Ex Parte Moreno

Board of Patent Appeals and Interferences

Feb 11, 2009

10924344 (B.P.A.I. Feb. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JACK A. MORENO
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Appeal 2008-1600
Application 10/924,344
Technology Center 3700
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Decided: February 11, 2009 1
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Before: WILLIAM F. PATE, III, JENNIFER D. BAHR, and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304 (2008), begins to run from the Decided
Date shown on this page of the decision. The time period does not run from
the Mail Date (paper delivery) or the Notification Date (electronic delivery).

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STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 (2002) from the final
rejection of claims 1-10 and 12-20.2 We have jurisdiction under 35 U.S.C.
§ 6(b) (2002). We AFFIRM the rejection of claims 1-3, 8 and 15-20. We
REVERSE the rejection of claims 4-7, 9, 10, 12, 13 and 14.
Claim 1 is typical of the claims on appeal:

1. A reversing valve comprising:
a valve body having a first end and an
opposing second end, the first end including first
and second ports disposed therein, and the second
end including third and fourth ports disposed
therein; and
an elongated valve member defining a
channel and extending between the first end and
the second end, the valve member movable within
the valve body between a first position wherein the
channel intersects the second and third ports while
simultaneously allowing communication between
the first and fourth ports, and a second position
wherein the channel intersects the second and
fourth ports while simultaneously allowing
communication between the first and third ports.

The Examiner rejects:
claim 1 under 35 U.S.C. § 102(b) (2002) as being
anticipated by Blomgren (US 6,058,974, issued May 9, 2000)
and by Baron ’996 (US 4,543,996, issued Oct. 1, 1985);

2 The Examiner withdraws rejections of claims 11 and 21 and indicates
that these claims recite allowable subject matter. (Ans. 4 and 19). There are
no other pending claims in the application.
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claims 1-3, 8 and 15 under § 102(b) as being anticipated
by Lyon (US 3,194,267, issued Jul. 13, 1965);
claims 2-8, 13 and 14 under 35 U.S.C. § 103(a) (2002) as
being unpatentable over Blomgren and Tobin (US 4,311,020,
issued Jan. 19, 1982);
claims 9 and 10 under § 103(a) as being unpatentable
over Blomgren, Tobin and Sugiyama (US 5,547,344, issued
Aug. 20, 1996);
claim 12 under § 103(a) as being unpatentable over
Blomgren, Tobin and Tsuchihashi (US 4,825,908, issued May
2, 1989);
claim 16 under § 103(a) as being unpatentable over Lyon
and Sugiyama; and
claims 17-20 under § 103(a) as being unpatentable over
Baron ‘540 (US 4,445,540, issued May 1, 1984) and Sugiyama.

ISSUES
The Examiner finds that Blomgren and Baron ‘996 disclose valves
meeting each limitation of claim 1. The Examiner further finds that Lyon
discloses a valve meeting each limitation of claims 1-3, 8 and 15. The
Appellant argues claims 1-3, 8 and 15 together as a group for purposes of the
rejection under § 102(b) as anticipated by Lyon (see Reply Br.3 12) and

3 The Appellant characterizes the Reply Brief as a substitute for the
previously filed Appeal Brief. (See Reply Br. 1). Consequently, all
references to the Appellant’s contentions and arguments will be cited to the
Reply Brief.
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claim 1 is representative of the group for purposes of this rejection, see 37
C.F.R. § 41.37(c)(1)(vii) (2008). In view of the Appellant’s contentions (see
Reply Br. 6 and 10-11), three issues raised by this appeal are:
Has the Appellant shown that the Examiner erred in
finding that Blomgren and Baron ‘996 disclose reversible
valves including valve members defining channels, the valve
members movable between first positions wherein the channels
intersect second and third ports and second positions wherein
the channels intersect the second ports and fourth ports?
Has the Appellant shown that the Examiner erred in
finding that Lyon discloses a reversible valve including a valve
body having a first end and an opposing second end, the first
end including first and second ports disposed therein and the
second end including third and fourth ports disposed therein?
Claim 2 recites a reversing valve including a valve body with a second
port coaxial with an axis line of the valve body. Claims 3-10 and 12-14
depend from claim 2. Tobin discloses a valve assembly which combines an
expansion device and reversing valve functions into a single assembly.
(Tobin, col. 2, ll. 24-26). The lower housing of Tobin’s valve assembly
includes a port coaxial with an axis line of the assembly. (Tobin, col. 4, ll.
25-27 and Fig. 5).
The Examiner finds that Blomgren fails to disclose a valve body
having a second port coaxial with a longitudinal axis line of the valve body
and third and fourth ports angularly offset from each other with respect to
the axis line. The Examiner further finds that Blomgren fails to disclose a
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valve member with a first opening which rotates concentrically with respect
to the second port and a second opening which pivots eccentrically between
intersecting the third and fourth ports. (Ans. 8-9). The Examiner reasons
that Blomgren together with Tobin would have suggested a reversing valve
having these features “in order to provide the appropriate connections
depending on the position of the valve.” (Ans. 9). In view of the
Appellant’s contentions regarding the rejections of claims 2-10 and 12-14
(see Reply Br. 17-18), another issue raised by this appeal is:
Has the Appellant shown that the Examiner failed to
articulate reasoning having rational underpinning which
supports the conclusion that Blomgren and Tobin would have
suggested all elements of claims 2-8, 13 and 14; that Blomgren,
Tobin and Sugiyama would have suggested all elements of
claims 9 and 10; and that Blomgren, Tobin and Tsuchihashi
would have suggested all elements of claim 12?
Claim 16 depends from claim 15. Claim 15 recites a method
including the step of providing a valve body including a second port coaxial
to an axis line as well as the step of eccentrically rotating a valve member
between alignment with third and fourth ports. The Examiner finds that
Lyon discloses these steps. (Ans. 6-7). The Appellant disagrees and further
contends that Lyon and Sugiyama together would not suggest the
performance of these steps. (See Reply Br. 21). In view of the Appellant’s
contentions, another issue raised by this appeal is:
Has the Appellant shown that the Examiner erred in
finding that Lyon discloses providing a valve body including a
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second port coaxial to an axis line and rotating a valve member
between alignment with third and fourth ports?
The Appellant argues claims 17-20 as a group. (Reply Br. 22-23).
Independent claim 17 is representative. 37 C.F.R. § 41.37(c)(1)(vii) (2008).
Claim 17 recites a reversing valve having an actuator including a permanent
magnet joined to the valve member and an electromagnet for moving the
valve member. Baron ‘540 discloses a fluid flow diverter for use in
connection with a heat exchange condenser. (Baron ‘540, col. 3, ll. 38-41).
Sugiyama discloses a passage selector valve for changing the passage of a
working fluid in an air conditioner. (Sugiyama, col. 1, ll. 8-11). Sugiyama’s
valve includes a valve disc, a permanent magnet member fitted on the valve
disk and an electromagnet. (Sugiyama, col. 6, ll. 25-27; col. 8, ll 10-14 and
26-30).
The Examiner finds that Baron ‘540 fails to disclose a valve with a
valve member and an actuator including an electromagnet and also a
permanent magnet joined to the valve member. (Ans. 8-9). The Examiner
reasons that Baron ‘540 together with Sugiyama would have suggested these
features “in order to provide a means, which provides rotation for the valve.”
(Ans. 16). In view of the Appellant’s contentions (see Reply Br. 22-23), a
final issue raised by this appeal is:
Has the Appellant shown that the Examiner failed to
articulate reasoning having rational underpinning which
supports the conclusion that Baron ‘540 and Sugiyama would
have suggested a reversible valve with a valve member and an
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actuator including an electromagnet and also a permanent
magnet joined to the valve member?

FINDINGS OF FACT
The record supports the following findings of fact (“FF”) by a
preponderance of the evidence.
1. Baron ‘996’s diverter valve includes a housing provided with a
pair of spaced ports 16, 17 and a diametrically opposed pair of spaced ports
18, 19. (Baron ‘996, col. 3, l. 65 – col. 4, l. 1; col. 4, ll. 3-10).
2. Baron ‘996’s valve element includes a generally planar
longitudinally extending central plug 23 and a pair of tubular pipe segments
25, 26 in opposed relationship on opposite faces of the plug 23. (Baron
‘996, col. 4, ll. 13-22).
3. When Baron ‘996’s valve element 20 is in a normal position in
which the central plug 23 aligns with cage bars 29 on the interior of the
housing, ports 16, 18 communicate and ports 17, 19 communicate through
opposite sides of the chamber 15. (Baron ‘996, col. 4, l. 65 – col. 5, l. 7 and
Fig. 4). Fig. 4 of Baron ‘996 shows a lower end of Baron ‘996’s tubular
pipe segment 25 spaced from the port 18 such that fluid from the supply port
16 flows both through the tubular pipe segment 25 and around the segment
25.
4. Blomgren’s backflushing valve includes a valve housing and a
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valve member 18.4 (Blomgren, col. 3, ll. 11-14 and 21-23).
5. Blomgren’s valve housing includes two circular end plates 13a,
13b. (Blomgren, col. 3, ll. 11-14 and Fig. 3). Each end plate 13a, 13b has
two outwardly extending connection tubes 15a, 15b, 16a, 16b. (Blomgren,
col. 3, ll. 14-17 and Fig. 5).
6. Four through passages 19-22 extend through Blomgren’s valve
member 18. (Blomgren, col. 3, ll. 21-26). None of the four through
passages appears to be coaxial with an axis line of the valve body. (See
Blomgren, Fig. 4).
7. When Blomgren’s valve member 18 is in a rotational position
for normal operation, two through passages 19, 20 parallel with the axis of
the valve member align with the ports 15a, 15b and 16a, 16b so that fluid
flows from the ports 15a, 16a in one end plate 13a of the housing to the ports
15b, 16b in the other end plate 13b through the two through passages 19, 20.
(Blomgren, col. 3, ll. 28-36). When the valve body 18 is rotated 90° so that
the openings of passages 21, 22 which extend obliquely through the valve
member 18 align with the outwardly extending connection tubes 15a, 16b
and 16a, 15b, the flow reverses. (Blomgren, col. 3, ll. 39-44).
8. Blomgren does not disclose a through passage or channel which
even partially aligns with any port in both positions of the valve member 18.

4 Blomgren uses the term “valve housing” to refer to a part
corresponding to the “valve body” recited in the appealed claims. Blomgren
instead uses the term “valve body” to refer to a part corresponding to the
“valve member” recited in the appealed claims. To avoid possible confusion
as to which part the term “valve body” refers, the term “valve member” will
be substituted in these findings and in the following analysis for Blomgren’s
term “valve body.”
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9. The two flat end surfaces of Blomgren’s valve member have
gaskets 31a around each opening 19a-22a, 19b-22b of the through passages
19-22. These gaskets 31a engage a seal against the end plate 13a and 13b.
(Blomgren, col. 4, ll. 9-12). These gaskets prevent leakage into the interior
of the valve housing which might create leakage between the connection
tubes 15a, 15b, 16a, 16b. (See Blomgren, col. 4, ll. 12-20). Blomgren does
not disclose or suggest permitting flow through the valve housing other than
through the through passages 19-22.
10. Lyon’s four-way control valve includes a generally cylindrical
chamber comprising an upper body section 10 and a lower body section 12.
(Lyon, col. 2, ll. 40-49).
11. Lyon’s lower body section 12 is fitted internally with a
cylindrical liner 16 formed with four vertically elongated rectangular ports
17 arranged at angular spacings of 90°. (Lyon, col. 2, ll. 52-55).
12. Lyon discloses that “[t]he upper end of the upper body section
10 is formed axially with a large diameter hole 20 which extends through an
integral tubular member 10a which depends axially from the top of the upper
body section.” (Lyon, col. 3, ll. 68-71). Lyon also discloses that “[a]
passage 23 for the inflow or outflow of liquid communicates laterally with
the upper end of the interior of the upper body section . . . .” (Lyon, col. 4,
ll. 3-7).
13. A rotary valve member 26 of hollow elbow shape is mounted
within Lyon’s chamber so as to turn about the axis of the chamber. The
upper end of the valve member 26 is reduced in diameter to fit neatly within
a bearing ring in the depending tubular member 10a. The outer end of the
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valve member 26 is disposed close to the inner periphery of the cylindrical
liner 16 so as to be substantially in brushing engagement with the liner.
(Lyon, col. 3, ll. 13-20). The outer end of Tobin’s valve member appears to
rotate eccentrically with respect to the axis of the chamber. (See Lyon, Fig.
1).
14. Lyon discloses turning the valve member 26 until the outer end
of the valve member registers with one of the ports 17. (Lyon, col. 4, ll. 14-
17). Figs. 1 and 3 indicate that the remaining ports 17 remain in
communication with the port 23 through the chamber.
15. Tobin’s valve assembly includes an upper housing 60, a gate or
valve member 62 and a lower housing 64. (Tobin, col. 4, ll. 21-27 and 34-
38).
16. Tobin’s upper housing 60 includes four ports 42, 44, 46, 48.
(Tobin, col. 4, ll. 21-23). Tobin’s lower housing 64 includes a port 54
positioned approximately along an axis of the valve. (Tobin, col. 4, ll. 25-27
and Fig. 5).
17. Tobin’s gate 62 forms a first passageway 71 in the form of a
slot. (Tobin, col. 4, ll. 42-45). The first passageway 71 connects the ports
42 and 44 when the gate is in one position. (Tobin, col. 4, ll. 63-66). and
col. 5, ll. 1-6). The first passageway connects the ports 44 and 46 when the
gate is in another position. (Tobin, col. 5, ll. 1-6).
18. Tobin’s gate also forms a second passageway 77. The second
passageway 77 has openings 72, 73 and 53. (Tobin, col. 4, ll. 42-45). The
opening 53 is disposed near the middle of the second passageway 77 so as to
communicate with the port 54. (See Tobin, Fig. 12). The openings 72, 73
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are disposed at ends of the second passageway 77. (See id.) The second
passageway acts to connect either port 42 or port 46 to the port 54. (See
Tobin, col. 4, ll. 45-52).
19. Tobin does not disclose permitting flow through the upper and
lower housings 60, 64 other than through the gate.
20. Sugiyama’s discloses a passage selector valve includes a valve
base 52; a valve disk 53; a magnet member 54 fixed to the outer edge of
the valve disk 52; and a magnetism switching unit 55 including an
electromagnet 80. (Sugiyama, col. 6, ll. 25-27; col. 6, ll. 31-33; and col. 8,
ll. 26-30). The magnetism switching unit 55 applies a magnetic force to the
magnet member 54, thereby driving the valve disk 53 to rotate from one
position to another. (See Sugiyama, col. 6, ll. 33-35).
21. Sugiyama’s valve base 52 includes three ports, a central port 60
and two connecting ports 59, 61 on either side of the central port 60.
(Sugiyama, col. 6, ll. 52-63 and Fig. 2A).
22. Sugiyama’s valve disk 53 includes depression 66 formed on an
upper surface of the valve disk 53. The depression allows each two adjacent
ports 59, 60 and 60, 61 to communicate alternatively with each other.
(Sugiyama. col. 7, ll. 17-23).
23. Sugiyama’s valve disk 53 also includes a through hole 67.
(Sugiyama, col. 7, ll. 36-37). The through hole 67 communicates with
whichever of the connecting ports 59, 61 is not placed in communication
with the central port 60 by the depression 66. (Sugiyama, col. 7, ll. 36-41
and col. 7, l. 58 – col. 8, l. 2).
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24. Tsuchihashi discloses a four-way valve including a first valve
body 11, a second valve body 12 and a valve member 13. (Tsuchihashi, col.
3, ll. 36-37, 43-46 and 56-57).
25. Tsuchihashi’s first valve body 11 has its bottom wall formed
with an outlet port 15a and two circuit ports 16a and 17a. (Tsuchihashi, col.
3, ll. 38-43). The second valve body is drawn into a conical shape to have
an inlet port 14a at its upper end. (Tsuchihashi, col. 3, ll. 43-46).
26. Tsuchihashi’s valve member 13 is formed in its bottom with an
arcuate groove 13a for providing communication between the outlet port 15a
and the circuit port 16a or 17a. (Tsuchihashi, col. 3, ll. 57-61).
27. Tsuchihashi’s valve member is also formed with two
communication ports 13b and 13c. (Tsuchihashi, col. 3, ll. 61-66). The
communication ports 13b and 13c provide communication between the
circuit ports 16a, 17a and the inlet port 14a. (See Tsuchihashi, col. 4, l. 64 –
col. 5, l. 3 and col. 5, ll. 13-20).

PRINCIPLES OF LAW
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
A claim is unpatentable for obviousness under 35 U.S.C. § 103(a) if
“the differences between the subject matter sought to be patented and the
prior art are such that the subject matter as a whole would have been obvious
at the time the invention was made to a person having ordinary skill in the
art to which said subject matter pertains.” In Graham v. John Deere Co.,
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383 U.S. 1 (1966), the Supreme Court set out factors to be considered in
determining whether claimed subject matter would have been obvious:

Under § 103, the scope and content of the prior art
are to be determined; differences between the prior
art and the claims at issue are to be ascertained;
and the level of ordinary skill in the pertinent art
resolved. Against this background, the
obviousness or nonobviousness of the subject
matter is determined.

Id., 383 U.S. at 17.
The Appellant does not cite to any evidence which might tend to
prove secondary considerations bearing on the issue of patentability.
Therefore, in attacking the Examiner’s rejections under § 103(a), the
Appellant bears the burden of showing that the Examiner has failed to
identify sufficient evidence of obviousness to support a prima facie case. In
re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006). That said, “rejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning having rational
underpinning to support the legal conclusion of obviousness.” Kahn, 441
F.3d at 988.
A claim under examination is given its broadest reasonable
interpretation consistent with the underlying specification. In re American
Acad. of Science Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In the
absence of an express definition of a claim term in the specification, the
claim term is given its broadest reasonable meaning in its ordinary usage as
the term would be understood by one of ordinary skill in the art. In re ICON
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Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007); In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997). Limitations not explicit or inherent in
the language of a claim cannot be imported from the specification. E-Pass
Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003).

ANALYSIS
Claim 1 recites a reversing valve including a valve member movable
between a first position wherein a channel in the valve member intersects
second and third ports in a valve body and a second position wherein the
channel intersects the second port and a fourth port in the valve body. The
ordinary usage of the term “intersect” is sufficiently broad to include “[t]o
form an intersection with” or to “cross.” (The Free Dictionary, http://www.
thefreedictionary.com/intersect (last visited February 7, 2009)(v. tr., def. 2)).
The Appellant’s Specification discloses that, when the channel through the
valve member of the Appellant’s valve “intersects” a compressor port (that
is, the second port) and one of the system ports, the compressor discharge
and the other system port communicate via the valve body. (Spec. 2-3,
¶ 0008). In view of the common usage of the term “intersect” and the usage
of the term in the Specification, “intersect” as used in claim 1 must be
limited to a relationship in which the ends of the channel at least partially
cross the plane of the port, thereby at least partially separating flow within
the channel from flow through the valve body.
Baron ‘996’s valve has a valve member including a pair of tubular
pipe segments on opposite faces of a generally planar central plug. (FF 2).
The Examiner identifies the passage between the inner surface of one of the
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pipe segments and the facing surface of the plug as corresponding to the
channel of claim 1. (Ans. 17). This passage does not intersect either of the
unit ports in Baron ‘996’s valve when the valve member or central plug is
positioned in the normal position illustrated in Fig. 4 of Baron ‘996. That is,
the two ends of the passage within Baron ‘996’s pipe segment 25 are spaced
from the unit port 16 (corresponding to the third port of claim 1) such that
fluid from the supply port flows both through the passage and through the
valve body around the passage. (FF 3). The Examiner has not identified
any other structure disclosed in Baron ‘996 which might correspond to a
channel which intersects second and third ports when the valve member or
central plug is in the normal or first position. Baron ‘996 fails to disclose at
least one limitation of claim 1.
Blomgren’s valve has a valve member defining four channels. (FF 6).
When Blomgren’s valve member is in a first position or orientation, two of
the channels through the valve member intersect the four ports through the
valve body or housing. When Blomgren’s valve member is rotated into a
second position, the other two channels through Blomgren’s valve member
intersect the ports. (FF 7). No channel through Blomgren’s valve member
intersects a particular port in both the first and second positions. (FF 8). In
other words, Blomgren’s valve member does not include a channel which
intersects a port corresponding to the second port of claim 1 in both first and
second positions of the valve member. Blomgren fails to disclose at least
one limitation of claim 1.
Lyon’s valve has two ports through the upper body section of the
valve and two ports through the lower body section of the valve. (FF 11 and
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12). The Examiner finds that the upper body section of Lyon’s valve
corresponds to the upper end of the valve body and that the lower body
section corresponds to the lower end of the body. (Ans. 21). The Appellant
contends that Lyon’s description of the valve shows that one of ordinary
skill in the art would not understand Lyon’s ports to be disposed in a first
end of the valve body and an opposed second end of the body. In particular,
the Appellant contends that Lyon distinguishes an “end” of a valve body
from a “section” of the body. (Reply Br. 11). That Lyon may not use
terminology in the same manner as the Appellant is of no moment in
determining whether Lyon anticipates the subject matter of claim 1. After
all, while anticipation requires the disclosure of each and every limitation of
the claim at issue in a single prior art reference, it does not require such
disclosure in haec verba. In re Bode, 550 F.2d 656, 660 (CCPA 1977). The
Appellant’s argument is unpersuasive with respect to the placement of ports
20 and 23: Lyon describes these ports as communicating with the “upper
end” of the interior of the upper body section. (FF 12) The upper end of the
valve body as a whole must include the upper end of the upper body section.
The Appellant’s argument is unpersuasive with respect to the
placement of Lyon’s ports 17 as well. The Appellant does not define the
term “end” in the Specification. Lyon does not define this term, either. The
ordinary usage of the term “ends” is broad enough to encompass portions of
a structure or area at opposite extremities of the structure or area. (See
Merriam-Webster’s Online Dictionary, http://www.merriam-
webster.com/dictionary/end (last visited February 7, 2009)(def. 1a: “the part
of an area that lies at the boundary”)). As such, the ordinary usage of the
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term “end” is sufficiently broad that one of ordinary skill in the art might
refer to the lower body section as the lower end of the valve body as a
whole. Lyon’s use the terms “upper end” and “lower end” in the context of
the upper and lower body sections do not imply any limitation on how one
of ordinary skill in the art would understand the term “end” when used in
reference to the valve body as a whole.
Ports 20 and 23 are disposed in the upper end of Lyon’s valve body
and ports 17 are disposed in the lower end (that is, the lower body section)
of the valve body. Further, the upper and lower ends are “opposing,” in the
sense that “upper” and “lower” are recognized opposites. The Appellant has
not identified any limitation of claim 1 not disclosed in Lyon.
Claim 2 recites a reversing valve including a valve body with a second
port coaxial with an axis line of the valve body. Blomgren’s valve body
does not include a second port coaxial with an axis line of the valve body.
(FF 6). In addition, Blomgren’s valve member does not include a channel
which intersects a second port in both first and second positions of the valve
member. (FF 8). Tobin appears to disclose a valve having a port disposed
in a lower housing coaxially with an axis line of the valve body. (FF 16).
Tobin’s valve member or gate has a second passageway or channel.
(FF 18). The middle of Tobin’s second passageway intersects the port
coaxial with the axis line of the valve body when the valve member is in
either a first position or a second position. (FF 16 and 18). Openings at the
two ends of the second passageway intersect a third port disposed in an
upper housing of the valve body when the valve member is in a first position
and intersect a fourth port disposed in the upper housing when the valve
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member is in a second position. (Id.) A slot in the surface of the valve
member provides communication between a first port disposed in the upper
housing and either the third or fourth ports. (FF 17). Tobin does not
disclose a valve having first and second ports disposed in one end of the
valve body and third and fourth ports disposed in the other end of the valve
body which interact with the valve member as recited in claims 1 and 2.
The Appellant contends that substantial reconstruction and redesign
would have been required to adapt the teachings of Blomgren and Tobin to
construct the reversing valve of claim 2. (Reply Br. 17). Neither Blomgren
nor Tobin suggests permitting ports disposed in the valve body to
communicate through any space between the valve body and the valve
member. (FF 9 and 19). The geometry of the channels or slots in the valve
member of Blomgren or the valve member of Tobin would require
substantial reconfiguration and rerouting in order for a channel defined in
the valve member to intersect a second port disposed in a first end of the
valve body and a third port disposed in a second end of the valve body while
simultaneously allowing communication between a first port disposed in the
first end and a fourth port disposed in the second end when the valve
member is in a first position; and to intersect the second and fourth ports
while simultaneously allowing communication between the first and third
ports when the valve member is in a second position. Neither Blomgren nor
Tobin suggests how to redesign either valve body to accomplish this. A
motivation to provide the appropriate connections depending on the position
of the valve would not explain how one of ordinary skill in the art would
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know how to redesign Blomgren’s or Tobin’s valve member so as to
produce a valve meeting all of the limitations of claim 2.
The Examiner has not articulated reasoning sufficient to support the
conclusion that the subject matter of claim 2 would have been obvious from
Blomgren and Tobin. Since claims 3-8, 13 and 14 depend from claim 2, the
Examiner has not articulated reasoning sufficient to support the conclusion
that the subject matter of these claims would have been obvious from
Blomgren and Tobin.
The Examiner rejects claims 9 and 10, which depend from claim 2,
under § 103(a) as being unpatentable over Blomgren, Tobin and Sugiyama.
The Examiner rejects claim 12, which depends from claim 2, under § 103(a)
as being unpatentable over Blomgren, Tobin and Tsuchihashi. Sugiyama
and Tsuchihashi each disclose valves having three ports disposed in one end
of the valve bodies. (FF 21 and 25). Each discloses a valve member having
a depression or groove which, like Tobin’s slot, intersects two of the three
ports when the valve member is in a first position and intersects another two
of the three ports when the valve member is in a second position. (FF 22
and 26). Each also discloses a hole or a pair of ports positioned to intersect
whichever of the three ports is not intersected by the depression or groove
when the valve member is in the first or second position. (FF 23 and 27).
As such, Sugiyama’s valve member and Tsuchihashi’s valve member are
similar in design and construction to Tobin’s valve member.
The Examiner has identified nothing in Sugiyama which would
suggest how to redesign Blomgren’s or Tobin’s valve member in order for a
channel defined in the valve member to intersect a second port disposed in a
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first end of the valve body and a third port disposed in a second end of the
valve body while simultaneously allowing communication between a first
port disposed in the first end and a fourth port disposed in the second end
when the valve member is in a first position; and to intersect the second and
fourth ports while simultaneously allowing communication between the first
and third ports when the valve member is in a second position. Likewise,
the Examiner has identified nothing in Tsuchihashi which would suggest
how to redesign Blomgren’s or Tobin’s valve member to accomplish this.
Since claims 9, 10 and 12 depend from claim 2, the Examiner has not
articulated reasoning sufficient to support the conclusion that the subject
matter of claims 9 and 10 would have been obvious from Blomgren, Tobin
and Sugiyama or that the subject matter of claim 12 would have been
obvious from Blomgren, Tobin and Tsuchihashi.
In contesting the rejection of claim 16 as being unpatentable over
Lyon and Sugiyama, the Appellant contends that Lyon does not disclose a
valve including two ports disposed through a first end of the valve body and
two ports disposed through an opposed second end of the valve body.
(Reply Br. 21). Lyon does disclose this, as discussed earlier in connection
with the rejection of claim 1 under § 102(b) as anticipated by Lyon. The
Appellant further contends that Lyon does not disclose providing a valve
body including a second port coaxial to the axis line of the valve body. (Id.)
Lyon’s valve member is pivotally coupled to a sleeve so that one opening in
Lyon’s valve body communicates with a hole or port disposed in the upper
end of Lyon’s valve body coaxially with an axis of the valve body. (FF 12
and 13). The Appellant further contends that Lyon does not disclose rotating
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a valve member coupled to the second port between alignment with the third
and fourth ports disposed through the second end. (Reply Br. 21). The
lower end of Lyon’s valve member rotates between alignment with ports
disposed through the lower body section at the lower end of the valve. (FF
14). Since Lyon discloses these features, it does not teach away from them
as alleged by the Appellant (see Reply Br. 21). The Appellant has not
identified any limitation of claim 16 which Lyon and Sugiyama fails to
disclose or suggest.
In the Examiner’s Answer, the Examiner changed the reasoning
articulated in support of the conclusion that the subject matter of claims 17-
20 would have been obvious. In the Examiner’s Answer, the Examiner
determines that one of ordinary skill in the art would have been motivated to
combine the teachings of Baron ‘540 and Sugiyama “in order to provide a
means, which provides rotation for the valve.” (See Ans. 16). The
Appellant attacks the reasoning articulated by the Examiner in the Final
Office Action mailed October 12, 2006 (see Reply Br. 22-23) but does not
address whether the reasoning articulated by the Examiner in the Examiner’s
Answer is adequate. Consequently, the Appellant has not shown that that
reasoning lacks rational underpinning sufficient to support the conclusion
that the subject matter of claims 17-20 would have been obvious.

CONCLUSIONS
The Appellant has shown that the Examiner erred in finding that
Blomgren and Baron ‘996 disclose reversible valves including valve
members defining channels, the valve members movable between first
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positions wherein the channels intersect second and third ports and second
positions wherein the channels intersect the second ports and fourth ports.
Therefore, the Appellant has shown that the Examiner erred in rejecting
claim 1 under § 102(b) as being anticipated by Blomgren or Baron ‘996.
The Appellant has not shown that the Examiner erred in finding that
Lyon discloses a reversible valve including a valve body having a first end
and an opposing second end, the first end including first and second ports
disposed therein and the second end including third and fourth ports
disposed therein. Therefore, the Appellant has not shown that the Examiner
erred in rejecting claims 1-3, 8 and 15 under § 102(b) as being anticipated by
Lyon.
The Appellant has shown that the Examiner failed to articulate
reasoning having rational underpinning which supports the conclusion that
Blomgren and Tobin would have suggested all elements of claims 2-8, 13
and 14; that Blomgren, Tobin and Sugiyama would have suggested all
elements of claims 9 and 10; and that Blomgren, Tobin and Tsuchihashi
would have suggested all elements of claim 12. Therefore, the Appellant
has shown that the Examiner erred in rejecting claims 2-8, 13 and 14 under
§ 103(a) as being unpatentable over Blomgren and Tobin. The Appellant
also has shown that the Examiner erred in rejecting claims 9 and 10 under
§ 103(a) as being unpatentable over Blomgren, Tobin and Sugiyama. The
Appellant also has shown that the Examiner erred in rejecting claim 12
under § 103(a) as being unpatentable over Blomgren, Tobin and
Tsuchihashi.
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The Appellant has not shown that the Examiner erred in finding that
Lyon discloses providing a valve body including a second port coaxial to an
axis line and rotating a valve member between alignment with third and
fourth ports. Therefore, the Appellant has not shown that the Examiner
erred in rejecting claim 16 under § 103(a) as being unpatentable over Lyon
and Sugiyama.
The Appellant has not shown that the Examiner failed to articulate
reasoning having rational underpinning which supports the conclusion that
Baron ‘540 and Sugiyama would have suggested a reversible valve with a
valve member and an actuator including an electromagnet and also a
permanent magnet joined to the valve member. Therefore, the Appellant has
not shown that the Examiner erred in rejecting claims 17-20 under § 103(a)
as being unpatentable over Baron ‘540 and Sugiyama.

DECISION
We AFFIRM the rejection of claims 1-3, 8 and 15-20.
We REVERSE the rejection of claims 4-7, 9, 10, 12, 13 and 14.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (2007). See 37
C.F.R. § 1.136(a)(1)(iv) (2008).

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AFFIRMED-IN-PART

JRG
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REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107

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