Ex Parte Towfighi

Patent Trial and Appeal Board

Apr 10, 2013

11510243 (P.T.A.B. Apr. 10, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/510,243 08/24/2006 Kaveh Towfighi 207,606 6536
38137 7590 04/11/2013
ABELMAN, FRAYNE & SCHWAB
666 THIRD AVENUE, 10TH FLOOR
NEW YORK, NY 10017
EXAMINER
WEEKS, GLORIA R
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
04/11/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KAVEH TOWFIGHI
____________________

Appeal 2011-003286
Application 11/510,243
Technology Center 3700
____________________

Before JAMES P. CALVE, SCOTT A. DANIELS, and
JEREMY M. PLENZLER, Administrative Patent Judges.

PLENZLER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-003286
Application 11/510,243

2
STATEMENT OF CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 2-8 and 10. Claims 1 and 9 are cancelled. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

CLAIMED SUBJECT MATTER
Claims 10 is the sole independent claim and is reproduced below:
10. A compressed air driven setting tool for driving in
fastening elements, comprising a guide (12); a drive-in piston
(13) displaceable in the guide by a compressed air; a chamber
(17) adjoining the guide (12) and having an opening (18)
connecting the chamber (17) with the guide (12) and closed by
the piston (13) in an initial position of the setting tool, the
chamber (17) serving as a storage chamber for the compressed
air in the initial position of the setting tool for storing the
compressed air and serving as an expansion chamber in an
operational positions of the setting tool and the piston (13); a
compression device (30) for producing the compressed air and
for feeding the compressed air into the chamber (17) in the
initial position of the setting tool; at least one check valve (44,
54, 142) arranged between the compression device (30) and the
chamber (17) for enabling flow of the compressed air from the
compression device (30) into the chamber (17); and a piston
retaining device (47) for retaining the drive-in piston (13) in the
initial position (80) thereof against the pressure of the
compressed air in the chamber (17).

Appeal 2011-003286
Application 11/510,243

3
REJECTIONS
1. Claims 2, 3, 6, 7, and 10 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Rosenbaum (US 6,666,366 B2; iss. Dec. 23, 2003); and
2. Claims 4, 5, and 8 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rosenbaum and Gschwend (US 5,213,247; iss. May 25,
1993).

OPINION
Claim 10 is directed to a compressed air driven setting tool for driving
in fastening elements and includes “at least one check valve (44, 54, 142)
arranged between the compression device (30) and the chamber (17) for
enabling flow of the compressed air from the compression device (30) into
the chamber (17).” The Examiner finds that Rosenbaum discloses each of
the features recited in claim 10 including the check valve. Ans. 3-4.
Specifically, the Examiner indicates that elements 3b, 25b, and 32 from
Rosenbaum disclose a check valve. Ans. 4. The Examiner explains that
applying the broadest reasonable interpretation, “a valve is interpreted as any
device for halting or controlling the flow of a liquid, gas, or other material
through a passage, pipe, inlet, outlet, etc.” Ans. 6-7.
Appellant explains that “[t]he Examiner has cited a general definition
of the term ‘valve’ from www.dictionary.com,” not a check valve as
claimed, and “the very same dictionary source defines a ‘check valve’ as ‘a
valve permitting liquids or gases to flow in one direction only’
(http://dictionary.reference.comlbrowse/check+valve).” App. Br. 11. We
agree with Appellant that the plain meaning of “check valve” is a valve
Appeal 2011-003286
Application 11/510,243

4
permitting flow in one direction only, not any device for controlling flow of
a liquid as indicated by the Examiner.
The Examiner responds by asserting that the valve (3b, 25b, 32) of
Rosenbaum only allows gas flow in a single direction, which is out of the
chamber. Ans. 7 (citing Rosenbaum, col. 10, ll. 37-40). We disagree.
Inlet/outlet valves 34 in Rosenbaum correspond to the elements (3b, 25b, 32)
considered the check valve by the Examiner. See Rosenbaum, figs. 1-6.
Column 10, lines 37-40 of Rosenbaum (relied on by the Examiner) clearly
states that “flue gases are expelled through the inlet/outlet valves 34 which
also admit fresh air into the combustion chamber 1.” Thus, the inlet/outlet
valves 34 allow flow both into and out of the combustion chamber 1 and,
therefore, cannot reasonably be considered check valves (i.e., valves
allowing flow in a single direction).
For these reasons, we do not sustain the rejection of claims 2, 3, 6, 7,
and 10. Claims 4, 5, and 8 depend from claim 10 and the stated basis for the
rejection of claims 4, 5, and 8 does not cure the deficiencies in the rejection
of claim 10. Accordingly, we also do not sustain the rejection of claims 4, 5,
and 8.

DECISION
We REVERSE the Examiner’s decision to reject claims 2-8 and 10.

REVERSED

mls