Ex Parte Walpole

Board of Patent Appeals and Interferences

Feb 19, 2010

11057770 (B.P.A.I. Feb. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES J. WALPOLE
____________

Appeal 2009-001235
Application 11/057,770
Technology Center 3700
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Decided: February 19, 2010
____________

Before JENNFIER D. BAHR, JOHN C. KERINS, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
James J. Walpole (Appellant) seeks our review under 35 U.S.C. § 134
of the final rejection of claims 18-20 and 22-37. Claim 21 has been
canceled. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
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The Invention
The claimed invention is to a valve closure system where magnetic
forces urge the valve closed. Spec. 2, para. [0005]. Figure 1, reproduced
below, illustrates the subject matter on appeal.

Appellant’s Figure 1 depicts a valve mechanism. As illustrated, the magnet
40 is spatially oriented above the magnet 34.
Claim 18, reproduced below, is illustrative of the subject matter on
appeal.
18. An apparatus, comprising:
a valve member configured to translate along a
path from a sealed position to an unsealed position;
a magnet coupled to the valve member; and
a leg extending from the valve member in a
direction that is generally parallel to the path, wherein a distal
portion of the leg overlaps an opposing magnet when the valve
member is in the sealed position.

The Prior Art
The Examiner relies upon the following as evidence of
unpatentability:

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Pool US 2,667,895 Feb. 2, 1954
Brown US 4,273,153 Jun. 16, 1981
Walpole US 6,581,632 Jun. 24, 2003

The Rejections
The following Examiner’s rejections are before us for review:
Claims 18-20, 22, 23, 25, and 26 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Brown.
Claims 18-20 and 22-371 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Walpole and Pool.
Contentions
For the rejection under § 102(b), Appellant contends that the
Examiner erred in construing the term “opposing.” Appellant contends
based on the Specification, legal precedent, and a person having ordinary
skill in the art of magnetism, that the term when read with “magnet” should
be construed as repelling magnets. See App. Br. 8-9 and Reply Br. 3-4.
Appellant does not separately argue claims 18-20, 22, 23, 25, and 26
for this ground of rejection. As such, we select claim 18 as representative
and claims 19, 20, 22, 23, 25, and 26 stand or fall with claim 18.
For the rejection under § 103(a), Appellant contends that the
Examiner’s rejection lacks a rational underpinning for combining the
magnets from Pool with the valve of Walpole, because the disadvantages of

1 In the statement of the ground of rejection the Examiner lists claim 25
twice. Ans. 4. The Examiner, however, discusses how Walpole and Pool
render claim 26 as obvious. Ans. 6. Appellant acknowledges claim 26 as
rejected under § 103(a) given Walpole and Pool. App. Br. 6. As such, we
consider the statement of the ground of rejection to contain a typographical
error and claim 26 is rejected under § 103(a) given Walpole and Pool.
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springs are already avoided by Pool in isolation. App. Br. 14. See also
Reply Br. 6. Appellant further contends that the combined teachings of
Walpole and Pool fail to render obvious a shoe coupled to a guard, as called
for in claim 27, or having the leg overlap the shoe, as called for in claim 28.
App. Br. 14 and 15. Appellant contends that the Examiner has not
adequately explained why it would be obvious to modify the magnet of Pool
to include an aperture as called for in claims 30 and 33. Id. at 16-17.
Further, for the rejection of claims 30 and 33, Appellant contends that the
Examiner has not adequately explained why a person of ordinary skill in the
art would disregard the venting solution of Pool for the other venting
mechanism proposed by the Examiner. Reply Br. 7. Appellant contends
that Pool teaches away from other designs because Pool offers a solution to
the problem of venting above the magnet. Id.
For this ground of rejection, Appellant does not separately argue
claims 18-20, 22-26, 29, 31, 32, and 34-37. Appellant does separately argue
claims 27 and 28. Further, Appellant separately argues claim 30 and groups
claim 33 with claim 30. As such, claims 31-33 will stand or fall with claim
30. Claim 29 will stand or fall with claim 27. Claim 18 is selected as
representative of claims 19, 20, 22-26, and 34-37 and these claims will stand
or fall with claim 18.

SUMMARY OF DECISION
We AFFIRM.

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OPINION
Issues
Has Appellant specifically pointed out an error in the Examiner’s
rejection concerning: (1) the Examiner’s claim construction of the term
“opposing” and (2) the Examiner’s conclusion of obviousness for the claims
separately argued by Appellant, claims 18, 27, 28, and 30.
Pertinent Facts
1. Brown discloses a valve mechanism to permit atmospheric air to enter
a tank in response to a predetermined pressure differential. Brown’s
figure 1 illustrates the valve mechanism. Of particular importance is
the relative position of magnets 60 and 46. As shown in Figure 1,
reproduced below, the magnet 60 is spatially oriented above the
magnet 46.

Brown’s Figure 1 depicts magnet 60 as spatially oriented above
magnet 46.
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2. Walpole discloses a valve mechanism, particularly used in gas
compressors. Figure 2, reproduced below, illustrates the valve
mechanism.

Walpole’s Figure 2 depicts a valve mechanism for use with
compressors. Spring 5 biases the valve 4 into the seated
position. Aperture 10 is a pressure relief for the bore 9 that
houses spring 5.
3. Pool discloses a magnetically biased check valve. Figure 1,
reproduced below, illustrates the valve.

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Pool’s figure 1 depicts a magnetically biased check valve
wherein the magnet 20 is spatially oriented above the magnet
26.
As shown, the magnet 20 is spatially oriented above the magnet
26 and Pool discloses “that the two like poles, in this case the
south poles of the magnets 20 and 26, are facing each other
with the result that the magnets are constantly repelling each
other.” Col. 3, ll. 6-10.
Principles of Law
A claim under examination is given its broadest reasonable
interpretation consistent with the underlying specification. In re Am. Acad.
of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In the absence of
an express definition of a claim term in the specification or a clear
disclaimer of scope, the claim term is interpreted as broadly as the ordinary
usage of the term by one of ordinary skill in the art would permit. In re
ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007); In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
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considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”).
Analysis
Anticipation based on Brown
We have thoroughly reviewed each of Appellant’s arguments for
patentability. However, we find ourselves in complete agreement with the
Examiner’s reasoned analysis with respect to the claim construction and
application of Brown to the properly construed claim, as well as the
Examiner’s cogent disposition of the arguments raised by Appellant in the
Appeal Brief. We add the following primarily for emphasis.
To adopt the Appellant’s claim construction with respect to the term
“opposing” in claim 18 would render the claim phrase “wherein poles of the
opposing magnet are generally aligned with poles of the magnet such that
the magnet and the opposing magnet repel one another” in claim 27, which
depends from claim 18, superfluous. See Stumbo v. Eastman Outdoors, Inc.,
508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim constructions
which render phrases in claims superfluous). Furthermore, the Examiner’s
claim construction of “opposing,” viz., a spatial opposition, when read with
the term “magnet” is consistent with the Specification and does not render
the above claim phrase superfluous. As shown in the Figures, the magnets
40 and 34 are spatially opposed to each other. See, e.g., The Invention,
supra. While the Specification prefers that the magnets’ poles face each
other to create a repelling force, see Spec. 4, para. [0010], the Specification
repetitively states that this disclosure is “merely illustrative of the presently
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preferred embodiments of the invention and that no limitations are intended
other than as described in the appended claims.” Spec. 4, para. [0012]. See
also Spec. 2, para. [0004] (“While the preferred embodiment is to use
neodymium-iron-boron permanent magnets with similar poles facing, those
skilled in the art will appreciate the full scope of the invention from the
specification and the claims...”). Accordingly, a person having ordinary skill
in the art, when reading the claim in light of the Specification, would
interpret “opposing magnets” as the Examiner has articulated and not as
narrowly as the Appellant urges. Further, in response to Appellant’s urged
claim construction, properties of preferred embodiments described in the
specification which are not recited in a claim do not limit the reasonable
scope of the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369
(Fed. Cir. 2003).
Appellant’s argument that a person of ordinary skill in the art should
be limited to a person of ordinary skill in the art of magnetism is
unconvincing because the argument too narrowly identifies a person of
ordinary skill.
To determine the level of skill in the art, “[t]he applicant’s disclosure
provides a starting point for determining the level of skill in the art, followed
by references and additional testimony, if any.” Ex parte Jud,
(http://www.uspto.gov/web/offices/dcom/bpai/its/rh061061.pdf) (BPAI
2007) (informative). In this case, the Appellant’s Specification elaborates
on the state of the art of valves both with and without magnets, and with a
combination of springs and magnets, and not just magnetism, see Spec. 1-2,
para. [0003], and the need to derive a more reliable closing force which
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improves valve service life compared to a valve with coil springs or plate
type closing springs, see Spec. 2, para. [0004].
Further:
References are typically indirect in their
teachings regarding the skill level in the art. ...
References are generally entitled to great weight ...
because they are almost always prepared without
regard to their use as evidence in the particular
examination in which they are used. See, e.g.,
Velander v. Garner, 348 F.3d 1359, 1371, 68
USPQ2d 1769, 1778 (Fed. Cir. 2003) (contrasting
preexisting references and litigation-inspired
testimony from the authors of the references).
Other references, even if not cited as a basis for the
rejection, may be similarly probative of the skill
level.

Ex parte Jud, (http://www.uspto.gov/web/offices/dcom/bpai/its/
rh061061.pdf) (BPAI 2007) (informative).
Here, Brown discloses a valve combining magnets and springs that is
responsive to pressure conditions. See Fact 1. Walpole and Pool disclose a
valve that utilizes springs and a valve that utilizes magnets, respectively, to
maintain the valve in a seated position. See Facts 2 and 3.
Accordingly, based on the evidence of the Appellant’s Specification
and the teachings from the references of record, a person of ordinary skill in
the art is more than a person of ordinary skill in the art of magnetism as
Appellant contends. Appellant has not presented evidence contrary to
Appellant’s disclosure and the references’ disclosures, just argument
narrowly identifying a person having skill in the art. Appellant’s attorney’s
arguments in a brief do not take the place of evidence in the record. See In
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re Pearson, 494 F.2d 1399, 1405 (CCPA 1974); In re Schulze, 346 F.2d 600,
602 (CCPA 1965).
Obviousness – Walpole and Pool
Claim 18
We have thoroughly reviewed each of Appellant’s arguments for
patentability. However, we are in complete agreement with the Examiner
that the claimed subject matter would have been obvious to one of ordinary
skill in the art within the meaning of § 103 in view of the applied prior art.
Further, we find ourselves in complete agreement the Examiner’s cogent
disposition of the arguments raised by Appellant in the Appeal Brief and
adopt them as our own in sustaining the rejection of claims 18-20, 22-26,
and 34-37, and we add the following for emphasis only.
The instant case does not present the dilemma Appellant argues:
modify Walpole or take an easier route of simply using the device taught by
Pool. Instead, this case is a combination of familiar elements according to
known methods. A combination is likely to be obvious when it does no
more than yield predictable results. KSR, 550 U.S. at 416. A conclusion of
obviousness may be supported by a showing that the claims are directed to a
device already known in the prior art that is altered by the mere substitution
of one element for another known in the field, and such modification yields
a predictable result. See id. (citing United States v. Adams, 383 U.S. 39, 50-
51 (1966)). The Court further stated that, “if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.” KSR, 550
U.S. at 417. When considering obviousness of a combination of known
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elements, the operative question is thus “whether the improvement is more
than the predictable use of prior art elements according to their established
functions.” Id.
In this case, replacing Walpole’s biasing spring 5 with the magnets 20
and 26 as the Examiner proffers would involve merely the substitution of
one approach to biasing the valve mechanism into a seated position with
another known approach of biasing the valve mechanism into a seated
position. See Facts 2 and 3. The prior-art elements in this substitution
maintain their established functions, namely, biasing the valve closed as the
Examiner has readily identified. See, e.g., Ans. 11. Further, the Examiner’s
reason to substitute Pool’s magnet valve structure for Walpole’s spring valve
structure in order to eliminate mechanical disadvantages of springs in valves
has a rational underpinning since common sense teaches “that familiar items
may have obvious uses beyond their primary purposes, and in many cases a
person of ordinary skill will be able to fit the teachings of multiple patents
together like pieces of a puzzle.” KSR, 550 U.S. at 420. A person of
ordinary skill in the art would want to use a technology that would increase
the service life of the poppet valves within Walpole. Therefore, we are
unconvinced that the Examiner’s obviousness analysis is premised on
arbitrary changes or lacks rational underpinning as Appellant contends.
Claims 27 and 28
We have thoroughly reviewed each of Appellant’s arguments for
patentability. Again, we are in complete agreement with the Examiner that
the claimed subject matter would have been obvious to one of ordinary skill
in the art within the meaning of § 103 in view of the applied prior art.
Further, we find ourselves in complete agreement with the Examiner’s
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disposition of the arguments raised by Appellant in the Appeal Brief and
adopt them as our own in sustaining the rejection of claim 28. See Ans. 12.
Concerning claim 27, the claim recites a shoe coupled to the guard.
The Examiner found that Walpole’s retainer 8 satisfies the shoe while
Walpole’s plate 3 satisfies the guard. Ans. 6. Appellant’s Specification
does not provide lexicographic definitions of “shoe” or “guard.” The
disclosure of the shoe and the guard in Appellant’s Specification is the shoe
being mounted into a bore that is in the guard, see Spec. 3, para [0010].
Claim 27 is not so narrowly drafted such that to satisfy the claim language
the prior art would be required to show a shoe being mounted into a bore
that is in the guard. In order for the claim limitation at issue to be satisfied
by the prior art, the prior art needs to show a shoe coupled to a guard.
Walpole discloses a plate 3 that appears similar in structure to the guard 20
that is shown in Appellant’s Figures. Walpole discloses a cup-like
suspension member 8 that is similar in structure to Appellant’s shoe 30 that
holds magnets 34 in place. As shown in Figure 6 of Walpole, member 8 is
inserted into plate 3. See also Col. 3, ll. 36-37. Upon member 8 being
inserted into plate 3, the member 8 would be coupled to plate 3. Therefore,
member 8 being coupled to plate 3 satisfies the limitation of the shoe being
coupled to the guard as called for in claim 27. As such, this claimed feature
does not patentably distinguish the claim over the structure of Walpole.
Claim 29 falls with claim 27.
Claim 30
We have thoroughly reviewed each of Appellant’s arguments for
patentability. Again, we find ourselves in complete agreement with the
Examiner’s reasoned analysis with respect to the claim construction and
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application of Brown to the properly construed claim, as well as the
Examiner’s cogent disposition of the arguments raised by Appellant in the
Appeal Brief. Accordingly, we will sustain the Examiner’s rejection for
essentially those reasons expressed in the Answer and we add the following
primarily for emphasis.
Appellant’s contention that the Examiner is disregarding the solution
found in Pool to make other changes is unconvincing because the contention
circumventially attacks the Examiner’s rejection by viewing the combination
as a bodily incorporation of Pool into Walpole. The rejection is not founded
upon incorporating Pool’s magnet into Walpole, but instead applying Pool’s
teaching of the use of magnets to substitute a magnet in place of the spring
to bias the valve in the seated position into Walpole. Walpole already has an
aperture, bore 10, for venting its poppet valve. In order to maintain that
venting, as the Examiner articulates, a person skilled in the art would
provide any magnets that would replace Walpole’s spring 5 with an aperture
in order to maintain the same functional venting that Walpole discloses. See
Ans. 12-13. Appellant’s contention that the Examiner has not met the
burden to provide a reason with rational underpinning is unconvincing. We
have reviewed the Examiner’s reason and conclude, based on the
Examiner’s cogent disposition in addressing the Appellant’s arguments, that
there is a rational underpinning. We further conclude that the Examiner has
not arbitrarily modified designs but has done exactly what the Court in KSR
articulated a person of skill could readily do, namely “fit the teachings of
multiple patents together like pieces of a puzzle,” because “[a] person of
ordinary skill is also a person of ordinary creativity, not an automaton.”
KSR, 550 U.S. at 420-21.
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Appellant’s argument that Pool’s solution teaches away from the
proposed modification is unconvincing because it appears to rely on an
attempted bodily incorporation of Pool into Walpole and Appellant has not
articulated how Pool’s venting teaches away. Teaching a different manner
of achieving a result, venting, is not a teaching away. A reference does not
teach away from claimed subject matter merely because the reference
describes an alternative solution to a problem addressed by the subject
matter. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Moreover, “[a]
reference may be said to teach away when a person of ordinary skill, upon
reading the reference, … would be led in a direction divergent from the path
that was taken by the applicant.” In re Haruna, 249 F.3d 1327, 1335 (Fed.
Cir. 2001) (quoting Tec Air, Inc. v. Denso Mfg. Mich., Inc., 192 F.3d 1353,
1360 (Fed. Cir. 1999)). Or, “[w]hen a piece of prior art ‘suggests that the
line of development flowing from the reference’s disclosure is unlikely to be
productive of the result sought by the applicant’ the piece of prior art is said
to ‘teach away’ from the claimed invention.” Medichem, S.A. v. Rolabo,
S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d
551, 553 (Fed. Cir. 1994)). Whether a reference teaches away from a
claimed invention is a question of fact. See In re Harris, 409 F.3d 1339,
1341 (Fed. Cir. 2005). Appellant has not provided any facts to demonstrate
that a person of ordinary skill would be led in a divergent direction from the
path taken by Appellant upon reading Pool or that the line of development
flowing from Pool is unlikely to be productive of the result sought by
Appellant, namely venting the space above the magnet.
Claim 33 falls with claim 30.
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CONCLUSIONS
The Examiner did not err in construing “opposing.” The Examiner
did not err in concluding that the claims are obvious.

DECISION
The Examiner’s decision 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)(1)(iv) (2007).

AFFIRMED

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