Ex Parte Yoshino

Board of Patent Appeals and Interferences

Oct 13, 2009

10029290 (B.P.A.I. Oct. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KAZUNORI YOSHINO
____________

Appeal 2008-005040
Application 10/029,290
Technology Center 3700
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Decided: October 13, 2009
____________

Before LINDA E. HORNER, JOHN C. KERINS, and STEVEN D.A.
McCARTHY, Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL
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STATEMENT OF THE CASE
Kazunori Yoshino (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s final rejection of claims 1, 4, 5, 7, 9, 10, 12-16 and
21, the only claims pending in the application. We have jurisdiction under
35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellant’s claimed invention is to a hydraulic fluid control system
for reducing motor cavitation by providing first and second flow lines in
parallel, with at least one of the first and second flow lines being configured
to provide make-up fluid to the motor. (Appeal Br., Claims Appendix,
Claims 1, 15). Independent claim 1, reproduced below, is representative of
the overall claimed subject matter:
1. A fluid control system comprising:

at least one double-acting cylinder;

at least one fluid-driven motor;

a pressurized fluid source configured to supply
pressurized fluid flow to the at least one double-
acting cylinder and the at least one fluid-driven
motor;

a tank configured to receive return fluid flow from
the at least one double-acting cylinder via a
cylinder return line and the at least one fluid-
driven motor via a motor return line;
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a back pressure element disposed between the tank
and the motor, the back pressure element being
configured to influence a fluid backpressure
condition on fluid discharged from the motor;

a combination main relief and by-pass valve
disposed at a first flow line, the first flow line
being configured to provide fluid communication
between the source of pressurized fluid and the
motor return flow line;

a pilot pump configured to provide a pilot flow of
fluid; and

a pilot relief valve disposed at a second flow line,
the second flow line being configured to provide
fluid communication between the pilot pump and
the motor return flow line in parallel with the first
flow line,

wherein at least one of the first and second flow
lines is configured to provide make-up fluid to the
motor.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Krusche US 4,665,699 May 19, 1987
Yoshimatsu US 5,062,266 Nov. 5, 1991
Yoshimatsu US 5,063,742 Nov. 12, 1991
Chung US 5,673,605 Oct. 7, 1997

The Examiner has rejected:
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(i) claims 1, 4, 15 and 16 under 35 U.S.C. § 103(a) as being
unpatentable over Yoshimatsu ‘742 in view of Krusche and Yoshimatsu
‘266; and
(ii) claims 5, 7, 9, 10, 12-14 and 21 under 35 U.S.C. § 103(a) as being
unpatentable over Yoshimatsu ‘742 in view of Krusche, Yoshimatsu ‘266,
Chung, and “a further teaching of Krusche”.1

ISSUE
The Examiner found that it would have been obvious to modify the
hydraulic fluid system of Yoshimatsu ‘742 to connect its second flow line to
its motor return flow line, as taught by Krusche, to simplify the layout of the
system, and to employ a combination relief and bypass valve, as taught in
Yoshimatsu ‘266, in place of the main relief valve, in order to allow the
pressure source to be unloaded when not needed to provide pressurized
fluid.
Appellant contends that the Examiner’s reason to combine Krusche
with Yoshimatsu ‘742 is not supported by the references themselves, and
that the proposed modification of the main relief valve to a combination

1 The Examiner’s Answer contends that this is a non-withdrawn ground of
rejection that is not under review on appeal because Appellant has presented
arguments directed only to limitations appearing in the claims rejected in
group (i) above. (Answer 2-3). The Appeal Brief expressly states that this
ground of rejection is on appeal, and presents Appellant’s position as to why
that rejection is in error, albeit that position is based upon alleged error in the
rejection of the claims in group (i), and that the Chung patent does not
remedy the alleged deficiencies in that rejection. (Appeal Br. 17-18).
Notwithstanding that Appellant has not argued that certain limitations
appearing in the claims in group (ii) render those claims separately
patentable, the ground of rejection is presented for decision on appeal.
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relief and bypass valve would change the principle of operation of the
Yoshimatsu ‘742 system.
The issue to be decided on appeal is whether Appellant has
demonstrated that the Examiner erred in combining the references in
reaching the conclusion that the claimed invention would have been obvious.

FINDINGS OF FACT
The following enumerated findings of fact (FF) are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
FF 1. Appellant does not contest the Examiner’s findings that:
(a) Yoshimatsu ‘742 discloses all elements set
forth in claim 1, including a pilot relief valve
disposed in a second flow line, with the exception
that the second flow line is not configured to
provide fluid communication between the pilot
pump and a motor return flow line in parallel with
a first flow line; and with the exception that the
main relief valve is not a combination relief and
by-pass valve;
(b) Krusche discloses a hydraulic control system in
which a pilot pump provides fluid across a pilot
relief valve disposed in a second flow line, and that
the second flow line is connected to the motor
return flow line; and
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(c) Yoshimatsu ‘266 discloses a hydraulic fluid
control system that, inter alia, has a main relief
valve that is a combination relief valve and bypass
valve, the bypass valve function being provided for
the purpose of allowing the pressure source to be
unloaded when not needed to provide pressurized
fluid. (Answer 3-5).
FF 2. Yoshimatsu ‘742 discloses, in Figure 5, an embodiment having
an electrical control means that enhances the response speed and reliability
of the hydraulic control circuit. (Yoshimatsu ‘742, Fig. 5; col. 10, l. 62-col.
11, l. 12).
PRINCIPLES OF LAW
An appellant has the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See Ex parte Yamaguchi, 88 USPQ2d
1606, 1614 (BPAI 2008) (on appeal, applicant must show examiner erred);
Ex parte Fu, 89 USPQ2d 1115, 1123 (BPAI 2008); Ex parte Catan, 83
USPQ2d 1569, 1577 (BPAI 2007); and Ex parte Smith, 83 USPQ2d 1509,
1519 (BPAI 2007). See also In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)).
A claim is unpatentable under 35 U.S.C. § 103(a) if “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
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invention was made to a person having ordinary skill in the art to which said
subject matter pertains.” 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 considerations. Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1966). See also KSR Int'l Co. v. Teleflex Inc., 550 U.S.
398, 407 (2007) (“While the sequence of these questions might be reordered
in any particular case, the [Graham] factors continue to define the inquiry
that controls.”).

ANALYSIS
Claims 1, 4, 15 and 16--Obviousness over Yoshimatsu ‘742 in view of
Krusche and Yoshimatsu ‘266
Appellant argues for the patentability of claims 1, 4, 15 and 16 as a
group. Claim 1 will be taken as being representative of the group, and the
remaining claims will stand or fall with claim 1.
The Examiner found that:
(a) Yoshimatsu ‘742 discloses all elements set
forth in claim 1, including a pilot relief valve
disposed in a second flow line, with the exception
that the second flow line is not configured to
provide fluid communication between the pilot
pump and a motor return flow line in parallel with
a first flow line; and with the exception that the
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main relief valve is not a combination relief and
by-pass valve;
(b) Krusche discloses a hydraulic control system in
which a pilot pump provides fluid across a pilot
relief valve disposed in a second flow line, and that
the second flow line is connected to the motor
return flow line; and
(c) Yoshimatsu ‘266 discloses a hydraulic fluid
control system that, inter alia, has a main relief
valve that is a combination relief valve and bypass
valve, the bypass valve function being provided for
the purpose of allowing the pressure source to be
unloaded when not needed to provide pressurized
fluid.
Appellant does not contest these findings. (FF 1). The Examiner
concluded that it would have been obvious to modify the system disclosed in
Yoshimatsu ‘742 to have the second flow line connected to the motor return
flow line, in view of the teachings of Krusche, and to make the main return
valve of Yoshimatsu ‘742 a combination relief and bypass valve, in view of
the teachings of Yoshimatsu ‘266. (Answer 4-5). Appellant does not argue
that the combined teachings fail to meet any of the claim limitations. Rather,
Appellant argues only that the Examiner improperly combined the teachings
of both Krusche and Yoshimatsu ‘266 with the teachings of Yoshimatsu
‘742 in arriving at the conclusion of obviousness. (Appeal Br., passim;
Reply Br., passim).
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The Examiner asserts that the connection between the pilot relief
valve and the tank in the Yoshimatsu ‘742 patent and in the Krusche patent
are “functionally equivalent”, and that it therefore would have been obvious
to modify the Yoshimatsu ‘742 system to connect the second flow line
disclosed therein to the motor return flow line, in view of the teachings of
Krusche, “as a matter of engineering expediency.” (Answer 4-5). The
Examiner further explains this position in the “Response to Argument”
section of the Answer. There, the Examiner notes that when the physical
layout of the system results in the pilot pressure relief valve being physically
positioned remotely from the fluid tank, instead of running both the second
flow line and the motor return flow line to the fluid tank, it is simpler to join
the second flow line to the motor return flow line, and run only one line to
the fluid tank. (Answer 7). The Examiner asserts that this is what the
Krusche system is showing.
Appellant counters that there is no suggestion to modify the
Yoshimatsu ‘742 system because nothing in the record supports the
Examiner’s allegation of functional equivalence between Yoshimatsu ‘742
and Krusche, and because the Examiner’s proffered reason to combine the
teachings of the two references is not supported by those teachings.
Since the Examiner has elucidated a reason to combine the teachings
of Yoshimatsu ‘742 and Krusche, the issue as to whether the Examiner has
properly established that the two pilot relief valve/tank discharge systems
are functionally equivalent is of relatively little or no significance. In KSR,
the Supreme Court instructed that a legal conclusion of obviousness is to be
assessed on the basis of whether there is an apparent reason to combine the
teachings of the references, and that this should be expressed and supported
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with some articulated reasoning having some rational underpinning. KSR
Int’l., 550 U.S. at 418.
The Examiner’s conclusion is founded on the assertion that it would
have been obvious to connect the second flow line having the pilot relief
valve disposed therein to the motor return flow line, in order to simplify the
system’s physical layout. Appellant responds that Krusche fails to mention
any reason to connect the second flow line to the motor return flow line, and
that the Yoshimatsu ‘742 and Krusche references do not support the
Examiner’s position. (Reply Br. 4-5).
That Krusche does not mention why the system therein has the second
flow line connected to the motor return flow line has little to no probative
value. The proper analysis or test is what a person of ordinary skill in the art
would glean from the reference. The Examiner takes the position that
Krusche shows that the joining of these lines results in a simpler system
configuration. Appellant argues in reply that:
it may not be “simpler” to connect the … “second
flow line” of Yoshimatsu ‘742 to the motor return
flow line, since such connection may necessitate a
more complex control of the Yoshimatsu ‘742
hydraulic system.

For example, by virtue of Appellant’s second flow
line being connected to the motor return flow line,
Appellant’s system is more complex than if the
second flow line were connected directly to the
tank. … In fact, Appellant’s second flow line is
configured to provide a make-up fluid to a motor, a
function of the pilot pump and pilot relief valve
that is not disclosed in either Yoshimatsu ‘742 or
Krusche.
(Reply Br. 5).
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The equivocation expressed in the former argument is far from
persuasive that the Examiner’s contention is in error. The latter argument is
misdirected, firstly in that it misapprehends how the Examiner proposes to
modify the Yoshimatsu ‘742 system, and secondly in that it seeks to
establish that the proposed modification would lead to a more complex
system by making reference to an embodiment of Appellant’s system that is
narrower than the scope of claim 1 under consideration.
The Examiner does not propose that the Yoshimatsu ‘742 system be
modified such that the second flow line will be not only connected to the
motor return flow line, but also configured to provide a make-up fluid to a
motor. Claim 1 is not so limited; it requires only that one (“at least one”) of
the first and second flow lines be configured to provide make-up fluid to the
motor. (Appeal Br., Claims Appendix, Claim 1). The Examiner specifically
notes that the proposed modification to Yoshimatsu ‘742 would have the
second flow line connected to the motor return flow line between the main
relief valve and the tank. (Answer 5). The Examiner further points out that
the second flow line is not claimed as being connected before or after the
back pressure element, and, as noted immediately above, claim 1 does not
require that the second flow line be configured to provide make-up fluid to
the motor. (Answer 8). It is those unclaimed features of Appellant’s system
that might potentially lead to the modified Yoshimatsu ‘742 system being
more complex, as asserted by Appellant.
Appellant’s challenge to the combining of the teachings of
Yoshimatsu ‘266 with the teachings of Yoshimatsu ‘742 also falls short.
Appellant contends that the Examiner relies solely on an assertion that the
two references are in the same field of endeavor, such that the purpose
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disclosed in Yoshimatsu ‘266 would have been recognized in the pertinent
art of Yoshimatsu ‘742. (Appeal Br. 14). Appellant then asserts that neither
of the references “provides any suggestion of a desirability of making the
Examiner’s proposed, hypothetical modification”, and “[f]or at least that
reason, there is no legally sufficient suggestion or motivation to make the
[modification]”. Considering that Appellant has essentially ignored the
Examiner’s stated reason to combine the teachings, Appellant appears to be
arguing that an explicit suggestion or motivation must be found within the
references themselves in order to establish a legally sufficient prima facie
case of obviousness.
Citation to an explicit teaching, suggestion and motivation (TSM)
from within the references themselves was not required even before the
Supreme Court in KSR ruled that a rigid application of the TSM test was
erroneous as being inconsistent with its prior precedent. See In re Baird, 16
F.3d 380 (Fed. Cir. 1994) (what a reference teaches, and what it suggests,
are two different inquiries); WMS Gaming Inc. v. International Gaming
Technology, 184 F.3d 1339 (Fed. Cir. 1999) (suggestion to combine may be
found in explicit or implicit teachings within the references themselves,
from the ordinary knowledge of those skilled in the art, or from the nature of
the problem to be solved). The decision in KSR makes it clear that a rigid
adherence to a TSM test is inconsistent with Supreme Court precedent, and
that a conclusion of obviousness based upon a combination of references is
to be founded on an apparent reason to combine the teachings, preferably
expressed in the form of an explicit analysis containing articulated reasoning
with some rational underpinning. KSR, 550 U.S. at 418.
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Here, the Examiner finds that Yoshimatsu ‘742 and Yoshimatsu ‘266
are both from the same field of endeavor, based on specific findings relative
to the constructional and functional details of the disclosures of these
references, and concludes that it would have been obvious to make the main
relief valve in Yoshimatsu ‘742 a combination relief and bypass valve, as
disclosed in Yoshimatsu ‘266, for the purpose of being able to unload the
pressure source when it is not needed for providing pressurized fluid.
(Answer 5). Appellant does not directly contest the findings or that the
reason to combine as set forth by the Examiner is flawed in any manner.
Appellant further argues that the combination of Yoshimatsu ‘266
with Yoshimatsu ‘742 is improper because the modification proposed in
view of the combined teachings would change the principle of operation of
the Yoshimatsu ‘742 system. (Appeal Br. 15). Specifically, Appellant
contends that the hydraulic control system of Yoshimatsu ‘742 is a purely
mechanical control system, whereas Yoshimatsu ‘266 employs an electronic
controller to control, inter alia, an electromagnetic selector valve that is part
of the main relief valve. (Appeal Br. 15-16). In short, Appellant contends
that if the Examiner’s proposed modification were adopted, “the Yoshimatsu
‘742 system’s principle of operation would need to be changed from
mechanical control to electronic control…”. (Appeal Br. 16).
The Examiner points out, in response, that the Yoshimatsu ‘742 patent
discloses an embodiment (Fig. 5 therein) in which electronic control is
employed, and that that embodiment is otherwise essentially identical to the
embodiment shown in Figure 3 (the embodiment principally relied on by the
Examiner), which employs purely mechanical control. (Answer 9). The
Examiner asserts that this disclosure provides motivation to make the
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combination, or, alternatively, the combination of the electronically-
controlled relief valve of Yoshimatsu ‘266 with the Figure 5 embodiment of
Yoshimatsu ‘742 would involve no change in the principle of operation of
that embodiment. (Id.). We note that Yoshimatsu ‘742 states that the
electrical control means in the Figure 5 embodiment enhances the response
speed and reliability of the hydraulic control circuit. (FF 2).
Even if we accept Appellant’s contention that the Examiner’s
proposed modification would require a change from mechanical control to
electrical control, that does not amount to a change in the principle of
operation of the Yoshimatsu ‘742 hydraulic system. Rather, it amounts to
simply a substitution of one known control technique for another known
control technique for controlling a main relief valve and other components
of the hydraulic system. Yoshimatsu ‘742, in disclosing both mechanical
and electrical control systems for essentially the same hydraulic system,
plainly evidences that the implementation of either of these types of control
systems is well within the level of skill in the art.
Appellant has failed to persuade us of error in the Examiner’s
conclusion that the subject matter of claim 1 would have been obvious to a
person of ordinary skill in the art. We will sustain the rejection of claim 1,
as well as the rejection of claims 4, 15 and 16, which will fall with claim 1.

Claims 5, 7, 9, 10, 12-14 and 21--Obviousness over Yoshimatsu ‘742 in view
of Krusche, Yoshimatsu ‘266, and Chung
Appellant relies solely on the arguments for patentability advanced
with respect to the alleged nonobviousness of claims 1, 4, 15 and 16 over
Yoshimatsu ‘742, Krusche and Yoshimatsu ‘266. Appellant further
contends that the teachings of Chung do not overcome the alleged
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deficiencies of these references in rendering obvious the claimed subject
matter. For the same reasons as set forth above, we will sustain this
rejection.

CONCLUSIONS
Appellant has not established that the Examiner erred in rejecting
claims 1, 4, 15, and 16 under 35 U.S.C. § 103(a) as being unpatentable over
Yoshimatsu ‘742, Krusche, and Yoshimatsu ‘266. Appellant also has not
established that the Examiner erred in rejecting claims 5, 7, 9, 10, 12-14 and
21 under 35 U.S.C. § 103(a) as being unpatentable over Yoshimatsu ‘742,
Krusche, Yoshimatsu ‘266 and Chung.

ORDER
The decision of the Examiner to reject claims 1, 4, 5, 7, 9, 10, 12-16
and 21 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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