Ex Parte Whitford et al

Patent Trial and Appeal Board

Oct 19, 2018

12687159 (P.T.A.B. Oct. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/687, 159 01/14/2010
53609 7590 10/23/2018
REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
FIRST NAMED INVENTOR
Geoffrey Mervyn Whitford
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.
507724 1021
EXAMINER
BAR GERO, JOHN E
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
10/23/2018 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):
RockMail@reinhartlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEOFFREY MERVYN WHITFORD,
BRENDON JOHN RUWOLDT, and JURAJ GACSAY
Appeal2018-000344 1
Application 12/687,159
Technology Center 3700
Before JAMES P. CALVE, WILLIAM A. CAPP, and LEE L. STEPINA,
Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
7, 21, and 22. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 The Appeal Brief indicates that Invensys Controls Australia Pty Ltd., is the
real party in interest. Appeal Br. 2.
Appeal2018-000344
Application 12/687,159
CLAIMED SUBJECT MATTER
The claims are directed to a system and method to reduce standby
energy loss in a gas burning appliance and components for use therewith.
Claim 1, reproduced below, is the sole independent claim on appeal. 2
1. A dual safety relay valve, comprising:
a housing having an inlet for receiving gas and an outlet
for discharging gas received at the inlet;
a first and a second main controlling valves positioned in
series between the inlet and outlet but oriented anti-parallel to
one another to control a flow of gas from the inlet to the outlet,
the first and the second main controlling valves each including a
valve control shaft drivably coupled to a diaphragm positioned
in a diaphragm control chamber, wherein each of the valve
control shafts is driven by movement of its respective diaphragm.
Claims App. 1.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Narang
Ray
Schamowski
us 4,430,989
us 4,622,999
GB 2 259 968 A
REJECTIONS
Feb. 14, 1984
Nov. 18, 1986
Mar. 31, 1993
(I) Claims 1, 2, 5, 6, 21, and 22 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Schamowski.
(II) Claims 1-3, 5, 7, 21, and 22 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Ray and Schamowski.
2 Claims 8-20 are cancelled. Claims App.
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Application 12/687,159
(III) Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Ray, Schamowski, and Narang.
OPINION
Rejection(!); Scharnowski
The Examiner finds that Schamowski discloses all of the elements
required by claim 1, including first and a second main controlling valves
positioned in series between the inlet (P) and outlet (R) to control a flow of
gas from the inlet to the outlet. Final Act. 4 (citing Schamowski, pp. 11, 15,
Fig. 2).
Appellants contend that in the valve of Schamowski, gas flows from
line P to line A in one state and from line A to line R in another state, but
gas never flows from inlet line P to outlet line R. Appeal Br. 5---6.
We agree with Appellants on this point. As shown in Figure 2 of
Schamowski, valve disks 3 and 4 on left-hand working piston 7 move
downward to open a passageway from line P to line A (in response to
pressurization of control line 9). See Schamowski, p. 13. Conversely, valve
disks 3' and 4' on right-hand working piston 7' move upward to open a
passageway between line A and line R (in response to de-pressurization of
control line 9). See id. Thus, as Appellants contend, flow in the valve of
Schamowski is either from line P to line A or from line A to line R, never
from inlet line P to outlet line R, as claimed.
In response, the Examiner refers to page 13, lines 33-35 of
Schamowski and finds that some gas enters line A, but some of this gas
ultimately exits line R. Ans. 5.
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Application 12/687,159
Appellants contend that there is no indication in Scharnowski that any
of the gas that flows from line A to line R is the same gas that entered the
valve via line P. See Reply Br. 6-7. Appellants assert that for such a
condition to exist, a container would have to be attached to line A of the
valve in Scharnowski, which Scharnowski does not teach. See id.
We agree with Appellants on this point. Scharnowski discloses a
valve with three ports, namely, line P, line A, and line R. Scharnowski does
not indicate that gas is stored somewhere in line A after being received from
line P, such that this gas ultimately ends up exiting line R once left-hand
working piston 7 and right-hand working piston 7' reverse positions to
connect line A to line R. Rather, Scharnowski merely discusses the
operation of the valve itself ( the internal functioning of the valve), without
detailed explanation of any external structure. Accordingly, we do not
sustain the rejection of claim 1 and claims 2, 5, 6, 21, and 22 depending
therefrom as anticipated by Scharnowski.
Rejection (II); Ray and Scharnowski
The Examiner finds Ray discloses all of the elements required by
claim 1 except that the valves Ray teaches are not in an anti-parallel
arrangement and are not integrated into a single housing. Final Act. 6. To
remedy these deficiencies in Ray, the Examiner relies the two valves in the
single housing disclosed in Figure 2 of Scharnowski. Id. The Examiner
reasons that modifying the arrangement in Ray such that its valves are anti-
parallel to each other and integrated into a single housing would create "a
smaller valve assembly." Id.
In the Appeal Brief, Appellants do not dispute that the Examiner's
proposed modification would provide a smaller valve assembly. Appeal
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Application 12/687,159
Br. 9--11. Rather, Appellants contend that this modification would render
the valve of Ray unsuitable for its intended use. Id. Specifically, Appellants
state:
The sequential operation of the valves in Ray and the
requirement for the safety valve 26 and gas flow line 16 all serve
to indicate that the system described in Ray would not function
in anti-parallel disposed in the single housing disclosed by
Schamowski. Such a modification would not allow for the
sequential operation described by Ray, and operation of the
safety valve 26 feature.
Id. at 9--10. Appellants also argue that the Examiner did not set forth an
objective reason for modifying the arrangement in Ray as proposed. Id.
at 11.
In response, the Examiner explains that the various components of
Ray's housing could, taken together, qualify as the housing recited in
claim 1, but that the rejection relies on Schamowski to explicitly teach a
singular housing. Ans. 6. The Examiner further finds that the valves
depicted in Figure 1 of Ray could be rotated to any angle, including an angle
relative to each other of 180° (resulting in an anti-parallel arrangement). Id.
The Examiner explains that Schamowski is relied on to teach the specific
anti-parallel orientation, similar to the rejection's treatment of the housing
limitation in claim 1. Id.
In reply, Appellants reiterate that the proposed modification would
render the valve taught by Ray unsuitable for its intended use. Reply
Br. 7-8. Additionally, for the first time in this appeal, Appellants contend
the Examiner's finding that the proposed modification would create a
smaller valve assembly is purely conclusory, and "[ n Jo problem has been
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Application 12/687,159
identified with respect to the current size of the Ray configuration." Reply
Br. 1 O; see also Final Act. 6.
The Examiner has the better position. Appellants do not explain
adequately why the Examiner's proposed modification to the valve in Ray
would cause any problem, much less render this valve unsuitable for its
intended use. We agree with the Examiner that collecting the existing
assembly of valves taught by Ray, which appear to include their own
housings, within a single housing would not interfere with the operation of
the valves themselves. Further, the relative orientation of the valves is
likewise unrelated to the function of these valves within Ray's system.
As for Appellants' contention that the Examiner has not identified a
problem with respect to the current size of the Ray configuration (Reply
Br. 10), this argument is untimely, and Appellants do not present any
evidence or explanation to show good cause why it should be considered by
the Board at this juncture. See 37 C.F.R. § 4I.41(b)(2) ("Any argument
raised in the reply brief which was not raised in the appeal brief, or is not
responsive to an argument raised in the examiner's answer ... will not be
considered by the Board for purposes of the present appeal, unless good
cause is shown."). The Examiner sets forth the rationale on page 6 of the
Final Office Action, and Appellants were put on notice as to the Examiner's
"smaller valve assembly" rationale before drafting the Appeal Brief, but
Appellants chose not to address it, depriving the Examiner of any chance to
respond to Appellants' argument. 3 Accordingly, we do not further address
this argument.
3 Had the Examiner a chance to respond to this argument, the Examiner may
have referred to Schamowski's objectives. See Schamowski, p. 3 ("It is an
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Application 12/687,159
Rejection (III); Ray, Scharnowski, and Narang
Claim 4 depends from claim 2, which depends from claim 1 and
recites a booster pilot gas connection outlet. Claims App. 1. Claim 4
recites, in part, "a booster pilot positioned in proximity to the micro pilot and
the burner and in fluid communication with the booster pilot gas
connection." Id. Thus, claim 4 requires various structure surrounding the
valve recited in claim 1.
The Examiner relies on N arang to teach the elements required by
claim 4, reasoning that adding this structure to Ray would "[serve] the
purpose of maximizing the pilot flame's configuration by providing different
orifice dimensions to correspond to the different pilot gas pressures in order
to save gas." Final Act. 8.
Appellants point out (Appeal Br. 12), and the Examiner agrees
(Ans. 7), that Ray's "pilot valve" does not control a pilot flame. Appellants
contend that, as the Examiner's rationale for modifying Ray is based on
Ray's non-existent control of a pilot flame, the rationale is deficient because
it is based on an incorrect finding of fact. Appeal Br. 12.
In response, the Examiner notes that claim 4 does not require a pilot
flame, and, therefore, Ray's pilot control would still benefit from the
Examiner's proposed modification by conserving gas in the event of a leak.
Ans. 7. Specifically, the Examiner finds that the proposed modification
would allow the operating pressure within Ray to be lower, resulting in a
lower chance of a leak. Id.
object of the invention to provide a double-seat valve arrangement in which
the valve tappet can be actuated with low displacement forces, which has
high operating reliability and a simple and compact configuration.").
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Appellants have the better position on this point. The Examiner's
original reasoning was based on the control of a pilot flame, which lacked
rational underpinnings, and the Examiner's reasoning set forth on page 7 of
the Answer is not sufficiently explained to support a prima facie case of
obviousness. In particular, the Examiner does not explain adequately why
the structure added based on the teachings ofNarang to reject claim 4 results
in a lower operating pressure in the valve of Ray. Accordingly, we do not
sustain the Examiner's rejection of claim 4 as unpatentable over Ray,
Schamowski, and Narang.
DECISION
(I) The rejection of claims 1, 2, 5, 6, 21, and 22 as anticipated by
Schamowski is reversed.
(II) The rejection of claims 1-3, 5, 7, 21, and 22 as unpatentable
over Ray and Schamowski is affirmed.
(III) The rejection of claim 4 as unpatentable over Ray,
Schamowski, and N arang is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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