Boby, Dylan T. et al.

Patent Trials and Appeals Board

Apr 2, 2020

14985770 - (D) (P.T.A.B. Apr. 2, 2020)

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.
14/985,770 12/31/2015 Dylan T. Boby OPB-2015-004 3659
26353 7590 04/02/2020
Westinghouse Electric Company LLC
K&L Gates LLP
210 Sixth Avenue
K&L Gates Center
Pittsburgh, PA 15222-2613
EXAMINER
QUANDT, MICHAEL M
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
04/02/2020 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@klgates.com
spadacjc@westinghouse.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DYLAN T. BOBY and DAVID J. BUBECK

Appeal 2019-001740
Application 14/985,770
Technology Center 3700
____________

Before JOHN C. KERINS, JILL D. HILL and
BRANDON J. WARNER, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1–4.1 We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 The term “Appellant” is used herein to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Westinghouse
Electric Company LLC. Appeal Br. 1.
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THE CLAIMED SUBJECT MATTER
Appellant’s invention relates to a hydraulic apparatus that is usable to
control the supply of hydraulic fluid to a device. Spec. 1. Claim 1 is
illustrative, and is reproduced below:
1. A hydraulic apparatus structured to manage supplying of
hydraulic fluid to a device, the hydraulic apparatus comprising:

a first control leg structured to be connected in fluid
communication with the device;

a second control leg structured to be connected in fluid
communication with the device;

a check valve that is connected in fluid communication between
the first control leg and the second control leg, the check valve
resisting hydraulic fluid flow in a direction from the first control
leg toward the second control leg and permitting hydraulic fluid
flow in a direction from the second control leg toward the first
control leg;

a bypass apparatus that is connected in fluid communication
between the first control leg and the second control leg and that
is connected in parallel with the check valve, the bypass
apparatus being operable between a first state and a second state,
the bypass apparatus in the first state resisting hydraulic fluid
flow between the first and second control legs, the bypass
apparatus in the second state permitting hydraulic fluid flow
between the first and second control legs;

a number of first valves connected in fluid communication with
the first control leg, the number of first valves further being
connected in fluid communication with a supply of hydraulic
fluid that is at a first pressure and with a drain that is at a second
pressure, the first pressure being greater than the second
pressure, the number of first valves being operable between a
first state and a second state;
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in the first state of the number of first valves and the first state of
the bypass apparatus:

the first control leg being in fluid communication
with the supply;

in the second state of the number of first valves and the first state
of the bypass apparatus:

the first control leg being in fluid communication with the
drain, and

the second control leg via the check valve being in fluid
communication with the drain;

in the first state of the number of first valves and the second state
of the bypass apparatus:

the first control leg being in fluid communication with the
supply and being in fluid communication with the second
control leg via the bypass apparatus;

in the second state of the number of first valves and the second
state of the bypass apparatus:

the first control leg being in fluid communication with the
drain, and the second control leg via the check valve and
the bypass apparatus being in fluid communication with
the drain;

a number of second valves connected in fluid
communication with the second control leg, the supply,
and the drain, the number of second valves being operable
between a first state and a second state;

in the first state of the number of second valves and the first state
of the bypass apparatus:

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the second control leg being in fluid communication with
the supply;

in the second state of the number of second valves and the first
state of the bypass apparatus:

the second control leg being in fluid communication with
the drain;

in the first state of the number of second valves and the second
state of the bypass apparatus:

the second control leg being in fluid communication with
the supply and being in fluid communication with the first
control leg via the bypass apparatus;

in the second state of the number of second valves when the
bypass apparatus is in the second state:

the second control leg being in fluid communication with
the drain, and

the first control leg being in fluid communication via the
bypass apparatus with the drain.

THE REJECTIONS
The Examiner rejects:
(i) claims 1–4 under 35 U.S.C. § 112(b) as being indefinite;
(ii) claims 1, 2, and 4 under 35 U.S.C. § 103 as being unpatentable
over Brinkman (US 7,634,911 B2, issued Dec. 22, 2009); and
(iii) claims 2 and 3 under 35 U.S.C. § 103 as being unpatentable over
Brinkman in view of Pfaff (US 6,715,402 B2, issued Apr. 6, 2004).

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ANALYSIS
Drawing Objections
The Examiner makes numerous objections to the drawings,
principally on the basis that Appellant uses many non-standard schematic
symbols for the various components of the hydraulic apparatus of the
invention. See Final Act. 2–8, 25–31; Ans. 2–13. We note that resolution of
the dispute between the Examiner and Appellant on these matters is not
within the jurisdiction of the Board, to the extent that the issues are not
subsumed by any rejection over which we have jurisdiction. This is a
petitionable matter.
We note, however, that, for the purposes of deciding the issues over
which we do have jurisdiction in this appeal, we had very little difficulty
understanding Appellant’s drawings in light of the description of the
invention in the Specification. As but one example, we understand that first
and second manifolds 16, 30, are schematically represented essentially in a
blank box having various lines connected thereto, and that each has three
valves shown schematically in parallel with one another. It does not detract
from understanding the operation of these devices that the specific lines
illustrating the parallel configuration of the valves do not also connect, at the
periphery of the blank boxes, to lines shown either entering or exiting the
boxes.

Claims 1–4--35 U.S.C. § 112(b)--Indefiniteness
The Final Action includes a considerable number of findings directed
to claim language regarded as being indefinite. Final Act. 32–35. In the
“Response to Arguments” section of the Final Action, the Examiner
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acknowledges that some of the specific rejections have been overcome, but
that several remain. Id. at 8. Appellant replies to each of the remaining
rejections, asserting, for various reasons, that the claim language in question
is not indefinite. Appeal Br. 12–15. The Examiner responds at pages 15–19
of the Answer. Most of the detailed issues identified apply equally to
independent claims 1 and 4, and we will discuss them principally herein as
they pertain to claim 1, with the understanding that the same outcome
applies to claim 4.
The Examiner finds that the recitation of “a device” in claim 1 is
indefinite. The Examiner takes the position that the “device” is positively
recited in the claim, but that the claim in its entirety leaves the Examiner
with many questions as to how the device itself functions, and how it
interacts with other claimed components, such as the first and second control
legs. Ans. 15–16.
Appellant argues that the “device” is not positively recited, and the
appearance of the term in claim 1 is “merely for the purpose of describing an
intended use of the claimed invention,” and that the device can be of any
type that is capable of being connected in fluid communication with the
claimed first and second control legs. Appeal Br. 12–13.
The Examiner maintains that the “device” is not, contrary to
Appellant’s view, merely something to which the claimed hydraulic
apparatus is structured to supply hydraulic fluid, because Appellant’s
Figures 2–4 show the device supplying fluid in either one or two directions
to the remainder of the apparatus.
Appellant has the better position here. The “device” is not positively
recited, and therefore, any specifics as to how it operates are of no moment.
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The Examiner appears to mistake the arrow legends in Figures 2–4 pointing
away from device 6 as indicating supply of fluid. Instead, the arrows are
understood to represent flow direction of fluid out of the lines connected to
the device under certain lower pressure conditions. The rejection is not
sustained as to this issue.
The Examiner finds that the recitation in claim 1 of the first and
second control legs being “structured to be connected in fluid
communication with the device” to also be indefinite. Ans. 16. The
Examiner questions whether the language is to be treated literally, or
whether the proper interpretation is that the legs are actually connected to
the device. Id. The Examiner also finds “structured to be connected” and
“in fluid communication” to be redundant in some manner. Id.
This issue appears to be intertwined to an extent with the Examiner’s
incorrect position that claim 1 positively recites a device. As noted above, it
does not, and therefore the literal meaning of the claim language “structured
to be connected” is proper and definite. We further do not see any
redundancy in also reciting “in fluid connection,” in that this simply further
describes the nature of the connection that “structured to be connected” must
have.
The rejection on this basis is not sustained.
The Examiner takes the position that “[t]he metes and bounds of what
is to be considered a ‘bypass apparatus’” are indefinite, because the term is
unclear. Ans. 16. The rejection appears to be more in the nature of the
breadth of the term, rather than any lack of clarity.
Claim 1 requires the bypass apparatus to be connected in fluid
communication between the first and second control legs and connected in
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parallel with the check valve. Appeal Br. 24 (Claims Appendix). The
Specification describes that the bypass arrangement is provided to bypass
the check valve under certain conditions, but even if the claim were not
regarded as being so limited, given that the bypass arrangement is recited as
being part of a hydraulic apparatus, other structure that might exist in the
prior art that provides a bypass of some line or component, and otherwise
meets the above-noted connection limitations would fall within the scope of
this limitation. As above, this appears to be an issue of breadth, and not
indefiniteness.
The rejection on this basis is not sustained.
The Examiner finds that the recitations of “a number of first valves,”
“a number of second valves,” “a number of poppet logic valves,” and “a
number of solenoid valves,” renders claim 1 indefinite. Final Act. 10; Ans.
17. The Examiner initially takes the position that the Specification does not
provide written descriptive support for only a single valve, that these
recitations employ the term “valves,” indicating plural valves, and that the
recitations “are not definite in defining the number of valves that are needed
for successful operation of the claimed invention. Final Act. 10. Along
these same lines, the Examiner notes that the Specification describes having
equal numbers of poppet logic valves and solenoid valves, but that the
claims are not limited in that manner. Id. The Examiner takes essentially
the same position in the Answer, but there affirmatively asserts that “a single
valve as disclosed by Appellant, like 18a, cannot perform the claim
language,” apparently because the first number of valves, for example, must
connect at least three different fluid parts together. Ans. 17–18.
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We disagree. The Examiner’s reasons for considering these terms to
be indefinite appear to be more germane to a rejection under 35 U.S.C.
§ 112(a) for lack of enablement, not that the metes and bounds of the claims
cannot be determined. Appellant specifically defines “a number of” in the
Specification as referring broadly to any non-zero quantity, including a
quantity of one. Spec. ¶ 11. Similarly, that the Specification describes in
detail only an embodiment in which the number of poppet logic valves is
equal to the number of solenoid valves, the claim is not so limited, and the
metes and bounds are not made less clear by the absence of such a
limitation.
The rejection on this basis is not sustained.
The Examiner finds indefinite the recitation of “a supply” in
conjunction with the first number of valves, and, later in claim 1, a recitation
of “the supply” in conjunction with the second number of valves, and
questions whether the claim is intended to convey that the first and second
number of valves use the same supply. Final Act. 10–11. We understand
this to be a matter of whether “the supply” is one and the same with the
earlier-recited “a supply,” such that “the supply” has adequate antecedent
basis in the claim. The Examiner interprets claim 1 as claiming that the first
and second numbers of valves “use the same supply.” Final Act. 11.
Appellant takes issue with the Examiner’s characterization, made in
the context of certain drawing objections, that the drawings do not show the
claimed common supply. Other than the term “common” not appearing in
claim 1, we are uncertain why Appellant appears to disavow that claim 1 is,
for all intents and purposes, claiming a single supply, i.e., one that is
ultimately common to both the first and second numbers of valves.
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Appellant’s Specification, in addition to providing literal support for the
claim language, discusses that “it is understood that the first and second
supplies 22 and 36 are likely obtained from a single source of pressurized
hydraulic fluid that is fed by a single reservoir. . . .” Spec. ¶ 22. As such,
we agree with the Examiner’s interpretation of claim 1 that requires both the
first number of valves and the second number of valves be in fluid
communication with the same supply of hydraulic fluid. The claim is not
indefinite in this respect.
The rejection on this basis is not sustained.
Claim 4 is additionally rejected as being indefinite, in that the first
appearance of the “bypass apparatus” and the “check valve” in the claim
follow the article “the” instead of the more appropriate “a” as connoting the
first appearance of an element in the claim. Final Act. 35. Appellant has
offered to amend claim 4 to address this issue. Appeal Br. 15.
In some, if not many, instances, the lack of proper antecedent basis
may render a claim indefinite; however, we do not find that to be the case
here. A person of ordinary skill in the art would recognize that all instances
of the terms “bypass apparatus” and “check valve” are referring to only a
single one of each. The minor error in designation would desirably be fixed
in any subsequent prosecution, but the rejection made on this basis is not
sustained.
In view of the foregoing, the rejection of claims 1–4 under 35 U.S.C.
§ 112(b) is not sustained.

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Claims 1, 2, and 4--35 U.S.C. § 103--Brinkman
The Examiner finds that Brinkman discloses many of the elements
recited in claims 1 and 4, including a number of first valves in the form of
actuator control valve 72 operable between a first state and a second state,
the first state being when the valve is operated at position 78, and the second
state being when the valve is operated at position 74. Final Act. 36–37. The
Examiner finds that Brinkman does not teach, in conjunction with its
embodiment employing actuator control valve 72, a number of second
valves having first and second states of operation. Id. at 37–38.
The Examiner posits that:
Brinkman’s valve 72 accomplishes moving fluid to both first and
second control legs as claimed, but does so without “a number of
second valves”. However, in another embodiment, Brinkman
teaches the actuator control valve 72 “may alternatively embody
multiple valve elements configured to perform the same
functions, if desired.” (Col. 5, lines 13–15).
Final Act. 38. The Examiner concludes that it would have thus been obvious
to modify the number of first valves and the number of second valves of
Brinkman to be separate valve elements as taught by Brinkman’s other
embodiment in order to provide an equally suitable valve assembly that
would perform equally as well. Id.
Appellant argues that the passage quoted from Brinkman referring to
multiple valve elements performing the same functions as are performed by
actuator control valve 72 at most discloses or suggests providing multiple
valve elements connected in parallel to perform the functions detailed with
respect to actuator control valve 72, which would be “much like each of the
valve manifolds 16 and 30,” but, inferentially, not like having both
manifolds. Appeal Br. 17. Appellant asserts that Brinkman teaches only a
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singular actuator control element, regardless of whether the singular element
is one valve of the type depicted as valve 72, or includes multiple valve
elements configured to perform the same function. Id., fn. 1.
We understand and appreciate Appellant’s position in this regard, in
that, on the one hand, the Examiner concedes, as noted above, that the main
embodiment in Brinkman does not have a number of second valves, yet, in
the reasoning culminating in the conclusion of obviousness quoted above,
the Examiner asserts that it would have been obvious to modify “the number
of first valves and the number of second valves of Brinkman,” in view of the
alternate embodiment.2 Final Act. 38. The proposed modification in this
line of reasoning thus lacks rational underpinnings, in that the Examiner
proposes to modify structure admitted to not be present in the unmodified
structure.
The Examiner subsequently provides a more detailed explanation as
to how the single actuator control valve 72 of Brinkman might be replaced
by multiple valve elements such that those valve elements perform the same
function as does the single valve. Ans. 20–39. As noted previously,
Brinkman includes a general statement that its actuator control valve might
be embodied in multiple valve elements used to perform the same functions
as does valve 72. Brinkman 5:13–15.

2 The Examiner additionally presents several iterations of Figure 2 of
Brinkman, applying annotations and providing discussion purportedly to
show how the hydraulic system of Brinkman has various states for its valve
72 that result in the Brinkman system having the same attributes as the
claimed system in various valve states. Final Act. 14–21. The Examiner
erroneously, or at least confusingly, has arrows pointing to the single
actuator valve 72 as being both a number of first valves and a number of
second valves.
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The Examiner provides a series of drawings that illustrate four (4)
valves (V1–V4) that are asserted to collectively be capable of providing the
necessary connections from lines 46 and 48 to lines 52 and 54 such that the
functions of valve 72 in both positions 74 and 78 illustrated in Figure 2 of
Brinkman could be carried out. Ans. 24–39. The Examiner begins with two
sets of valves, one including valves V1 and V2 connecting line 54 to lines 48
and 46, and the other including valves V3 and V4 connecting line 52 to lines
48 and 46. Id. at 24. The Examiner then provides a sketch combining the
two sets, such that lines 46, 48, 52, and 54 are each illustrated as single lines
with each connected to the two valves from the preceding figure. Id. at 25.
The Examiner proceeds to explain what purportedly happens in the overall
system of Brinkman when each of these valves is opened. Id. at 27–39. We
reproduce below an image of actuator control valve 72 as depicted in Figure
2 of Brinkman, alongside the Examiner’s diagram showing the four valves
V1–V4 connecting to the same four lines as does valve 72.

Depicted above, on the left, is an excerpt of Figure 2 of Brinkman, which is
a schematic and diagrammatic illustration of actuator control valve 72, a
component of a hydraulic system (numerals 48, 52, 54 added for clarity).
Depicted above, on the right, is a diagrammatical sketch prepared by the
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Examiner showing valves V1–V4 interconnecting lines 46, 48, 52, and 54 in
particular manners, with the lines corresponding to the lines in the portion of
Figure 2 of Brinkman appearing on the left.
Appellant argues that the meaning of the Examiner’s drawings is
unclear overall, but that the two drawings appearing at page 24 of the
Answer “depict alternative conditions of the actuator valve (72).” Reply Br.
5–6. Appellant asserts that the combination of the sketches from page 24
into a single comprehensive set of valve connections, i.e., the sketch on page
25 of the Answer and reproduced above, is intended by the Examiner to read
on the claimed “number of first valves.” Id. at 6. Appellant maintains that
the same set of valves is also cited to read on the “number of second valves”
as well. Id.
We appreciate the effort undertaken by the Examiner, and generally
understand how the Examiner arrives at which lines are in fluid
communication with the supply and drain, and in what direction fluid may
flow based on each of the valves V1–V4 being opened. However, there are
several parts of this analysis that leave us wanting.
Claims 1 and 4 require both a “number of first valves” and a “number
of second valves,” and for each of these first and second numbers of valves
to have a respective first and a second state. The Examiner begins applying
the language of claim 1 to various scenarios involving valves V1–V4 and
positions 74 and 78 in Brinkman actuator control valve 72 by stating that “in
the first state of the number of first valves (first valves of schematic position
78),” valve V1 is open, resulting in line 46 from a supply of pressurized
hydraulic fluid being in fluid communication with a first control leg in
Brinkman. Ans. 27. In the next scenario presented, the Examiner states that
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“in the second state of the number of first valves (first valves of schematic
position 74),” valve V2 is open, resulting in line 54 from the first control leg
to be in fluid communication with a drain leading from line 48. Id. at 28.
Later in the discussion, the Examiner refers to the first state of the number of
second valve as valve V3 being open, and to the second state of the number
of second valves as valve V4 being open. Id. at 31–32.
Considering the above, it appears on the one hand that the Examiner
considers that valves V1 and V2 correspond to the claimed “number of first
valves” and that valves V3 and V4 correspond to the claimed “number of
second valves.” However, in the parenthetical language referring to the
“first valves of schematic position 78” and “first valves of schematic
position 74,” the Examiner does not appear to take into account that, in the
diagram of valves V1–V4, the two valves that are operable in position 78, in
accordance with the operation of actuator control valve 72 that valves V1–
V4 are asserted to emulate, are valves V1 and V4. The two valves that are
operable in position 74 are valves V2 and V3. Accordingly, the grouping of
valves V1 and V2 as corresponding to a “number of first valves” and valves
V3 and V4 as corresponding to a “number of second valves” appears to be,
at best, an arbitrary grouping generated for the purpose of mapping such an
arrangement to the language of claims 1 and 4.
This is further borne out in considering that claims 1 and 4 require the
number of first valves to have first and second states, with the same being
true of the number of second valves. However, in replicating the
connections provided by the single actuator control valve 72 for position 78
in Figure 2 of Brinkman, valve V1 would be open, and valve V2 would be
closed; and valve V3 would be closed, with valve V4 being open. For
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position 74 in Figure 2 of Brinkman, the open/closed states of the individual
valves would be exactly the opposite. The Examiner fails to explain how
those opposite states within the number of first valves V1/V2 could
reasonably be interpreted as meeting the requirement that “the number of
first valves being operable” collectively “between a first state and a second
state.” Appeal Br. 24 (Claims Appendix). The same applies as to the
number of second valves V3 and V4.
Further, the fluid communication limitations in claims 1 and 4,
brought about by the various states of the number of first and second valves,
also recite at different points that the bypass apparatus is to be in either a
first (blocking) state or a second (nonblocking) state. In progressing through
the scenarios presented by claim 1, the Examiner specifies that the bypass
assembly in Brinkman will be in the corresponding first and second state set
forth in the claim limitations. See Ans. 27–39. However, the Examiner has
not adequately substantiated that, in the actual operation of the Brinkman
system, the bypass apparatus is intended to be in such first or second state
when the valves V1–V4 are operating as if in position 74 or position 78 of
actuator control valve.
As such, we do not sustain the rejection of claims 1 and 4, and that of
claim 2 which depends from claim 4, as being unpatentable over Brinkman.

Claims 2 and 3--35 U.S.C. § 103--Brinkman/Pfaff
The Examiner does not rely on Pfaff in any manner that would cure
the deficiencies noted above with respect to the teachings of Brinkman. The
rejection of claims 2 and 3 as being unpatentable over Brinkman and Pfaff is
therefore not sustained.
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DECISION
The rejection of claims 1–4 under 35 U.S.C. § 112(b) as being
indefinite is reversed.
The rejection of claims 1, 2 and 4 under 35 U.S.C. § 103 as being
unpatentable over Brinkman is reversed.
The rejection of claims 2 and 3 under 35 U.S.C. § 103 as being
unpatentable over Brinkman and Pfaff is reversed.

CONCLUSION

In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basi
s
Affirmed Reversed
1–4 112(b) Indefiniteness 1–4
1, 2, 4 103 Brinkman 1, 2, 4
2, 3 103 Brinkman, Pfaff 2, 3
Overall
Outcome

1–4

REVERSED