Ex Parte Wincek

Board of Patent Appeals and Interferences

Jan 12, 2011

11159009 (B.P.A.I. Jan. 12, 2011)

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.
11/159,009 06/22/2005 Christopher P. Wincek 0611-01UA 2773
21704 7590 01/12/2011
LAW OFFICES OF ERIC KARICH
2807 ST. MARK DR.
MANSFIELD, TX 76063
EXAMINER
BASTIANELLI, JOHN
ART UNIT PAPER NUMBER
3753
MAIL DATE DELIVERY MODE
01/12/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHRISTOPHER P. WINCEK
____________

Appeal 2009-011125
Application 11/159,009
Technology Center 3700
____________

Before JENNIFER D. BAHR, LINDA E. HORNER, and
STEFAN STAICOVICI, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-011125
Application 11/159,009

2
STATEMENT OF THE CASE
Christopher P. Wincek (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 18-32, which are all of the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We
REVERSE.
THE INVENTION
Appellant’s claimed invention relates to diaphragms used in weir-type
diaphragm valves to control flow of fluids. Spec. 2:16-18. Claim 18,
reproduced below, is representative of the subject matter on appeal.
18. A valve, comprising:
a body having an input port, a central portion, and an
output port;
a bonnet;
a flexible diaphragm having a central portion and a
peripheral portion surrounding the central portion, the
peripheral portion of the flexible diaphragm being adapted to be
positioned between the bonnet and the body, the flexible
diaphragm being formed of a flexible elastomeric or flexible
plastic material;
a rigid ring extending continuously through or on the
peripheral portion of the flexible diaphragm, the rigid ring
being formed of a rigid noncorrosive metal or a rigid and non-
reactive plastic;
an actuator mechanism operatively coupled to the
diaphragm for moving the diaphragm between an open
configuration wherein the input port and output port are in fluid
communication with each other, and a closed configuration
wherein the diaphragm blocks the central portion and prevents
fluid flow between the input port and the output port; and
Appeal 2009-011125
Application 11/159,009

3
wherein the bonnet is adapted to house the actuator
mechanism.
THE REJECTIONS
Appellant seeks review of the following rejections:
1. The Examiner rejected claims 18-24 and 27-32 under 35 U.S.C.
§ 103(a) as being unpatentable over Geary (US 3,067,764; issued
December 11, 1962) and McCutcheon (US 5,560,587; issued
October 1, 1996).
2. The Examiner rejected claims 25 and 26 under 35 U.S.C. § 103(a) as
being unpatentable over Geary, McCutcheon, and Goldsweer
(US 6,186,476 B1; issued February 13, 2001).
CONTENTIONS AND ISSUE
The Examiner concluded that it would have been obvious to use the
separate stainless steel rigid ring of McCutcheon in the rigid peripheral
portion of the diaphragm of Geary “in order to make the material even more
rigid and also resistant to corrosion and wear” and, alternatively, “to
improve the coupling.” Ans. 3-4. Appellant argues that “there is no
teaching in the art to apply the ring used in McCutcheon to a diaphragm
valve” as in Geary. Br. 7.
The issue presented by this appeal is whether the Examiner articulated
a sufficient reason with rational underpinning to explain why a person
having ordinary skill in the art would have been led to modify the peripheral
portion of the diaphragm of Geary to add a separate stainless steel rigid ring
as disclosed by McCutcheon to support a legal conclusion of obviousness.
Appeal 2009-011125
Application 11/159,009

4
ANALYSIS
Independent claim 18 calls for “a rigid ring extending continuously
through or on the peripheral portion of the flexible diaphragm, the rigid ring
being formed of a rigid non-corrosive metal or a rigid and non-reactive
plastic.” Independent claim 30 similarly calls for “a metal ring extending
continuously through or on the peripheral portion of the flexible diaphragm.”
Geary discloses a flexible diaphragm 17 having an annular rim 26
projecting laterally at the upper peripheral edge of the diaphragm, the
annular rim 26 having a lower annular bead 27 and an upper annular
bead 28. Geary, col. 2, ll. 11, 31-36; fig. 5. According to the Examiner, the
thickened portion formed by the annular beads 27 and 28 at the annular rim
26 of Geary’s diaphragm constitutes a rigid ring extending continuously
through or on the peripheral portion of the diaphragm. Ans. 3.
McCutcheon discloses seal members 50a and 50b positioned within
respective body halves 40a and 40b and cooperating to seal a gate valve 10.
McCutcheon, col. 3, ll. 30-32; figs. 4A and 4B. “Seal member 50a includes
a resilient, annular, elastomeric sleeve 52a and a substantially rigid annular
hub 54a that are press fit together.” McCutcheon, col. 3, ll. 39-41; figs. 4A
and 4B. McCutcheon discloses that “[a] pair of axially outwardly projecting
annular ridges 90a and 92a function as a gasket for engaging a flange surface
94a of conduit 14a to hold sleeve 52a in place and provide a seal between
conduit 14a and body half 40a.” McCutcheon, col. 4, ll. 9-12; figs. 4A and
4B. McCutcheon further discloses embedding a metal retaining ring 78a in
sleeve 52a in a rim segment 80a that engages face 68a of a radially inwardly
Appeal 2009-011125
Application 11/159,009

5
projecting ridge 66a and an adjacent axially inward ledge 82a of a hub 54a.
McCutcheon, col. 3, l. 66 – col. 4, l. 4; fig. 4B. McCutcheon describes:
Retaining rings 78a and 78b function to improve the coupling
between elastomer sleeves 52a and 52b and hubs 54a and 54b,
respectively. The combination of molding retaining rings 78a
and 78b into respective rim segments 80a and 80b and holding
them in place against hubs 54a and 54b minimizes the tendency
of sleeves 52a and 52b to pull from hubs 54a and 54b. This
prevents misalignment of and damage to sleeves 52a and 52b.
McCutcheon, col. 5, ll. 3-10.
As to the Examiner’s first articulated reason to combine, viz, to make
Geary’s peripheral portion “even more rigid,” the Examiner has not
established by a preponderance of the evidence that the peripheral portion of
Geary’s diaphragm is in need of improved rigidity or that making the
peripheral portion of Geary’s diaphragm more rigid would result in
improved performance of the diaphragm. Even if it were established that
Geary’s ring is in need of improved rigidity, McCutcheon teaches using
annular ridges 90a and 92a, not metal retaining rings 78a and 78b, to
function as a gasket for engaging a flange surface 94a of conduit 14a to hold
sleeve 52a in place and provide a seal between conduit 14a and body half
40a. Thus, McCutcheon’s gasket configuration does not use a metal
retaining ring to achieve rigidity in the peripheral portion of the gasket. As
such, McCutcheon’s disclosure would not have led one having ordinary skill
in the art to improve the rigidity of Geary’s diaphragm by adding a metal
retaining ring. We find that the Examiner’s rationale that one having
ordinary skill in the art would have been led to add a metal rigid ring to the
Appeal 2009-011125
Application 11/159,009

6
peripheral portion of Geary’s diaphragm “in order to make the material even
more rigid” lacks a rational underpinning.
As to the Examiner’s second reason to combine, viz, “to improve the
coupling,” McCutcheon teaches that the metal retaining rings 78a and 78b
improve the coupling between elastomer sleeves 52a and 52b and hubs 54a
and 54b by molding the rings into the sleeves and holding the rings in place
against the hubs, thereby minimizing the tendency of the sleeves to pull from
the hubs. As such, McCutcheon is using the metal retaining rings to retain
the sleeves on the hubs to which they are already mounted by press fitting.
The Examiner has not adequately articulated exactly what improvement in
coupling would be achieved by adding McCutcheon’s metal retaining ring to
the peripheral portion of Geary’s flexible diaphragm or exactly where on
Geary’s diaphragm such a metal retaining ring would be added to achieve
the improved coupling. Geary discloses:
In assembly the rim of the diaphragm fits on top of the annular
flange 14 of the valve body with the lower diaphragm bead 27
received in the groove 16 which is in the upper face of the
flange 14. The flange 49 of the bonnet fits on top of the rim of
the diaphragm as shown, with the upper bead 28 of the
diaphragm rim received in the groove 50 of the bonnet flange
49.
Geary, col. 2, ll. 66-71; fig. 5. We fail to see how the addition of
McCutcheon’s metal retaining ring somewhere on the peripheral portion of
Geary’s diaphragm would result in improved coupling of the flexible
diaphragm 17 to the annular flanges 14 and 49. The Examiner has failed to
establish by a preponderance of the evidence that use of such a metal ring in
Appeal 2009-011125
Application 11/159,009

7
a peripheral portion of a flexible diaphragm would improve the coupling of
the diaphragm to the annular flanges. As such, McCutcheon’s disclosure
would not have led one having ordinary skill in the art to modify the
coupling in Geary’s valve by adding a metal retaining ring. We find that the
Examiner’s rationale that one having ordinary skill in the art would have
been led to add a metal rigid ring to the peripheral portion of Geary’s
diaphragm “to improve the coupling” lacks a rational underpinning.
CONCLUSION
The Examiner has failed to articulate a sufficient reason with rational
underpinning to explain why a person having ordinary skill in the art would
have been led to modify the peripheral portion of the diaphragm of Geary to
add a separate stainless steel rigid ring as disclosed by McCutcheon to
support a legal conclusion of obviousness.
DECISION
The decision of the Examiner to reject claims 18-32 is REVERSED.

REVERSED

nlk

LAW OFFICES OF ERIC KARICH
2807 ST MARK DR
MANSFIELD TX 76063