Ex Parte Ernst et al

Patent Trials and Appeals Board

Jun 28, 2019

13904659 - (D) (P.T.A.B. Jun. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/904,659 05/29/2013
87521 7590 07/02/2019
Cantor Colburn LLP - Hamilton Sundstrand
20 Church Street, 22nd Floor
Hartford, CT 06103
FIRST NAMED INVENTOR
Jeffrey Ernst
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
71387US01 (U310358US) 1035
EXAMINER
WALTHOUR, SCOTT J
ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
07/02/2019 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):
usptopatentmail @cantorcolburn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY ERNST and JOHN M. MALJANIAN
Appeal 2018-003756
Application 13/904,659
Technology Center 3700
Before ANNETTE R. REIMERS, JEREMY M. PLENZLER, and
LISA M. GUIJT, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-16 and 20. Claims 17-19 have been canceled.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Hamilton Sundstrand Corporation ("Appellant") is the applicant as provided
under 37 C.F.R. § 1.46 and is identified as the real party in interest. Appeal
Brief 2 ("Appeal Br."), filed Oct. 23, 2017.
Appeal 2018-003756
Application 13/904,659
CLAIMED SUBJECT MATTER
The claimed subject matter "relates to a dual pressure regulator shut
off valve (PRSOV) apparatus." Spec. ,-J 1,2 Fig. 2. Claims 1, 9, and 20 are
independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A pre-cooler system, comprising:
at least one first downstream flow system;
at least one second downstream flow system;
a first pre-cooler which is sized to handle demands
of only the at least one first downstream flow system;
a second pre-cooler which is sized to handle
demands of only the at least one second downstream flow
system;
a piping system by which the first and second
pre-coolers are receptive of compressed air from first
and second turbine engines, respectively, by which the
first pre-cooler is coupled to the at least one first
downstream flow system, which is configured to apply
the demands thereof to the first pre-cooler, and by
which the second pre-cooler is coupled to the at least
one second downstream flow system, which is
configured to apply the demands thereof to the second
pre-cooler;
a first pair of pressure regulator shut off valves
(PRSOV s) disposed in parallel with each other and
between the first turbine engine and the at least one first
downstream flow system, arranged in series with the first
pre-cooler; and
a second pair of PRSOVs disposed in parallel
with each other and between the second turbine engine
and the at least one second downstream flow system,
arranged in series with the second pre-cooler.
2 Originally filed Specification (Spec."), filed May 29, 2013.
2
Appeal 2018-003756
Application 13/904,659
REJECTI0NS3,4
I. Claim 20 stands rejected 35 U.S.C. § l 12(a) for lack of written
description.
II. Claims 1-4, 6-12, 14-16, and 20 stand rejected under 35 U.S.C. § 103
as unpatentable over Rostek (US 2009/0235670 Al, published Sept.
24, 2009), Bruun (US 5,161,364, issued Nov. 10, 1992), Albero (US
2002/0162914 Al, published Nov. 7, 2002), Drew (US 5,511,385,
issued Apr. 30, 1996), and Defrancesco (US 2010/0175900 Al,
published July 15, 2010) or, in the alternative, over Rostek, Bruun,
Albero, Drew, Defrancesco, and Norris (US 5,482,433, issued Jan. 9,
1996).
III. Claims 5 and 13 stand rejected under 35 U.S.C. § 103 as unpatentable
over Rostek, Bruun, Albero, Drew, Defrancesco, and Gao (US
2011/0131999 Al, published June 9, 2011) or, in the alternative, over
Rostek, Bruun, Albero, Drew, Defrancesco, Norris, and Gao.
3 The Examiner has withdrawn the rejection of claims 1-16 and 20 under 35
U.S.C. § l 12(b) for indefiniteness and the rejection of claims 3-6 and 11-14
under 35 U.S.C. § 112( d) for failing to further limit the subject matter of the
claim upon which it depends. See Final Office Action ("Final Act."), 4-7,
dated May 12, 2017; see also Examiner's Answer ("Ans.") 2, dated Dec. 22,
2017.
4 The Examiner has objected to claim 20 for an informality. Final Act. 2.
This matter is not appealable, but, rather, is petitionable, and, thus, is not
within the jurisdiction of the Board. See In re Berger, 279 F.3d 975, 984 (Fed.
Cir. 2002); and In re Mindick, 371 F.2d 892, 894 (CCPA 1967).
3
Appeal 2018-003756
Application 13/904,659
ANALYSIS
Written Description
Claim 20
The Examiner determines that the recitations "first pressure regulator
shut off valves" and "second pressure regulator shut off valves" "are not
limited to two respective pairs of PRSOV s, but rather include the possibility
of more than two first pressure regulator shut off valves and more than two
second pressure regulator shut off valves." Final Act. 3. The Examiner also
determines that Appellant's originally filed Specification "does not provide
support for more than two pressure regulator shut off valves arranged in
parallel" and that "in all provided examples of the invention, there are only
two valves arranged in parallel." Id. at 3-4.
Appellant contends that:
[E]ven if one assumes that the original as-filed specification
discloses a pair of first PRSOV s and a pair of second PRSOV s,
one can see that a pair of anything is in effect two of them. Thus,
the original as-filed specification discloses two first PRSOVs
and two second PRSOV s or plural first PRSOV s and plural
second PRSO Vs.
Appeal Br. 6. Appellant also contends that:
Id.
[E]ven if it is true that the as-filed disclosure provides for only
two respective pairs of PRSOV s as suggested by the Examiner,
then it is again noted that the language of claim 20 can be read to
refer to the two disclosed first PRSOV s and the two disclosed
second PRSOVs and therefore is not inconsistent in any way,
shape or form with the original as-filed specification.
4
Appeal 2018-003756
Application 13/904,659
To satisfy the written description requirement, the specification must
describe the claimed invention in sufficient detail that one skilled in the art
can reasonably conclude that the inventor had possession of the claimed
invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562-63 (Fed. Cir.
1991 ). Specifically, the specification must describe the claimed invention in
a manner understandable to a person of ordinary skill in the art and show
that the inventor actually invented the claimed invention. Id. at 1562-63;
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en bane).
To have "possession," "the specification must describe an invention
understandable to that skilled artisan and show that the inventor actually
invented the invention claimed." Ariad, 598 F.3d at 1351. In order to
satisfy the written description requirement, the Specification must describe a
sufficient number of species to claim the genus. Id. at 1349 ("the
specification must demonstrate that the applicant has made a generic
invention that achieves the claimed result and do so by showing that the
applicant has invented species sufficient to support a claim to the
functionally-defined genus").
Appellant's originally filed Specification of May 29, 2013 describes a
"first pair of dual PRSOVs" and a "second pair of dual PRSOVs." Spec.
,-J 17, Fig. 2; see also id. ,-i,-i 5, 16, 18, 21. In addition, Figure 2 of the subject
application illustrates "a dual PRSOV apparatus." Spec. ,-J 11, Fig. 2.
Upon review of Appellant's Specification, a skilled artisan would
understand the general concept with respect to the PRSOVs to include
multiple valves in parallel for redundancy, which would include "a pair of
valves" as specifically disclosed in the Specification, and which is an
5
Appeal 2018-003756
Application 13/904,659
example of more than one or a plurality of valves. See Spec. e.g., ,i,i 5, 16,
17, 18, 21; see also Reply Br. 15 ("[T]he specification allows for PRSOV s
(plural) as claimed."). Although we acknowledge the Examiner's position
that "[t]he term 'plural' means more than one and can extend to any positive
number, whereas [the term] a 'pair' is limited to two," claim 20 calls for
"more than one" valve (i.e., valves) and "two" valves is "more than one"
valve. Ans. 2-3 (emphasis added); see also Appeal Br. 16-17 (Claims
App.); id. at 6; Reply Br. 1-2. To the extent the Examiner is attempting to
convey that there is no support in the Specification because claim 20 is
broader than a specific embodiment (see Final Act. 3-4; see also Ans. 2-3),
we note "that a claim may be broader than the specific embodiment
disclosed in a specification is in itself of no moment." In re Rasmussen, 650
F.2d 1212, 1215 (CCPA 1981).
For these reasons, we do not agree with the Examiner that claim 20
contains subject matter, which was not described in the originally filed
Specification or depicted in the figures in such a way as to reasonably
convey to a skilled artisan in the relevant art that the inventor, at the time the
application was filed, had possession of the claimed invention.
Accordingly, we do not sustain the Examiner's rejection of claim 20
for lack of written description.
5 Reply Brief ("Reply Br."), filed Feb. 22, 2018.
6
Appeal 2018-003756
Application 13/904,659
Obviousness over Rostek, Bruun, Albero, Drew, and DeFrancesco or, in the
alternative, over Rostek, Bruun, Albero, Drew, DeFrancesco, and Norris
Claims 1--4, 6--12, 14-16, and 20
Appellant does not present arguments for independent claims 9 and 20
or dependent claims 2-4, 6-8, 10-12, and 14-16 separate from those
presented for claim 1. See Appeal Br. 8-10. We select claim 1 as the
representative claim, and claims 2-4, 6-12, 14-16, and 20 stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Independent claim 1 is directed to a pre-cooler system including "a
first pair of pressure regulator shut off valves (PRSOVs) disposed in
parallel with each other" and "a second pair of PRSOVs disposed in
parallel with each other." Appeal Br. 11 (Claims App.). The Examiner
finds that the combined teachings of Rostek, Bruun, Albero, and Drew
"fail[] to teach a first pair of pressure regulator shut off valves disposed in
parallel with each other and a second pair of PRSOVs disposed in parallel
with each other." Final Act. 11. The Examiner finds that DeFrancesco
discloses "a pre-cooler (Fig. 1, heat exchanger 30 for cooling bleed air
supply 32; paras. [0010]-[0012]) and a downstream flow system (Fig. 1, air
separation module 54 of inerting system 20; paras. [0010]-[0012])"
including "a pair of pressure regulator shut off valves are disposed in
parallel with each other and between the bleed air supply and the
downstream flow system (Fig. 1, pressure regulator and shut-off valves 38;
para. [0012])." Id. The Examiner reasons that it would have been obvious
to further modify Rostek' s modified system
to replace each regulating valve 5 on respective bleed air lines 4
[ of Rostek] with respective first and second pairs of pressure
regulator shut off valves disposed in parallel with each other, as
7
Appeal 2018-003756
Application 13/904,659
taught by DeFranceso, in order to provide redundancy in case
one pressure regulating shut off valve fails so that air may still
be delivered to the downstream flow system.
Final Act. 11.
Appellant contends that "Rostek already provides redundancy into
appropriate account. Indeed, at least paragraph [0034] of Rostek explains ..
. [a] redundant supply system[]." Reply Br. 2.
Paragraph 34 of Rostek describes consumer 10 connected to the
overall air bleed system via two or more feed lines 11, wherein each air feed
line 11 has a nonretum valve 7. Rostek ,i 34, Fig. 1. In this case, the
Examiner is proposing to modify regulating/control valves "5" on air feed
lines "4" to include first and second pairs of pressure regulator shut off
valves. Final Act. 11. Appellant does not apprise us as to how the
"redundancy" provided by air feed lines 11 and nonretum valves 7 affects
regulating/control valves 5 on air feed lines 4. Although nonretum valves 7
and regulating/control valves 5 and air feed lines 4 and 11 are all part of the
overall bleed air system, the redundancy described by Appellant appears to
apply only to air feed lines 11 and nonretum valves 7, not to
regulating/control valves 5 and air feed lines 4. See Rostek ,i,i 34, 35, Figs.
1, 2.
Appellant contends that if one of the valves of Rostek were suspected
to be the location of a leak and that one valve location was shut down, "the
remaining valve in parallel with the shutdown valve would either remain
active in which case the leak could not be identified or would need to be
shut-down as well." Appeal Br. 8-9. Appellant concludes that "[i]n either
case, the motivation for the suggested combination is nullified." Id. at 9.
8
Appeal 2018-003756
Application 13/904,659
As an initial matter, the Examiner clarifies in the Answer that "not all
of Rostek' s valves 5 are replaced with redundant parallel valves, but only the
valves 5 on bleed air lines 4." Ans. 6. 6
Rostek discloses that:
In order to be able to react quickly or to prevent major damage
in the case of a leak or line fracture in the bleed air supply system,
all the control valves 5 and on-off valves 6 are designed such that
they can be closed by a safety device 12 ... the safety device 12
closes the valves immediately adjacent to the leak, the region of
the bleed air supply system that is affected by a leak can be
isolated. If necessary, furthermore, any further supply of bleed
air from the affected engine or auxiliary engine is stopped by
closing off the feed line. To this effect the safety system 12 is
connected, by way of control lines, to all the valves in the bleed
air system. These control lines are shown as dashed lines in
FIGS. 1 and 2.
Rostek ,i 35 (emphasis added), Figs. 1, 2.
In addition, Defrancesco discloses that:
The pressure regulator and shut-off valves 38 are each "failure
closed" valves. This means that should the valve fail, it will be
biased to a closed position blocking flow. However, the use of
the parallel lines 36 and 40, and the parallel valves 38 allows one
of the two valves to have failed, while air is still delivered to the
heat exchanger 30.
Defrancesco ,i 12 ( emphasis added), Fig. 1.
Upon review of the disclosures of Rostek and DeFrancesco and the
Examiner's rejection, we understand the Examiner's position to be that if
6 Appellant includes a "modified" version of Figure 2 of Rostek in view of
DeFrancesco at page 9 of the Appeal Brief. As discussed above, the Examiner
is proposing to modify only "valves 5 on bleed air lines 4." See Ans. 6.
9
Appeal 2018-003756
Application 13/904,659
"one of the parallel valves" in the modified system of Rostek "were to fail,
the other valve would ... still function normally to provide air to
downstream systems so that the system, as a whole, still functions normally,
as disclosed by Defrancesco." Ans. 5. The Examiner's findings are
reasonable and supported by a preponderance of the evidence. Appellant
does not provide persuasive evidence or argument apprising us of Examiner
error.
We disagree with Appellant that if the remaining valve in parallel with
the shutdown valve would remain active, "the leak could not be identified."
Appeal Br. 8-9. Rostek explicitly discloses that safety device 12 ( 1) closes
the valves immediately adjacent to the leak so that the region affected by a
leak can be isolated and (2) is connected, by way of control lines (shown as
dashed lines in Figures 1 and 2 of Rostek), to all the valves. Rostek ,-J 35.
Thus, in view of Rostek's and DeFrancesco's teachings, in the parallel valve
arrangement proposed by the Examiner, each control valve 5 would be
connected by way of a control line to safety device 12. As such, safety
device 12 would close the control valve 5 affected by the leak and the other
control valve 5, which is connected to safety device 12 via its own control
line, would remain open to provide air to downstream systems so that the
system, as a whole, would still function.
In response to Appellant's contention that the remaining valve in
parallel with the shutdown valve would need to be shut-down as well, the
Examiner states that "at that point, ... Rostek is more concerned with
preventing damage to other components than providing air to downstream
systems ... and the bleed air would be shut off in the area of the detected
10
Appeal 2018-003756
Application 13/904,659
leak regardless of the needs of downstream systems." Ans. 5-6 ( citing
Rostek ,i 4). Appellant does not apprise us of Examiner error.
Appellant contends that the Examiner's proposed combination of
Defrancesco with Rostek's modified system is "in direct conflict with
Rostek ... which is entirely concerned with the ability of a system to shut
off certain valves in case of a leak." Appeal Br. 8. According to Appellant,
the redundancy sought by the Examiner would "prevent or inhibit the ability
of Rostek to properly address a leakage event at a given valve since the work
needed to be put forth by Rostek's safety system 12 is effectively doubled in
terms of both sensing leaks and taking actions to prevent them once they are
sensed." Appeal Br. 8-9; see also Reply Br. 2 ("[E]ven if the redundancy
sought by the Examiner is provided at only one or two control valves 5, the
solution proposed by the Examiner necessarily increases a number of closure
actions by double (e.g., one to two closures or two to four closures).").
Appellant also contends that "additional labor is required in terms of
installing the redundant control valves 5" and "still further labor is required
to wire those control valves 5 for connections to the safety device 12 and for
re-programming the logic of the safety device to control the closures of the
redundant control valves 5." Reply Br. 2. Appellant concludes that "it
cannot be said that Defrancesco' s additional redundancy is so valuable that
it clearly overwhelms the labor involved in making the proposed
combination and in executing the additional closures." Id. at 3.
In the Answer, the Examiner clarifies that "the desirability of the
claimed combination, as taught by the cited art, centers on the desirability
of parallel valves for redundancy, not the desirability of accounting for
additional valves in the case of a leak." Ans. 4. In particular, the Examiner
11
Appeal 2018-003756
Application 13/904,659
finds that "DeFrancesco teaches the solution to a problem which is
fundamentally different than the problem solved by Rostek, and the two
solutions do not conflict," that "Defrancesco is concerned with maintaining
air flow to downstream systems in the event of the failure of a valve";
whereas, "Rostek is concerned with detecting and isolating leaks," that a
"faulty valve is not the same thing as a leak" and that "Rostek and
Defrancesco each solve different problems, and the solutions taught by each
are not mutually exclusive." Ans. 4-5. Appellant does not apprise us of
Examiner error.
We disagree with Appellant that the solution proposed by the
Examiner necessarily increases the number of closure actions by double
because, as discussed above, Rostek discloses that each control valve 5 is
connected by way of its own control line to safety device 12. Reply Br. 2;
see also Rostek ,-J 35. Therefore, although the affected control valve 5 would
be closed, the other control valve 5, which is connected to safety device 12
via its own control line, could remain open to provide air to downstream
systems so that the system, as a whole, would still function.
Further, Appellant's arguments as to "additional labor" (Reply Br. 2-
3) are unpersuasive because they fail to point to evidence or provide sound
technical reasoning to establish that a skilled artisan would recognize the
identified possible disadvantage would outweigh the benefit identified by the
Examiner, such that the proposed modification would not have been
obvious. Even if the Examiner's proposed modification would require
"additional labor," "[a] known or obvious [product] does not become
patentable simply because it has been described as somewhat inferior to
some other product for the same use." In re Gurley, 27 F.3d 551, 553 (Fed.
12
Appeal 2018-003756
Application 13/904,659
Cir. 1994). "The fact that the motivating benefit comes at the expense of
another benefit ... should not nullify its use as a basis to modify the
disclosure of one reference with the teachings of another. Instead, the
benefits, both lost and gained, should be weighed against one another."
Winner Int'! Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir.
2000). Although tradeoffs may be required in balancing the benefits and
drawbacks of doubling Rostek's control valves 5, such tradeoffs do not
necessarily prevent the proposed combination or negate the obviousness of
the claimed subject matter. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d
1157, 1165 (Fed. Cir. 2006) ("[A] given course of action often has
simultaneous advantages and disadvantages, and this does not necessarily
obviate motivation to combine.").
In this case, the Examiner notes an advantage to modifying Rostek's
control valves 5 to be doubled - to provide redundancy in case one pressure
regulating shut off valve fails so that air may still be delivered to the
downstream flow system. See Final Act. 11; see also Ans. 5. Appellant has
not shown that the alleged disadvantage-the labor involved in making the
proposed combination-outweighs the advantage identified by the
Examiner.
Appellant contends that "if the Examiner were truly interested in
redundant valve structures for Rostek's system, the Examiner would
propose[] valves in series with one another and not in parallel arrangements"
because "valves in series with one another are truly redundant and serve to
guarantee leakage prevention by a greater margin than parallel valve
arrangements." Appeal Br. 10.
13
Appeal 2018-003756
Application 13/904,659
In response, the Examiner states that "Appellant has not claimed
valves in series, nor has Appellant claimed an unspecified valve arrangement
which provides redundancy" that "Appellant has claimed parallel valve
arrangements" and that DeFrancesco "teaches that parallel valve
arrangements, in the case of pressure regulating shut off valves for bleed air
lines, are advantageous in order to provide redundancy." Ans. 7-8 (citing
Defrancesco ,i 12). Appellant does not apprise us of Examiner error.
We also are not persuaded the Examiner engages in impermissible
hindsight in combining the teachings of the references. See Appeal Br. 10;
see also Reply Br. 3. The Examiner cites specific teachings in the references
themselves, not Appellant's disclosure, in support of the Examiner's
articulated reasoning for combining the references as proposed in the
rejection. See Final Act. 8-12; see also Ans. 8 ("[T]he [E]xaminer's
determination of obviousness relied solely on the knowledge which was
within the level of ordinary skill before the effective filing date of the
claimed invention, and did not include knowledge gleaned only from
Appellant's disclosure."); In re Cree, Inc., 818 F.3d 694, 702 n.3 (Fed. Cir.
2016) (viewing an argument regarding "impermissible hindsight" as
"essentially a repackaging of the argument that there was insufficient
evidence of a motivation to combine the references" and holding that this
argument was addressed by showing that a proper motivation to combine the
references in fact existed).
In summary, and based on the record presented, we are not persuaded
the Examiner erred in rejecting independent claim 1 as unpatentable over
Rostek, Bruun, Albero, Drew, and Defrancesco or, in the alternative, over
14
Appeal 2018-003756
Application 13/904,659
Rostek, Bruun, Albero, Drew, Defrancesco, and Norris. 7 Accordingly, we
sustain the Examiner's rejection of claim 1. We further sustain the rejection
of claims 2-4, 6-12, 14-16, and 20, which claims fall with claim 1.
Obviousness over Rostek, Bruun, Albero, Drew, DeFrancesco, and Gao or,
in the alternative, over Rostek, Bruun, Albero, Drew, DeFrancesco,
Norris, and Gao.
Claims 5 and 13
Appellant does not present arguments for claims 5 and 13 separate
from those presented for claim 1. See Appeal Br. 8-10. As we find no
deficiencies in the Examiner's rejection of independent claim 1 as
unpatentable over Rostek, Bruun, Albero, Drew, and Defrancesco or, in the
alternative, over Rostek, Bruun, Albero, Drew, Defrancesco, and Norris, for
the reasons discussed above, we likewise sustain the Examiner's
obviousness rejections of claims 5 and 13.
DECISION
We REVERSE the decision of the Examiner to reject claim 20 under
35 U.S.C. § l 12(a).
We AFFIRM the decision of the Examiner to reject claims 1-16 and
20 under 35 U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
7 Appellant does not differentiate between the Examiner's original and
alternative rejections. See Appeal Br. 8.
15