Mueller International, LLC

Patent Trials and Appeals Board

Oct 15, 2021

2020006103 (P.T.A.B. Oct. 15, 2021)

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.
16/109,934 08/23/2018 Yanlong Li 191373-1560 9865
118983 7590 10/15/2021
Taylor English Duma LLP / Mueller
1600 Parkwood Circle, Suite 200
Atlanta, GA 30339
EXAMINER
PILKINGTON, JAMES
ART UNIT PAPER NUMBER
3656
MAIL DATE DELIVERY MODE
10/15/2021 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
____________

Ex parte YANLONG LI, PAUL S. GIFFORD, and
WALTER PIERCE WOJICK
____________

Appeal 2020-006103
Application 16/109,934
Technology Center 3600
____________

Before CYNTHIA L. MURPHY, BRUCE T. WIEDER, and
TARA L. HUTCHINGS, Administrative Patent Judges.

HUTCHINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–6. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies Mueller International, LLC, as the real party in
interest. Appeal Br. 2.
Appeal 2020-006103
Application 16/109,934

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CLAIMED INVENTON
Appellant’s claimed invention relates to municipal water control.
Spec. ¶ 1. In particular, the claimed invention relates to an improved
bearing system for a fire hydrant that supplies water for fire relief in a
variety of municipal water supply applications. Id. ¶¶ 2, 4. Appellant’s
Specification describes that a conventional fire hydrant 100 includes
conventional bearing 200 for reducing friction between op nut 110 and hold
down nut 170. Spec. ¶¶ 26–28, Fig. 2. Bearing 200 allows the fire hydrant
to be operated with reduced torque on op nut 110. Id. ¶ 26, Figs. 2, 3. A
problem with conventional bearing 200, however, is that it typically needs to
be made of metal, such as steel, which is a ferrous material subject to
corrosion in an aqueous environment. Id. Corrosion of the bearing results in
increased friction and reduced effectiveness and strength of the metal
bearing. Id. “Operation of a fire hydrant can be hindered when parts on the
fire hydrant do not work as intended.” Id. ¶ 2.
Claim 1, reproduced below, is the sole independent claim on appeal,
and is representative of the claimed subject matter:
1. A bearing system comprising:
a first bearing, the first bearing being annular in shape and
defining a ring aperture, the first bearing including a first surface
and a second surface;
a second bearing being substantially the same in construction
to the first bearing, a first surface of the second bearing
contacting a second surface of the first bearing,
wherein each of the bearings is constructed of nylon MDS.
Appeal Br. 13 (Claims Appendix).

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REJECTION
Claims 1–6 are rejected under 35 U.S.C. § 103 as unpatentable over
Sigelakis (US 8,640,728 B2, iss. Feb. 4, 2014) and Maughan (US 5,607,249,
iss. Mar. 4, 1997).

ANALYSIS
We agree with Appellant that the Examiner fails to provide reasoning
based upon rational underpinning to explain why a skilled artisan would
have modified Sigelakis’s thrust washers 208A, 208B to be constructed of
nylon MDS. See Appeal Br. 9–10; see also Reply Br. 2, 4–5. The
Examiner, recognizing that Sigelakis does not disclose that thrust washers
208A, 208B (i.e., the claimed first and second bearings) are constructed of
nylon MDS, as required by independent claim 1, finds that Maughan teaches
using “high performance” bearings out of “plastics[,] including Nylon
MDS.” Final Act. 2–3. The Examiner further determines that it would have
been a matter of obvious design choice to make Sigelakis’s thrust washers
out of nylon MDS, because “it has been held to be within the general skill of
a worker in the art to select a known material on the basis of [the] suitability
for the intended use.” Id. at 3 (citing In re Leshin, 277 F.2d 197
(CCPA 1960)). According to the Examiner, Maughan teaches a bearing
constructed of plastic having high performance characteristics, and using
this material in Sigelakis’s bearing system would also provide high
performance characteristics. Id. Yet, Maughan’s bearing system 41 differs
in structure and function from Sigelakis’s bearing system comprising two
thrust washers.
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In particular, Sigelakis teaches valve control device 200 for use in a
fire hydrant comprises operating nut 202, seals 204A, 204B, operating nut
sleeve 206, thrust washers 208A, 208B, and retaining ring 208C.
Sigelakis 1:5–6, 5:37–39, Fig. 2. Figure 2 is an exploded view of valve
control device 200 that shows each of thrust washers 208A, 208B in a
stacked configuration, where each thrust washer is annular in shape and
defines a ring aperture. See id. at Fig. 2.
In contrast, Maughan teaches that non-oscillating socket joint 20
includes rigid metallic socket member 22 and bracket style cylindrically
shaped rigid metallic stud 24, which is received in housing 26 of socket
member 22. Maughan 2:54–58, Fig. 1. To retain stud 24 within housing 26,
joint 20 uses a cylindrical, rim-supported, three-piece bearing set 41 having
a sleeve 42, cylindrical wedge bearing 43, and rim wedging bearing 44. Id.
at 3:5–8, Fig. 2. Non-oscillating joint 20 has various applications, including
as “pitman-idler arms of steering linkages for automotive applications.” Id.
at 5:18–20. A high performance plastic bearing set 41 is generally
envisioned, and nylon MDS is one of many “semi-rigid bearing materials”
identified as appropriate to use. See id. at 5:20–47. The Examiner does not
account for the difference in structure and function between Maughan’s
bearing set 41, comprising three different structures (i.e., a sleeve,
cylindrical wedge bearing, and rim wedging bearing), which is used to retain
a stud within a housing of a non-oscillating joint, and Sigelakis’s two
identical thrust washers, which are used in a valve control device for a fire
hydrant.
For similar reasons, the Examiner’s reliance on In re Leshin to support
the design choice rationale is unavailing. See Final Act. 3. In that case, the
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primary prior art reference taught a container similar in structure to the
claimed container dispenser for cosmetics, but the container was not formed
of molded plastic. See In re Leshin, 27 F.2d at 198 (“Appellant
acknowledges that [the primary reference] . . . ‘does disclose applicant’s
general structure but lacks . . . applicant’s molded plastic materials.’”). A
secondary prior art reference taught a similar container of molded plastic,
and the applicant conceded that the plastics used by applicant are well
known, but selected for a particular purpose. See id. at 199. The court held
that “[m]ere selection of known plastics to make a container-dispenser of a
type made of plastic prior to the invention, the selection of the plastics being
on the basis of suitability for the intended use, would be entirely
obvious.” Id. However, here, the prior art does not teach a bearing similar
in structure or function to the claimed bearing made of nylon MDS. Instead,
Maughan teaches a three-piece bearing set to retain a stud within a housing
that comprises a sleeve, a cylindrical wedge bearing, and a rim wedging
bearing. See In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992) (finding of
obvious design choice precluded when claimed structure and the function it
performs are different from the prior art).
Further, while Maughan teaches that nylon MDS may be used in the
three piece bearing set, Maughan also teaches that several other semi-rigid
materials are envisioned, including: polyethylene terephthalate; aramid
aromatic polyamide polymer fiber; aramid aromatic polyamide polymer
fiber combined with 6,6 polyamide; 6,6 polyamide; polyformaldehyde
polymer in oxymethylene linear structure with attached ester or ether
terminal groups; linear, amorphous polyester; polymerized acrylonitrile-
butadiene-styrene; linear polyurethane elastomer in a high-density, 75
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“Shore D” hardness range; ultrahigh molecular weight polyethylene;
chlorinated-polyvinyl-chloride, ethylene-hexene-1 copolymer,
polytetrafluoreoethylene (filled); polypropylene; and polyformaldehyde
polymer filled with polytetrafluoroethylene fibers. Maughan 5:21–47. The
Examiner also does not adequately explain how one of ordinary skill in the
art would select nylon MDS from among the several materials envisioned by
Maughan, particularly in light of Appellant disclosing that nylon MDS
contains ideal material properties that other nylon materials lack, resulting in
improved functionality. See In re Chu, 66 F.3d 292, 299 (Fed. Cir. 1995)
(holding that placement of SCR catalyst within bag retainer was not a matter
of mere design choice because it functioned differently); cf In re Kuhle, 526
F.2d 553, 555 (CCPA 1975) (“Use of such a means of electrical connection
in lieu of those used in the references solves no stated problem and would be
an obvious matter of design choice within the skill in the art.” (emphasis
added) (citations omitted)).
For example, Appellant’s Specification describes that in addition to
being a material that resists corrosion, molybdenum disulfide-filled nylon,
known as nylon MDS, assists “in load-bearing capacity, impact resistance,
wear resistance, and lubrication.” Spec. ¶ 30; see also id. at Table 1
(identifying material properties of nylon MDS, which the Specification
describes as suitable for use in the claimed invention). Further, nylon MDS
provides “ideal thickness characteristics that other nylon mixtures lack.”
Id. ¶ 30. If the bearing is too thick, it cannot fit between the op nut and the
hold down nut. Id. If the bearing is too thin, it can cause hydrant chattering
or other vibration of the bearing and other components within the fire
hydrant. Id. “[T]he nylon MDS construction of each bearing 2000 allows
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the surface interaction of bearing 2000a with bearing 2000b to be in sliding
friction of a very low amount.” Id. ¶ 32. “Because of the introduction of
[nylon MDS] each bearing 2000 can sustain the loads placed on the [fire
hydrant] by the op nut 110, the hold down nut 170, and the stem 160 without
failure.” Id.
For the reasons described above, the Examiner does not adequately
explain or support why it would have been an obvious design choice to form
Sigelakis’s thrust washers of nylon MDS. See Cutsforth, Inc. v.
MotivePower, Inc., 636 F. App’x 575, 578 (Fed. Cir. 2016) (holding that
“[m]erely stating that a particular [limitation] is a design choice does not
make it obvious”); see also Ex parte Maeda, Appeal No. 2010-009814, 2012
WL 5294326, at *3 (PTAB Oct. 23, 2012) (informative) (instructing that the
Board “discourage[s] examiners from relying on ‘design choice’ because it
is generally a mere conclusion, which is no substitute for obviousness
reasoning based on factual evidence”).
Without an articulated reason based on a rational underpinning for
modifying Sigelakis based on the teachings of Maughan, the Examiner’s
rejection appears to be the result of an impermissible hindsight
reconstruction. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007);
In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“It is impermissible to
use the claimed invention as an instruction manual or ‘template’ to piece
together the teachings of the prior art so that the claimed invention is
rendered obvious.”) (citing In re Gorman, 933 F.2d 982, 987 (Fed. Cir.
1991)).
Therefore, on this record, we do not sustain the rejection of claim 1,
and dependent claims 2–6 under 35 U.S.C. § 103.
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Application 16/109,934

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§ Basis/References Affirmed Reversed
1–6 103 Sigelakis, Maughan 1–6

REVERSED