Ex Parte Trentadue

Patent Trial and Appeal Board

Mar 31, 2017

12985668 (P.T.A.B. Mar. 31, 2017)

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.
12/985,668 01/06/2011 Frederick Trentadue SMI00861P02200U S 4784
32116 7590 04/04/2017
WOOD, PHILLIPS, KATZ, CLARK & MORTIMER
500 W. MADISON STREET
SUITE 1130
CHICAGO, IL 60661
EXAMINER
JELLETT, MATTHEW WILLIAM
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
04/04/2017 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):
docketing @ woodphillips .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FREDERICK TRENT ADUE1
Appeal 2014-009751
Application 12/985,668
Technology Center 3700
Before DANIEL S. SONG, GEORGE R. HOSKINS and
AMANDA F. WIEKER, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
1 The real party in interest is Smith & Loveless, Inc. (Appeal Brief
(hereinafter “App. Br.”) 1).
Appeal 2014-009751
Application 12/985,668
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
final rejection of claims 1—4, 6—15, and 17—22 in the present application
(App. Br. 17—22, Claims App.). Claims 5 and 16 have been canceled {id. at
18, 21). We have jurisdiction under 35 U.S.C. §§ 6(b) and 134.
We AFFIRM.
The claimed invention is directed to a check valve for a pipe section
(Title; Abstract). Independent claim 1, illustrative of the subject matter,
reads as follows (App. Br. 17, Claims App., emphasis added):
1. A check valve locatable between adjacent ends of two
pipe segments of a fluid line, comprising:
a valve body [20] having opposite faces, one of said faces
being securable to one pipe segment end and the other of said
faces being securable to the other pipe segment end, said body
including
a valve opening [80] through one face substantially
coaxial with the interior of said pipe segments and
including a valve seat [82] around said opening, said
valve seat facing opposite said one face, and
a wall [30] extending between said faces defining a
part of the circumference of said fluid line between said
pipe segment ends with a radial opening [34] in the
other part of the fluid line circumference having no wall,
a valve housing [50] removably securable over the radial
opening [34] of said valve body whereby said valve body wall
and said valve housing together define a closed circumference
of said fluid line between said valve body opposite faces; and
a valve flapper [86] secured to said valve housing [50]
and pivotally biased relative to said valve housing toward
closing against said valve seat [82];
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Application 12/985,668
whereby said valve flapper [86] is removable with said
valve housing [50] through said valve body radial opening [34]
when said valve housing is removed from said valve body [20].
The Examiner rejects the various claims as unpatentable under 35
U.S.C. § 103(a) as follows:
1. Claims 1—3, 7—13, and 17—222 as obvious over Matthews.3
(Ans. 2-9).
2. Claims 4 and 14 as obvious over the combination of Matthews
and Sumner.4 (Ans. 9).
3. Claims 6 and 15 as obvious over the combination of Matthews
andBrestel.5 (Ans. 10).
ANALYSIS
Only those arguments actually made by the Appellant have been
considered in this decision. Arguments that the Appellant could have made
but chose not to make have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(l)(iv). The Appellant groups and argues
the rejected claims in four groups as follows (App. Br. 4):
Group 1: Independent claims 1 and 11;
Group 2: Dependent claims 2 and 12;
2 We note that in the Final Office Action and the Answer, claims 21 and 22
are encompassed in this ground of rejection even though these claims are not
identified in the heading of the rejection (see Final Act. 9—10; Ans. 2, 8—9).
3 Patent No. US 6,679,290 B2 issued January 20, 2004.
4 Patent No. US 6,533,243 B1 issued March 18, 2003.
5 Patent No. US 4,519,579 issued May 28, 1985.
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Group 3: Dependent claims 21 and 22; and
Group 4: Dependent claims 4 and 14.
As to the remaining claims on appeal, the Appellant relies on their
dependency for patentability {id.). Accordingly, these remaining claims
stand or fall with independent claims 1 and 11, and any intervening claims.
Group 1
As to claims 1 and 11, the Examiner finds that Matthews discloses the
claimed invention, including:
a valve housing (20 Fig 2, 63 Fig 9) removably securable over
the radial opening of said valve body . . .; and a valve flapper
(64 Fig 7) secured to said valve housing (in as much as 64 is
connected to 66 Fig 9, which is connected to bottom layer of
housing 63) . . .; whereby said valve flapper is removable with
said valve housing through said valve body radial opening (19)
when said valve housing is removed from said valve body.
(Ans. 6).
In this regard, the Examiner finds that:
the flapper valve 64 is connected to a bracket 75 which has an
upper flange portion connected to an intermediate member 1016
(Appellant ]s gasket) . . . and the intermediate member or
“gasket” is connected to the valve housing 63 where the valve
housing “cover” 63, the intermediate member 1016[6] and the
bracket and flapper valve are all connected together by the bolts
1016. This connection “secures” the flapper valve 64 to the
housing cover 63 under the broadest reasonable interpretation
of the claims.”
{Id. at 11).
6 Reference numeral is in an annotation of Figure 7 of Matthews provided by
the Examiner in Final Office Action, pg. 5.
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Application 12/985,668
The Appellant disagrees and argues that “the removable cover of
Matthews is not secured to the valve flapper” (App. Br. 5), and that
removing cover 63 “would not remove the valve flapper/pivot assembly
components” {id. at 6). The Appellant further argues that the disclosure of
Matthews is inadequate as there is no description in the specification with
respect to the embodiments of Figures 7—13 (Reply Br. 2). As such,
according to the Appellant, “[t]he Matthews figures show the components to
be adjacent one another, but there is no indication that they are connected to
each other such that, e.g., removing the ‘housing’ 63 would also remove the
‘valve bracket’ 75.” (Id. at 3).
We generally agree with the Appellant that in view of Figures 7—13
and the lack of discussion related thereto in the specification of Matthews,
the Examiner’s finding that Matthews actually discloses securement of the
valve flapper to the removable cover so that the valve flapper is removable
with the valve housing is speculative.
Nonetheless, we agree with the Examiner’s alternative basis for the
rejection, which is that even if Matthews does not clearly disclose that the
valve flapper is connected to the valve housing so that the valve flapper is
removable with the valve housing, such a configuration would have been
obvious to one of ordinary skill in the art (Ans. 6). In this regard, we agree
with the Examiner that:
It would have been obvious to one of ordinary skill in the art at
the time of the invention to form the hinge bracket 66 and valve
housing 63 together as a single unitary piece in lieu of
providing a number of differently formed components for
mechanical attachment to one another, where in doing so the
flapper being attached to the hinge would be removable by
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Application 12/985,668
removing the housing, and by doing so, additional positional
rigidity of the bracket and the flapper at a single position may
be provided, especially considering 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. Howard v. Detroit Stove Works, 150 U.S. 164 (1893).
(Id. at 6—7).
The Appellant argues that the Examiner is engaging in impermissible
hindsight, and Matthews’s “disclosure of a separating gasket suggests that
the housing cover (e.g., 63) should not be connected to the valve’s interior
components.” (App. Br. 9). However, it cannot reasonably be disputed that
gaskets that only engage peripheral mating surfaces are well-known.
Moreover, as the Examiner notes, making elements of a device integral or
separable is considered to be an obvious design choice, and does not render
an invention patentable unless such construction is for an unobvious purpose
or results in an unobvious effect. See In re Larson, 340 F.2d 965, 968
(CCPA 1965); In re Fridolph, 309 F. 2d 509, 512 (CCPA 1962).
The Appellant points out various advantages attained by the claimed
construction, including easy accessibility to the springs and/or flapper (App.
Br. 7—8; see also id. at 9—10). However, the standard for determining
obviousness of making components integral is not whether advantages are
attained by such integration, but rather, whether making the components
integral was for an unobvious purpose or results in an unobvious effect. We
discern no unobvious purpose or effect in making the hinge bracket 66
integral with valve housing cover 63.
Moreover, regardless of the Appellant’s motivation for such
integration and benefits attained thereby, the Examiner has provided a
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separate reason for such modification, that is, to provide “additional
positional rigidity of the bracket and the flapper at a single position.” (Ans.
6). This articulated reason is supported by rational underpinnings, especially
considering the lack of clear disclosure in Matthews as to how the flapper
and hinge bracket of Figures 7—13 are secured within the check valve. KSR
Inti Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Therefore, in view of the above considerations, we affirm the
Examiner’s rejection of claims 1 and 11.
Group 2
Claims 2 and 12 recite “wherein said valve body faces are minimally
spaced apart in the axial direction to allow said valve flapper to be removed
from said valve body with said valve housing.” (App. Br. 18, Claims App.).
The Examiner finds that the valve body faces of Matthews are “minimally
spaced apart in the axial direction.” (Ans. 7). Specifically, the Examiner
states that:
the claims should be given their broadest reasonable
interpretation, and that there is no clear reference point as to
what “minimal” encompasses as required by the claim.
Accordingly, Matthews clearly discloses that the valve body
faces 11 and 12 are spaced so as to allow for the pivoting of
valve flapper so that it may be removed from the valve body
with or in conjunction with the housing.
(Id. at 12).
The Appellant argues that the claimed construction of the check valve
allows for installing/removing of the flapper “without reaching into the
inside of the valve body,” thereby allowing for valve body faces to be
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Application 12/985,668
advantageously minimally spaced apart to reduce cost and facilitate
installation of the check valve (App. Br. 10). According to the Appellant,
Matthews requires “significant axial dimension as illustrated by Matthews
Figs. 5, 7, 8 and 11.” (Id. at 11).
However, these are apparatus claims and the Appellant’s arguments
associated with check valve service/installation and cost are based on
language not appearing in the claims. In re Self, 671 F.2d 1344, 1348
(CCPA 1982) (“Many of appellant’s arguments fail from the outset because .
. . they are not based on limitations appearing in the claims . . ..”). These
claims merely recite that the valve body faces are “minimally spaced apart”
to allow the valve flapper to be removed with the valve housing. In this
regard, they do not recite a specific dimension, or the orientation of the valve
flapper during removal, or otherwise establish what constitutes a minimal
dimension. Therefore, we find the Appellant’s arguments unpersuasive and
affirm the Examiner’s rejection of claims 2 and 12.
Group 3
Claims 21 and 22 recite “wherein said flapper valve has a selected
diameter and said other part of the fluid line circumference having no wall
defines an opening into said fluid line having a dimension transverse to the
pipe segment axes which is at least as great as said flapper valve selected
diameter.” (App. Br. 21, Claims App.).
The Examiner finds that Figures 5 and 6 of Matthews disclose this
limitation, and to the extent that Figures 7 and 9 of Matthews do not disclose
this limitation, that it would have been obvious in view of Figure 5 to
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provide such an opening (Ans. 8). In this regard, the Examiner notes that
“changing the size of the opening is generally recognized as being within the
level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).”
(Ans. 9).
The Appellant argues that the recited diameter “enables the entire
housing/flapper assembly to be lifted straight out of the valve body without
requiring that the assembly be twisted or otherwise oriented to clear the
flapper (which at that point cannot be seen by the maintenance person)
through the valve body.” (App. Br. 11—12). According to the Appellant,
Matthews includes “ears on the valve body which project inwardly from
both sides to support the pivot structure but which also overlie the sides of
the flapper” such that removal is not possible without damage to the flapper
and/or assembly {id. at 12—13). As such, the Appellant contends that
Matthews provides “a wider opening spaced axially from the supporting
ears, but that requires that the flapper be pivoted up . . . during removal, and
thus further requires that the axial dimension of the valve be extended to
accommodate axially extending flapper.” {Id. at 13).
We do not find the Appellant’s arguments persuasive. Firstly, we
agree with the Examiner that the Appellant’s arguments “are not
commensurate in scope with the claims” because the claims do not recite
any specific orientation of the flapper valve during removal or installation
(Ans. 13). More significantly, as the Examiner finds, Matthews discloses in
Figure 5, an opening having a diameter which is at least the diameter of the
flapper valve {id.; see also Ans. 8). Obviously, the circular opening shown
in Figure 5 must have a diameter dimension that is at least as large as the
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Application 12/985,668
flapper valve in order to allow the flapper valve to be removed and/or
installed.
The Appellant disputes (Reply Br. 4) the Examiner’s additional
assertion that the ears in the embodiment show in Figures 7 and 9 of
Matthews only extend partially such that the flap can be vertically lifted out
of the opening by slidably moving the flapper along the longitudinal axis so
as to be clear of the ears (Ans. 13). However, this argument is unpersuasive
in view of the fact that Matthews’s Figure 5 shows an opening diameter
which is at least that of the flapper valve so that, as the Examiner concludes,
it would have been obvious to provide similar dimensioning relative to the
embodiment of Figures 7 and 9 (Ans. 8). Moreover, we further agree with
the Examiner that it would have been obvious to one of ordinary skill in the
art to size the opening to allow removal, and insertion, of the flapper valve,
especially considering that Matthews itself discloses such dimensioning. In
re Rose, 220 F.2d 459, 463 (CCPA 1955); Boston Scientific v. Cordis, 554
F.3d 982, 991 (Fed. Cir. 2009) (“[combining two embodiments disclosed
adjacent to each other in a prior art patent does not require a leap of
inventiveness.”).
Accordingly, we affirm the Examiner’s rejection of claims 21 and 22.
Group 4
Claims 4 and 14 depend from intervening claims 3 and 13 that require
a pivot shaft extending through the valve housing and including an arm, and
recite “further comprising a spring biasing said arm toward pivoting said
pivot shaft toward closing said valve flapper on said valve seat, wherein said
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spring is selectively detachable from said arm for removal of said housing
from said valve body.” (App. Br. 18, Claims App.). The Examiner finds
that it would have been obvious to one of ordinary skill in the art to utilize
“a spring arranged on the outside of the valve body, as taught in Sumner” in
lieu of an interior seated spring as taught in Matthews, so as to allow the
option of manual opening and closing of the valve (Ans. 9).
The Appellant argues that Sumner “does not disclose the internal
valve structure,” and is “very different from the Matthews valve.” (App.
Br. 14). However, these arguments are unpersuasive in that Sumner is relied
upon by the Examiner for disclosing external spring mounting for a spring
biased valve, whereas Matthews is relied upon for the general valve
structure. In this regard, whereas the Appellant asserts that Sumner’s valve
is “very different,” the Appellant does not explain how the valves are
different or how any such differences are pertinent to the present rejection.
The Appellant further argues that “using the external spring of
Sumner with the valve of Matthews would be directly contrary to the
teachings of Matthews, which teaches a configuration with internal springs
specially designed to protect the springs from falling into the fluid line.”
(App. Br. 14). However, provision of an externally mounted spring is not
contrary to Matthews’s desire to minimize the risk of broken parts entering
the fluid, but rather, is consistent therewith because externally mounted parts
would not enter the fluid in the pipes. Accordingly, we agree with the
Examiner that:
moving the spring to the outside of the housing is also along the
same lines of the teaching of Matthew[s] where such a position
would also keep the spring from falling into the fluid line, and
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accordingly, an alternative embodiment where the device will
still perform the same function or provides the same principle
of operation cannot be considered a form of teaching away. In
other words, contrary to Appellant’s argument, the prior art’s
mere disclosure of an alternative arrangement does not
constitute a teaching away because such disclosure does not
criticize, discredit, or otherwise discourage the solution
claimed.
(Ans. 14, citing In re Fulton, 391 F.3d 1195 (Fed. Cir. 2004); MPEP
2143.011).
We thus affirm the Examiner’s rejection of claims 4 and 14 as well.
CONCLUSION
The Examiner’s rejection of claims 1—4, 6—15, and 17—22 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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