Ex Parte Wiwe et al

Patent Trial and Appeal Board

Sep 26, 2013

95001598 (P.T.A.B. Sep. 26, 2013)

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.
95/001,598 04/08/2011 Joergen Seindal Wiwe H1162/20014 7577
35301 7590 09/27/2013
MCCORMICK, PAULDING & HUBER LLP
CITY PLACE II
185 ASYLUM STREET
HARTFORD, CT 06103
EXAMINER
DOERRLER, WILLIAM CHARLES
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
09/27/2013 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
____________________

HANSEN TECHNOLOGIES, INC.
Requester

v.

DANFOSS A/S
1

Patent Owner, Appellant
____________________

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2

Technology Center 3900
____________________

Before JEFFREY B. ROBERTSON, DANIEL S. SONG and
MICHAEL L. HOELTER, Administrative Patent Judges.

SONG, Administrative Patent Judge

DECISION ON APPEAL

1
Danfoss A/S is the Patent Owner and the real party in interest (Appeal
Brief of Patent Owner (hereinafter "App. Br.") 2).
2
Patent US 7,938,593 B2 (hereinafter "'593 patent") issued February 12,
2008 to Wiwe et al.
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STATEMENT OF THE CASE
Claims 1, 2, 4 and 6-25 of the '593 patent are pending in the
reexamination, claims 3 and 5 having been previously canceled (App. Br. 2).
Claims 1, 2, 4, 9-12, 14-16, 18 and 19 stand rejected, and are the subject of
the present appeal (App. Br. 2; Right of Appeal Notice
3
1). The Patent
Owner appeals under 35 U.S.C. §§ 134 and 315 from the Examiner's
rejections with respect to all of these rejected claims (App. Br. 2). In
addition to the Appeal Brief and Rebuttal Brief (hereinafter "Reb. Br."), the
Patent Owner also relies on the Declaration of Mr. Brian Davis and exhibits
submitted therewith in support of patentability. The Requester relies on its
Respondent Brief (hereinafter "Resp. Br.") and the Declaration of Mr. John
Yencho in support of the Examiner's rejections.
4
We have jurisdiction under
35 U.S.C. §§ 134 and 315.
The '593 patent was the subject of legal action between the Patent
Owner and the Requester which has been administratively closed without
prejudice in light of the present reexamination (App. Br. 2, citing Case 3:10-
cv-01775-VLB (D. Conn.); see also Resp. Br. 2).
We AFFIRM the Examiner's rejections.

THE INVENTION
The '593 patent is directed to a refrigerant valve arrangement or
manifold that includes a housing (Abstract). Representative independent

3
The Examiner's Answer merely incorporates the Right of Appeal Notice
(hereinafter "RAN") by reference. Hence, we cite to the RAN herein.
4
The Requester does not cross-appeal the decisions of the Examiner not
adopting certain proposed rejections.
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claim 1 reads as follows (Claims App'x, formatting showing amendments
having been removed and emphasis added):
1. A refrigerant valve arrangement comprising:
an integral housing having at least two pairs of
functional spaces, each pair of functional spaces formed by a
first functional space and a second functional space, the first
pair of functional spaces having a first functional space, in
which there is arranged at least one functional element, which
co-operates with a first annular contact surface formed in an
internal boundary wall, wherein arranged on that side of the
boundary wall which is located opposite the first functional
space is a second functional space, in which a second functional
element can be positioned and which has a second annular
contact surface on the internal boundary wall a channel which
passes through the boundary wall opening out in both contact
surfaces;
wherein the at least two pairs of functional spaces are
arranged within the integral housing, a first functional space of
the second pair of functional spaces being in communication
with the second functional space of the first pair of functional
spaces; and
wherein a flow path extends within the integral housing
between a housing inlet and a housing outlet, the flow path
passing serially through all of the functional spaces between
the housing inlet and the housing outlet.

Independent claims 12, 18 and 19 are directed to a refrigerant valve
arrangement or manifold that includes, inter alia, an "integral housing" and a
flow path passing serially through all the functional spaces.

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REJECTIONS
The Examiner rejects the claims on appeal as follows:
5

1. Claims 1, 2, 4, 9-12, 14-16 and 18 under 35 U.S.C. § 102(b) as
anticipated by Schlesch.
6

4. Claims 1, 4, 12 and 16 under 35 U.S.C. §103(a) as being
obvious over Stegmann
7
in view of Schlesch.
5. Claims 1, 2, 4, 9-12, 14-16, 18 and 19 under 35 U.S.C. §103(a)
as being obvious over Schlesch in view of Lavalee.
8

6. Claims 1, 2, 4, 9-12, 14-16, 18 and 19 under 35 U.S.C. §103(a)
as being obvious over Schlesch in view of Yarnall.
9

7. Claims 1, 2, 4, 9-12, 14-16, 18 and 19 under 35 U.S.C. §103(a)
as being obvious over Schlesch in view of Deinlein-Kalb.
10

ISSUES
The following issues have been raised in the present appeal.
1. Whether the Examiner erred in finding that the device of
Schlesch is capable of being used as a "refrigerant valve."

5
For clarity, we utilize the same rejection numbers as utilized by the
Examiner within the RAN which adopts the proposed rejections 1 and 4-7
with respect to certain claims. Hence, we do not use rejection numbers 2
and 3 that correspond to the proposed rejections not adopted by the
Examiner.
6
U.S. Patent No. 5,947,145 issued September 7, 1999.
7
U.S. Patent No. 4,685,310 issued August 11, 1987.
8
U.S. Patent No. 2,764,353 issued September 25, 1956.
9
U.S. Patent No. 2,951,496 issued September 6, 1960.
10
U.S. Patent No. 4,004,604 issued January 25, 1977.
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2. Whether the Examiner erred in finding that Schlesch discloses
an "integral housing" as recited in the claims.
3. Whether the Examiner erred in finding that Schlesch discloses a
flow path extending within the integral housing.
4. Whether Stegmann teaches away from its combination with
Schlesch based on Stegmann's placement of two functional elements in one
functional space.
5. Whether the Examiner erred in finding that a person of ordinary
skill in the art would look to a steam system to improve a refrigeration
system.
6. Whether the Examiner erred in concluding that claims 1 and 12
would have been obvious over the combination of Stegmann and Schlesch.
7. Whether the Examiner erred in concluding that the claims on
appeal would have been obvious over the combination of Schlesch and one
of Lavalee, Yarnall or Deinlein-Kalb.

PRINCIPLES OF LAW
"It is well settled that the recitation of a new intended use for an old
product does not make a claim to that old product patentable." In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted).
Further, "[i]f … the body of the claim fully and intrinsically sets forth the
complete invention, including all of its limitations, and the preamble offers
no distinct definition of any of the claimed invention's limitations, but rather
merely states, for example, the purpose or intended use of the invention, then
the preamble is of no significance to claim construction because it cannot be
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said to constitute or explain a claim limitation." Pitney Bowes, Inc. v.
Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)(citations
omitted).
"During reexamination, as with original examination, the PTO must
give claims their broadest reasonable construction consistent with the
specification. Therefore, we look to the specification to see if it provides a
definition for claim terms, but otherwise apply a broad interpretation." In re
ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007); see
also In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984).
The term "integral" has been interpreted to cover more than a unitary,
one-piece, construction. See, e.g., In re Kohno, 391 F.2d 959, 960 n.4
(CCPA 1968); In re Dike, 394 F.2d 584, 590 n.5, (CCPA 1968); In re
Larson, 340 F.2d 965, 967-968 (CCPA 1965); and In re Clark, 214 F.2d
148, 150 (CCPA 1954). The Federal Circuit has also applied that
interpretation of the term "integral." See, e.g., Advanced Cardiovascular
Sys. v. Scimed Life Sys., 887 F.2d 1070, 1074 (Fed.Cir.1989).

ANALYSIS
The Patent Owner disagrees with the Examiner's findings and
conclusions for the reasons set forth in its briefs. We address the various
arguments of the Patent Owner infra. Only those arguments actually made
by the Patent Owner have been considered and any arguments not made are
deemed to be waived. See 37 C.F.R. § 41.67(c)(1)(vii).

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Rejection 1
Claims 1, 2, 4, 9-12, 14-16 and 18 stand rejected as anticipated by
Schlesch. In rejecting these claims, the Examiner incorporates by reference
the Request for Inter Partes Reexamination, pages 8-17 (RAN 8). The
Patent Owner argues patentability of independent claims 1, 12 and 18
together, but we find the arguments and evidence unpersuasive for the
reasons discussed in detail infra.

Refrigerant Valve
The Patent Owner notes that Schlesch discloses a steam trap instead
of a refrigerant valve arrangement or manifold as recited in the preamble of
the claims (App. Br. 8). According to the Patent Owner "steam systems are
a substantially different technical field than refrigeration systems." (App. Br.
8; see also Reb. Br. 2-3). The Patent Owner also asserts that "[w]hile water,
in some instances, may be used as a refrigerant, a steam trap will not be part
of a refrigeration system when water is implemented," but instead, are only
used in heating systems (Reb. Br. 2-3).
These arguments are unpersuasive. We agree with the Examiner's
position that the preamble recitation to a "refrigerant valve" is a statement of
intended use "which the valve of Schlesch is capable of performing." (RAN
8). In re Schreiber, 128 F.3d at 1477; Pitney Bowes, Inc. v. Hewlett-
Packard Co., 182 F.3d at 1305. As noted by the Examiner (RAN 21), the
Patent Owner does not set forth persuasive arguments or evidence to
demonstrate that the steam trap of Schlesch is not capable of being used as a
"refrigerant valve" as recited in the preambles of the claims. Indeed, as also
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noted by the Examiner (RAN 21), the Patent Owner does not direct our
attention to any structural difference or deficiency with respect to the steam
trap of Schlesch which would make it incapable of being used as a
refrigerant valve.
In further support of the rejection and in rebuttal to the assertions of
the Patent Owner, the Examiner further found that "water vapor as
refrigerant is known in the art (as is typical in water/lithium bromide
absorption refrigeration systems)." (RAN 21). In this regard, the claims at
issue do not preclude water/steam as a refrigerant. The Requester agrees
with the Examiner pointing out that "steam traps are commonly used in
refrigeration systems" referring to U.S. Patent No. 5,031,409 to Johnson as
well as the water/lithium bromide absorption refrigeration systems noted by
the Examiner, and the refrigerant designation "R-718" for water (Resp. Br.
3-4). The Patent Owner does not proffer persuasive arguments or evidence
that address the findings of the Examiner or persuade us of their error.
Accordingly, we agree with the Examiner that Schlesch’s system is capable
of being used as a refrigerant valve.

Integral Housing
The Patent Owner also asserts that Schlesch does not disclose "an
integral housing" because the disclosed housing 24 includes a body 27 and
cover 25 mounted on top of the body 27 (App. Br. 8). According to the
Patent Owner, "[a] housing constituted by a body and a cover cannot be said
to be integral." (App. Br. 8 citing Schlesch, col. 2, ll. 48-49 and Fig. 3).
The Examiner states:
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It appears that [Patent Owner] is attempting to claim a[] one-
piece housing and cover assembly. The body and cover of
Schlesch can be seen as integral when the cover is bolted into
place. Integral does not necessarily imply that the entire
structure is formed from a common starting material, or that the
parts of the integral unit cannot be separated. This is supported
by the dictionary definition provided by [the Requester] (as no
support for a specific definition is in the '593 patent)."

(RAN 22).

We agree with the Examiner for the reasons articulated. In this
regard, the term "integral" is not only undefined in the Specification of the
'593 patent, it does not even appear in the '593 patent except for in the
original claims 1 and 12. The broadest reasonable interpretation of this
limitation covers more than a unitary, one-piece construction advocated by
the Patent Owner. See, e.g., In re Kohno, 391 F.2d at 960 n.4; In re Dike,
394 F.2d at 590 n.5; In re Larson, 340 F.2d at 967-68; In re Clark, 214 F.2d
at 150; and Advanced Cardiovascular Sys. v. Scimed Life Sys., 887 F.2d at
1074.

Functional Spaces and Flow Path
The Patent Owner further argues that the independent claims require
the functional spaces to be placed inside the integral housing and that the
flow path passes serially through all of the functional spaces (App. Br. 9).
According to the Patent Owner, in the device of Schlesch, the "flow path
exits the housing body 27, before reaching the outlet port 68, and enters the
removable cover 25 to pass between the inlet port 32 and the outlet port 68."
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(App. Br. 9). Hence, the Patent Owner concludes that in Schlesch, the flow
path "extends within the two separate parts." (App. Br. 9-10).
This argument of the Patent Owner is unpersuasive because it is based
on the presumption that the cover of Schlesch cannot be part of the "integral
housing," such presumption being erroneous for the reasons discussed supra.

Therefore, in view of the above, we affirm the Examiner's rejection of
independent claims 1, 12 and 18 as being anticipated by Schlesch. The
Patent Owner asserts patentability of dependent claims 2, 4, 9-11 and 14-16
merely based on their dependency on one of claims 1 or 12 (App. Br. 10).
Hence, the rejection of these dependent claims is affirmed as well.

Rejection 4
Claims 1, 4, 12 and 16 stand rejected as obvious over the combination
of Stegmann and Schlesch. In rejecting these claims as obvious, the
Examiner incorporates by reference the Request for Inter Partes
reexamination, pages 29-34 (RAN 9) which states:
It would have been obvious to a person having ordinary skill in
the art at the time of the ['593] patent claimed invention to
modify the multi-purpose valve assembly of Stegmann with the
functional spaces arraigned [sic, arranged] for functional
elements of Schlesch to arrive at the claimed subject matter to
allow maintenance to be performed on the modified valve
without having to remove it from the system with predictability
and a reasonable expectation of success, as taught by Schlesch
at Col. 5, Line 58-Col. 6, Line 8.

(Request for Inter Partes reexamination, pgs. 30-31).

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Thus, the Examiner combines the various functional spaces and
elements as disclosed in Schlesch with the multi-purpose valve assembly of
Stegmann to reject these claims.

Integral Housing
The Patent Owner argues that "Stegmann does not teach or suggest an
integral housing having at least two pairs of functional spaces arranged
therein, each pair formed by a first and second functional space" (App. Br.
11; see also Reb. Br. 5-6). The Patent Owner also argues that there is no
motivation to eliminate the removable cover because Schlesch teaches a
two-part housing to provide access for maintenance of the functional
components, and "if Stegmann is modified for the functional elements of
Schlesch, the combination would include Schlesch's two part housing."
(App. Br. 11-13). Therefore, the Patent Owner asserts that making an
integral housing by eliminating the removable cover of Schlesch would
"defeat the purpose of the removable cover and prevent maintenance from
being performed in the steam trap chamber." (App. Br. 13).
However, these arguments are based on the previously discussed
erroneous presumption that the cover of Schlesch cannot be part of the
"integral housing." For the reasons already discussed supra, we agree with
the Examiner that "the housing with bolted on cover of Schlesch is []
integral during times of use, as the two parts are firmly and non-movably
connected. Integral is not seen to require one solid piece." (RAN 23). In
this regard, while not relied upon for deciding the present appeal, we also
observe that merely making the housing "integral" is an obvious engineering
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design choice which does not render the claimed refrigerant valve
patentable. See In re Larson, 340 F.2d at 968; In re Fridolph, 309 F. 2d 509,
512 (CCPA 1962).
The Patent Owner further argues that there is also the risk of leakage
between the cover and body of the housing of Schlesch (App. Br. 12).
However, in addition to the fact that this argument is based on the erroneous
presumption as to the term "integral" as discussed supra, the "case law does
not require that a particular combination must be the preferred, or the most
desirable, combination described in the prior art in order to provide the
motivation for the current invention." In re Fulton, 391 F.3d 1195, 1200
(Fed. Cir. 2004).

Two Functional Elements in a Single Functional Space
The Patent Owner also argues that "Stegmann also teaches a person of
ordinary skill in the art to place two functional elements in one functional
space, thereby eliminating the need for additional functional spaces" because
Stegmann discloses both a valve 40 and a strainer 60 in a single functional
space (App. Br. 11). However, this argument is unpersuasive because as
noted by the Requester (Resp. Br. 8), Stegmann itself teaches the use of
additional functional spaces such as that shown in Figure 1 with valve
member 32 arranged therein (Stegmann, Fig. 1). We further agree that "a
teaching of two functional elements in one functional space does not teach
that other functional spaces are not needed." (Resp. Br. 8). Such a teaching
"does not criticize, discredit, or otherwise discourage the solution claimed."
In re Fulton, 391 F.3d at 1201.
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Steam System
The Patent Owner also argues that a person of ordinary skill in the art
would not look to a steam system such as Schlesch for improving a
refrigeration system "since a steam system does not have the efficiency and
environmental concerns associated with a leakage from a refrigeration
system," such systems being in "substantially different technical field[s]."
(App. Br. 13-14; Reb. Br. 6). The Patent Owner argues that "trapping of
vapor is not intended in a refrigeration system, because vapor is an important
constituent of a refrigeration system in order for the Rankin[e] operating
cycle to be performed" and so, steam traps are not used in a refrigeration
system (App. Br. 14; Reb. Br. 6-7).
The Examiner finds, and we agree, that both Stegmann and Schlesch
"provide control of a fluid flow and both control fluids in a heat transfer
system. As such they are not seen as non-analogous teachings from
disparate arts." (RAN 23). The argument of the Patent Owner based on the
fact that a refrigerant would have different efficiency and environmental
concerns associated with a leakage is unpersuasive in view of the Examiner's
finding that "water vapor as refrigerant is known in the art (as is typical in
water/lithium bromide absorption refrigeration systems)" (RAN 21) which is
not disputed by the Patent Owner. As noted, the claims at issue do not
preclude water/steam as a refrigerant. The Examiner has further pointed to
U.S. Patent No. 5,031,409 to Johnson as rebuttal evidence that steam traps
are used in refrigeration systems (RAN 24), but this finding also remains
unaddressed by the Patent Owner. Thus, the Patent Owner's arguments do
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not persuade us that a person of ordinary skill in the art would not look to a
steam system to improve a refrigeration system due to differences in the
refrigerants used and environmental concerns.

Secondary Considerations
Relying on the Declaration of Mr. Davis and Exhibits 1 and 2
included therewith, the Patent Owner asserts that the evidence submitted
shows commercial success of Patent Owner's ICF products (App. Br. 14-15,
Decl. of Davis, ¶¶ 3-6). The Patent Owner also states that "[t]he top two
contractors in the U.S. refrigeration industry shifted business away from the
reexamination Requester in favor of the refrigeration valve arrangement of
the present invention." (App. Br. 15, Decl. ¶ 9). The Patent Owner also
asserts copying by the Requester in its MVP product, after which the Patent
Owner lost "at least one major project to Hansen's MVP valve platform."
(Decl. of Davis, ¶¶ 7, 8, 10).
Upon consideration of the evidence, the Examiner states:

No evidence to back this assertion [of commercial success] has
been provided and no connection or nexus between the claimed
elements and the product sold were ever made. Likewise, the
declaration[']s allegations of coping by the MVP valve are mere
allegations. No comparison of the claimed elements and the
MVP product are provided. There may be many reasons for
loss of sales to the MVP system that are not related to the
claims of the '593 patent."
(RAN 24; see also RAN 25).

We agree with the Examiner. While a "high degree of commercial
success" is asserted, there is no persuasive evidence supporting this assertion
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such as evidence establishing the amount of business that was "shifted" to
the Patent Owner, the quantity and value of the ICF products sold, and
whether such quantity/value represents a substantial quality in the relevant
market. In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996)(a very weak
showing of commercial success, if any, is shown where there is no
indication of whether the number of units sold represents a substantial
quantity in the relevant market). In addition to the fact that the Patent
Owner does not clearly establish that the ICF products are commercial
implementations of the invention claimed, there is also no persuasive
evidence "that the sales were a direct result of the unique characteristics of
the claimed invention-as opposed to other economic and commercial factors
unrelated to the quality of the patented subject matter." Id.
With respect to copying, the declarant merely states that Hansen's
MVP product provides "similar commercial benefits to Danfoss' ICF Control
Solution" (Decl. of Davis, ¶ 8) but such assertions are of little probative
value in demonstrating actual copying. Iron Grip Barbell Co. Inc. v. USA
Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004) (Copying "may be
demonstrated either through internal documents, see Akamai Techs., Inc. v.
Cable & Wireless Internet Servs., Inc., 344 F.3d 1186, 1196-97
(Fed.Cir.2003); direct evidence such as disassembling a patented prototype,
photographing its features, and using the photograph as a blueprint to build a
virtually identical replica, see Advanced Display Sys., Inc. v. Kent State
Univ., 212 F.3d 1272, 1285 (Fed.Cir.2000); or access to, and substantial
similarity to, the patented product (as opposed to the patent), Cable Elec.
Prods., Inc. v. Genmark, Inc., 770 F.2d 1015, 1027 (Fed.Cir.1985),
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overruled on other grounds by, Midwest Indus., Inc. v. Karavan Trailers,
Inc., 175 F.3d 1356, 1359 (Fed.Cir.1999) (en banc)."). The Patent Owner
has also not provided adequate analysis between Hansen's allegedly copied
MVP product and the claims of the '593 patent.

Thus, having considered the Patent Owner's arguments and the
evidence of record, including those pertaining to secondary considerations,
we agree with the Examiner that independent claims 1 and 12 would have
been obvious to one of ordinary skill in the art over Stegmann in view of
Schlesch. The Patent Owner merely relies on the dependency of claims 4
and 16 to assert their patentability (App. Br. 16). Hence, these claims fall
with claims 1 and 12.

Rejection 5
Claims 1, 2, 4, 9-12, 14-16, 18 and 19 stand rejected as obvious over
the combination of Schlesch and Lavalee. The Examiner incorporates by
reference the Third Party Comments filed July 29, 2011, pages 16-18
(except as applied to claims 6-8, 13, 17 and 20-25) (RAN 10). The portion
of the Third Party Comments incorporated by reference states, inter alia:
To any extent that the claimed term 'integral housing' may
somehow be disputed, the Requester submits that it was well
known at the time of the invention that steam traps could reside
entirely within an integral housing regardless of any
interpretation of the term integral housing previously offered by
the Patentee. Examples of this teaching are provided by
Lavallee, Yarnall, and Deinlein-Kalb with prior art steam traps
performing the same function as the steam trap in Schlesch with
predictable results, making the combination of Schlesch and
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any of Lavallee, Yarnall, or Deinlein-Kalb obvious under 35
U.S.C. § 103(a).

(Third Party Comments filed July 29, 2011, page 16).

The portion of the Third Party Comments incorporated by reference
also states:
[In Lavallee,] the entire steam trap is housed within a casing A
with its flow path within the casing between the casing inlet
orifice and casing outlet orifice.
….
It would have been obvious to a person having ordinary skill in
the art at the time of the asserted invention to modify the
unitary housing and steam trap of Schlesch with the teachings
of Lavallee and arrive at the claimed subject matter to prevent
return flow of the liquid through the steam tap of a multiple
valve assembly in the event of a surge of the back pressure with
predictability and a reasonable expectation of success, as taught
by Lavallee at Col. 2, Lines 9-12.

(Third Party Comments filed July 29, 2011, page 17).

The Examiner states that while Schlesch anticipates the various
claims, "[t]he Lavalee et al, Yarnell et al and Deinlein-Kalb references do
show a steam trap wholly contained within a fluid containing housing."
(RAN 22).
The Patent Owner's arguments seek reversal of this rejection with
respect to independent claims 1, 12, 18 and 19. In particular, the Patent
Owner argues that Schlesch is a steam trap which are in a different technical
field and not used in refrigeration systems (App. Br. 16-17; see also Reb. Br.
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7-8). The Patent Owner also argues that Schlesch does not disclose an
"integral housing" or a flow path that passes serially therethrough because
the flow enters the removable cover 25 (App. Br. 17-18; see also Reb. Br.
8). The Patent Owner also argues that Lavalee similarly discloses a steam
trap and does not cure the deficiencies of Schlesch (App. Br. 19). The
Patent Owner further argues that a person of ordinary skill in the art would
not modify Schlesch to eliminate the cover to provide an integral housing
because Schlesch teaches maintenance of the functional components by
removing the cover (App. Br. 19-20). The Patent Owner also asserts that
non-obviousness has been established through evidence of secondary
considerations (App. Br. 20).
The arguments of the Patent Owner with respect to independent
claims 1, 12, 18 and 19 are substantively similar to those already addressed
supra with respect to Rejections 1 and 4. These arguments and the evidence
relied upon are unpersuasive for the reasons already discussed supra. The
Examiner's rejection is based on rational underpinnings and we affirm the
same with respect to independent claims 1, 12, 18 and 19. The Patent
Owner merely relies on the dependency on one of the independent claims for
patentability of dependent claims 2, 4, 9-11 and 14-16 (App. Br. 20). Hence,
these claims fall with their corresponding independent claims.

Rejection 6
Claims 1, 2, 4, 9-12, 14-16, 18 and 19 stand rejected as obvious over
the combination of Schlesch and Yarnall. The Examiner incorporates by
reference the Third Party Comments filed July 29, 2011, pages 16-18
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(except as applied to claims 6-8, 13, 17 and 20-25) (RAN 11). The portion
of the Third Party Comments incorporated by reference states, inter alia:
Yarnall teaches alternative embodiments of the invention, with
a flow path staying within the body or with a flow path
extending beyond the body, yet with both flow paths remaining
within the integral housing of the body and cover. The steam
traps taught by Yarnall are disclosed as extremely light and
relatively inexpensive for its large discharge capacity, and can
be formed with few parts. See Yarnall, Col. 3, Lines 38-42. It
would have been obvious to a person having ordinary skill in
the art at the time of the asserted invention to modify the
unitary housing and steam trap of Schlesch with the teachings
of Yarnall and arrive at the claimed subject matter to save
weight and cost with fewer parts and with predictability and a
reasonable expectation of success, as taught by Yarnall at Col.
3, Lines 38-42.

(Third Party Comments filed July 29, 2011, pages 17-18).
As noted supra relative to Rejection 5, the Examiner also states that
while Schlesch anticipates the various claims, "[t]he Lavalee et al, Yarnell et
al and Deinlein-Kalb references do show a steam trap wholly contained
within a fluid containing housing." (RAN 22).
The Patent Owner's arguments seeking reversal of this rejection with
respect to independent claims 1, 12, 18 and 19 are substantively the same as
those proffered with respect to Rejection 5 (and thus, Rejections 1 and 4)
(App. Br. 21-24; see also Reb. Br. 9-11). These arguments and the evidence
relied upon are unpersuasive for the reasons already discussed supra. The
Examiner's rejection is based on rational underpinnings and we affirm the
same with respect to independent claims 1, 12, 18 and 19. The Patent
Owner merely relies on the dependency on one of the independent claims for
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patentability of dependent claims 2, 4, 9-11 and 14-16 (App. Br. 24). Hence,
these dependent claims fall with their corresponding independent claims.

Rejection 7
Claims 1, 2, 4, 9-12, 14-16, 18 and 19 stand rejected as obvious over
the combination of Schlesch and Deinlein-Kalb. The Examiner incorporates
by reference the Request's Response filed July 29, 2011, pages 16-18
(except as applied to claims 6-8, 13, 17 and 20-25) (RAN 11) which states,
inter alia:
The steam trap [of Deinlein-Kalb] may also operate as a shut
off valve or as an opening valve. See Col. 3, Line[s] 34-43 and
Col 4, Lines 7-23. It would have been obvious to a person,
having ordinary skill in the art at the time of the asserted
invention to modify the unitary housing and steam trap of
Schlesch with the teachings of Deinlein-Kalb and arrive at the
claimed subject matter to provide greater functionality to the
steam trap valve with predictability and a reasonable
expectation of success, as taught by Deinlein-Kalb at Col. 3,
Line[s] 32-43 and Col. 4, Lines 7-23.

(Third Party Comments filed July 29, 2011, pages 18).
As noted supra relative to Rejection 5, the Examiner states that while
Schlesch anticipates the various claims, "[t]he Lavalee et al, Yarnell et al
and Deinlein-Kalb references do show a steam trap wholly contained within
a fluid containing housing." (RAN 22).
The Patent Owner's arguments seeking reversal of this rejection with
respect to independent claims 1, 12, 18 and 19 are substantively the same as
those proffered with respect to Rejection 5 (and thus, Rejections 1 and 4)
(App. Br. 25-28; see also Reb. Br. 12-13). These arguments and the
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evidence relied upon are unpersuasive for the reasons already discussed
supra. The Examiner's rejection is based on rational underpinnings and we
affirm the same with respect to independent claims 1, 12, 18 and 19. The
Patent Owner merely relies on the dependency on one of the independent
claims for patentability of dependent claims 2, 4, 9-11 and 14-16 (App. Br.
28). Hence, these dependent claims fall with their corresponding
independent claims.

CONCLUSIONS
1. The Examiner did not err in finding that the device of Schlesch
is capable of being used as a "refrigerant valve."
2. The Examiner did not err in finding that Schlesch discloses an
"integral housing" as recited in the claims.
3. The Examiner did not err in finding that Schlesch discloses a
flow path extending within the integral housing.
4. Stegmann does not teach away from its combination with
Schlesch.
5. The Examiner did not err in finding that a person of ordinary
skill in the art would look to a steam system to improve a refrigeration
system.
6. The Examiner did not err in concluding that claims 1 and 12
would have been obvious over the combination of Stegmann and Schlesch.
7. The Examiner did not err in concluding that claims on appeal
would have been obvious over the combination of Schlesch and one of
Lavalee, Yarnall or Deinlein-Kalb.
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Patent US 7,328,593 B2
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ORDERS
The Examiner's rejections of claims 1, 2, 4, 9-12, 14-16, 18 and 19 are
AFFIRMED.

Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956.

AFFIRMED

ack

Patent Owner:

MCCORMICK, PAULDING & HUBER LLP
CITY PLACE II
185 ASYLUM STREET
HARTFORD, CT 06103

Third Party Requester:

CAESAR, RIVISE, BERNSTEIN, COHEN & POKOTILOW, LTD
1635 MARKET STREET
11TH FLOOR, SEVEN PENN CENTER
PHILADELPHIA, PA 19103-2212