Ex Parte 7,891,376 et al

Patent Trial and Appeal Board

May 23, 2014

95001834 (P.T.A.B. May. 23, 2014)

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.
95/001,873 01/18/2012 7,891,376 03749-P0004D 2522
24126 7590 05/27/2014
ST. ONGE STEWARD JOHNSTON & REENS, LLC
986 BEDFORD STREET
STAMFORD, CT 06905-5619
EXAMINER
KAUFMAN, JOSEPH A
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
05/27/2014 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
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.
95/001,834 11/28/2011 7,891,376 03749-P0004C 9827
24126 7590 05/27/2014
ST. ONGE STEWARD JOHNSTON & REENS, LLC
986 BEDFORD STREET
STAMFORD, CT 06905-5619
EXAMINER
KAUFMAN, JOSEPH A
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
05/27/2014 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
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.
95/001,797 10/27/2011 Frank Neuhauser 03749-P0004B 6246
24126 7590 05/27/2014
ST. ONGE STEWARD JOHNSTON & REENS, LLC
986 BEDFORD STREET
STAMFORD, CT 06905-5619
EXAMINER
KAUFMAN, JOSEPH A
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
05/27/2014 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
________________

SPX CORPORATION
Respondent, Requester
v.
SÜDMO HOLDING GMBH
Appellant, Patent Owner
________________

Appeal: 2014-002822
Reexamination Control: 95/001,797; 95/001,834; 95/001,873
Patent No.: 7,891,376 B2
1

Technology Center: 3900
________________

Before STEVEN D.A. McCARTHY, DANIEL S. SONG and
MICHAEL L. HOELTER, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

1
Issued February 22, 2011 to Frank Neuhauser, Stephan Franz,
Wolfgang Neumeyer and Stephan Thomaschki; and assigned to Sudmo
Holding GmbH (the “′376 patent”). The ′376 patent issued from Appl.
No. 12/184,725, filed August 1, 2008.
Appeal 2014-002822
Reexamination Control 95/001,797; 95/001,834; 95/001,873
Patent No. US 7,891,376 B2

2
STATEMENT OF THE CASE 1
This appeal arises out of the merger of three inter partes 2
reexamination proceedings (Reexamination Control Numbers 95/001,797; 3
95/001,834 and 95/001,873) instituted by the same Requester/Respondent, 4
SPX Corporation. The Appellant/Patent Owner Südmo Holding GmbH 5
appeals under 35 U.S.C. §§ 134(b) (2011) and 35 U.S.C. § 315(a) (2011) 6
from the Examiner’s final rejection of claims 1, 2, 4-14, 18-31, 33-41, 43-7
54, 58-63, 65-72, 74-77 and 81. (Right of Appeal Notice mailed 8
June 10, 2013 (hereafter “RAN”), at 1). Claims 3 and 5-17 are not subject to 9
reexamination in the merged proceeding. (Id.) We have jurisdiction under § 10
134(b) and § 315(a). 11
Claims 21-81 were added during the course of this proceeding. 12
Claims 42, 55-57 and 78-80 subsequently were cancelled. (See generally 13
“Response to Official Action” dated March 15, 2013 (hereafter “Patent 14
Owner Comments after the Action Closing Prosecution”), at 2-20). 15
Claims 32, 64 and 73 are allowable. (RAN 1). Claims 1-20 were original to 16
the ′376 patent as issued and were not amended during the proceeding. (See 17
generally Patent Owner Comments after the Action Closing Prosecution at 18
2-20). 19
The Patent Owner states that “claims 7, 20-31, 33-41, 43-54, 58-63, 20
65-72, 74-77 and 81 are the subject of the instant Appeal” (“Appeal Brief 21
under 37 CFR § 41.37” dated August 30, 2013 (“App. Br. PO”) at 2). We 22
understand this statement to mean that the Patent Owner does not appeal the 23
rejections of claims 1, 2, 4-6, 8-14, 18 and 19. These claims remain finally 24
Appeal 2014-002822
Reexamination Control 95/001,797; 95/001,834; 95/001,873
Patent No. US 7,891,376 B2

3
rejected. See MANUAL OF PATENT EXAMINING PROCEDURE § 2675 1
(9th edition, Mar. 2014).
2
2
As to the claims remaining on appeal, we sustain the rejection of 3
claim 20. We do not sustain the rejection of claims 7, 21-31, 33-41, 43-54, 4
58-63, 65-72, 74-77 and 81. 5
The decision of the Examiner is set forth in the RAN.
3
The Patent 6
Owner relies on an “Appeal Brief under 37 CFR § 41.37 [sic]” dated 7
August 30, 2013 (hereafter “Appeal Brief” or “App. Br. PO”) and a 8
“Rebuttal Brief under 37 CFR § 41.37 [sic]” dated November 25, 2013 9
(hereafter “Rebuttal Brief” or “Reb. Br. PO”). The Patent Owner 10
additionally relies on two “Declaration[s] of Paul R. Ostand Under 37 C.F.R. 11
§ 1.132” executed on August 10, 2012 (“First Ostand Decl.”), and 12
March 15, 2013 (“Second Ostand Decl.”), respectively. The Requester 13
relies on a “Respondent Brief by Third Party Requester in Inter Partes 14
Reexamination” dated September 27, 2013 (hereafter “Resp. Br. Req’r”). In 15
addition, this opinion will refer to the Requester’s “Request for Inter Partes 16
Reexamination of U.S. Patent No. 7,891,376 Pursuant to 35 U.S.C. §§ 311-17
318 and 37 C.F.R. § 1.915” dated January 18, 2012 (the “95/001,873 18
Request”); and to the Requester’s “Third Party Comments after Patent 19
Owner Response Pursuant to 37 C.F.R. § 1.947” dated September 20, 2012 20
(“Req’r Comments”). Only those arguments actually made by the Patent 21

2
We note that dependent claims 7 and 20 depend from rejected and
non-appealed claim 1.

3
The Examiner’s Answer mailed October 25, 2013, incorporates the
RAN by reference.

Appeal 2014-002822
Reexamination Control 95/001,797; 95/001,834; 95/001,873
Patent No. US 7,891,376 B2

4
Owner have been considered in this decision. Arguments that the Patent 1
Owner could have made but chose not to make have not been considered and 2
are deemed to be waived. See 37 C.F.R. § 41.67(c)(1)(vii) (2011); In re 3
Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011); Ex parte Frye, 94 USPQ2d 4
1072, 1075-76 (BPAI 2010); In re Enhanced Security Research, LLC, 739 5
F.3d 1347, 1353 (Fed. Cir. 2014). 6
The Patent Owner and the Requester have indicated that the 7
′376 patent is the subject to the litigation entitled Südmo Holding GmbH v. 8
SPX Corporation and SPX Flow Technology Systems, Inc., No. 1:11-cv-9
00561-SLR-CJB.
4
(App. Br. 2; Resp. Br. Req’r 1-2). Neither the Patent 10
Owner nor the Requester has identified any other prior litigation or post-11
grant proceeding involving the ′376 patent. 12
13
THE ′376 PATENT 14
The claims on appeal relate to a double seat valve apparatus for 15
maintaining separation between incompatible liquids such as a comestible 16
liquid and a cleaning fluid. (′376 patent, col. 1, ll. 12-13 and 35-37; see also 17
id., col. 9, ll. 44-46). As depicted in Figure 1, one such apparatus 10 18
includes a valve housing 12 defining first and second valve housing sections 19
14, 16 connected by a connecting section 24. (′376 patent, col. 9, ll. 52-54; 20
col. 9, l. 65 – col. 10, l. 3; and fig. 1). The connecting section 24 defines a 21
leakage space 46 from which liquid may be discharged through a drainage 22
section 44. (′376 patent, col. 10, ll. 40-44 and fig. 1). The housing 12 23

4
The subject litigation is currently stayed in the U.S. District Court for
the District of Delaware pursuant to an Order issued by Judge Sue L.
Robinson on December 2, 2011. (App. Br. 2; Resp. Br. Req’r 1-2).
Appeal 2014-002822
Reexamination Control 95/001,797; 95/001,834; 95/001,873
Patent No. US 7,891,376 B2

5
encloses a first closing element 28 embodied in the form of a valve disc; a 1
second closing element 30 embodied in the form of a closing sleeve; and a 2
flow barrier element 54 positioned between the closing elements 28, 30. 3
(′376 patent, col. 10, ll. 7-11 and col. 11, ll. 41-43). Figures 1 and 3b depict 4
the flow barrier element 54 is embodied as a spoked wheel including an 5
annular element 56 at its outer periphery. (′376 patent, col. 11, ll. 58-62 and 6
col. 12, ll. 24-30). 7
The first closing element 28 is configured to seal peripherally against 8
a seat 34 defined on the inner surface of the connecting section 24 adjacent 9
the first valve housing section 14. The second closing element 30 is 10
configured to seal peripherally against a seat 38 defined on the inner surface 11
of the connecting section 24 adjacent the second valve housing section 16. 12
(′376 patent, col. 10. ll. 12-22; and fig. 1). The first and second closing 13
elements 28, 30 are each configured to axially contact and seal against 14
opposite sides of an annular element 56 of the flow barrier element 54. (′376 15
patent, figs. 2a-2d; see also id., col. 13, ll. 50-59). 16
The first and second closing elements 28, 30 permit the valve 17
apparatus 10 to operate in four distinct operating states. In a fully closed 18
state, as illustrated on the left side of Figure 1 and in Figure 2d, both the first 19
closing element 28 and the second closing element 30 are seated so as to 20
form peripheral seals against the inner surface of the connecting section 24. 21
In the fully closed operating state, no flow is allowed through the connecting 22
section 24. In a fully open state as illustrated on the right side of Figure 1 23
and in Figure 2c, both the first and second closure members 28, 30 are 24
moved into the second valve housing section 16. In the fully open operating 25
Appeal 2014-002822
Reexamination Control 95/001,797; 95/001,834; 95/001,873
Patent No. US 7,891,376 B2

6
state, comestible fluid may flow between the first and second valve housing 1
sections 14, 16 through the connecting section 24. (See ′376 patent, col. 10, 2
ll. 48-61). 3
In a third operating state, the second closing element 30 is “lifted,” 4
that is, moved so as not to seat against the inner surface of the connecting 5
section 24. The first closure element 28 continues to form a seal against the 6
inner surface of the connecting section 24. (′376 patent, col. 10, l. 66 – 7
col. 11, l. 6 and fig. 2a). In this third operating state, pressurized cleaning 8
fluid may be introduced into the leakage space 46 through the second valve 9
housing section 16 and then drained through the drainage section 44 without 10
coming into contact with the first valve housing section 14. (′376 patent, 11
col. 11, ll. 13-21). The annular element 56 remains in place to obstruct the 12
flow of pressurized cleaning fluid toward or against the seal formed between 13
the first closure element 28 and the inner surface of the connecting section 14
24. (′376 patent, col. 13, ll. 60-64). 15
In a fourth operating state, the first closing element 28 is “lifted.” The 16
second closure element 28 continues to form a seal against the inner surface 17
of the connecting section 24. (′376 patent, col. 11, ll. 7-12 and fig. 2b). In 18
this fourth operating state, pressurized cleaning fluid may be introduced into 19
the leakage space 46 through the first valve housing section 14 and then 20
drained through the drainage section 44 without coming into contact with the 21
second valve housing section 16. (′376 patent, col. 11, ll. 22-40). The 22
annular element 56 remains associated with the first closure element 28 to 23
obstruct the flow of pressurized fluid toward or against the seal formed 24
Appeal 2014-002822
Reexamination Control 95/001,797; 95/001,834; 95/001,873
Patent No. US 7,891,376 B2

7
between the second closure element 30 and the inner surface of the 1
connecting section 24. (′376 patent, col. 13, ll. 60-64). 2
Claims 21, 38, 51, 60, 68, and 76 are independent. Claim 21 recites: 3
21. A double seat valve for separating media, 4
comprising: 5
a valve housing having connectors for 6
a first pipeline and a second pipeline; 7
a first closing element and a first 8
closing element seat, said first closing 9
element being in seal-forming abutment, in a 10
closed position of said first closing element, 11
with said first closing element seat via a first 12
sealing element; 13
a second closing element spaced apart 14
axially from said first closing element and a 15
second closing element seat, said second 16
closing element being, in a closed position 17
of said second closing element, in seal 18
forming abutment with said second closing 19
element seat via a second sealing element; 20
wherein said first and second closing 21
elements can be lifted independently of one 22
another from said respective first and second 23
closing element seats; 24
a leakage space being provided 25
between said first and second closing 26
elements; 27
a flow barrier element arranged 28
between said first and second closing 29
elements; 30
wherein said flow barrier element 31
shadows at least one of said first sealing 32
element and said first closing element seat 33
Appeal 2014-002822
Reexamination Control 95/001,797; 95/001,834; 95/001,873
Patent No. US 7,891,376 B2

8
which is in said closed position, when said 1
second closing element is lifted and when 2
cleaning medium is applied to said leakage 3
space, said flow barrier element preventing 4
said cleaning medium which enters said 5
leakage space from flowing directly against 6
said first sealing element and said first 7
closing element seat; and 8
wherein said flow barrier element 9
shadows at least one of said second sealing 10
element and said second closing element 11
seat of which is in said closed position, 12
when said first closing element is lifted and 13
when cleaning medium is applied to said 14
leakage space, said flow barrier element 15
preventing said cleaning medium which 16
enters said leakage space from flowing 17
directly against said second sealing element 18
and said second closing element seat; 19
wherein, in a common open position 20
of said first and second closing elements, 21
said flow barrier element forms a seal 22
axially against said first and second closing 23
elements. 24
(App. Br. PO 33-34 (Claims App’x)). 25
26
GROUNDS OF REJECTION 27
The Examiner adopts the following grounds of rejection proposed by 28
the Requester in the Request:
5
29
The Examiner rejects claims 7, 20-31, 35-41, 43-45, 48-30
54, 58-63, 65-72, 74-77 and 81 under 35 U.S.C. § 102(b) 31

5
The grounds of rejection have been revised to omit cancelled and non-
appealed claims.
Appeal 2014-002822
Reexamination Control 95/001,797; 95/001,834; 95/001,873
Patent No. US 7,891,376 B2

9
1
Appeal 2014-002822
Reexamination Control 95/001,797; 95/001,834; 95/001,873
Patent No. US 7,891,376 B2

10
(2011) as being anticipated by Hosokawa (JP S57-154564 A, 1
published Sept. 24, 1982).
6
(RAN 4-5 and 6). 2
The Examiner rejects claim 20 under 35 U.S.C. § 103(a) 3
(2011) as being unpatentable over Burmester ′986 (US 4
6,178,986 B1, issued Jan. 30, 2001) and Burmester ′134 5
(WO 2007/054134 A1, publ. May 18, 2007).
7
(RAN 4). 6
The Examiner rejects claims 20, 35, 48, 53, and 75 under 7
§ 103(a) as being unpatentable over Hosokawa and 8
Burmester ′134. (RAN 6 and 7-8). 9
The Examiner rejects claims 33 and 46 under § 103(a) as 10
being unpatentable over Hosokawa and PMO 2005 (U.S. Food 11
& Drug Admin., GRADE “A” PASTEURIZED MILK ORDINANCE 12
§ 15p.(B), para. 1b.(1) (rev. 2005)). (RAN 6-7). 13

6
References to “Hosokawa” will be to an English language translation
attached to the 95/001,873 Request. A copy of the translation is in the file of
Reexamination 95/001,873.

The Examiner also rejects claims 1, 2 and 4-13 under § 102(b) as
being anticipated by Hosokawa (RAN 4-5); claims 1, 2, 4-6, 8-14 and 18
under § 102(b) as being anticipated by Burmester ′986 (US 6,178,986 B1,
issued Jan. 30, 2001) (RAN 3); claim 18 under 35 U.S.C. § 103(a) as being
unpatentable over Hosokawa in view of Deger (US 2007/0151611, publ.
July 5, 2007) (RAN 5); and claim 19 under § 103(a) as being unpatentable
over either Burmester ‘and Deger (US 2007/0151611, publ. July 5, 2007)
(RAN 4) or Hosokawa, PMO 2005 and Deger (RAN 5-6). The Patent
Owner does not appeal the rejections of claims 1, 2, 4-6, 8-14 and 18.
Therefore, these grounds of rejection need not be considered further.

7
References to “Burmester ′134” will be to an English language
translation certified by Transperfect and attached to the 95/001,873 Request.
A copy of the translation is in the file of Reexamination 95/001,873.
Appeal 2014-002822
Reexamination Control 95/001,797; 95/001,834; 95/001,873
Patent No. US 7,891,376 B2

11
The Examiner rejects claims 34 and 47 under § 103(a) as 1
being unpatentable over Hosokawa, PMO 2005 and Deger 2
(US 2007/0151611, publ. July 5, 2007). (RAN 7). 3
4
ISSUES 5
This appeal turns on four issues. 6
Claim 21 recites a double seat valve “wherein, in a common open 7
position of said first and second closing elements, said flow barrier element 8
forms a seal axially against said first and second closing elements.” 9
Dependent claim 7 recites a double seat valve including the same limitation. 10
Independent claims 51 and 76 recite a double seat valve including a similar 11
limitation: “wherein, in a common open position of said first and second 12
closing elements, . . . said flow barrier element forms a first axial seal 13
against said first closing element and a second axial seal against said second 14
closing element.” Independent claim 38 recites a double seat valve “wherein 15
said flow barrier element forms a seal axially against at least one of said first 16
and said second closing elements.” 17
Both the Patent Owner and the Requester address the patentability of 18
claims 7, 21, 38, 51 and 76 together. (See App. Br. PO 15-20; Resp. Br. 19
Req’r 6-8). Therefore, this opinion will address as representative the 20
rejection of claim 21 under § 102(b) as being anticipated by Hosokawa. 21
Similar findings and reasoning will apply to the rejection of claims 7, 38, 51 22
and 76. One issue in this appeal is: 23
First, has the Examiner correctly interpreted the term 24
“seal,” as used in claim 21, as being sufficiently broad to 25
Appeal 2014-002822
Reexamination Control 95/001,797; 95/001,834; 95/001,873
Patent No. US 7,891,376 B2

12
encompass the specific connection of the inner valve body 13, 1
the middle valve body 14 and the outer valve body 8 of 2
Hosokawa’s apparatus? 3
Claim 60 recites a double seat valve including a flow barrier element 4
“configured as a spoked wheel.” Addressing claims 20, 35, 48, 53, 60, 75 5
and 76 as a group, the Patent Owner argues that Hosokawa fails to describe a 6
double seat valve satisfying this limitation. (See App. Br. PO 20-23; Reb. 7
Br. PO 4; see also Resp. Br. Req’r 8-11). The Patent Owner separately 8
argues that a double seat valve including a flow barrier element embodied as 9
a spoked wheel as recited in claim 20 would not have been obvious from the 10
combined teachings of Burmester ′986 and Burmester ′134. (App. Br. PO 11
26-28; Reb. Br. PO 6-7; see also Resp. Br. Req’r 13-15). Two additional 12
issues in this appeal are: 13
Second, has the Examiner correctly interpreted the term 14
“a spoked wheel” as used in claim 60 to be sufficiently broad 15
to encompass the structural arrangement of a middle valve 16
body 14 of Hosokawa’s apparatus? 17
Third, do the evidence and technical reasoning 18
underlying the rejection of claim 20 as being unpatentable over 19
Hosokawa and Burmester ′134 adequately support the 20
conclusion that one of ordinary skill in the art would have had 21
reason to embody the flow barrier element of a double seat 22
valve as a spoked wheel? 23
Claim 68 recites a double seat valve including a flow barrier element, 24
“wherein said flow barrier element is at least movable towards the first 25
Appeal 2014-002822
Reexamination Control 95/001,797; 95/001,834; 95/001,873
Patent No. US 7,891,376 B2

13
closing element when said second closing element is lifted and when 1
cleaning medium is applied to said leakage space.” Addressing claims 30, 2
36, 37, 49, 50, 58, 59, 66-69, 76 and 81 as a group, the Patent Owner argues 3
that Hosokawa fails to describe a double seat valve satisfying this limitation. 4
(See App. Br. PO 12-15; Reb. Br. PO 1-2; see also Resp. Br. Req’r 4-5). A 5
final issue in this appeal is: 6
Fourth, has the Examiner correctly interpreted the 7
limitation “wherein said flow barrier element is at least 8
movable towards the first closing element when said second 9
closing element is lifted” as used in claim 68 as being 10
sufficiently broad to encompass the specific cleaning operation 11
of the inner valve body 13, the middle valve body 14 and the 12
outer valve body 8 of Hosokawa’s apparatus? 13
14
FINDINGS OF FACT 15
The record supports the following findings of fact (“FF”) by a 16
preponderance of the evidence. 17
1. Hosokawa describes a double seat valve system including an 18
outer valve body 8 seated on an outer valve seat 4, an inner valve body 13 19
seated on an inner valve seat 5, and a middle valve body 14 seated on a 20
middle valve seat 6. (Hosokawa 359, ll. 5 and 14-28 (claim); and 360, 21
ll. 62-64). 22
2. In Hosokawa, during operation, the valve bodies 8, 13, 14 can 23
be open or lifted from their respective seats 4, 5, 6 along a main valve stem 24
7. (See generally Hosokawa 361, ll. 19-68). One operating state includes 25
Appeal 2014-002822
Reexamination Control 95/001,797; 95/001,834; 95/001,873
Patent No. US 7,891,376 B2

14
the valve bodies 8, 13, 14 “in an open position while the outer valve body 1
(8), and middle valve body (14) and inner valve body (13) are being 2
connected.” (Hosokawa 361, ll. 35-46). 3
3. Hosokawa further describes the middle valve body 14 with a 4
small hole 14′, which is seated on the middle valve seat 6. (Id., pg. 360, 5
ll. 62-64). The middle valve body 14 is capable of sliding freely along the 6
main valve stem 7. (Hosokawa 360, ll. 64-67). 7
4. Figure 1 of Hosokawa depicts a spring 15 acting on a middle 8
portion of the middle valve body 14 to hold the outer portion of the middle 9
valve body against a valve seat 6. (See Hosokawa 360, ll. 68-74). 10
Therefore, some structure must connect the middle portion and the outer 11
portion of the middle valve body 14 across the small hole 14′. Nevertheless, 12
neither Figure 1 nor any of the other drawing figures show spokes or rods 13
connecting the middle portion with the outer portion. 14
5. Figure 3 of Hosokawa depicts the configuration of the inner 15
valve body 13, the middle valve body 14 and the outer valve body 8 when 16
running washing fluid to wash the side of the double seat valve near the 17
valve box 3. In particular, Figure 3 depicts the inner valve body 13 lifted 18
(that is, slightly opened) from its valve seat 5. The outer and middle valve 19
bodies 8, 14, remain on their respective valve seats 4, 6. (See Hosokawa 20
361, ll. 47-53). The Requester correctly states that the spring 15 as depicted 21
in Figure 3 “urges middle valve body 14 downward[ly] and onto its seat 6.” 22
(Req’r Comments, Ex. A at 27; see also id. 33). Nevertheless, if one 23
associates the “second closing element” recited in claim 68 with the outer 24
valve body 8 as the Examiner and the Requester appear to do (see Req’r 25
Appeal 2014-002822
Reexamination Control 95/001,797; 95/001,834; 95/001,873
Patent No. US 7,891,376 B2

15
Comments, Ex. A at 2 and 33; see also RAN 6 (“The claim charts on pages 1
1-37 of Exhibit A . . . are incorporated herein by reference.”)), the 2
configuration depicted in Figure 3 of Hosokawa is not achieved when the 3
second closing element is lifted and when cleaning medium is applied to a 4
leakage space between the outer and inner valve bodies 8, 13. 5
6. Burmester ′134 describes a double seat valve 1. The valve 1 6
includes closing elements 3, 4 independently movable by shifting rods 3a, 7
4a. (Burmester ′134 at 20). The closing elements 3, 4 form a leakage cavity 8
5 connected to a discharge bore 3d. (Burmester ′134 at 21). 9
7. The double seat valve 1 includes an integral welding part 30. 10
The integral welding part 30 is welded along an axially facing surface at its 11
outer portion to a pressure balance piston 3c. (Burmester ′134 at 32). The 12
integral welding part 30 also is welded along an axially facing surface at its 13
middle portion to a first shifting rod 3a. (Id.) One of ordinary skill in the art 14
would have recognized that the spaces between such spokes connect the 15
opposite sides of the welding part 30 for flow purposes. (See, e.g., 16
Burmester ′134 at 21). 17
18
ANALYSIS 19
First Issue 20
Representative claim 21 recites a double seat valve “wherein, in a 21
common open position of said first and second closing elements, said flow 22
barrier element forms a seal axially against said first and second closing 23
elements.” (Italics added for emphasis.) The Requester points out that 24
Hosekawa describes the outer valve body 8, the middle valve body 14 and 25
Appeal 2014-002822
Reexamination Control 95/001,797; 95/001,834; 95/001,873
Patent No. US 7,891,376 B2

16
the inner valve body 13 of Hosekawa’s apparatus as being “connected” 1
when the three valve bodies are in an open state. (Resp. Br. Req’r 6; Req’r 2
Comments 11, citing Hosokawa 361, ll. 35-46; see also Hosokawa, fig. 3). 3
The Examiner interprets the term “seal” as at least broad enough to 4
encompass a “connection.” (See RAN 5 (adopting the Requester’s “analysis 5
and claim charts on page 22-40 of the 95/001,873 Request”)). Relying on 6
this interpretation, the Examiner concludes that, in an open position, the 7
connection among the middle valve body 14, the outer valve body 8, and the 8
inner valve body 13 of Hosokawa satisfies this limitation. (Id.) The 9
Requester supports the Examiner’s claim interpretation. (See Resp. Br. 10
Req’r 6). The Patent Owner argues that the Examiner’s interpretation is too 11
broad. (App. Br. PO 16). 12
“During reexamination, as with original examination, the PTO must 13
give claims their broadest reasonable construction consistent with the 14
specification. . . . Therefore, we look to the specification to see if it provides 15
a definition for claim terms, but otherwise apply a broad interpretation.” In 16
re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). That 17
“broad interpretation” is limited by the ordinary usage of the term as the 18
term would have been understood by one of ordinary skill in the art. In re 19
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Here, the Patent Owner does 20
not formally define the term “seal” in the Specification. The ordinary usage 21
of the term “seal” denotes “materials used to control or stop leakage of fluids 22
. . . through mechanical clearances when [fluids are] under pressure or 23
vacuum.” (MARK’S STANDARD HANDBOOK FOR MECHANICAL 24
ENGINEERS 8-133 (McGraw-Hill Cos., Inc. 2007)). This ordinary usage is 25
Appeal 2014-002822
Reexamination Control 95/001,797; 95/001,834; 95/001,873
Patent No. US 7,891,376 B2

17
consistent with the usage of the term in the ′376 patent. (See, e.g., ′376 1
patent, col. 11, ll. 22-40 (warning that direct flow of pressurized cleaning 2
fluid against “sealing elements” 32, 36 borne by the first and second closing 3
elements 28, 30 might cause the cleaning fluid to penetrate or leak into an 4
opposite valve housing section 14, 16)). 5
In Hosokawa, the only arrangement described among the valves in an 6
open position is that of a “connection.” (FF3). Nothing in Hosokawa 7
describes the connection as forming a seal or closure to prevent leakage. 8
Moreover, nothing in the definition of a “seal” implies that a “connection” 9
alone necessarily forms a seal. Therefore, neither the Requester nor the 10
Examiner has shown that the valve connection described in Hosokawa forms 11
a seal. 12
We do not sustain the rejection of claims 21-31 and 35-37 under 13
§ 102(b) as being anticipated by Hosokawa. Independent claims 38, 51 and 14
76, as well as dependent claim 7, recite similar limitations. We do not 15
sustain the rejection of claims 7, 38-41, 43-45, 48-54, 58, 59, 76, 77 and 81 16
under § 102(b) as being anticipated by Hoskawa, either. 17
The Examiner rejects claims 35, 48 and 53 under § 103(a) as being 18
unpatentable over Hosokawa and Burmester ′134. In support of these 19
rejections, the Examiner and the Requester cite Burmester ′134 as describing 20
a spoked wheel in the form of an integral welding part 30 for connecting a 21
pressure balance piston 3c to a first shifting rod 3a. (See RAN 7-8; Resp. 22
Br. Req’r 11-13; see also Burmester ′134 at 32 and figs. 6a and 6b). This 23
teaching does not remedy the deficiency in the disclosure of Hosokawa as 24
applied to parent claims 21, 38 and 51 on which claims 35, 48 and 53 25
Appeal 2014-002822
Reexamination Control 95/001,797; 95/001,834; 95/001,873
Patent No. US 7,891,376 B2

18
depend. Therefore, we do not sustain the rejections of claims 35, 48 and 53 1
under § 103(a). 2
The Examiner rejects claims 33 and 46 under § 103(a) as being 3
unpatentable over Hosokawa and PMO 2005. The Examiner and the 4
Requester cite PMO 2005 as teaching “details of the drainage section with 5
regard to the overall passage cross section being at least as large as the 6
opening cross section of a larger one of the connectors.” (RAN 6-7; see also 7
Req’r Comments, Ex. A at 13). This teaching does not remedy the 8
deficiency in the disclosure of Hosokawa as applied to patent claims 21 and 9
38 on which claims 33 and 46 depend. We do not sustain the rejection of 10
claims 33 and 46 under § 103(a). 11
The Examiner rejects claims 34 and 47 under § 103(a) as being 12
unpatentable over Hosokawa, PMO 2005 and Deger. (RAN 7). The 13
Examiner and the Requester cite Deger as describing “a drainage section 48 14
with oblique spokes 56, 58 and 60 as noted in paragraphs 66 and 67.” 15
(RAN 7; see also Req’r Comments, Ex. A at 13-14). This teaching does not 16
remedy the deficiency in the disclosure of Hosokawa as applied to patent 17
claims 21 and 38 on which claims 34 and 47 ultimately depend. We do not 18
sustain the rejection of claims 34 and 47 under § 103(a). 19
20
Second and Third Issues 21
Claim 60 recites a double seat valve including a flow barrier element 22
“configured as a spoked wheel having a plurality of spokes with openings 23
therebetween at least partially defining said leakage space.” (Italics added 24
for emphasis.) The Examiner adopts the Requester’s proposed finding that 25
Appeal 2014-002822
Reexamination Control 95/001,797; 95/001,834; 95/001,873
Patent No. US 7,891,376 B2

19
“[t]he structure of [Hosokawa’s] middle valve body 14, positioned around 1
main valve stem 7 as a hub and with through holes [sic] 14’ therein, provides 2
the recited ‘spoked wheel.’” (See RAN 6 (adopting the Requester’s “claim 3
charts on pages 1-37 of Exhibit A”); see also Req’r Comments, Ex. A at 30; 4
Resp. Br. Req’r 8-11). The Patent Owner argues that one skilled in the art 5
would not interpret the small hole 14’ of the middle valve body 14 in 6
Hosokawa as defining spokes of a spoked wheel. (App. Br. PO 20-23). 7
The Patent Owner does not define the term “spoked wheel” formally 8
in the Specification. Turning instead to the ordinary usage of the term, the 9
term “spoke” denotes “one of the bars that connect the center of a wheel to 10
the rim.” (THE FREE MERRIAM-WEBSTER DICTIONARY, http://www.merriam 11
–webster.com/dictionary/spoke (last visited May 20, 2014)(“spoke,” 12
entry 2)). A “spoked wheel,” then, is a wheel having spokes. This ordinary 13
usage is consistent with the “spoked wheel” depicted in Figure 3b of the 14
′376 patent. 15
Nothing in Hosokawa describes the structural arrangement of the 16
middle valve body 14 to be that of a spoked wheel. Some structure must 17
connect the middle portion and the outer portion of the middle valve body 14 18
across the small hole 14′. (FF 4). Nevertheless, neither Figure 1 nor any of 19
the other drawing figures show spokes or rods connecting the middle portion 20
with the outer portion. Moreover, nothing in the depiction of the middle 21
valve body 14 necessarily requires the small hole 14' in Figure 1 to be 22
formed or defined by spokes. Therefore, we agree with the Patent Owner’s 23
expert that “one of skill in the art would not read the middle valve body . . . 24
Appeal 2014-002822
Reexamination Control 95/001,797; 95/001,834; 95/001,873
Patent No. US 7,891,376 B2

20
as disclosed in Hosokawa to be a spoked wheel.” (Second Ostand Decl., 1
para. 28). We do not sustain the rejection of claims 60-63 and 65-67 under 2
§ 102(b) as being anticipated by Hosokawa. 3
The Examiner rejects claim 20 under § 102(b) as being anticipated by 4
Hosokawa or, in the alternative, under § 103(a) as being unpatentable over 5
Hosokawa and Burmester ′134. We do not sustain the rejection of claim 20 6
under § 102(b) for the reasons given in connection with the rejection of 7
claim 60 as anticipated by Hosokawa. On the other hand, our review of the 8
rejection of claim 20 under § 103(a) is complicated by the fact that the 9
Patent Owner has not argued the rejection. While this failure may be 10
deemed to constitute a waiver of any such argument, see 37 C.F.R. 11
§ 41.67(c)(1)(vii) (2011), we note that the Patent Owner did address a 12
similar rejection over the same prior art at pages 23-26 of the Appeal Brief 13
and pages 11-13 of the Rebuttal Brief. 14
Nonetheless, the Patent Owner’s arguments are not persuasive. Some 15
structure must connect the middle portion and the outer portion of the 16
middle valve body 14 across the small hole 14′. (FF 4). Burmester ′134 17
describes the use of spokes to support an annular flow control element, 18
namely, a pressure balance piston 3c, about a middle portion, namely, a 19
shifting rod 3a. (FF 7). The Examiner correctly concludes that it would 20
have been obvious to use spokes to secure the middle portion and outer 21
portion of Hosokawa’s middle valve body 14, thereby embodying the middle 22
valve body as a spoked wheel. It would have been obvious to one of 23
ordinary skill in the art to modify Hosokawa’s middle valve body 14 in this 24
fashion to minimize any negative effects which the connection between the 25
Appeal 2014-002822
Reexamination Control 95/001,797; 95/001,834; 95/001,873
Patent No. US 7,891,376 B2

21
middle and outer portions of the middle valve body might have had on the 1
flow through the small hole 14′ such as restricted flow. (See RAN 6). 2
We sustain the rejection of claim 20 under § 103(a) as being 3
unpatentable over Hosokawa and Burmester ′134. Consequently, we need 4
not address the rejection of claim 20 under § 103(a) as being unpatentable 5
over Burmester ′986 and Burmester ′134. See 37 C.F.R. § 41.77(a) 6
(2011)(“The affirmance of the rejection of a claim on any of the grounds 7
specified constitutes a general affirmance of the decision of the examiner on 8
that claim, except as to any ground specifically reversed.”). 9
10
Fourth Issue 11
Claim 68 recites a double seat valve “wherein said flow barrier 12
element is at least movable towards the first closing element when said 13
second closing element is lifted and when cleaning medium is applied to 14
said leakage space.” (Italics added for emphasis.) The Examiner finds that 15
this limitation is taught by Hosokawa because “[i]n FIG. 3, the top valve 16
body 13 is lifted from its seat while the bottom valve body 8 remains in its 17
seat 4. Additionally, s[p]ring 15 urges middle valve body 14 downward and 18
onto its seat 6.” (See RAN 6 (adopting the Requester’s “claim charts on 19
pages 1-37 of Exhibit A”); see also Req’r Comments, Ex. A at 33). The 20
Patent Owner argues that although Hosokawa establishes that “the middle 21
valve body could move at some point in time,” Hosokawa does not describe 22
the middle valve body moving “towards the first closing element when said 23
second closing element is lifted and when cleaning medium is applied to said 24
leakage space.” (App. Br. PO 14 (italics in original)). The Requester argues 25
Appeal 2014-002822
Reexamination Control 95/001,797; 95/001,834; 95/001,873
Patent No. US 7,891,376 B2

22
that the Patent Owner is attempting to read an unclaimed structure for 1
moving the flow barrier element into the claim. (Resp. Br. Req’r 5). 2
The Patent Owner’s argument is persuasive. The passage of 3
Hosokawa at page 360, lines 61-67 describes the middle valve body 14 as 4
being capable of sliding freely along a main valve stem 7 of the double seat 5
valve. (FF 3). The passage does not describe when the middle valve body 6
14 might actually slide, that is, move. In particular, the Patent Owner 7
correctly points out that the passage does not describe the middle valve body 8
14 as either moving or being capable of movement when the “second closure 9
element,” that is, the outer valve body 8, is lifted. (See App. Br. PO 14). 10
Figure 3 of Hosokawa depicts the configuration of the valve bodies 8, 13, 14 11
when the first closure element, that is, the inner valve body 13, is lifted 12
rather than when the second closure element, that is, the outer valve body 8, 13
is lifted. Figure 4 of Hosokawa, which depicts the depicts the configuration 14
of the valve bodies 8, 13, 14 when the second closure element is lifted, does 15
not indicate any movement of the middle valve body 14 relative to its valve 16
seat 6. 17
We do not sustain the rejection of claims 68-72 and 74-75 under 18
§ 102(b) as being anticipated by Hosokawa. Because neither the Examiner 19
nor the Requester cites Burmester ′134 for a teaching which might remedy 20
this deficiency in the disclosure of Hosokawa, we do not sustain the 21
rejection of claim 75 under § 103(a) as being unpatentable over Hosokawa 22
and Burmester ′134. 23
24
DECISION 25
Appeal 2014-002822
Reexamination Control 95/001,797; 95/001,834; 95/001,873
Patent No. US 7,891,376 B2

23
We REVERSE the rejection of claims 7, 21-31, 33-41, 43-54, 58-63, 1
65-72, 74-77 and 81. 2
WE AFFIRM the rejection of claim 20. 3
Requests for extensions of time in this inter partes reexamination 4
proceeding are governed by 37 C.F.R. § 1.956 (2011). 5
In the event neither party files a request for rehearing within the time 6
provided in 37 C.F.R. § 41.79, and this decision becomes final and 7
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must 8
timely serve notice on the Director of the United States Patent and 9
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. 10
11
AFFIRMED-IN-PART 12
13
14
15
16
Patent Owner: 17
18
ST. ONGE, STEWARD, JOHNSTON, & REENS 19
986 BEDFORD STREET 20
STAMFORD, CT 06905-5619 21
22
23
Third Party Requester: 24
25
FISCH, HOFFMAN, SIGLER LLP 26
5335 WISCONSIN AVENUE, NW 27
SUITE 830 28
WASHINGTON, DC 20015 29