Ex Parte Younger

Patent Trial and Appeal Board

Sep 21, 2017

13507807 (P.T.A.B. Sep. 21, 2017)

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.
13/507,807 07/30/2012 Gilbert W. Younger 404-042 6063
2529 7590
MARK P. STONE
400 Columbus Avenue
Valhalla, NY 10595
09/25/2017 EXAMINER
BARRY, DAPHNE MARIE
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
09/25/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
stone92349 @ msn. com
aleitner. stonelaw @msn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GILBERT W. YOUNGER
Appeal 2016-001246
Application 13/507,807* 1
Technology Center 3700
Before ANNETTE R. REIMERS, JEFFREY A. STEPHENS, and
NATHAN A. ENGELS, Administrative Patent Judges.
ENGELS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies Mertec Corp. as the real party in interest. Appeal Br.
1.
Appeal 2016-001246
Application 13/507,807
ILLUSTRATIVE CLAIM
Appellant’s Specification states that “[t]he primary object of the
present invention is to protect the torque converter of a ‘factory installed’
automotive transmission from damage resulting from over-pressurization.”
Spec. 4. Specifically, “a spacer element is arranged to act on the valve
element to limit the valve stroke,” and by limiting the valve stroke and
thereby limiting the compressive forces applied to the check valve spring,
the spacer element reduces the wear on the spring. Spec. 4.
Claims 1, 8, and 18 are independent claims. Claims 1 and 8, copied
below, are illustrative of the claimed subject matter:
1. A method of converting an automotive
transmission, said method comprising the steps of:
providing a torque converter check valve having a valve
element movable between a fully closed position and a fully
opened position as a result of hydraulic pressure applied to said
valve element to move said valve element in a first direction, and
a resilient element applying a resilient force on said valve
element to move said valve element in a second direction, and
converting said automotive transmission by limiting the
movement of said valve element to prevent said valve element
from moving into said fully opened position for reducing wear
on said resilient element by mounting a separate spacer element
directly on said valve element such that said spacer element is
conjointly movable with said valve element.
8. In a torque converter check valve for an automotive
transmission,
said torque converter check valve including a valve
element,
a resilient element acting on said valve element to move
said valve element in a first direction,
said valve element being movable in a second direction
upon the application of hydraulic pressure to said valve element,
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Application 13/507,807
said resilient element being expanded when said valve
element moves in said first direction, and said resilient element
being compressed when said valve element moves in said second
direction,
the improvement comprising a separate spacer element
directly mounted on said valve element and conjointly movable
with said valve element for limiting movement of said valve
element to prevent said valve element from moving into a fully
opened position.
THE REJECTIONS
Claims 1—20 stand rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite for failing to particularly point out and distinctly claim
the subject matter which the inventor regards as the invention. Ans. 2—3.
Claims 8—16 and 18—20 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Hatcher et al. (US 2,011,812, issued Aug. 20, 1935).
Ans. 3—8.
Claims 1—7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable in view of Younger (US 6,913,554 B2; issued July 5, 2005)
and Hatcher. Ans. 8—12.
Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable in view of Hatcher and Lin et al. (US 2011/0079496 Al;
published Apr. 7, 2011). Ans. 12.
ANALYSIS
Having considered the Examiner’s rejections in light of Appellant’s
arguments and the evidence of record, we disagree with the Examiner’s
rejection of claims 1—20 as indefinite, but we agree with the Examiner’s
rejections of claims 1—20 over the cited prior art. We address the
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Application 13/507,807
Examiner’s indefiniteness rejection and the scope of Appellant’s claims first,
followed by the Examiner’s prior art rejections.
The Final Office Action, mailed April 7, 2015, included a rejection of
claims 1—20 under 35 U.S.C. § 112, second paragraph, as indefinite based on
the phrase “a fully opened position.” Final Act. 4. The Advisory Action,
mailed May 20, 2017, stated that “[f]rom the [Ajpplicant’s arguments filed
April 20, 2015, it is clear that the ‘fully opened position’ is when either the
resilient element is fully compressing or the valve element sits on the bottom
wall of the housing. The [Ajpplicant’s arguments have obviated the
necessity of the 112 rejection in the April 7, 2015, [Final Ojffice [Ajction.”
Advisory Act. 2. The Examiner’s Answer, however, reiterated the
Examiner’s rejection of claims 1—20 under 35 U.S.C. § 112, second
paragraph, with the Examiner stating that the phrase “a fully opened
position” is unclear. Ans. 2—3.
We disagree with the Examiner that claims 1—20 are indefinite. We
agree, however, with the Examiner’s interpretation of the claims’ scope.
As an initial matter, we note that Appellant’s claims do not recite “a
fully opened position” as an affirmative claim limitation; apparatus claim 8,
for example, requires a “separate spacer element” described with the
functional requirement of preventing a valve element from moving into a
fully opened position. Appellant’s Specification provides context for this
limitation, stating “Figure 4 . . . illustrates a modification of the ‘factory
installed’ automotive transmission in accordance with the present invention”
and “the spacer element 12 prevents the valve element 4 from moving into
its maximum downward position (as illustrated by Figure 3) when the torque
converter check valve is in its fully opened position.” Spec. 8. The
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Application 13/507,807
Specification also states “[i]n the fully opened position of the torque
converter check valve as shown by Figure 3, the valve element 4 has moved
into its lowermost position, and the check valve spring is in its most
compressed position.” Spec. 7. Copied below are Appellant’s Figures 3 and
4.
WfSvjRU
Both Figures 3 and 4 depict valve element 4 in its maximum
downward positions, with Figure 4 depicting spacer element 12 limiting the
valve’s range of travel in the downward direction. In other words, the
maximum downward position in Figure 4 is “higher” (as depicted in Figure
4) than the maximum downward position in Figure 3.
Interpreting claim 8 as illustrative, we conclude a “spacer element. . .
for limiting movement of said valve element to prevent said valve element
from moving into a fully opened position” includes a spacer element that
limits a valve element’s movement in the open direction. That interpretation
is consistent with the plain language of claim 8 read in light of Appellant’s
Specification.
As such, we disagree with the Examiner that claims 1—20 are
indefinite. Although we do not sustain the Examiner’s indefmiteness
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Application 13/507,807
rejection of claims 1—20, as explained below, we agree with the Examiner’s
findings and conclusions in the anticipation and obviousness rejections of
claims 1—20.
The Examiner’s rejections and Appellant’s arguments focus primarily
on Hatcher’s Figure 1, coped below. See Final Act. 5—6 (citing Hatcher Fig.
1, 1:42—2:17); App. Br. 7; Reply Br. 3.
As described by Appellant, “Figure 1 of the Hatcher patent illustrates the
valve in its fully closed position . . . [and as] the valve (10, 11, 12) moves
upwardly into its opened position, the top of valve stem 13 moves into a
guide 21 in a cap 20.” App. Br. 7 (underline omitted). Appellant argues
there is no disclosure in the Hatcher patent that the valve is not in its fully
opened position when the upper portion of the valve stem 13 is fully
received within the guide 21 of the cap 20. App. Br. 7; Reply Br 3.
Appellant also argues there is no teaching, suggestion, or recognition by
Hatcher of reducing wear on the spring element. App. Br. 7; Reply Br. 4.
Appellant’s arguments are not persuasive of error because Appellant’s
arguments are not commensurate with the scope of Appellant’s claims. As
explained above, Appellant’s claims do not affirmatively require “a fully
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Application 13/507,807
opened position.” Similarly, although Appellant’s arguments regarding
“reducing wear” do not identify any claim limitations specifically, we note
that the language in claim 1 that recites limiting movement of a valve
element “for reducing wear on said resilient element” merely states the
intended result of the claimed limiting step and does not distinguish the prior
art that performs those steps. See App. Br., Claims App’x (“limiting the
movement of said valve element to prevent said valve element from moving
into said fully opened position for reducing wear on said resilient element
by mounting a separate spacer element directly on said valve element such
that said spacer element is conjointly movable with said valve element”)
(emphasis added).
To the contrary, the Examiner finds, and we agree, that Hatcher’s
Figure 1 depicts a spacer element 13 that limits the movement of a valve
element 10, 11, 12 in the open direction. Final Act. 5—6 (citing Hatcher Fig.
1, 1:42—2:17; cf Reply Br. 3 (“there is simply no disclosure in the Hatcher
patent that the valve is not in its fully opened position when the upper
portion of the valve stem 13 is fully received within the guide 21 of the cap
20”). The Examiner’s prior art rejections of each of claims 1—20 reflects the
correct claim interpretation explained above, and we agree with the
Examiner’s findings, conclusions, and reasons. As such, we affirm the
Examiner’s rejections of independent claims 1, 8, and 18, as well as
dependent claims 2—7, 9-17, 19, and 20, which Appellant does not address
separately.
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DECISION
For the above reasons, we reverse the Examiner’s indefinite rejection
of claims 1—20, and we affirm the Examiner’s prior art rejections of claims
1-20.
No time period for taking any subsequent action in connection with
this appeal maybe extended. 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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