Ex Parte Thompson

Patent Trial and Appeal Board

Feb 12, 2018

13090837 (P.T.A.B. Feb. 12, 2018)

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.
13/090,837 04/20/2011 Kevin D. Thompson 55862US02 (U300718US2) 3338
87059 7590 02/14/2018
Cantor Colburn LLP - Carrier
20 Church Street, 22nd Floor
Hartford, CT 06103
EXAMINER
NAMAY, DANIEL ELLIOT
ART UNIT PAPER NUMBER
3749
NOTIFICATION DATE DELIVERY MODE
02/14/2018 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 KEVIN D. THOMPSON
Appeal 2017-005465
Application 13/090,837
Technology Center 3700
Before JOHN C. KERINS, EDWARD A. BROWN, and
LYNNE H. BROWNE, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Kevin D. Thompson (Appellant) appeals under 35 U.S.C. § 134(a)
from the Examiner’s final decision rejecting claims 1—20. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellant’s invention relates to controls for modulating gas valves of
a modulating gas furnace. Spec. para. 2.
Appeal 2017-005465
Application 13/090,837
Claim 1, 6, and 15 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A method for closing a modulating gas valve of a furnace,
the method comprising:
providing an adjustment screw coupled to a stepper motor
and a servo diaphragm such that movement of the servo
diaphragm controls movement of a regulator seat coupled to a
main diaphragm;
detecting an abnormal operating condition by a furnace
control that calls for turning the furnace off; and
sending a home command by the furnace control to the
stepper motor to move the stepper motor to a home position
which results in moving the regulator seat to a closed position,
the home command providing a redundant safety feature to when
the furnace is to be turned off.
THE REJECTIONS
The Examiner has rejected:
(i) claims 1, 6—10, and 15—19 under 35 U.S.C. § 103(a) as being
unpatentable over Thompson (US 5,860,411, issued Jan. 19, 1999) in view
of Kodera (JP 2006-125845 A, published May 10, 1994)1;
(ii) claims 2, 3, 11, 12, and 20 under 35 U.S.C. § 103(a) as being
unpatentable over Thompson in view of Kodera and Matthews (US
4,131,412, issued Dec. 26, 1978);
1 Reference herein to the text of Kodera will be to a machine-generated,
English-language translation of the original Japanese publication, of record
in the application on appeal.
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Appeal 2017-005465
Application 13/090,837
(iii) claims 4 and 13 under 35 U.S.C. § 103(a) as being unpatentable
over Thompson in view of Kodera and Ballard (US 4,951,870, issued Aug.
28, 1990); and
(iv) claims 5 and 14 under 35 U.S.C. § 103(a) as being unpatentable
over Thompson in view of Kodera and Challet (US 4,324,542, issued Apr.
13, 1982).
ANALYSIS
Claims 1, 6—10, and 15—19— Obviousness—Thompson/Kodera
Claim 1
The Examiner finds that Thompson discloses a method for closing a
modulating gas valve of a furnace, the method comprising providing an
adjustment screw 61 coupled to a servo diaphragm 64 such that movement
of the servo diaphragm 64 controls movement of a regulator seat (part of
main valve 44 controlled by regulator loop 4 7 and diaphragm 64) coupled to
a main diaphragm 48. Final Act. 2—3 (citing Thompson, Fig. 4; col. 4,11.
19—36). The Examiner further finds that Thompson discloses that the
adjustment screw is coupled to a stepper motor in the embodiment in
Thompson in which diaphragm 66, which is positioned between adjustment
screw 61 and diaphragm 64, is replaced with a stepper motor. Id. (citing
Thompson, col. 5,11. 51—54).
The Examiner relies on Kodera as teaching, in response to detecting
an abnormal operating condition via a sensor (thermostatic element 6), using
a control (control circuit 7) to drive an electromagnetic valve 9 to a closed
position. Id. at 3 (citing Kodera, paras. 11—12); see also Fig. 1. The
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Appeal 2017-005465
Application 13/090,837
Examiner concludes that it would have been obvious to use an abnormal
condition control as disclosed in Kodera in the furnace of Thompson, to
ensure stopping of fuel flow and the concomitant extinguishing of the flame
in the furnace upon detecting an abnormal condition. Id.
Appellant contends that if the diaphragm 66 of Thompson is replaced
by a stepper motor, which is the embodiment of Thompson relied on by the
Examiner, that embodiment only provides a single diaphragm 64 and a
stepper motor, whereas claim 1 requires the presence of a main diaphragm, a
servo diaphragm, and a stepper motor. Br. 5. Appellant maintains that
Thompson lacks an embodiment having two diaphragms and a stepper
motor. Id.
Appellant’s contentions are unpersuasive. As the Examiner advises,
even when diaphragm 66 of Thompson is replaced by a stepper motor,
Thompson still provides two diaphragms, namely servo diaphragm 64 and
main diaphragm 48, and a stepper motor. Ans. 8—9 (citing Thompson, Fig
4); see also Thompson, Fig. 5. We note that Figure 5 of Thompson shows
only diaphragms 64 and 66, however, Figure 4, which illustrates the entirety
of the valve, additionally shows main diaphragm 48.2
Appellant argues that Kodera makes no reference to using two
diaphragms and a stepper motor as recited in claim 1. Br. 6. Appellant
contends that Kodera simply makes a broad reference to a solenoid
2 Figure 4 does not include reference numerals 64 and 66 to identify the two
diaphragms in the regulator section shown in Figure 5, these two diaphragms
appear in the slightly more schematic view of the regulator section in Figure
4, and are in addition to main diaphragm 48.
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Appeal 2017-005465
Application 13/090,837
controlled valve 9 to cut off a gas supply to a burner 1 and that there is no
discussion of how the solenoid valve operates, or use of “sending a home
command by the furnace control to the stepper motor to move the stepper
motor to a home position which results in moving the regulator seat to a
closed position” as recited in claim 1. Br. 6. Appellant argues that instead,
Kodera simply teaches that a solenoid could be connected to a valve stem to
open and close the valve stem. Id. According to Appellant, even if Kodera
is combined with Thompson, the combination would not result in the
claimed invention. Id.
Appellant’s contentions do not address the rejection presented by the
Examiner, as Kodera is not specifically relied upon as teaching using two
diaphragms and a stepper motor, nor the specific steps of sending a
command to a stepper motor to close a regulator seat. “Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references [].” In
re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
As the Examiner explains, Kodera discloses the use of control circuit
7 to drive electromagnetic valve 9 to a closed, or a “home” position upon
sensing an abnormal condition. Ans. 9 (citing Kodera, paras. 11—12; Fig. 1).
The Examiner concludes that it would have been obvious to employ a
similar control for the stepper motor of Thompson, which is relied on as
disclosing a gas valve having two diaphragms a stepper motor, and a
regulator seat that can be closed by operation of the stepper motor. See id.
Appellant’s argument directed to connecting a solenoid to a valve
stem to open and close the valve stem appears to be in the vein of arguing
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Appeal 2017-005465
Application 13/090,837
that a bodily incorporation into Thompson of one or more specific teachings
in Kodera, would require further modification in order to achieve the method
set forth in claim 1. The test for obviousness is not, however, whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference. “It is well-established that a
determination of obviousness based on the teachings from multiple
references does not require an actual, physical substitution of elements.” In
re Keller 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference. . . .”). More significantly, the
rejection as articulated by the Examiner does not call for the bodily
incorporation of any specific teaching found in Kodera.
Accordingly, none of Appellant’s arguments apprise us of Examiner
error in rejecting claim 1. The rejection is sustained.
Claims 6—10
Appellant relies essentially on the same arguments presented for claim
1, in arguing the patentability of claim 6. Br. 6—8. Accordingly, we sustain
the rejection of claim 6, for the same reasons as for claim 1. Claims 7—10
are not separately argued, and those claims fall with claim 6.
Claims 15—19
Appellant relies essentially on the same arguments presented for claim
1, in arguing the patentability of claim 15. Id. at 8—10. Accordingly, we
sustain the rejection of claim 15, for the same reasons as for claim 1. Claims
16—19 are not separately argued, and fall with claim 15.
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Appeal 2017-005465
Application 13/090,837
Claims 2, 3, 11, 12, and 20—Obviousness—Thompson/Kodera/Matthews
Claims 4 and 13—Obviousness—Thompson/Kodera/Ballard
Claims 5 and 14—Obviousness—Thompson/Koder a/Challet
Appellant does not provide any substantive arguments for claims 2—5,
11—14 and 20, and relies on the arguments presented for claims 1, 6 and 15.
See id. at 10. For the reasons discussed above with respect to claims 1, 6
and 15, we do not find the combinations of Thompson, Kodera, and any of
Matthews, Ballard, and Challet, to be deficient.
Accordingly, the rejections of claims 2—5, 11—14, and 20 are
sustained.
DECISION
The Examiner’s decision to reject claims 1—20 under 35 U.S.C.
§ 103(a) is affirmed.
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
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