Ex Parte Yoshioka

Board of Patent Appeals and Interferences

Aug 30, 2006

10115000 (B.P.A.I. Aug. 30, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JUN YOSHIOKA
____________

Appeal No. 2006-1440
Application No. 10/115,000
Technology Center 3700
____________

Decided: August 30, 2006
____________

Before OWENS, CRAWFORD and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's rejection of claims 1-20.
We AFFIRM-IN-PART and enter new grounds of rejection pursuant to 37
CFR § 41.50(b).
Appeal No. 2006-1440 Page 2
Application No. 10/115,000

BACKGROUND
The appellant's invention relates to a spring biased check valve that reacts
primarily to fluid flow rather than strictly in response to a pressure gradient across
the valve. Claim 1 is illustrative of the claimed subject matter and reads as
follows.
1. A hydraulic flow switch comprising:

a reservoir body having an opening to permit flow
therethrough from inside said reservoir body to outside
said reservoir body;

a valve body having a valve head and a valve stem,
said valve stem being disposed within said opening and
longitudinally slidable therein to facilitate displacement
of said valve head between an open position to permit
fluid flow through said opening and a closed position to
substantially prohibit fluid flow through said opening,
said valve head being positioned in an unconfined area of
said reservoir relative to an area of said valve head;

a biasing member connected to said valve body
and applying a biasing force to said valve body to bias
said valve body in said open position,

wherein said area of said valve head is
substantially larger than a passable area through said
opening such that, when a pressure differential between
said inside of said reservoir body and said outside [sic:
of] said reservoir body is insufficient to overcome said
biasing force, fluid flow across said valve induces a
Appeal No. 2006-1440 Page 3
Application No. 10/115,000

significantly increased pressure gradient across said
valve head to overcome said biasing force and cause said
valve head to move to said closed position.

The examiner relies upon the following as evidence of unpatentability:
Beymer US 2,647,533 Aug. 4, 1953
Morton US 3,454,182 Jul. 8, 1969

The following rejections are before us for review.
Claims 1-3, 6-10, 13, 14 and 16 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Beymer.
Claims 18 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Beymer.
Claims 4, 5, 11, 12, 15, 17 and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Beymer in view of Morton.
Rather than reiterate the conflicting viewpoints advanced by the examiner
and the appellant regarding this appeal, we make reference to the examiner's
answer (mailed June 29, 2005) for the examiner's complete reasoning in support of
the rejections and to the appellant's brief (filed March 17, 2005) and reply brief
(filed August 31, 2005) for the appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration
to the appellant's specification and claims, to the applied prior art, and to the
Appeal No. 2006-1440 Page 4
Application No. 10/115,000

respective positions articulated by the appellant and the examiner. As a
consequence of our review, we make the following determinations.
The examiner has rejected claims 1-3, 6-10, 13, 14 and 16 as being
anticipated by Beymer, claims 18 and 19 as being unpatentable over Beymer, and
claims 4, 5, 11, 12, 15, 17 and 20 as being unpatentable over Beymer in view of
Morton. We recognize the inconsistency implicit in our issuance of a new ground
of rejection, infra, of claims 1-17 and 20 under 35 U.S.C. § 112, second paragraph,
as being indefinite for failing to particularly point out and distinctly claim the
invention, with a holding that any of these same claims are unpatentable under 35
U.S.C. § 102 or 103. Normally, when substantial confusion exists as to the
interpretation of a claim and no reasonably definite meaning can be ascribed to the
terms in a claim, a determination as to patentability under 35 U.S.C. § 102 or 103
is not made. See In re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA
1962) and In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970).
However, in this instance, we consider it to be desirable to avoid the inefficiency of
piecemeal appellate review. See Ex parte Ionescu, 222 USPQ 537, 540 (Bd. App.
1984). For the reasons outlined below, we interpret appellant’s claims as requiring
that the area of the valve head be sufficiently larger than a passable area through
the opening that the biasing force of the biasing member can be overcome by a
combined force generated by a pressure differential between the inside and outside
of the reservoir body and the flow of fluid across the valve. Therefore, we have
Appeal No. 2006-1440 Page 5
Application No. 10/115,000

made a determination below as to the prior art rejections of the appealed claims in
the interest of judicial economy.
Beymer discloses a drain plug for pipe lines, particularly portable or
otherwise moveable pipe lines for field sprinkling systems, the drain plug
comprising a circular opening 15 in the end wall 14 of a cylindrical sleeve 13 on
the end of a pipe line, a grommet 16 seated in the opening, a valve stem 19, a disc
valve head 20 and a spiral spring 22 bearing against the valve head to bias it
inwardly to the open position. The outer end of the valve stem is threaded and
supports a nut 21 whereby extent of inward movement of the valve may be
adjustably limited. As explained by Beymer in the sentence bridging columns 2
and 3, adjustment of the position of the nut determines the extent of opening
movement of the valve and therefore the rate of escape of water from the interior of
the pipe line when the valve is open. The nut adjustment also permits the alteration
of the pressure at which the valve opens and closes and the flow characteristics
through the valve when it is opened (col. 1, ll. 52-55).
Appellant (brief, p. 7) argues that Beymer fails to disclose a valve head
positioned in an unconfined area of a reservoir as called for in each of appellant’s
independent claims 1, 8 and 16. The area of any reservoir is necessarily to some
extent confined in order to contain fluid therein so as to form a reservoir. As
pointed out by the examiner (answer, p. 9), Beymer’s valve is positioned in the end
wall of the reservoir (sleeve 13, which is substantially the same diameter as the
remainder of the pipe 10, and pipe 10) within the conduit defined by the
Appeal No. 2006-1440 Page 6
Application No. 10/115,000

boundaries of the end wall and sleeve and is not in any way uniquely confined
relative to the area of the sleeve 13 and pipe 10 (the reservoir). We also note that
the cross-sectional area of the sleeve 13 is noticeably larger than that of the disc
valve head 20. The examiner’s determination that Beymer’s drain valve is in an
“unconfined” area of the reservoir relative to an area of the valve head is thus
reasonably supported by the reference.
Appellant also argues that Beymer’s valve head is not substantially larger
than the opening but, rather, is only slightly larger than the opening (brief, p. 7).
As discussed below in the new ground of rejection of claims 1-17 and 20 under the
second paragraph of 35 U.S.C. § 112 as being indefinite, the only criterion
appellant’s specification provides to define what constitutes the valve head being
substantially larger than the passable area of the opening is that the biasing force of
the spring can be overcome by the combined force generated by a pressure
differential between the inside and outside of the pipe (reservoir) and the fluid flow
or velocity across the valve. As the pressure in Beymer’s pipe 10 and sleeve 13
approaches the critical pressure at which the valve is set, by the adjustable nut 21,
to close, a situation arises where the pressure differential itself is insufficient to
overcome the biasing force but the component of force contributed by the pressure
gradient resulting from fluid flow across the valve pushes it to or over the critical
pressure, thereby shutting the valve. We therefore find that the area of Beymer’s
disc valve head 20 is substantially larger than a passable area of the opening as
called for in the claims.
Appeal No. 2006-1440 Page 7
Application No. 10/115,000

For the reasons set forth above, appellant’s arguments fail to persuade us of
any error on the part of the examiner in rejecting claims 1-3, 6-10, 13, 14 and 16 as
being anticipated by Beymer. The rejection is sustained.
The rejections of claims 18 and 19 as being unpatentable over Beymer and
claims 4, 5, 11, 12, 15, 17 and 20 as being unpatentable over Beymer in view of
Morton, on the other hand, are not sustained. Our reasons follow.
With respect to claims 18 and 19, the examiner has not pointed to any
teaching or suggestion in Beymer to modify the Beymer valve to satisfy the
relative area dimensions called for in these claims. Rejections based on 35 U.S.C.
§ 103 must rest on a factual basis. In making such a rejection, the examiner has the
initial duty of supplying the requisite factual basis and may not, because of doubts
that the invention is patentable, resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in the factual basis. In re Warner,
379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S.
1057 (1968). Moreover, it is elementary that to support an obviousness rejection,
all of the claim limitations must be taught or suggested by the prior art applied (see
In re Royka, 490 F.2d 981, 984-85, 180 USPQ 580, 582-83 (CCPA 1974)) and that
all words in a claim must be considered in judging the patentability of that claim
against the prior art (In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496
(CCPA 1970)). The examiner’s mere dismissal of these limitations as being “an
obvious design expedient” (answer, p. 7) is inappropriate.
Appeal No. 2006-1440 Page 8
Application No. 10/115,000

With respect to the rejection of claims 4, 5, 11, 12, 15, 17 and 20 as being
unpatentable over Beymer in view of Morton, we find absolutely no suggestion in
Morton to modify Beymer’s disc valve head 20 to provide bleed grooves on the
inner surface thereof. The examiner’s assertion with respect to permitting higher
fluid pressure upstream of the valve to equalize with fluid pressure downstream of
the valve once the upstream valve is shut off, permitting the valve to reopen
automatically, is unsupported by the applied references.
NEW GROUND OF REJECTION
Pursuant to our authority under 37 CFR § 41.50(b), we enter the following
new grounds of rejection.
Claims 1-17 and 20 are rejected under 35 U.S.C. § 112, second paragraph, as
failing to particularly point out and distinctly claim the invention.
The terms “substantially” and “significantly” are terms of degree. When a
word of degree is used, such as the term "substantially" in independent claims 1, 4,
8 and 16 and the term “significantly” in claim 1, it is necessary to determine
whether the specification provides some standard for measuring that degree. See
Seattle Box Company, Inc. v. Industrial Crating & Packing, Inc., 731 F.2d 818,
826, 221 USPQ 568, 573-74 (Fed. Cir. 1984).
Admittedly, the fact that some claim language, such as the terms of degree
mentioned supra, may not be precise, does not automatically render the claim
indefinite under the second paragraph of § 112. Id. Nevertheless, the need to
cover what might constitute insignificant variations of an invention does not
Appeal No. 2006-1440 Page 9
Application No. 10/115,000

amount to a license to resort to the unbridled use of such terms without appropriate
constraints to guard against the potential use of such terms as the proverbial nose
of wax (see White v. Dunbar, 119 U.S. 47, 51 52 (1886) and Townsend
Engineering Co. v. HiTec Co. Ltd., 829 F.2d 1086, 1089-91, 4 USPQ2d 1136,
1139-40 (Fed. Cir. 1987).
In Seattle Box, the court set forth the following
requirements for terms of degree:
When a word of degree is used the district court must
determine whether the patent's specification provides
some standard for measuring that degree. The trial court
must decide, that is, whether one of ordinary skill in the
art would understand what is claimed when the claim is
read in light of the specification.

Although appellant has sprinkled the term “substantially” quite generously
throughout the claims, the occurrence of this term in the clause “wherein said area
of said valve head is substantially larger than a passable area through said
opening” in each of independent claims 1, 4, 8 and 16 is of particular concern to
us. The term “substantially” appears in this context on page 6 of the specification,
wherein it is stated that “D0 is substantially larger than the diameter of the opening
D [sic D1],” without any accompanying quantitative discussion of how much larger
D0 must be. Additionally, a numerical example, in which D0 is 25 mm, D1 is 5mm
and D is 3 mm, is provided on page 8 of the specification. There is no indication
Appeal No. 2006-1440 Page 10
Application No. 10/115,000

that this numerical example represents a minimum required ratio or has any other
particular significance to the appellant’s invention.
Appellant’s specification (p. 1, ll. 8-10 and p. 10, ll. 8-12) describes the
inventive valve as being one that reacts primarily to fluid flow as opposed to a
strict reliance on a pressure gradient across the valve. We find that this would lead
one of ordinary skill in the art to consider the area of a valve head to be
“significantly” larger than a passable area through the opening, as recited in
appellant’s claims 1, 4, 8 and 16, if the valve reacts primarily to fluid flow as
opposed to pressure differential across the valve. As illustrated by the expression
of F in line 15 on page 7 of appellant’s specification, the force on the valve head
acting against the biasing spring to shut the valve is in part dependent on the
pressure differential between inside and outside of the reservoir and in part
dependent on forces from pressure gradients generated by fluid flow through the
gap between the valve head and the reservoir wall. Accordingly, it certainly
appears that a sufficiently large pressure differential between the inside and outside
of the reservoir will produce sufficient force to overcome the bias of the spring
regardless of the area of the valve head relative to the opening, especially where
the gap g is sufficiently small that the fluid velocity through the gap is relatively
high for a given fluid flow rate. In any event, appellant’s specification does not
give any guidance as to what is meant by the description that the valve reacts
“primarily” to fluid flow as opposed to strict reliance on a pressure gradient across
the valve. Stated differently, there are no standards provided in appellant’s
Appeal No. 2006-1440 Page 11
Application No. 10/115,000

specification by which one of ordinary skill in the art would be able to determine
whether the contribution to force from the fluid flow or velocity is a sufficiently
large portion of the entire force F exerted on the valve body that the valve is
reacting “primarily” to flow or velocity as opposed to pressure differential so as to
satisfy the limitation of claims 1, 4, 8 and 16 that the area of the valve head is
substantially larger than a passable area through said opening or the limitation of
claim 1 that fluid flow across the valve induces a significantly increased pressure
gradient across the valve head.
In light of the above, we conclude that one of ordinary skill in the art would
not be able to determine, with any certainty, the metes and bounds of independent
claims 1, 4, 8 and 16 or claims 2, 3, 5-7, 9-15, 17 and 20 depending therefrom.
Claims 18 and 19 more specifically recite the relative diameters of the opening and
the valve head and thus do not suffer the same deficiency.
Claim 18 is rejected under 35 U.S.C. § 112, first paragraph, as containing
subject matter that was not described in the specification so as to convey to one of
ordinary skill in the art that the appellant was in possession of the now claimed
invention at the time the application was filed.
Claim 18 recites that the diameter of the valve head is “at least three times”
that of the opening. As explained above, appellant’s specification does not give
any quantitative requirements as to how much larger than the diameter of the
opening the diameter of the valve head must be. The only quantitative dimensional
information given about the opening and the valve head is in the “numerical
Appeal No. 2006-1440 Page 12
Application No. 10/115,000

example” on page 8 of the specification, which provides a valve head diameter D0
of 25 mm and an opening diameter D1 of 5 mm. While this might provide support
for a limitation that the valve head diameter is five times that of the opening and,
when considered within the context of the entirety of the specification, might even
provide support for a valve head diameter of at least five times that of the opening,
it does not provide support for the rest of the claimed range, which includes a valve
head diameter of from at least three times to less than five times that of the
opening.

CONCLUSION
To summarize, the rejection of claims 1-3, 6-10, 13, 14 and 16 as being
anticipated by Beymer is sustained and the rejections of claims 18 and 19 as being
unpatentable over Beymer and claims 4, 5, 11, 12, 15, 17 and 20 as being
unpatentable over Beymer in view of Morton are reversed. New rejections of
claims 1-17 and 20 under the second paragraph of 35 U.S.C. § 112 and claim 18
under the first paragraph of 35 U.S.C. § 112 are entered pursuant to 37 CFR §
41.50(b).
Regarding the affirmed rejection(s), 37 CFR § 41.52(a)(1) provides
“[a]ppellant may file a single request for rehearing within two months from the
date of the original decision of the Board.”
In addition to affirming the examiner's rejection(s) of one or more claims,
this decision contains new grounds of rejection pursuant to 37 CFR § 41.50(b)
Appeal No. 2006-1440 Page 13
Application No. 10/115,000

(effective September 13, 2004, 69 Fed. Reg. 49960 (August 12, 2004), 1286 Off.
Gaz. Pat. Office 21 (September 7, 2004)). 37 CFR § 41.50(b) provides “[a] new
ground of rejection pursuant to this paragraph shall not be considered final for
judicial review.”
37 CFR § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new grounds of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence
relating to the claims so rejected, or both, and have the
matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner. . . .

(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board upon
the same record. . . .

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Application No. 10/115,000

Should the appellant elect to prosecute further before the examiner pursuant
to 37 CFR § 41.50(b)(1), in order to preserve the right to seek review under
35 U.S.C. § 141 or 145 with respect to the affirmed rejection, the effective date of
the affirmance is deferred until conclusion of the prosecution before the examiner
unless, as a mere incident to the limited prosecution, the affirmed rejection is
overcome.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART; 37 CFR § 41.50(b)

TERRY J. OWENS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MURRIEL E. CRAWFORD ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 2006-1440 Page 15
Application No. 10/115,000

Liniak, Berenato, Longacre & White
Ste. 240
6550 Rock Spring Drive
Bethesda, MD20817

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