Ex Parte Patterson et al

Patent Trial and Appeal Board

Aug 10, 2016

12357275 (P.T.A.B. Aug. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/357,275 0112112009
34431 7590 08/12/2016
HANLEY, FLIGHT & ZIMMERMAN, LLC
150 S. WACKER DRIVE
SUITE 2200
CHICAGO, IL 60606
FIRST NAMED INVENTOR
Daryll Duane Patterson
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.
20040/82-12136 1363
EXAMINER
PAQUETTE, IAN G
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
08/12/2016 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):
mailroom@hfzlaw.com
jflight@hfzlaw.com
mhanley@hfzlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DARYLL DUANE PATTERSON and ERIC JACOB BURGETT 1
Appeal2014-003017
Application 12/357,275
Technology Center 3700
Before CHARLES N. GREENHUT, THOMAS F. SMEGAL and
MARK A. GEIER, Administrative Patent Judges.
GEIER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner's rejection of claims 1-8 and 10-22.2 Appeal Br. 4. We have
jurisdiction under 35 U.S.C. § 6(b ).
1 According to Appellants, the real party in interest is T escom Corporation.
Appeal Br. 2.
2 Appellants cancelled claim 9 via an amendment after the Final Action and
that claim is not before us on this Appeal. Appeal Br. 5; Adv. Act. 2 (mailed
Aug. 9, 2013).
Appeal2014-003017
Application 12/357,275
We AFFIRM-IN-PART and enter NEW GROUNDS OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b ).
THE CLAIMED SUBJECT MATTER
The claimed subject matter "relates generally to pressure regulators
and, more particularly, to temperature-controlled pressure regulators." Spec.
i-f 1. Claim 1 is representative and recites:
1. A temperature-controlled pressure regulator, comprising:
a regulator body having a process fluid inlet fluidly
coupled to a process fluid outlet via a first passageway and a heat
transfer medium inlet to be fluidly coupled to a heat transfer
medium outlet via a second passageway, the heat transfer
medium inlet being integrally formed with the regulator body;
and
a heat chamber body removably coupled to the regulator
body to form a chamber between the heat transfer medium inlet
and the heat transfer medium outlet, at least a portion of the first
passageway disposed within the chamber; the chamber to receive
a heat transfer medium via the heat transfer medium inlet to
provide heat to the process fluid as the process fluid flows
through the chamber via the first passageway, the first
passageway to separate the process fluid from the heat transfer
medium, the heat transfer medium outlet being integrally formed
in the heat chamber body.
THE REJECTIONS ON APPEAL
The Examiner rejected claims 1-8, 10 and 12-22 as unpatentable
under 35 U.S.C. § 103(a) over Appellants' admitted prior art ("AAPA") and
Gotthelf (US 5,443,083; iss. Aug. 22, 1995). 3
3 Although the Examiner identifies the rejection as applicable to claim 9,
Appellants have cancelled that claim. See supra note 2. Accordingly, we
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The Examiner rejected claim 11 as unpatentable under 35 U.S.C.
§ 103(a) over AAPA, Gotthelf, and Joshua (US 4,966,695; iss. Oct. 30,
1990).
ANALYSIS
Claim 1
The Examiner finds that the "AAP A lacks the heat transfer medium
inlet being ... integrally formed with the regulator body" and relies upon
Gotthelf for disclosing such an inlet. Final Act. 3 (citing Gotthelf, Fig. 2
(reference numerals 14 (inlet) and 12 (regulator body))). The Examiner
states that one of skill in the art would have been motivated to modify the
AAP A to include Gotthelf' s integral inlet "so that the heat transfer medium
inlet and process fluid inlet are proximal and on the same plane to facilitate
attachment of the heat transfer medium and process fluid." Id. at 3--4.
Appeiiants argue that the Examiner's reasoning to make the heat
transfer medium inlet integral is not well-grounded. Appeal Br. 22. In
particular, Appellants argue that "apart from [Appellants'] disclosed
embodiments, there is no evidence on record to support the contention that
making the heat transfer medium inlet integral results in locating the heat
transfer inlet proximal and on the same plane as the [E]xaminer suggests."
Id. We agree.
In particular, we determine the Examiner's reason that one of skill in
the art would have combined the AAP A with Gotthelf, is lacking in critical
view the inclusion of claim 9 as a typographical error and treat the rejection
as being application to claims 1-8, 10, and 12-22.
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Application 12/357,275
respects. The Examiner has not established why the modified regulator
"results in locating the heat transfer inlet proximal and on the same plane [as
the process fluid inlet]." Id. The Examiner states that Gotthelf "teaches
providing the heat transfer inlet 14 on the same plane and proximal to the
process fluid inlet 18." Ans. 13. However, the Examiner does not explain
why Gotthelf teaches such a configuration or why Gotthelf teaches any
benefit or desirability of such a configuration. From our review, it appears
that, at best, Gotthelf teaches placing the heat transfer inlet 14 and process
fluid inlet 18 in the same horizontal plane. See Gotthelf, Figs. 2, 3. We do
not see, however, how this is relevant to the Examiner's proposed
modification of the AAP A, which we understand would place the heat
transfer medium inlet and process fluid inlet in the same vertical plane. See
Final Act. 3--4; see also Spec., Fig. 1 (AAP A).
For the foregoing reasons, we do not sustain the Examiner's rejection
of ciaim 1. As the Examiner's finding with respect to the ciaims that depend
from claim 1 do not cure the above-identified deficiencies, we also do not
sustain the Examiner's rejections of claims 2-8.
Claim 10
Claim 10 does not recite a heat transfer medium inlet that must be
integrally formed with the regulator body. Claim 10 does recite "a steam
outlet port integrally formed with the heat chamber body." Appellants
contend that the Examiner's rejection of claim 10 is fatally deficient with
respect to the recited steam outlet port.
The Examiner makes alternative findings with respect to the claimed
steam outlet port. Final Act. 5. First, the Examiner finds that the AAPA
discloses "the steam outlet port is integrally formed in the heat chamber
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body when the steam outlet port is interpreted as port (A) [(citing the
Examiner's annotated Fig. 1)] since it is a hole formed in the heat chamber
body (122) and the steam flows out through said hole/port (A)." Id. at 5-6.
Second, the Examiner finds that if one looks only at heat transfer medium
outlet 128 of the AAPA as corresponding to the claimed steam outlet port,
the AAP A does not disclose a steam outlet port integrally formed in the heat
chamber body. Final Act. 6. In the alternative rationale, the Examiner
explains that one of ordinary skill in the art would have made the outlet
integral with the heat chamber body "since it has been held that forming in
one piece an article which has formerly been formed in two pieces and put
together involves only routine skill in the art." Id. (citing Howard v. Detroit
Stove Works, 150 U.S. 164 (1893)).
Appellants first argue that the Examiner's port A is not the steam
outlet port, because such a view would construe steam outlet port too
broadiy. Appeai Br. 23. 4 In support of the finding, the Examiner asserts that
port A is a steam outlet port because "the common definition of an outlet is
an opening through [which] a fluid may flow." Ans. 10. While we agree
with the Examiner's statement, the Examiner does not explain in the context
of the AAP A device why port A is an outlet that one of skill in the art would
understand as the outlet through which the steam would flow in the AAP A.
4 Appellants' arguments refer to the "heat transfer medium outlet." Appeal
Br. 23. That limitation is not in claim 10, but "steam outlet port" is in claim
10. Moreover, the Specification states that a common heat transfer medium
is steam. See, e.g., Spec. i-f 13 (stating that the "temperature-controlled
pressure regulators described herein employ a heat transfer medium (e.g.,
steam)"). Accordingly, we understand Appellants' argument to be that the
Examiner's view of steam outlet port is overly broad. See Appeal Br. 23.
5
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As argued by the Appellants in the AAP A, the port having reference number
128 is the element through which the steam flows out of the described
regulator. Appeal Br. 23; see also Spec., Fig. 1, i-f 17. Accordingly, we
agree with Appellants that the Examiner's identification of port A as the
steam outlet port is overly broad in view of the Specification.
Appellants also argue that the Examiner's modification of AAPA to
have an integral outlet "would render the regulator (100) of the AAP A
unsatisfactory for its intended purpose." Appeal Br. 17. However, this
argument is premised on the Examiner's view of port A as the steam outlet
port. See id. at 23-24. In view of our conclusion that port A is not
reasonably a steam outlet port, Appellants' argument is moot.
We tum to the Examiner's alternate rationale, considering AAP A
outlet port 128 as the recited outlet port, and concluding that it would have
been obvious to integrally form that port. See Final Act. 6. Appellants
argue that the Examiner has not identified a reason why one of skiU in the art
would have modified the AAP A to include an integral heat transfer medium
outlet. 5 Appeal Br. 24. In particular, Appellants argue that the Examiner's
finding that "'forming in one piece an article which has formerly been
formed in two pieces and put together involves only routine skill in the art'
does not constitute a motivation to do so." Id. Appellants also contend the
Examiner's reliance on Howard v. Detroit Stove Works, 150 U.S. 164 (1983)
"is legally flawed because the official action failed to provide evidence to
5 As stated supra note 3, we understand Appellants' argument to be
regarding the steam outlet port that claim 10 recites.
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support that one of ordinary skill in the art would make heat transfer medium
outlet (128) integral with the regulator body (102)." Id. (emphasis omitted).
Appellants' arguments ignore the Examiner's findings. In particular,
the Examiner finds that "forming the outlet (128) integrally would eliminate
the need for welding." Final Act. 11. The Examiner elaborates on this in
the Answer, finding "the assembly is made less complex by making the
outlet integral with the body 122, and therefore eliminating the need for
welding is a motivation to make the outlet 128 integral to the body 122 since
it also eliminates the costs and time associated with welding and simplifies
assembly." Ans. 11-12. In our view, the foregoing provides a sufficient
rationale explaining why one of skill in the art would have been motivated to
make the outlet integral to the body.
Finally, Appellants contend that one of skill in the art would not have
made the Examiner's proposed modification because it would have required
a compiete redesign of the AAP A. Appeai Br. 24. In particuiar, Appeiiants
argue that:
To make the heat transfer medium outlet (128) integral would
require an extensive redesign of the AAP A regulator (100)
resulting in the thin-walled stamped heat chamber body (122)
having to be made from a substantially thicker material (and, thus
could not be formed by stamping) to support a threaded
connection at the outlet (128) and/or providing threads or
otherwise modifying the inner top portion of the heat chamber
body (122) to enable coupling of the heat chamber body (122) to
be coupled to the regulator body (102).
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Appeal Br. 24. 6 The Examiner explains that "forming the outlet (128)
integrally would eliminate the need for welding, and wall thickness does not
come into play." Final Act. 11. The Examiner further notes that Appellants
do not provide any evidence that one would have had to increase the wall
thickness for any reason, including any need to create a threaded connection.
Id. Finally, the Examiner explains that the claims do not require a threaded
connection. Id.
We agree with the Examiner that the Appellants have not established
that making the outlet 128 integral with the heat chamber body would
require a redesign of the AAP A regulator. As a starting point, we agree with
the Examiner that Appellants have not presented any evidence tending to
show a redesign of AAPA would be required in the Examiner's
modification. See Final Act. 11; see also Ans. 11-12. Appellants offer
primarily attorney argument, with some references to the AAP A as
purported support. See, e.g., Reply Br. 3-5 (citing Spec. iii! 19-'21). Such
attorney argument does not apprise us of error in the Examiner's conclusion
of obviousness. Moreover, for the reasons set forth by the Examiner in the
Final Action and the Answer, it is not even clear that Appellants' attorney
argument tends to show that a redesign of the AAP A would have been
necessary. See Final Act. 11; Ans. 11-12.
Moreover, even assuming a redesign would have been necessary, the
Appellants have not apprised us as to why such a redesign would have
prevented a skilled artisan from making the Examiner's proposed
6 As stated supra note 3, we understand Appellants' argument to be
regarding the steam outlet port that claim 10 recites.
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modification. In particular, we note that Appellants do not argue that such
modifications would have been beyond the skill in the art or not readily
apparent to one of skill in the art. Indeed, Appellants only contention is that
a redesign would have been necessary.
For the foregoing reasons, we sustain the Examiner's rejection of
claim 10. Appellants do not separately argue claims 11 or 14--17 which
depend from claim 10. Accordingly, we also sustain the Examiner's
rejections of claims 11 and 14--17.
Claim 12
Claim 12 depends from claim 10 and further requires that "the steam
inlet port receives pressurized steam between about 250 psi and 100 psi."
Notwithstanding our new ground of rejection stated infra, for purposes of
our analysis of the Examiner's Section 103 rejection, we assume that the
claim requires that the inlet port is capable of receiving steam having the
recited pressures.
The Examiner finds that the AAP A does not disclose the recited range
but that:
It would have been obvious to one having ordinary skill in the art
at the time the invention was made to input the steam into the
pressure regulator at a desired pressure and temperature range to
yield the predictable result of receiving the desired pressure and
temperature range in the process fluid.
Final Act. 6. In the Answer, the Examiner further finds that
since the term "about" is a broadening term and it is reasonable
to interpret that the steam placed into AAP A which cannot
exceed about 250 psi can be within the range of about 250 psi
and 1000 psi. Further, it would have been obvious to one having
ordinary skill in the art to select the proper material and wall
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Application 12/357,275
thickness to deal with the steam pressure for the desired
application.
Ans. 14.
Appellants argue that
the official action has failed to articulate a rationale for why one
of ordinary skill in the art would modify the apparatus of the
AAP A in the manner suggested in the official action and, thus,
the official action fails to make a proper prima facie rejection of
claim 12. On the contrary, one of ordinary skill in the art would
not be motivated to input steam into the regulator of the AAP A
at pressures greater than 250 psi because the regulator of the
AAPA would not be able to withstand steam pressures greater
than about 250 psi due to the limited wall thickness of a wall
(130).
Appeal Br. 30-31 (citing Spec. i-fi-f 19--21). We agree with Appellants. At
best, the Examiner's findings are that one of skill in the art could have
modified the AAP A to reach the required result. The Examiner does not
explain why one of skill in the art would have done so. For that reason, we
do not sustain the Examiner's rejection of claim 12.
Claim 13
Claim 13 depends from claim 10 and further requires that "the heat
chamber receives steam having a temperature between about 350°F and
1,000°F." Notwithstanding our new ground of rejection stated infra, for
purposes of our analysis of the Examiner's Section 103 rejection, we assume
that the claim requires that the heat chamber is capable of receiving steam
having the recited pressures. As with claim 12, in the Final Action, the
Examiner finds the claimed range would have been obvious because it
would have been obvious "to input the steam into the pressure regulator at a
desired pressure and temperature range to yield the predictable result of
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receiving the desired pressure and temperature range in the process fluid."
Final Act. 6. In addition, the Examiner finds that "because Applicants allege
the walls of AAP A would not be able to withstand steam in excess of about
350°F" and because "the term 'about' is a broadening term and it is
reasonable to interpret that the steam placed into AAP A which is about
350°F is also about 500°F." Ans. 13. The Examiner further finds that "it
would have been obvious to one having ordinary skill in the art to select the
proper material and wall thickness to deal with the steam temperature for the
desired application." Id.
Appellants argue that:
the official action has failed to articulate a rationale for why one
of ordinary skill in the art would modify the apparatus of the
AAP A in the manner suggested in the official action and, thus,
the official action fails to make a proper prima facie rejection of
claim 13. On the contrary, one of ordinary skill in the art would
not be motivated to input steam into the regulator of the AAP A
having temperatures greater than 500°F because the reguiator of
the AAPA would not be able to withstand steam temperatures
greater than about 3 50°F due to wall thickness of a wall (130).
(Specification, i-fi-1 [0019]-[0021 ]). Therefore, the examiner's
conclusion of yielding predictable results contradicts the
teachings of the AAP A.
Appeal Br. 31. Again, we agree with Appellants. At best, the Examiner's
findings are that one of skill in the art could have modified the AAP A to
reach the required result. The Examiner does not explain why one of skill in
the art would have done so. For that reason, we do not sustain the
Examiner's rejection of claim 13.
Claim 18
Similarly to claim 1, the Examiner determines that:
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Application 12/357,275
it would have been obvious to one having ordinary skill in the art
at the time the invention was made to make the heat transfer
medium inlet of AAPA integral with the regulator body, as
taught by Gotthelf, so that the heat transfer medium inlet and
process fluid inlet are proximal and on the same plane to
facilitate attachment of the heat transfer medium and process
fluid.
Final Act. 8. For the reasons stated supra with respect to claim 1, we also
find the Examiner's determinations regarding claim 18 to be unsupported by
the record. The Examiner's additional findings with respect to claim 18 do
not cure the deficiencies we have identified. Moreover, the Examiner's
findings with respect to claims 19--22 which depend, directly or indirectly,
from claim 18 do not cure the deficiencies we have identified with respect to
claim 18.
For the foregoing reasons, we do not sustain the Examiner's rejections
of claims 18-22.
NEW GROUNDS OF REJECTION
Dependent claims 5, 12, and 13 include limitations that lack sufficient
clarity under 35 U.S.C. § 112, i-f 2. Claim 5 depends from claim 1 and recites
"wherein the temperature of the steam in the chamber is between about 500°F
and 1000°F." Claims 12 and 13 depend from claim 10 and recite "wherein
the steam inlet port receives pressurized steam between about 250 psi and
1000 psi" and "wherein the heat chamber receives steam having a temperature
between about 350°F and 1,000°F," respectively. Regarding claim 5, there is
no antecedent basis for "the steam in the chamber." Although steam, a "heat
transfer medium," is used to define, in functional terms, aspects of the claimed
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pressure regulator, parent claims 1 and 3 are directed to the regulator itself,
not the regulator combined with the heat transfer medium or steam. It is
unclear if claim 5 would be infringed with the regulator itself, or only when
steam within the specified temperature range is present in the regulator
chamber. Regarding claims 12 and 13, the limitations above are drafted in a
manner that appears to require manipulative steps be performed on the
claimed apparatus. See, e.g., IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430
F.3d 1377, 1384 (Fed. Cir. 2005) (a claim to "both a system and the method
for using that system ... does not apprise a person of ordinary skill in the art
of its scope, and it is invalid" under [35 U.S.C. § 112(b )]). This is in contrast
to a limitation that is drafted in functional language, merely specifying that a
claimed apparatus may perform a certain function. See, e.g., HTC Corp. v.
IPCOM GMBH & CO., KG, 677 F.3d. 1270, 1277 (Fed. Cir. 2012) (holding
a claim is not indefinite because it includes functional language specifying an
environment in which the claimed apparatus may operate). In this respect, the
limitations render these claims indefinite in that one of skill in the art cannot
determine the scope of the claim; for example, it is unclear whether the claim
is drawn to the apparatus only or whether the apparatus must contain or
receive steam having the recited properties in order to be infringed.
Accordingly, we reject the claims 5, 12, and 13 as indefinite under 35 U.S.C.
§ 112, ii 2.
DECISION
We REVERSE the Examiner's rejections of claims 1-8, 12, 13, and
18-22 under 35 U.S.C. § 103(a).
We AFFIRM the Examiner's rejections of claims 10, 11, and 14--17
under 35 U.S.C. § 103(a).
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We enter NEW GROUNDS OF REJECTION of claims 5, 12, and 13
under 35 U.S.C. § 112, i-f 2.
Further, 37 C.F.R. § 41.50(b) provides that, "[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 Appellants must, WITHIN
TWO MONTHS, exercise one of the following options:
( 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 ....
Further guidance on responding to a new ground of rejection can be
found in MPEP § 1214.01.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R § 1.136(a)(l)(iv).
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)
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