Ex Parte Petersen

Board of Patent Appeals and Interferences

Jan 6, 2010

10556203 (B.P.A.I. Jan. 6, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte Hans Kurt Petersen

Appeal 2009-006618
Application 10/556,203
Technology Center 3700
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Decided: January 6, 2010
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Before JAMESON LEE, SALLY C. MEDLEY, and MICHAEL P.
TIERNEY, Administrative Patent Judges.

TIERNEY, Administrative Patent Judge.

DECISION ON APPEAL
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A. STATEMENT OF THE CASE
This is a decision on appeal by the real party in interest, Danfoss A/S
(Danfoss), under 35 U.S.C. § 134(a) from a final rejection of claims 15-24
and 27-28, the only claims on appeal. Claims 1-14 were cancelled prior to
this appeal. Claims 25-26 were objected to as having allowable subject
matter, but being dependent upon a rejected base claim (claim 15), prior to
this appeal. Danfoss requests reversal of the Examiner’s rejections of claims
15-24 and 27-28. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-
in-part.

Reference Relied on by the Examiner
Schnittker 3,943,975 Mar. 16, 1976

The Invention
Danfoss’ invention relates to a servo valve for opening and closing a
passage between a fluid intake and fluid outlet of a vacuum system.
(Substitute Spec. ¶ 0002; App. Br. 21, Claims App’x.) Claim 151 is
illustrative of the claimed invention and is reproduced below.
15. A servo valve for a vacuum system comprising:
a housing defining a control chamber and a valve passage
having a fluid intake part with a first pressure and a fluid outlet
part with a second pressure,
the parts being separated by a closure member mounted
in the housing for movement between an open and a closed
position under influence of a difference between a control
pressure of the control chamber and the first and second
pressures, the open position being a position wherein the valve

1 Danfoss should note that claim 15 has been indented pursuant to 37 CFR
§ 1.75(i).
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passage is open between the intake part and the outlet part and
the closed position being a position wherein the valve passage
is closed between the intake part and the outlet part,
the control chamber being in fluid communication with
the intake part via a constantly open passage and being in
controllable fluid communication with the outlet part via a pilot
passage, being closable by a pilot closure member which is
movable relative to the closure member between an open
position wherein the pilot passage is open and a closed position
wherein the pilot passage is closed to influence the control
pressure mainly by one of the first pressure and the second
pressure depending on the position of the pilot closure member,
and thereby for controlling movement of the closure member
between its closed and its open position,
the pilot closure member being fastened to the closure
member via an elastically deformable coupling,
wherein the pilot closure member is biased towards its
closed position by an elastically compressible member acting
between the housing and the pilot closure member.

(App. Br. 21 Claims App’x.)

The Rejections on Appeal
The Examiner rejected claims 15-24 and 27-28 under 35 U.S.C.
§ 102(b) as anticipated by Schnittker. Claims 15 and 28 are independent and
separately argued. Claims 16-24 and 27 depend directly or indirectly from
claim 15. Danfoss argues dependent claims 16, 18-22, and 24 collectively
with claim 15. Danfoss provides additional separate arguments for
dependent claims 17, 23, and 27.
B. ISSUE
1. Has Danfoss shown that the Examiner incorrectly found that
Schnittker teaches a pilot closure member (seal) that is fastened to a closure
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member via an elastically deformable coupling (spring)?
2. Has Danfoss shown that the Examiner incorrectly found that
Schnittker teaches a pilot closure member that is biased towards its closed
position by an elastically compressible member acting between a housing
and the pilot closure member?
3. Has Danfoss shown that the Examiner incorrectly found that
Schnittker teaches a constantly open passage formed between a sidewall of
the closure member and an inner sidewall of the cylinder cavity?

C. FINDINGS OF FACT
Schnittker
1. Schnittker teaches a solenoid operated pilot controlled valve.
(Schnittker 2:3-14)
2. Schnittker teaches a spring 58 (elastically deformable coupling) that
couples a valve assembly 61 and its diaphragm 11 (closure member) to a
rubber seal 26 (pilot closure member) to ensure that an upward force applied
to the rubber seal 26 in turn applies an upward force to the valve assembly
61 and its diaphragm 11 upon activation of a solenoid actuator 19. (Id. at
5:9-13, 6:13-19, Fig. 4)
3. Schnittker teaches that spring 58 couples the rubber seal 26 to the
valve assembly 61 and diaphragm 11 by transmitting an upward force
received from a spring retainer 53, located at the bottom of a valve pin 51, to
a spring clasp 55, located below the diaphragm 11. (Id. at 6:13-19, Fig. 4)
4. Schnittker spring 58 provides a space 59 that allows for a small degree
of initial independent movement between the rubber seal 26 and the valve
assembly 61 and diaphragm 11. (Id. at 5:51 to 6:14, Fig. 4)
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5. Schnittker teaches that the space 59 is taken up (i.e. the space is
eliminated) during activation of the solenoid 15. (Id. at 6:5-19)
6. Schnittker teaches another spring 50 (elastically compressible
member) that is connected between a plug 20 and a valve pin 51. (Id. at
5:48-51)
7. Schnittker plug 20 is formed on the top portion of a solenoid tube 18
that is directly mounted to the top of Schnittker’s valve casing 100. (Id. at
3:17-22, 43-46)
8. Schnittker’s plug 20 covers and supports spring 50. (Id. at 3:48-51,
Fig. 4)
9. Schnittker teaches that spring 50 contacts the valve pin 51 in a manner
that bias the rubber seal 26 (pilot closure mechanism) in a closed position.
(Id. at 3:54-58, 5:48-51, 6:5-10, Figure 4)

D. PRINCIPLES OF LAW
A claim is anticipated under 35 U.S.C. § 102 when each and every
element as set forth in the claim is found, either expressly or inherently
described in a single prior art reference. Verdegaal Bros. v. Union Oil Co.,
814 F.2d 628, 631 (Fed. Cir. 1987).
The recitation of a new intended use of an old product does not make
a claim to that old product patentable. In re Schreiber, 128 F.3d 1473, 1477
(Fed. Cir. 1997).

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E. ANALYSIS
The Examiner rejected claims 15-24 and 27-28 under 35 U.S.C.
§ 102(b) as anticipated by Schnittker. Claims 15 and 28 are independent and
separately argued. Claims 16-24 and 27 depend directly or indirectly from
claim 15. Danfoss argues dependent claims 16, 18-22, and 24 collectively
with claim 15. Danfoss provides additional separate arguments for
dependent claims 17, 23, and 27.

Claim Terminology
Danfoss’ claim terms utilize a number of different elements that have
relatively similar sounding descriptions. The Examiner found, and Danfoss
does not dispute the following:
1. Pilot Closure Member - can be a sealing member, e.g., rubber
seal 26 of Schnittker.
2. Closure Member - can be another sealing member, e.g., the
valve mechanism 61 and flexible
diaphragm 11 of Schnittker.
3 Elastically Deformable Coupling - can be a spring, e.g.,
spring 58 of Schnittker.
4. Elastically Compressible Member - can also be a spring, e.g.,
spring 50 of Schnittker.

Claim 15
The Examiner found that Schnittker taught a solenoid operated valve
that anticipated all claim limitations of claim 15. (Ans. 3) Danfoss disputes
whether Schnittker teaches two claim limitations:
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[a] pilot closure member being fastened to [a] closure
member via an elastically deformable coupling,
[and]
the pilot closure member [being] biased towards its
closed position by an elastically compressible member acting
between [a] housing and the pilot closure member.

(App. Br. 21, Claims App’x.)

Schnittker teaches a Pilot Closure Member Fastened to a
Closure Member via an Elastically Deformable Coupling

We initially focus on the first disputed claim limitation. The
Examiner found that Schnittker Figure 4 discloses a pilot closure member,
taught by rubber seal 26. (Ans. 3-5) The Examiner further found that
Schnittker Figure 4 discloses a closure member, taught by a valve assembly
61 and its diaphragm 11.2 (Id.) Additionally, the Examiner found that
Schnittker Figure 4 discloses an elastically deformable coupling that fastens
the pilot closure member to the closure member, taught by spring 58. (Id.)
Danfoss disagrees and contends that Schnittker fails to disclose a pilot

2 We note that the Examiner’s Answer appears to refer to elements 11, 61,
and 68 interchangeably as teaching the closure member. However, in the
context of the rejection it is clear that the Examiner was referring to the
valve assembly and its diaphragm as forming the closure member.
Specifically, Schnittker 61 refers to a valve assembly including the
diaphragm 11. (Schnittker 2:67 to 3:2) Further, Schnittker 68, as shown in
Figure 4, refers to an upper portion of the valve assembly 61 that is in direct
contact with diaphragm 11 and serves to transmit force from the pilot
closure member 26 to the diaphragm. (Schnittker Fig. 4, 4:29-32, 5:55-58
(stating 68 is similar to 32), 6:5-10)
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closure member fastened via direct and continuous contact to the closure
member via an elastically deformable coupling. (Reply Br. 5)

Danfoss Claim 15 Does Require Direct or Continuous
Mechanical Contact and Does Not Exclude Fasteners
that Push Away to Secure Two Components Together

Danfoss’ claim 15 requires a “servo valve” having a “pilot closure
member being fastened to [a] closure member via an elastically deformable
coupling.” (App. Br. 21 Claims App’x.) Danfoss contends that the term
“fastened” requires a direct and continuous contact. (Reply Br. 5)
We give claims their broadest reasonable interpretation consistent
with the specification. It is Appellant’s burden to precisely define their
claimed invention and to clearly set forth any special definitions for the
claim terms. In re Morris, 127 F.3d 1048, 1054-56 (Fed. Cir. 1997).
Danfoss does not direct our attention to a special definition in its
specification whereby the term “fastened” requires direct and continuous
contact. The plain and ordinary meaning of the term “fastened” does not
necessitate direct and continuous contact for two items to be “fastened”
together, e.g., a door is fastened to a door frame via hinges but is not
necessarily in direct and continuous contact with the door frame at all times.
Danfoss also contends that Schnittker’s spring 58 does not act to
fasten a closure member. Specifically, Danfoss states that spring 58, at
times, pushes away, rather than “fastens.” (App. Br. 15) As with the above,
Danfoss does not direct our attention to a special definition in its
specification for the term fastened. Further, Danfoss does not direct our
attention to credible evidence to demonstrate that the term “fastened” in this
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art excludes fastening by pushing away from interrelated objects.
We hold that the broadest reasonable interpretation of the claims does
not require direct or continuous contact between the elastically deformable
coupling and the pilot closure member or the closure member. Further, the
broadest reasonable interpretation of Danfoss’ claims does not exclude
fasteners that push interrelated objects away from each other to maintain a
fastening arrangement for closure members.

Schnittker Teaches a Pilot Closure Member being
Fastened to the Closure Member via an Elastically
Deformable Coupling

Schnittker teaches a spring 58 (elastically deformable coupling) that
couples a valve assembly 61 and its diaphragm 11 (closure member) to a
rubber seal 26 (pilot closure member) to ensure that an upward force applied
to the rubber seal 26, upon activation of a solenoid actuator 19, in turn
applies an upward force to the valve assembly 61 and diaphragm 11.
(Schnittker 5:9-13, 6:13-19, Fig. 4) Schnittker teaches that spring 58
couples the rubber seal 26 to the valve assembly 61 and diaphragm 11 by
transmitting an upward force received from a spring retainer 53, located at
the bottom of a valve pin 51, to a spring clasp 55, located below the
diaphragm 11. (Id. at 6:13-19, Fig. 4)
Schnittker spring 58 provides a space 59 that allows for a small degree
of initial independent movement between the rubber seal 26 and the valve
assembly 61 and diaphragm 11. (Id. at 5:51 to 6:14) Schnittker however
teaches that the space 59 is taken up (i.e. the space is eliminated) during
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activation of the solenoid 15, such that the spring 58 “exerts an upward force
on the diaphragm 11.” (Id. at 6:5-19)
As discussed above, Danfoss’ “fastened” contentions regarding direct
and continuous contact and “pushing away” are not commensurate in scope
with the broadest reasonable construction of its claims. Accordingly,
Danfoss has failed to demonstrate that the Examiner incorrectly determined
that Schnittker’s elastically deformable coupling (spring 58) fastens a pilot
closure member (seal) to a closure member (diaphragm).

Schnittker Discloses a Pilot Closure Member Biased towards
its Closed Position by an Elastically Compressible Member that
Acts between the Housing and the Pilot Closure Member

The Examiner found that Schnittker Figure 4 disclosed an elastically
compressible member, taught by spring 50. (Ans. 4-6) Specifically, the
Examiner found that spring 50 “acts between the housing (100, via element
20 which is permanently fixed to the housing 100) and the pilot closure
member 26.” (Id. at 4)
Danfoss contends that Schnittker fails to disclose a pilot closure
member that is biased towards its closed position by an elastically
compressible member acting between the housing and the pilot closure
member. (Reply Br. 4) Specifically, Danfoss contends that Schnittker's
plug 20 is not part of the housing, and is instead part of a solenoid 15 that is
mounted to the valve casing 100. (App. Br. 14) Danfoss further contends
that Schnittker’s spring 50 acts on the valve pin 51 rather than on the rubber
seal 26. (Reply Br. 4) Danfoss’ contentions are discussed in detail below.
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Danfoss Claim 15 Does Not Exclude a Plug from Being
Considered Part of the Housing and Does Not Require
Direct Contact between the Elastically Compressible
Member and Pilot Closure Member

Danfoss’ claims recite a “servo valve” wherein “the pilot closure
member is biased towards its closed position by an elastically compressible
member acting between the housing and the pilot closure member.” (App.
Br. 21, Claims App’x.) Danfoss contends that the claimed housing excludes
a plug that is part of a solenoid that is mounted on a valve casing. (App. Br.
14) Danfoss does not, however, direct our attention to a special definition in
its specification, whereby a plug that is part of a solenoid mounted on a
valve casing is excluded from being considered part of a housing. Since
Danfoss does not provide a special definition for the term housing, we give
the term its plain and ordinary meaning. The plain and ordinary meaning of
the term housing encompasses a component that covers and supports or
protects mechanical parts. Accordingly, the broadest reasonable
interpretation of Danfoss’ claimed housing encompasses a plug that is part
of a solenoid mounted on a valve casing, so long as the plug acts to cover
and support or protect another mechanical part.
Danfoss further contends that its claimed phrase acting between
requires direct contact between the elastically compressible member and
pilot closure member. (Reply Br. 4) Danfoss has not, however, directed our
attention to a portion of the specification that defines the phrase acting
between as requiring direct contact between the elastically compressible
member and pilot closure member. Accordingly, we give the claim phrase
acting between its plain and ordinary meaning. The plain and ordinary
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meaning of the term acting refers to the process of doing. The plain and
ordinary meaning of the term between refers to a space that separates two
objects. As such, the plain and ordinary meaning of the term acting between
requires doing something in the space that separates two objects (i.e. the
elastically compressible member does something in the space that separates
the housing and pilot closure member). Accordingly, the broadest
reasonable interpretation of Danfoss’ claims consistent with the specification
encompasses an elastically compressible member located in the space
separating the housing and pilot closure member that does something to bias
the pilot closure member in a closed position absent direct contact.

Schnittker Teaches a Pilot Closure Member Biased Towards its
Closed Position by an Elastically Compressible Member Acting
Between the Housing and the Pilot Closure Member

Schnittker’s spring 50 (elastically compressible member) contacts a
valve pin 51 in a manner that bias the rubber seal 26 (pilot closure
mechanism) in a closed position. (Schnittker 3:54-58, 5:48-51, 6:5-10,
Figure 4) Schnittker teaches that the opposite end of spring 50 is connected
to plug 20. (Id. at 5:48-51) Schnittker plug 20 forms the top portion of a
solenoid tube 18 that is directly mounted on top of Schnittker’s valve casing
100. (Id. at 3:17-22, 43-46) Schnittker’s plug 20 covers and supports spring
50. (Id. at 3:48-51, Fig. 4) As discussed above, the claimed housing
encompasses a plug that is part of a solenoid mounted on a valve casing, so
long as the plug acts to cover and support or protect a mechanical part.
Accordingly, since Schnittker’s plug 20 serves to cover and support spring
50 (a mechanical part) Danfoss has not shown that the Examiner incorrectly
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determined that the plug 20 forms part of Schnittker’s housing.
Schnittker’s valve pin 51 is located above the rubber seal 26 and
below the plug 20. (Id. at Fig. 4) Thus, Schnittker’s spring 50 is located in
the space that separates the plug 20 (housing) and rubber seal 26 (pilot
closure mechanism). As discussed above, we hold that the broadest
reasonable interpretation of Danfoss’ claims consistent with the specification
does not require direct contact between the elastically compressible member
and pilot closure member or housing. Thus, it is permissible that spring 50
contacts the valve pin 51 to bias the rubber seal 26, instead of directly
contacting the rubber seal 26 itself. Accordingly, Danfoss has not shown
that the Examiner incorrectly found that Schnittker’s teaches a pilot closure
member that is biased towards its closed position by an elastically
compressible member acting between the housing and the pilot closure
member.

Claim 17
Claim 17 depends from claim 15 and further requires that “the closure
member is biased towards the closed position by the elastically compressible
member.” (App. Br. 22, Claims App’x.)
Schnittker teaches that spring 50 exerts a force to secure rubber seal
26 against pilot valve member 68. (Schnittker 6:5-10, Fig. 4) Pilot valve
member 68 is taught as the top area of the valve assembly 61 and diaphragm
11 (closure member). (Id. at Fig. 4, 4:29-32, 5:55-58 (stating 68 is similar to
32)) Accordingly, Schnittker spring 50 exerts a downward force against
rubber seal 26 (pilot closure member) that is transmitted to valve assembly
61 and its diaphragm 11 (closure member). (See, Id.)
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Danfoss contends that Schnittker’s spring 50 provides “a relatively
insignificant” downward force in comparison to the downward force
provided by spring 38 (another spring) and further contends that spring 38
would not serve its intended function if spring 50 biased the closure member
downwards. (App. Br. 16-17) Danfoss however has not provided any
evidence to support its contention that spring 50 provides “a relatively
insignificant” force in comparison to spring 38. (App. Br. 24, Evidence
App’x. “None”) Accordingly, Danfoss has not shown that the Examiner
incorrectly found that Schnittker’s closure member is biased towards the
closed position by the elastically compressible member.

Claim 23
Claim 23 depends from claim 22 which depends from claim 15.
Claim 23 requires that the constantly open passage is formed between a
sidewall of the closure member and an inner sidewall of the cylinder cavity.
(App. Br. 22, Claims App’x.) The Examiner found that Schnittker taught a
constantly open passage 99 formed between a sidewall of the closure
member and an inner sidewall of the cylinder cavity 100. (Ans. 3) Danfoss
contends that “Schnittker’s opening 99 is not formed between a sidewall of a
closure member and an inner sidewall of a cylindrical cavity.” (Reply Br. 6,
emphasis in original)
Schnittker Figure 4 shows that the constantly open passage 99 is
formed in Schnittker’s diaphragm 11, which is part of valve member 61 and
forms the closure member. (Schnittker Fig. 4) Since passage 99 is formed
in the closure member itself, the passage cannot reasonably be interpreted as
being formed between a sidewall of the closure member and a sidewall of
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the cylindrical cavity. Accordingly, Danfoss has shown that Schnittker does
not teach a constantly open passage that is formed between a sidewall of the
closure member and an inner sidewall of the cylinder cavity.

Claim 27
Claim 27 depends from claim 22 which depends from claim 15.
Claim 27 requires that the “closure member comprises at least one recess
comprising at least one notch formed across the recess.” (App. Br. 23,
Claims App’x.) The Examiner found that Schnittker’s valve assembly 61,
which includes the diaphragm 11, teaches a recess comprising a notch.
(Ans. 4) Specifically, the Examiner found that the notch is taught by a
recess for attaching spring 38. (Ans. 4 and 6) Danfoss contends that the
portion cited by the Examiner “appears to be a simple annular groove” rather
than a notch. (App. Br. 18) Further, Danfoss contends that the claimed
notch is intended to provide an “outer passage [] between the control
chamber and the high pressure part of the valve passage” while the closure
member 4 is in its closed position, and “to enhance the ability of valve to be
evacuated completely” when the closure member 4 is in its open position.
(Id.)
A review of the record reveals that Schnittker’s valve assembly 61 has
at least an angular indentation. The plain and ordinary meaning of the term
“notch” is an angular or V-shaped cut, indentation or slit in an object.
Danfoss has not explicitly set-forth a special definition for the term “notch.”
Moreover, Danfoss’ contentions as to the purpose of the claimed notches are
not commensurate with the scope of the claim, because the claims fail to
recite the specific location of the notches on the closure member and do not
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limit the purpose of the notches. Accordingly, Danfoss has not shown that
the Examiner incorrectly found that Schnittker teaches a closure member
that comprises a recess comprising a notch formed across the recess.

Claim 28
Claim 28, like claim 15, is independent. Danfoss repeats the
contentions made with respect to claim 15 and additionally contends that
Schnittker fails to “show or disclose a vacuum system.” (App. Br. 18-19)
Danfoss does not however explain what difference in structure is required
for a “vacuum system.” (See, Id. at 19) Yet, the recitation of a new
intended use of an old product does not make a claim to that old product
patentable. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). As
Danfoss does not explain what additional structure is required by the
recitation of a “vacuum system” and has not explained how the structure of a
“vacuum system” is different from that taught by the prior art, we hold that
Danfoss has not shown that the Examiner incorrectly found that Schnittker
teaches all limitations of claim 28.

F. CONCLUSION
1. Danfoss has not shown that the Examiner incorrectly found that
Schnittker teaches a pilot closure member that is fastened to a closure
member via an elastically deformable coupling.
2. Danfoss has not shown that the Examiner incorrectly found that
Schnittker teaches a pilot closure member that is biased towards its closed
position by an elastically compressible member acting between a housing
and the pilot closure member.
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3. Danfoss has shown that the Examiner incorrectly found that
Schnittker teaches a constantly open passage formed between a sidewall of
the closure member and an inner sidewall of the cylinder cavity.

G. ORDER
The rejections of claims 15-22, 24, and 27-28 under 35 U.S.C. §
102(b) as anticipated by Schnittker are affirmed.
The rejection of claim 23 under 35 U.S.C. § 102(b) as anticipated by
Schnittker is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART
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