, except that Jerde '394 "fails to
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disclose a housing or the details of the layout arrangement [sic] solenoid
valves." Final Act. 11-12. According to the Examiner:
It would have been obvious to ... have provided the device
disclosed by [Jerde '394] with a housing containing the solenoid
valves and inlet/outlet piping [of Jerde '394] as taught by Fomuto
... in order to improve compactness.
It would have been obvious to ... have provided the device
disclosed by [Jerde '394] with each [of the] solenoid valves
having [a] coil and plunger with [a] seal held against a seat by a
spring as taught by Fomuto ... as a well-known solenoid valve
structure and for the purpose of applying a known technique to a
known device to yield predictable results.
[Jerde '394] as modified fails to show the valves in an
opposing configuration. [Jerde '533] (Fig. 1) teaches variable
orifices multiple valve housing [sic] with valves disposed in
opposing configuration.
It would have been obvious to ... have provided the device
disclosed by [Jerde '394] as modified with valves in an opposing
configuration as taught by [Jerde '533] as an art-recognized
substitute valve arrangement yielding predictable results.
Final Act. 13.
Appellants contend that nothing in Jerde '394 "would lead one to
conclude that compactness was a problem" in need of a solution. Appeal Br.
14. In response, the Examiner points out that the reason for the modification
can be found either in the references themselves or in the knowledge
generally available to one of ordinary skill in the art. Ans. 26. The
Examiner then explains the rationale for the modification to provide a
housing for the solenoid valves and piping of Jerde '394 by adding that "one
of ordinary skill in the art would recognize that a complex assembly of parts
covered by a housing is easier to manage/handle/protect etc. in view of
Fomuto." Id.
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Appellants assert that '"easier' is a relative term" and submit that
neither Fomuto nor Jerde '394 provides any substantive teachings to support
the Examiner's finding "that 'a complex assembly of parts covered by a
housing is easier to manage/handle/protect."' Reply Br. 16. This line of
argument is not persuasive. A conclusion of obviousness must be supported
by explicit findings and analysis establishing an apparent reason to combine
the known elements in the manner required in the claim at issue. KSR, 550
U.S. at 418. However, "the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for [the PTO]
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ." Id. The Examiner's finding that a
person having ordinary skill in the art would have been aware that housings
function to cover and protect contents has a sound basis. Indeed, the
common definition of "housing" is "anything that covers or protects. "3
Moreover, Jerde '533 further supports the Examiner's finding that it was
recognized in the art that housing the flow passages and valves in a housing
(or body) provides for a simpler and more compact assembly for managing a
number of parts. See Jerde '533, col. 1, 11. 9-12, 22-24.
Appellants also submit that "[t]here is no rationale presented as to
why one would look beyond [Jerde '394]'s high pressure system to a low
pressure system of Fomuto" and that "[t]he Examiner has merely looked for
a teaching in the prior art for valves in opposing configuration but has not
set forth an articulated reason based upon rational underpinnings to support
3 housing. Dictionary.com. Dictionary.com Unabridged. Random House,
Inc. Retrieved from http://www.dictionary.com/browse/housing (accessed
Aug. 4, 2016).
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looking beyond Jerde ['394] to Jerde '533." Appeal Br. 14--16; see also
Reply Br. 16-18.
Appellants do not apprise us of any reason why the differences in
pressure range applications between the valve of Jerde '394 and that of
Fomuto alluded to by Appellants would have dissuaded a person having
ordinary skill in the art from considering the teachings of F omuto with
respect to providing a housing to contain and protect the inlet, outlet, and
manifold passages or the details of the flow control valves and solenoids of
the valve. Appellants baldly assert that Jerde '394 and Fomuto are "clearly
non-analogous," but, aside from pointing out the pressure range application
differences between these two references, do not elaborate further as to why
this is the case. Reply Br. 1 7.
Our reviewing court has explained that "[t]he analogous art inquiry is
a factual one, requiring inquiry into the similarities of the problems and the
closeness of the subject matter as viewed by a person of ordinary skill."
Scientific Plastic Prods., Inc. v. Biotage AB, 766 F.3d 1355, 1360 (Fed. Cir.
2014).
Criteria for determining whether prior art is analogous may be
summarized as "( 1) whether the art is from the same field of
endeavor, regardless of the problem addressed, and (2) if the
reference is not within the field of the inventor's endeavor,
whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved."
Id. at 1359 (quoting In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992)).
A reference is reasonably pertinent if ... it is one which, because
of the matter with which it deals, logically would have
commended itself to an inventor's attention in considering his
problem. If a reference disclosure has the same purpose as the
claimed invention, the reference relates to the same problem, and
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that fact supports use of that reference in an obviousness
rejection.
Id. (citing Innovention Toys, LLC v. MGA Entm 't, Inc., 637 F.3d 1314, 1321
(Fed. Cir. 2011) (quoting Clay, 966 F.2d at 659).
The Examiner finds that both Fomuto and Jerde '394 "are analogous
with respect to [the] concept of variable orifice fluid control arrangement of
a single inlet divided into multiple variable orifice valved passages and
subsequently recombined into a single outlet." Ans. 26. Appellants'
invention and Fomuto both are directed to variable flow digital gas valves,
in which a plurality of solenoid-actuated valves corresponding to orifices of
varying sizes are used to control the gas flow variably through the valve.
See Spec., p. 1 (Title: "VARIABLE FLOW DIGITAL GAS VAL VE"), i-fi-f
8-9 (describing energization of various coils associated with uniquely sized
orifices to provide unique flow rates); see also Fomuto, col. 1, 11. 9-11
(describing the invention as relating "to a valve assembly for controlling
recirculation of exhaust gases"), col. 2, 11. 39-56 (discussing actuation of
appropriate one or more solenoid coils of the valve assembly with outlet
areas calibrated as a binary series of increasing size to control gas flow).
Likewise, Jerde '394 is directed to a flow control system for control of gas
flow and is concerned with providing varying amounts of flow using a
plurality of solenoid-actuated valves associated with orifices of flow areas
increasing in size by a factor of two. See Jerde '394, col. 1, 11. 22-24; col. 1,
1. 59---col. 2, 1. 27. Thus, Appellants' invention, Fomuto, and Jerde '394 all
are in the field of endeavor of variable gas flow control digital valve
assemblies and address a common problem, namely, providing varying
amounts of flow by selectively actuating solenoid coils to open valves
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associated with flow orifices of varying flow area. Accordingly, the
Examiner is correct that these references are analogous art.
Appellants' assertion that the Examiner has not set forth an articulated
reason based upon rational underpinnings for modifying Jerde '394 to place
the valves in opposing configuration is not accurate. The Examiner reasons
that the modification would be obvious "as an art-recognized substitute
valve arrangement yielding predictable results." Final Act. 13. Jerde '394
discloses a flow control "diagram" in which the gas flows through an inlet,
to an inlet manifold leading to a plurality of solenoid-actuated control
valves, and then to a common outlet. See Jerde '394, Fig.; col. 1, 1. 40.
Jerde '533 discloses a digital valve assembly with a similar flow pattern (i.e.,
with gas flowing through an inlet, to an inlet manifold leading to a plurality
of solenoid-actuated control valves, and then to a common outlet), with the
exception that the valves are mounted to the housing in an opposing
configuration. See Jerde '533, Figs. 1, 2; col. 2, 11. 12-59. Like the
solenoid-actuated control valves of Jerde '394, the solenoid-actuated control
valves of the digital valve assembly of Jerde '533 are associated with
passages of varying cross-sectional area so that the solenoid coils may be
selectively actuated to vary the flow of gas through the valve assembly. See
Jerde '533, col. 2, 11. 16-20, 43--49; col. 3, 11. 61---66. Thus, modifying Jerde
'394 to arrange the solenoid-actuated valves in an opposing configuration as
taught by Jerde '533 amounts to the substitution of one known valve
configuration for another known in the field that does not interfere with the
function of the control valves, thereby yielding predictable results. "[W]hen
a patent claims a structure already known in the prior art that is altered by
the mere substitution of one element for another known in the field, the
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combination must do more than yield a predictable result." KSR, 550 U.S. at
416.
For the above reasons, Appellants do not apprise us of error in the
Examiner's conclusion that the combined teachings of Jerde '394, Fomuto,
and Jerde '533 render obvious the subject matter of claim 5. Therefore, we
sustain the rejection of claims 5, 6, 17, and 18 under 35 U.S.C. § 103(a) as
unpatentable over Jerde '394, Fomuto, and Jerde '533.
Rejection VI
Appellants argue that the Examiner's addition of Beam in rejecting
claim 3 fails to correct the asserted deficiencies of the combination of Jerde
'394, Fomuto, and Jerde '533 vis-a-vis claim 5, from which claim 3
depends. Appeal Br. 16. This argument does not point to error because, for
the reasons discussed above, we discern no such deficiencies.
Further, Appellants contend that Beam "specifically teaches away
from the use of solenoid valves stating in its disclosure of, 'solenoid power
valves are limited in the amount of force they can exert and are impractical
in high pressure fluid applications."' Id. at 16-17 (citing Beam, col. 2, 11. 5-
10). According to Appellants, "Beam teaches away from the use of solenoid
valves in high pressure systems." Id. at 17.
This argument is not convincing because the Examiner does not
propose to modify Jerde '394 to provide solenoid valves. See Final Act. 16-
17. As discussed above, Jerde '394 already uses solenoids 18 for actuating
its control valves. See Jerde '394, col. 1, 11. 59---60.
Appellants also argue that "an articulated reason based upon rational
underpinning has not been set forth to explain looking beyond the primary
reference to any of the additional references." Appeal Br. 17. We have
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already addressed this argument as it pertains to the teachings of Fomuto
and Jerde '533. This argument is similarly unavailing as it pertains to Beam.
The Examiner articulates a reason for forming the valve seat and gas control
orifice as a single unit in the valve assembly of Jerde '394 as taught by
Beam, namely, "in order to enable replacement of the valve seat in the
housing upon extensive use wear." Final Act. 17. Appellants make no
attempt to explain why this reasoning lacks rational underpinnings.
Thus, Appellants do not apprise us of error in the Examiner's
conclusion that Jerde '394, Fomuto, Jerde '533, and Beam render obvious
the subject matter of claim 3. Accordingly, we sustain the rejection of claim
3 under 35 U.S.C. § 103(a) as unpatentable over Jerde '394, Fomuto,
Jerde '533, and Beam.
Rejection VII
In contesting this rejection, Appellants group claims 7, 8, 19, and 20
together. Appeal Br. 17-18. Pursuant to 37 C.F.R. § 41.37(c)(l)(iv), we
select claim 7 as representative, and claims 8, 19, and 20 stand or fall with
claim 7.
The Examiner's rejection relies, in pertinent part, on the Examiner's
finding that Beam discloses a variable flow digital gas valve comprising a
"plurality of actuator assemblies mounted to the housing in a linear in-line
configuration parallel to the linear axis of gas flow through the outlet."
Final Act. 19-20 (emphasis added). Based on that finding, the Examiner
determines that it would have been obvious to further modify the device of
Jerde '394 (already modified in view of Fomuto to provide a housing
containing the solenoid valves and inlet/outlet piping and details of the
solenoid valves) by mounting the plurality of actuator assemblies "to the
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housing in an in-line configuration parallel to [the] outlet axis as taught by
Beam ... as an art-recognized substitute actuator arrangement yielding
predictable results." Id.
Appellants reiterate the argument, discussed above in addressing
Rejection IV, that Beam's "housing defines a linear [axis] of gas flow
through its outlet that is perpendicular, and not parallel as recited in claims 7
and 19, to the plurality of its solenoid coil assemblies that are mounted to the
housing." Appeal Br. 18. Thus, according to Appellants, "Beam cannot
meet" the limitation in claim 7 that the plurality of solenoid assemblies are
mounted to the housing in a linear in-line configuration parallel to the linear
axis of gas flow through the outlet defined by the housing. Id.
For essentially the reasons set forth above in addressing this line of
argument with respect to Rejection IV, this argument is not persuasive.
First, Appellants' argument that Beam cannot meet the limitations of claim 7
attacks Beam individually, rather than in combination with Jerde '394 and
Fomuto as set forth in the rejection. Further, as discussed above, Figure 1 of
Beam illustrates the plurality of actuator assemblies mounted to the housing
in a linear in-line configuration parallel to the linear axis of gas flow through
outlet passage 88, as well as through outlet passages 74 and 42. Beam's
linear in-line actuator assembly configuration is also parallel to the linear
axis of gas flow through inlet passages 40, 72, and 86, which is parallel to
the linear axis of gas flow through outlet passages 88, 7 4, and 42. The fact
that Beam discloses a gas flow outlet passage that ultimately takes a 90
degree tum from the linear axis defined by outlet passages 88, 74, and 42
does not undermine the Examiner's conclusion of obviousness.
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Application 12/3 54,541
Thus, Appellants do not apprise us of error in the Examiner's
conclusion that Jerde '394, Fomuto, and Beam render obvious the subject
matter of claims 7, 8, 19, and 20. Accordingly, we sustain the rejection of
claims 7, 8, 19, and 20 under 35 U.S.C. § 103(a) as unpatentable over Jerde
'394, Fomuto, and Beam.
DECISION
The Examiner's decision rejecting claims 5, 6, 17, and 18 under
35 U.S.C. § 103(a) as unpatentable over Fomuto and Jerde '533 is
REVERSED.
The Examiner's decision rejecting claim 3 under 35 U.S.C. § 103(a)
as unpatentable over Fomuto, Jerde '533, and Beam is REVERSED.
The Examiner's decision rejecting claim 16 under 35 U.S.C. § 103(a)
as unpatentable over Fomuto, Jerde '533, and Fritsch is REVERSED.
The Examiner's decision rejecting claims 7, 8, 19, and 20 under
35 U.S.C. § 103(a) as unpatentable over Fomuto and Beam is AFFIRMED.
The Examiner's decision rejecting claims 5, 6, 17, and 18 under
35 U.S.C. § 103(a) as unpatentable over Jerde'394, Fomuto, and Jerde '533
is AFFIRMED.
The Examiner's decision rejecting claim 3 under 35 U.S.C. § 103(a)
as unpatentable over Jerde '394, Fomuto, Jerde '533, and Beam is
AFFIRMED.
The Examiner's decision rejecting claims 7, 8, 19, and 20 under
35 U.S.C. § 103(a) as unpatentable over Jerde '394, Fomuto, and Beam is
AFFIRMED.
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Application 12/3 54,541
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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