Yang Bae. Park

Patent Trials and Appeals Board

Dec 27, 2019

15355562 - (D) (P.T.A.B. Dec. 27, 2019)

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.
15/355,562 11/18/2016 Yang Bae Park 22150.0415U1 2355
23859 7590 12/27/2019
Ballard Spahr LLP
SUITE 1000
999 PEACHTREE STREET
ATLANTA, GA 30309-3915
EXAMINER
CARY, KELSEY E
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
12/27/2019 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):
USpatentmail@ballardspahr.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YANG BAE PARK

Appeal 2019-002801
Application 15/355,562
Technology Center 3700
____________

Before JOHN C. KERINS, CHARLES N. GREENHUT, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL

Appellant, Victaulic Company,1 appeals under 35 U.S.C. § 134(a)
from the Examiner’s final decision rejecting claims 1–32, which constitute
all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 Appellant is the “applicant” under 37 C.F.R. § 1.42(b) and identifies itself
as the sole real party in interest. Appeal Br. 1.
Appeal 2019-002801
Application 15/355,562

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STATEMENT OF THE CASE
The Specification
The Specification’s disclosure “relates to fluid control devices that are
combinations of valves and mechanical couplings.”
The Claims
Claims 1–32 are rejected. Final Act. 1. Claim 1 is representative and
reproduced below with emphasis added.
1. A valve for controlling flow through pipe
elements, said valve comprising:
a valve housing surrounding and defining a bore;
a valve closing member mounted within said bore, said
valve closing member being rotatable about an axis of rotation
between an open position permitting flow through said bore and
a closed position preventing flow through said bore;
first and second lugs mounted in spaced relation to one
another on said valve closing member, said lugs defining
respective apertures aligned with said axis of rotation;
first and second shafts extending in opposite directions
along said axis of rotation, said first shaft being received within
said aperture of said first lug, said second shaft being received
within said aperture of said second lug;
first and second bearings mounted on said valve housing
diametrically opposite to one another, said first and second
bearings respectively defining first and second passages
through said valve housing, said first and second passages
being aligned with said axis of rotation, said first bearing
receiving said first shaft, said second bearing receiving said
second shaft; wherein
each said shaft has a diameter at a first end larger than a
diameter at a second end, said first end of first shaft engaging
and being retained within said valve housing by said first lug,
said first end of said second shaft engaging and being retained
within said valve housing by said second lug.
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Appeal Br. 18–19 (emphasis added).
The Examiner’s Rejections
The rejections before us are:
1. claims 1–5 and 31, under 35 U.S.C. § 102(a)(1), as anticipated
by Urban2 (Final Act. 3);
2. claims 6–9, under 35 U.S.C. § 103, as unpatentable over Urban
and Borcherdt3 (id. at 6);
3. claim 15, under 35 U.S.C. § 103, as unpatentable over Urban
and Shimada4 (id. at 8);
4. claims 10–14, 16–21, 26–29, and 32, under 35 U.S.C. § 103, as
unpatentable over Urban and McLennan5 (id.);
5. claims 22–25, under 35 U.S.C. § 103, as unpatentable over
Urban, McLennan, and Borcherdt (id. at 14); and
6. claim 30, under 35 U.S.C. § 103, as unpatentable over Urban,
McLennan, and Shimada (id. at 16).
DISCUSSION
Claim 1 recites “said first end of first shaft engaging and being
retained within said valve housing by said first lug, said first end of said
second shaft engaging and being retained within said valve housing by said
second lug.” Appeal Br. 19. Independent claim 16 recites the same
limitation. Id. at 23. The sole remaining independent claim, claim 31, is
directed to a method that includes corresponding steps, reciting “retaining

2 US 3,528,448, issued Sept. 15, 1970 (“Urban”).
3 US 3,260,496, issued July 12, 1966 (“Borcherdt”).
4 US 2006/0000997 A1, published Jan. 5, 2006 (“Shimada”).
5 US 5,018,548, issued May 28, 1991 (“McLennan”).
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Application 15/355,562

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said first shaft within said housing using said first lug” and “retaining said
second shaft within said housing using said second lug.”
The Examiner relies exclusively on Urban as teaching these
limitations. See Final Act. 4 (regarding claim 1), 5 (regarding claim 31), 11
(regarding claim 16). For example, with respect to claim 1, the Examiner
finds that Urban teaches: “said first end (62) of first shaft (60) engaging and
being retained within said valve housing (10) by said first lug (70), said first
end (107) of said second shaft (105) engaging and being retained within said
valve housing (10) by said second lug 115 (Col. 5, lines 15–19; lines 35–47;
lines 69–75; Col. 6, lines 15–19; see Figure 2).” The structure identified by
the Examiner is shown in Figure 2 of Urban, which is reproduced below.

Appeal 2019-002801
Application 15/355,562

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Figure 2 of Urban, reproduced above, shows a cross-sectional view of a
slurry valve. Urban 2:56–59.
Appellant argues that Urban’s “shafts 60 and 105 are retained within
the valve housing by engagement with bearings 65 and 108, respectively,
and not by engagement between the shafts and the lugs 70 and 30.” Appeal
Br. 5–6. It is clear that the bearings, in fact, retain the shaft ends, and the
Examiner concedes this. Final Act. 2. The Examiner states, “[h]owever,
just because the shafts are retained by the bearings does not mean they
cannot also be retained by the lugs.” Id. The Examiner finds that the
asserted lugs 70 and 30 “engage an outer surface of the shafts, which
provides redundant retaining of the shafts inside the housing.” Id.
Appellant has the better argument, given the actual disclosure of Urban.
The most relevant portions of Urban state as follows:
The inner end 62 of the stem 60 is positioned within an opening
69 formed in the upper end 70 of the ball section 14. Both the
inner end 62 and the opening 69 are axially slotted to receive
keys 71 for preventing relative end of the pipeline rotational
motion therebetween. . . .
The inner end 107 of the pin 105 fits within a bore 114 formed
in the lower end 115 of the ball section 14. The bore 114 and the
inner end 107 of the pin 105 are similarly slotted to receive keys
116 for preventing relative rotational motion therebetween.
Urban 5:35–39, 6:14–19. Notably, the only discussion by Urban of
restricting movement between the ends and the openings (i.e., the asserted
lugs) is in regards to preventing relative rotational movement, which—per
the Specification—is clearly a feature separate from retention. Id.; Spec. 15
(“The tapered section 94 engages a tapered aperture 48a in lug 48 and thus
requires no additional features to retain the shaft 44 to the valve closing
member 40. This shaft configuration also reduces rotational friction and is
Appeal 2019-002801
Application 15/355,562

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self-compensating for wear.” (emphasis added)). In sum, Urban does not
state that the ends are positioned within the openings (i.e., the asserted lugs)
through an interference fit or in some other manner through which the
openings cause the ends to be retained therein. Urban 5:35–39, 6:14–19.
This deficiency is fatal to all of the rejections, which we accordingly
reverse.
SUMMARY
Claims
Rejected
35 U.S.C. Reference(s) Affirmed Reversed
1–5, 31 § 102(a)(1) Urban 1–5, 31
6–9 § 103 Urban, Borcherdt 6–9
15 § 103 Urban, Shimada 15
10–14, 16–
21, 26–29,
32
§ 103 Urban,
McLennan
10–14, 16–
21, 26–29,
32
22–25 § 103 Urban,
McLennan,
Borcherdt
22–25
30 § 103 Urban,
McLennan,
Shimada
30
Overall
Outcome
1–32

REVERSED