Shane Bartow et al.

Patent Trials and Appeals Board

Feb 26, 2021

2020002634 (P.T.A.B. Feb. 26, 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.
15/474,605 03/30/2017 Shane Duncan Bartow 511077 5698
53609 7590 02/26/2021
REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
EXAMINER
BARRY, DAPHNE MARIE
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
02/26/2021 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):
RockMail@reinhartlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHANE DUNCAN BARTOW,
PAUL CHARLES BERKLEY, and JAMES E. PEARSON
Appeal 2020-002634
Application 15/474,605
Technology Center 3700
Before JOHN C. KERINS, JEREMY M. PLENZLER, and
CARL M. DEFRANCO, Administrative Patent Judges.
DEFRANCO, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision in the Final Office Action rejecting claims 1–25, which
are all the pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter NEW GROUNDS OF REJECTION in
accordance with 37 C.F.R. § 41.50(b).

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Robertshaw
Controls Company. Appeal Br. 2.

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CLAIMED SUBJECT MATTER
Appellant’s claimed invention relates to a solenoid-actuated water
valve. Spec. ¶ 1. Of the pending claims, apparatus claims 1, 8, 10, 13, and
15 are independent, and method claim 18 is also independent. Claim 1 is
illustrative and reproduced below:
1. A water valve, the water valve comprising:
a housing having an inlet and an outlet and a flow path
extending through the housing between the inlet and the outlet;
a valve member assembly situated within the flow path
and operable to selective open and close the flow path;
a guide tube, the guide tube mounted to the housing;
a solenoid actuator mounted to the guide tube;
wherein the guide tube includes an axially facing first
mating surface arranged perpendicularly relative to a
longitudinal axis of the guide tube and wherein the housing
includes an axially facing second mating surface arranged
perpendicularly to a longitudinal axis of the housing;
wherein the first and second axially facing mating
surfaces abut one another in a pre-bonded configuration of the
water valve; and
wherein the guide tube and housing form a joint at the
outer periphery of the water valve in a post-bonded
configuration.
Claims App. 1 (emphasis added).

EXAMINER’S REJECTIONS
Claims 2, 11, 12, 20, and 21 stand rejected under 35 U.S.C. § 112(b)
as being indefinite. Final Act. 5–6.
Claims 1 and 3–6 stand rejected under 35 U.S.C. § 102(a)(1) as being
anticipated by Ortner.2 Id. at 7–9.

2 U.S. Patent No. 6,234,449 B1, iss. May 22, 2001 (“Ortner”).
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Claim 2 stands rejected under 35 U.S.C. § 103 as obvious over Ortner
and Chumley.3 Id. at 10–11.
Claim 7 stands rejected under 35 U.S.C. § 103 as obvious over Ortner.
Id. at 10.
Claim 8 stands rejected under 35 U.S.C. § 103 as obvious over Ortner
and Eiser.4 Id. at 11–12.
Claims 9, 10, 13, 16–22, and 25 stand rejected under 35 U.S.C. § 103
as obvious over Ortner and Kibune.5 Id. at 12–17.
Claims 11, 12, 14, 23, and 24 stand rejected under 35 U.S.C. § 103 as
obvious over Ortner, Kibune, and Chumley. Id. at 17–19.
Claim 15 stands rejected under 35 U.S.C. § 103 as obvious over
Ortner, Kibune, and Eiser. Id. at 19–20.
ANALYSIS
A. Indefiniteness (Claims 2, 11, 12, 20, and 21)
Dependent claims 2, 11, and 20 recite that “the housing is made of an
energy absorbent material.” The Examiner rejects those claims as indefinite
because “[i]t is unclear what is meant by an ‘energy absorbent material’”
and raises the question of “[h]ow energy absorbent does a material have to
be to meet this claim limitation?” Final Act. 6; see also Ans. 3 (same).
A claim is properly rejected as indefinite if, after applying the
broadest reasonable interpretation in light of the specification, the metes and
bounds of a claim are not clear because the claim contains words or phrases

3 U.S. Patent No. 4,376,447, iss. Mar. 15, 1983 (“Chumley”).
4 DE 102005049123 A1, pub. Oct. 19, 2006 (“Eiser”).
5 U.S. Patent App. Pub. US 2014/0084194 A1, pub. Mar. 27, 2014
(“Kibune”).
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whose meaning is unclear. In re Packard, 751 F.3d 1307, 1310 (Fed. Cir.
2014) (per curiam); see also Ex parte McAward, Appeal No. 2015-006416,
2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (adopting the
approach for assessing indefiniteness approved by the Federal Circuit in
Packard). Appellant has the opportunity to resolve ambiguities during
prosecution. See, e.g., McAward, at *6–7.
Here, Appellant points to the Specification as providing sufficient
guidance on the meaning of “energy absorbent material.” Appeal Br. 7–8
(citing Spec. ¶ 54); see also Reply Br. 7–8 (same). We disagree. According
to the Specification, an energy absorbent material “allows for the abrupt
softening of the material in the region of second mating surface 70 of
housing 22” so as to enable laser welding. Spec. ¶ 54. But that passage
merely describes the behavior of the material upon absorbing energy—the
material softens—without actually limiting the type of material being
softened. In our view, any number of materials are capable of softening
upon application of some degree of energy. And although the Specification
discloses that the energy absorbent material is “natural in color or natural
with colorant added” or “natural in color with a carbon black material
added,” that disclosure simply informs us of the color of the material, while
failing to define the type of, or any particular characteristics of, material
capable of absorbing the requisite degree of energy for welding one surface
to another surface. Nor does the Specification provide examples that might
otherwise limit the scope of such materials. Without more, we agree with
the Examiner that the Specification fails to inform a skilled artisan of the
metes and bounds as to the type of material capable of absorbing energy for
softening the housing. See Ans. 3, 17. Thus, we sustain the Examiner’s
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indefiniteness rejection of claims 2, 11, and 20. And given their respective
dependency from claims 11 and 20, we also sustain the indefiniteness
rejection of claims 12 and 21.
B. Anticipation (Claims 1 and 3–6)
The Examiner rejected claims 1 and 3–6 as anticipated by Ortner.
Final Act. 7–9. According to the Examiner, Ortner discloses all the claim
limitations, including the “wherein” limitations requiring that the first and
second mating surfaces “abut one another in a pre-bonded configuration”
and “form a joint at the outer periphery of the water valve in a post-bonded
configuration.” Id. Notably, the Examiner finds that the terms “pre-bonded
configuration” and “post-bonded configuration” are directed to “a process of
making a connection in the apparatus,” and because “the claim is directed to
the product and not the process,” the Examiner gives those terms no
patentable weight. Id. at 7–8. The Examiner further finds that “the
limitation of ‘post-bonded configuration’ is broad” because “[i]t does not
state the type of bonding that is sufficient to meet the limitation, such as
welded or glued bond.” Id. at 3.
We see two errors in the Examiner’s findings. The Examiner errs,
first, by applying an overly broad construction to the terms “pre-bonded
configuration” and “post-bonded configuration,” and, second, by incorrectly
finding that those limitations are directed to a process and using that finding
as a reason to disregard them. As to the first error, we note that Appellant’s
Specification reveals a special meaning for the terms “pre-bonded” and
“post-bonded” in describing the configuration of the claimed first and
second mating surfaces:
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The water valve overcomes existing problems in the art
by utilizing laser welding to join a guide tube of the water valve
to a housing of the water valve. . . . Indeed, flat axially facing
mating surfaces are employed by the housing and the guide
tube. . . . The aforementioned axially facing mating surfaces are
configured to abut one another in a pre-bonded configuration of
the water valve. As used herein, “prebonded” means prior to
laser welding. In a post-bonded configuration, the mating
surfaces may be partially obliterated via the welding process to
form a contiguous joint. As used herein, the term “post
bonded” means after laser welding.

Spec. ¶¶ 38–39 (emphases added).
As a matter of law, the Examiner was required to account for any
special definitions provided by Appellant’s Specification. See Phillips v.
AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (“[O]ur cases recognize
that the specification may reveal a special definition given to a claim term by
the patentee that differs from the meaning it would otherwise possess. In
such cases, the inventor's lexicography governs.”). Here, the Examiner
failed to do so. In particular, the Examiner overlooked the Specification’s
special definition of “a post-bonded configuration” as meaning a bond that is
a laser-welded bond. Applying that special definition to claim 1, the
“wherein” clause requiring that “the guide tube and housing form a joint at
the outer periphery of the water valve in a post-bonded configuration”
necessarily means that the configuration of the joint must be laser welded.
We acknowledge that the Specification’s use of the term “laser
welding” may connote a process of connecting two mating surfaces, but
clearly it also connotes a type of physical connection between two mating
surfaces, especially when viewed in the context of claim 1’s recitation of “a
joint . . . in a post-bonded configuration.” Consistent with the
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Specification’s express definition of “post-bonded” as meaning “after laser
welding,” we determine that the claim limitation of “a joint . . . in a post-
bonded configuration” necessarily means a joint that has been laser welded.
As such, we reject the notion that this limitation amounts to a “product-by-
process,” as the Examiner found. See Final Act. 7–8; Ans. 5, 18.
And because Ortner lacks any teaching or suggestion of a laser
welded joint between the guide tube and housing, it was error for the
Examiner to find claim 1 anticipated by Ortner. See Final Act. 12
(conceding that Ortner lacks “laser welding to the housing”). Thus, we do
not sustain the Examiner’s rejection of claim 1. We likewise do not sustain
the rejection of claims 3–6, which depend from claim 1.
C. Obviousness (Claims 2, 7, and 8)
The Examiner relies on Ortner as the primary basis for rejecting
claims 2, 7, and 8. See Final Act. 10–12 (rejecting claim 2 as obvious over
Ortner and Chumley, claim 7 as obvious over Ortner alone, and claim 8 as
obvious over Ortner and Eiser). Claims 2 and 7 depend from claim 1, while
claim 8, albeit independent, subsumes all the limitations of claim 1. But in
rejecting those claims, the Examiner does not remedy Ortner’s failure to
teach or suggest a laser welded joint. See id. Thus, for the same reasons
discussed above with respect to claim 1, we do not sustain the Examiner’s
obviousness rejections of claims 2, 7, and 8.
D. Obviousness (Claims 9–25)
The Examiner rejected claims 9, 10, 13, 16–22, and 25 as obvious
over Ortner and Kibune, claims 11, 12, 14, 23, and 24 as obvious over
Ortner, Kibune, and Chumley, and claim 15 obvious over Ortner, Kibune,
and Eiser. Final Act. 12–20. Each of those claims includes a limitation
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requiring that the guide tube be laser welded to the valve housing. For
instance, claims 9 and 10 require that the guide tube be “laser welded” to the
housing, claims 13 and 15 require “a laser weld joint” between the guide
tube and the housing, and claim 18 requires that the guide tube be installed
on the housing “by laser welding.” For those particular limitations, the
Examiner relies on Ortner and Kibune, asserting that Ortner “substantially
discloses the invention as claimed, except laser welding to the housing,”
while “Kibune teaches laser welding” a guide tube to a valve housing. Final
Act. 12, 14, 16 (citing Kibune ¶ 25). And in combining those teachings, the
Examiner finds that a skilled artisan would “have modified the connection
between the housing and the guide tube, as disclosed by Ortner, by adding a
laser welded connection, as taught by Kibune, for the purpose of simplifying
the manufacturing step of a solenoid valve.” Id. at 13, 14, 15, 17.
The Examiner’s reason for combining Ortner and Kibune is erroneous
because, as Appellant points out, utilizing the laser welding of Kibune
“would render Ortner unsatisfactory for its intended purpose.” Appeal Br.
20; Reply Br. 16. More specifically, Ortner touts the use of a press-fit seal
for connecting the guide tube to the valve housing. See Ortner, 3:18–21
(“The shoulder 16 forms a support for a peripheral band 18 of an elastic
rubber membrane 20 of main valve 12 which is pressed in sealing fashion by
a cylindrical flange 22 of a lid 24 [i.e., guide tube] onto shoulder 16”)
(emphasis added). As described, the express purpose of Ortner’s press-fit
connection is to permit “replacement of . . . the membrane and membrane
insert” so that the valve can be “appropriately retrofitted in a simple
manner.” See Ortner, 5:1–8 (describing how Ortner’s press-fit connection
“differs” from previous water valves).
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But laser welding together the guide tube and housing of Ortner’s
water valve, as the Examiner proposes, would destroy the very ability of
Ortner to easily replace the valve’s rubber membrane 20 and associated
insert 48, which Ortner expressly recognizes as a key benefit over prior art
water valves. See id. As such, the Examiner’s proposed modification to
substitute Kibune’s laser welded connection for Ortner’s press-fit connection
would render Ortner’s water valve unsatisfactory for its intended purpose.
Clearly, the Examiner errs by disregarding the criticality of Ortner’s press-fit
connection in permitting the replacement of key parts of the water valve.
Thus, because the Examiner fails to provide sufficient reasoning with
rational underpinning to support the combination of Ortner and Kibune, we
do not sustain the Examiner’s obviousness rejection of claims 9–25.
E. New Grounds of Rejection
1. Anticipation (Claims 18, 19, and 21)
Claim 18 is independent, with claims 19 and 21 depending therefrom.
Claim 18 is directed to a method of making a water valve comprising the
steps of providing a housing, situating a valve member within the housing,
“laser welding” a guide tube directly to the housing, and mounting a
solenoid actuator to the guide tube.” Dependent claim 19 adds that the
housing includes an axially facing mating surface on the upper periphery,
and dependent claim 21 adds that the valve member includes a diaphragm
and a pilot element within a cavity of the housing.
Based on our review of the record, Kibune meets the claim language
as recited in method claims 18, 19, and 21. For instance, Kibune discloses a
water valve made of housing 40 with valve member 64, guide tube 30, and
solenoid actuator 66 mounted within the housing. Kibune ¶ 30, Fig. 1A. As
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described, guide tube 30 is laser welded directly to an upper periphery of
housing 40. Id. ¶¶ 25, 31, 35. With respect to claim 19, Figure 1A of
Kibune shows the upper peripheral wall of housing 40 with an axially facing
surface that mates with lower end wall 31 of guide tube 30. See id. ¶ 35,
Fig. 1A. And with respect to claim 21, Kibune discloses that the valve
member includes pilot element 60 mounted to diaphragm 64 within cavity
45 of housing 40. Id. ¶ 30, Fig. 1A. Accordingly, we determine that
claims 18, 19, and 21 warrant a rejection under 35 U.S.C. § 102(a)(1) as
being anticipated by Kibune.
2. Redundancy (Claim 9)
We also determine that claim 9 warrants a rejection under 35 U.S.C.
§ 112(d) as failing to specify a further limitation of claim 1 from which it
depends. As discussed above, we agree with Appellant that the claim
limitations “wherein the guide tube and housing form a joint at the outer
periphery of the water valve in a post-bonded configuration” is properly
construed as meaning that guide tube is laser welded directly to the housing.
As such, claim 9 is redundant of a limitation already found in claim 1. Thus,
claim 9 amounts to an improper dependent claim under 35 U.S.C. § 112(d).
CONCLUSION
We sustain the Examiner’s indefiniteness rejection of claims 1–5
under 35 U.S.C. § 112(b). However, we do not sustain the Examiner’s prior
art rejections of claims 1–25. Also, we determine a new ground of rejection
is warranted for dependent claim 9 under 35 U.S.C. § 112(d) as being an
improper dependent claim and also for claims 18, 19, and 21 under 35
U.S.C. § 102(a)(1) as anticipated by Kibune.
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DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Basis Affirmed Reversed New
Grounds
2, 11, 12,
20, 21
112(b) Indefiniteness 2, 11, 12,
20, 21

9 112(d) Redundancy 9
1, 3–6 102(a)(1) Ortner 1, 3–6
2 103 Ortner, Chumley 2
7 103 Ortner 7
8 103 Ortner, Eiser 8
9, 10, 13,
16–22, 25
103 Ortner, Kibune 9, 10, 13,
16–22, 25

11, 12,
14, 23, 24
103 Ortner, Kibune,
Chumley
11, 12,
14, 23, 24

15 103 Ortner, Kibune,
Eiser
15
18, 19, 21 102(a)(1) Kibune 18, 19, 21
Overall
Outcome
2, 11, 12,
20, 21
1, 3–10,
13–19,
22–25
9, 18, 19,
21

TIME PERIOD FOR RESPONSE
Section 41.50(b) provides “[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides that 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 prosecution
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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Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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).
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)