Ex Parte 7263984 et al

Board of Patent Appeals and Interferences

May 4, 2012

90010797 (B.P.A.I. May. 4, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
90/010,797 01/21/2010 7263984 36241-00029 9185
26096 7590 05/04/2012
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
ENGLISH, PETER C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
05/04/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte Cooper-Standard Automotive, Inc.1
Patent Owner, Appellant
____________________

Appeal 2012-002429
Reexamination Control 90/010,797
Patent No. US 7,263,984 B22
Technology Center 3900
____________________

Before JEFFREY B. ROBERTSON, DANIEL S. SONG and
JOSIAH C. COCKS, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

1 Cooper-Standard Automotive, Inc. is the real party in interest (Appeal
Brief (hereinafter "App. Br.") 2).
2 Issued September 4, 2007 (hereinafter "'984 patent").
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The Appellant appeals under 35 U.S.C. §§ 134(b) and 306 from a
Final Rejection of claims 1, 4-7, 14-21 and 23-33. Claims 2, 3 and 9-13
have been confirmed as patentable while claims 8 and 22 are not subject to
reexamination (Answer (hereinafter "Ans.") 3). We have jurisdiction under
35 U.S.C. §§ 134(b) and 306.
In addition to the Appeal Brief, the Patent Owner also relies on a
Reply Brief (hereinafter "Reply Br."), Declaration of co-inventor Mr. Tim
Wade dated November 17, 2010 (hereinafter "Decl. ") and Supplementary
Declaration also of Mr. Wade dated February 18, 2011 (hereinafter "Supp.
Decl."), and exhibits submitted therewith. The '984 patent is the subject of
litigation entitled Cooper Standard Automotive, Inc. v. Miniature Precision
Components, Inc., 2:09cv10691 (E.D. Mich.) which has being stayed
pending the present reexamination proceeding (App. Br. 2; Ans. 3).
The claims are directed to a positive crankcase ventilation (hereinafter
"PCV") valve having a heating element. Representative independent claim
14 reads as follows (App. Br., Claims App'x, emphasis added):
14. A positive crankcase ventilation valve assembly
comprising:
a housing having a fluid inlet, a fluid outlet and an
intermediate portion between the fluid inlet and the fluid outlet;
a poppet valve disposed in said housing between said
fluid inlet and said fluid outlet and movable in an axial
direction between a plurality of positions; and
a heating element within said intermediate portion
arranged about to at least a portion of said valve for heating said
valve.

The evidence relied upon by the Examiner in rejecting the claims is:
Schumacher 5,697,351 Dec. 16, 1997
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Nelson et al. 5,970,962 Oct. 26, 1999
Bright et al. 6,102,303 Aug. 15, 2000
Callahan 6,546,921 Apr. 15, 2003
Ooki (Japanese) 56-99045 Dec. 28, 1979
(citations to English translation)

The Examiner rejected claims 1, 4-7, 14, 16-21, 23-29, 32 and 33
under 35 U.S.C. § 103(a) as unpatentable over Ooki in view of Bright.
The Examiner rejected claims 6, 7 and 18-21 under 35 U.S.C.
§ 103(a) as unpatentable over Ooki in view of Bright and Schumacher.
The Examiner rejected claims 15 and 30-33 under 35 U.S.C. § 103(a)
as unpatentable over Ooki in view of Bright and Nelson.
We AFFIRM.

ISSUES
The following issues have been raised in the present appeal.
1. Whether the Examiner erred in concluding that it would have
been obvious to one of ordinary skill in the art to position the heating
element within the intermediate portion of the PCV valve assembly based on
the combined teachings of Ooki and Bright.
2. Whether the Appellant has sufficiently established
nonobviousness of the claimed invention based on alleged evidence of
copying.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
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1. The '984 patent is directed to a heating element for a PCV valve
(col. 1, ll. 11-15).
2. The '984 patent states that under certain cold conditions, "the gases
in the vicinity [of the] PCV valve may freeze thereby preventing the valve
from moving." (Col. 1, ll. 25-29).
3. Ooki discloses a blowby gas control valve 9 including a casing 8, a
valve body 6 therein, and a heater 16 installed on the casing to prevent
freezing (pg. 2, ¶ 4, pg. 3, ¶¶ 2, 4; Fig. 3).
4. Ooki teaches that blowby gases contain moisture which can freeze
and cause the valve to be frozen in a closed position (pg. 2, ¶ 5; pg. 3, ¶ 2).
5. Ooki teaches using the heater to heat the valve so that "the
temperature of the control valve (9) can be raised to and retained at the water
melting temperature or higher . . .." (Pg. 3, ¶ 8-pg. 4, ¶ 1).
6. Ooki further teaches regulation of the temperature so that "there is
no concern for overheating." (Pg. 3, ¶ 6; pg. 4, ¶ 1).
7. The Specification of Ooki states:
Although this working model utilized a PCT heater, if the
heater with a positive temperature coefficient [i.e., PTC] of
resistance is utilized, then the temperature control function can
be eliminated, or a combination of a normal heater with a
temperature control function or timer function can be utilized.
(Pg. 4, ¶ 3).
8. Bright discloses a fuel injector having an internal heater 50
"disposed within a valve body just upstream of a valve seat." (Abstract; see
also col. 3, ll. 62-67; Fig. 1).

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PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103(a), the Examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). "To facilitate review, this
analysis should be made explicit." KSR Int'l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
("[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness")). If a prima facie case of obviousness is shown, the burden of
coming forward with evidence or argument shifts to the Appellant. See
Oetiker, 977 F.2d at 1445.
Any initial obviousness determination is reconsidered anew in view of
the proffered evidence of nonobviousness. See In re Rinehart, 531 F.2d
1048, 1052 (CCPA 1976); In re Eli Lilly & Co., 902 F.2d 943, 945, (Fed.
Cir. 1990). "[C]opying of a claimed invention can be evidence of
nonobviousness." Pentec, Inc. v. Graphic Controls Corp., 776 F.2d 309,
317 (Fed. Cir. 1985).
[Copying ] may be demonstrated either through internal
documents[]; direct evidence such as disassembling a
patented prototype, photographing its features, and using
the photograph as a blueprint to build a virtually identical
replica[]; or access to, and substantial similarity to, the
patented product (as opposed to the patent)[.]

Iron Grip Barbell Co. Inc. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed.
Cir. 2004) (citations omitted). In addition, "more than the mere fact of
copying by an accused infringer is needed to make that action significant to
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a determination of the obviousness issue[]" because "copying may have
occurred out of a general lack of concern for patent property[.]" Cable Elec.
Prods. v. Genmark, Inc., 770 F.2d 1015, 1028 (Fed. Cir. 1985); see also In
re GPAC, 57 F.3d 1573, 1580 (Fed. Cir. 1995).

ANALYSIS
Initially, we observe that three different obviousness rejections have
been made with respect to the various claims. The Appellant’s arguments
are directed to the suggested combination of Ooki and Bright that serves as
the basis for all three rejections, and to the limitations in independent claims
1, 14 and 24. For patentability of dependent claims 6, 7, 13, 18-21 and 30-
33, the Appellant merely relies on their dependency on independent claims
1, 14 or 24 (see App. Br. 9). Correspondingly, all of the claims on appeal
stand or fall together. In addition, only those arguments actually made by
Appellant have been considered in this decision. Arguments which
Appellant could have made but chose not to make in the Brief have not been
considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii);
In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011); Ex Parte Frye, 94
USPQ2d 1072, 1075-76 (BPAI 2010, precedential).

Prima Facie Case of Obviousness
As to the independent claims, the Examiner finds that Ooki discloses
all of the recited limitations except that Ooki "fails to teach a heating
element disposed 'within' an intermediate portion of a valve housing." (Ans.
5; see also FF 3). The Examiner relies on Bright for teaching a heating
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element 50 that is arranged within, and supported by, the intermediate
portion of a valve (Ans. 5; see also FF 8). The Examiner concludes that it
would have been obvious to one of ordinary skill in the art "to modify Ooki
by disposing the heating unit within and intermediate portion of a valve
housing in order to protect the heating element from damage and provide an
insulating affect that improves heating efficiency." (Ans. 6, 8-9). The
Examiner's reasoning appears to be based on rational underpinnings that
adequately support an obviousness conclusion. Hence, the Examiner has
satisfied his initial burden of establishing a prima facie case of obviousness,
having articulated a rational reason for modifying the device of Ooki. See
KSR, 550 U.S. at 418.
The Appellant does not dispute the Examiner's factual findings with
respect to the disclosures of Ooki and Bright, but rather, disagrees with the
Examiner that a person of ordinary skill in the art would have combined
these references in the manner suggested. The Appellant argues that the
combination of Ooki and Bright proposed by the Examiner renders the PCV
valve of Ooki unsuitable for its intended use because disposing the heater
within the lower portion of the housing would "require enlargement of the
housing" and "tube 13 would not fit over the housing to make the proper
connection with the crankcase." (App. Br. 4). The Appellant also argues that
because of the housing modification required which "would preclude the
valve from being properly connected," there is no reasonable expectation of
success, and modification… .” (App. Br. 4). The Appellant further argues
that "using a larger tube would change the flow or pressure of the blow-by
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gases and thereby improperly change the operation of the valve." (App. Br.
4).
We are not persuaded by the Appellant's arguments because, as
observed by the Examiner, Appellant's argument is principally based on
bodily incorporation of the features of Bright into Ooki (Ans. 7). However,
"[t]he test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference; nor is it that the claimed invention must be expressly suggested in
any one or all of the references. Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art." In re Keller, 642 F.2d 413, 425 (CCPA 1981)); see also In re
Nievelt, 482 F.2d 965, 968 (CCPA 1973) ("Combining the teachings of
references does not involve an ability to combine their specific structures.").
We agree with the Examiner that a person of ordinary skill in the art
would "understand how to incorporate a heater into the housing of Ooki
while retaining the proper function of Ooki's valve assembly." (Ans. 7-8).
We agree that resizing of the PCV valve and its connections so as to provide
proper function would be within the skill of one of ordinary skill in the art.
The Appellant does not provide persuasive evidence to the contrary, but
merely relies on unpersuasive attorney arguments based on bodily
incorporation. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997)
(Attorney argument cannot take the place of evidence.).
The Appellant also argues that Ooki addresses the problem of
preventing a valve from freezing whereas Bright address a different problem
of reducing emissions by heating the fuel passing through the injector prior
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to combustion (App. Br. 6). In this regard, the Appellant asserts that there is
no need to rely on Bright for the problem of valve freezing because Ooki
already incorporates a heater which addresses this problem (App. Br. 7).
This argument is not persuasive because as stated by the Examiner, no
express suggestion to combine the references is required, and the Examiner
has articulated reasons with rational underpinnings for combining the
teachings in the manner suggested to support the conclusion of obviousness
(Ans. 6-7). KSR, 550 U.S. at 418. Whereas Ooki functions to address the
problem of valve freezing, we observe that the Examiner has articulated
additional reasons other than for valve freezing for combining the teachings
in the manner suggested, i.e., "to protect the heating element from damage
and provide an insulating affect." (Ans. 6-7). The reasons for applying the
teachings in the art need not be the same as that of the inventor. Cross
Medical Products, Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293,
1323 (Fed. Cir. 2005) ("one of ordinary skill in the art need not see the
identical problem addressed in a prior art reference to be motivated to apply
its teachings.").
The Appellant further argues that there is no motivation to combine
the teachings of Ooki with Bright because the presence of vaporized fuel in
the blow-by gas "poses a flammability threat" not present in the fuel injector
of Bright, and the presence of vaporized fuel adds "complications of
incorporating a heater/electrical connections." (App. Br. 5-6; Reply Br. 2).
The Appellant asserts that Bright never discusses this threat because in
Bright, the fuel is liquid and not vapor, and that "one of ordinary skill in the
art would avoid creating a flammability concern by incorporating the heater
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within the housing of Ooki, especially given that there is not the same
objective for internal heating as in Bright." (Reply Br. 3).
However, the Appellant again does not carry its burden of persuasion
with evidence, but rather, again merely relies on attorney arguments which
are unpersuasive. See In re Geisler, 116 F.3d at 1470. In particular, the
Appellant does not direct us to any persuasive evidence which establishes
that a flammability threat actually exists with respect to blow-by gas, which
apparently has sufficient moisture to freeze at lower temperatures so as to
render the valve inoperable until it is unfrozen (FF 4; see also FF 2). The
Appellant also does not proffer any persuasive evidence that such a threat, if
it actually exists, would have dissuaded a person of ordinary skill from
combining the teachings of the prior art references in the manner suggested
by the Examiner. In this regard, we find the Appellant's assertions with
respect to flammability threat lack credibility absent objective supporting
evidence because the Appellant's invention as described and claimed
positions the heater element within the intermediate portion of the valve
assembly, which, according to the Appellant, would pose a flammability
threat. The specification of the '984 patent also makes no mention of the
alleged flammability threat, or describe any particular features that would
neutralize the purported threat.
Furthermore, the Appellant's argument also does not appear to be well
founded. The heat from the heater 16 of Ooki must ultimately heat the
interior of the PCV control valve 9 where the valve 6 is present in order to
unfreeze the PCV valve (FF 4-5), the interior being subject to vaporized fuel
of the blow-by gas. The teachings in Ooki with respect to temperature
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control and prevention of overheating clearly establishes that those in the art
already appreciated the fact that heating of the PCV valve should be
regulated and provided mechanisms for doing so (FF 5-6). It would have
been evident to one of ordinary skill that when positioning the heating
element within the intermediate portion of the housing, the heating element
must be controlled so as to unfreeze the valve while also preventing
overheating (FF 5-6). The Appellant has not provided any persuasive
evidence to the contrary.

Secondary Considerations
The Appellant also contends that there is evidence of copying to
contend non-obviousness of the rejected claims. In particular, the Appellant
asserts that the Declarations of Mr. Wade which includes a claim chart and
exhibit with a photograph showing a disassembled device of Miniature
Precision Component's (hereinafter "MPC") PCV valve establishes copying.
(See Decl., Exhibit 1; Supp. Dec., Exhibits A and B). According to the
Appellant, prior to the invention, "no one had located a heater in an
intermediate portion of a PCV valve. Then, once Applicant had invented the
location, a competitor adopted that location." (App. Br. 7).
The Examiner finds the evidence unpersuasive stating, inter alia, that
Mr. Wade is an inventor so that his opinions and conclusions "carry less
weigh than that of an objective third party." (Ans. 9). The Examiner further
states that there is no evidence that copied product is identical to claimed
product, and that U.S. Patent No. 6,546,921 issued on April 15, 2003 to
Callahan (hereinafter "Callahan") which is assigned to MPC is evidence that
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MPC did not copy (Ans. 10). We generally agree with the Examiner's
assessment of the evidence of record.
While Mr. Wade's declarations set forth various factual statements as
the Appellant asserts (Reply Br. 4), we observe that the declarations and the
exhibits therein do not set forth evidence of copying by MPC. Rather Mr.
Wade declares that the PCV valve purported to be manufactured by MPC
was torn down, and in his assessment, satisfies the limitations of claims 14
and 24 (see Supp. Decl. ¶ 4, Exhibit A; Decl. ¶ 6). Thus, the declarations
and the proffered evidence merely alleges that MPC's product would have
infringed at least some of the claims of the ‘984 patent, and fails to establish
that MPC's product is, in fact, a copy of the Appellant's claimed invention.
The mere fact that a device may infringe a claim is inadequate to establish
copying. See Iron Grip Barbell, 392 F.3d at 1325.
In addition, whereas the Appellant observes that Callahan is not prior
art and immaterial (Reply Br. 4), the Appellant misses the point being made
by the Examiner. The Examiner is not relying on Callahan as prior art.
Rather, the Examiner is pointing out the fact that existence of Callahan tends
to indicate that MPC did not copy the Appellant, but rather, developed their
product independently. In this regard, we observe that as far as the evidence
of record is concerned, the earliest date that the subject matter of the '984
patent was made public is the PCT Publication Date of March 13, 2003.
However, the application from which Callahan issued was filed prior to that
date on April 30, 2002.
To be clear, we do not find that copying by MPC did not occur.
Rather, we find that the Appellant has not presented any persuasive evidence
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to establish that copying occured. Whereas the Appellant argues that the
declarations are "based on information that is reasonably available" (Reply
Br. 4), the Examiner is correct in stating that "in asserting secondary
considerations of nonobviousness, the patent owner bears the burden of
supplying sufficient objective evidence to clearly establish such a claim."
(Ans. 11). Moreover, we also observe that even if there was copying, the
evidence must establish that such copying was not due to some other factors
unrelated to nonobviousness of the claimed invention. See Cable Elec.
Prods., 770 F.2d at 1028; In re GPAC, 57 F.3d at 1580.
While we have reconsidered the initial obviousness determination
anew in view of the proffered evidence of nonobviousness, we are not
persuaded that the Examiner's rejections are erroneous. See In re Rinehart,
531 F.2d at 1052.

CONCLUSIONS
1. The Examiner did not err in concluding that it would have been
obvious to one of ordinary skill in the art to position the heating element
within the intermediate portion of the PCV valve assembly based on the
combined teachings of Ooki and Bright.
2. The Appellant has not established nonobviousness of the
claimed invention based on alleged evidence of copying.

ORDER
The Examiner's rejections are AFFIRMED.

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Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED
ack
cc:

Patent Owner
CARLSON, GASKEY & OLDS, P.C.
400 West Maple Road
Suite 350
Birmingham, MI 48009

Third Party Requester:
DICKINSON WRIGHT PLLC
38525 Woodward Avenue
Suite 2000
Bloomfield Hills, MI 48304-2970