Ex Parte Willats et al

Board of Patent Appeals and Interferences

Jul 18, 2012

11491836 (B.P.A.I. Jul. 18, 2012)

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.
11/491,836 07/24/2006 Robin Willats 67341-2715PUS1;
06ARM0230
4735
76799 7590 07/18/2012
PAMELA A. KACHUR
577 W Santee Drive
Greensburg, IN 47240
EXAMINER
FRISTOE JR, JOHN K
ART UNIT PAPER NUMBER
3753
MAIL DATE DELIVERY MODE
07/18/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ROBIN WILLATS, JOSEPH CALLAHAN,
TERRY HOLLEY, and YIN CHEN
__________

Appeal 2009-015102
Application 11/491,836
Technology Center 3700
___________

Before THOMAS S. HAHN, BRADLEY W. BAUMEISTER, and
BRUCE R. WINSOR, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL
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Application 11/491,836

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SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejections of claims 1-3, 10, 11, and 13-18:
1. Claims 1 and 15 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Auvity (US 5,797,585; Aug. 25, 1998).
2. Claims 1-3, 10, 11, and 14-18 stand rejected under 35 U.S.C. § 103(a)
as obvious over Auvity and Thayer (US 1,519,517; Dec. 16, 1924).
3. Claim 13 stands rejected under 35 U.S.C. § 103(a) as obvious over
Auvity, Thayer, and Semeyn (US 6,267,352 B1; July 31, 2001).
We affirm-in-part.

INVENTION
Appellants disclose an exhaust valve assembly having a valve, an
actuator, and a thermal isolator to reduce heat transfer between the valve and
actuator. (Spec. ¶ [0001].) Appellants’ Figures 1 and 4, reproduced below,
respectively show first and fourth embodiments of the assembly. (Spec.
¶¶ [0014], [0017].)

Appellants’ Figure 1 shows a schematic view of a first
embodiment. Appellants’ Figure 4 shows a schematic view of a
fourth embodiment.
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In each embodiment, the thermal isolator 30 is a “coupling” that
“cooperates with the actuator shaft 32 and shaft 14 to transfer torque
between the actuator 18 and the valve 12” (Spec. ¶ [0021]) and “serves to
reduce the heat transmission” along the shafts 32, 14 from the valve 12 to
the actuator 18 (Spec. ¶ [0012]). The thermal isolator 30 “can be provided
in many different configurations.” (Spec. ¶ [0021].) In the embodiment of
Figure 1, the thermal isolator 30 comprises insulating bellows 40 that
flexibly connect the shafts 32, 14 (Spec. ¶ [0008]) and “thermally isolate[]
the shafts 32, 14 from direct contact with each other” (Spec. ¶ [0022]). In
the embodiment of Figure 4, the thermal isolator 30 comprises a linkage 70
that operably connects and offsets the shafts 32, 14. (Spec. ¶ [0028].)
Claim 1, reproduced below, is the only independent claim:
1. An exhaust valve assembly comprising:
a valve body;
a valve supported for movement within said valve body;
an actuator that varies a position of said valve within said
valve body to control exhaust flow; and
a thermal isolator associated with said valve to reduce
heat transfer from said valve to said actuator.

THE § 102 REJECTION OF CLAIMS 1 AND 15 OVER AUVITY
Auvity
Auvity discloses a valve for an automobile heating and air
conditioning system. (Abstract.) Auvity’s Figure 1, reproduced below,
shows an embodiment of the valve. (Col. 2, ll. 42-44.)
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Auvity’s Figure 1 shows a schematic view of Auvity’s valve.
As shown, a valve flap 20 (side edge illustrated; extends in/out of
page) rotates about a first axis 22 (bisecting the flap 20) to open and close a
heating and air conditioning conduit (only a portion 23 of conduit wall
illustrated). (Col. 3, ll. 8-14; Fig. 1.) The flap 20 rotates in response to
pivoting of an actuator lever 10 (“driving lever”) and valve lever 24 (“driven
lever”), which link the flap 20 to a toothed wheel 16 as follows:
 the toothed wheel 16 rotates about a second axis 18 (col. 2, ll.
57-58; Fig. 1);
 the secured end of the actuator lever 10 is carried on a third axis
12 and has a toothed surface portion 14 intercalated with the toothed
wheel 16, such that the free end 28 of the actuator lever 10 pivots
about the third axis 12 in response to the rotation of the toothed wheel
16 (col. 2, ll. 53-57; Fig. 1);
 a link arm 26 (“link”) connects the free ends 28, 30 of the
actuator lever 10 and valve lever 24, such that the free ends 28, 30
pivot in unison (col. 3, ll. 15-20; Fig. 1); and
 the secured end of the valve lever 24 is carried on the first axis
22 and connected to the flap 20, such that the flap 20 rotates in
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response to the pivoting of the free end 30 of the valve lever 24 (col.
3, l. 15; Fig. 1).
Claims 1 and 15
The Examiner finds that the elements of claim 1 read on Auvity’s
system as follows (Ans. 3:9-13):
 the claimed “valve body” reads on the conduit wall 23;
 “valve supported for movement within said valve body” reads
on the valve flap 20;
 “actuator that varies a position of said valve within said valve
body to control exhaust flow” reads on the toothed wheel 16; and
 “thermal isolator associated with said valve to reduce heat
transfer from said valve to said actuator” reads on the link arm 26.
To read the valve body and valve respectively on Auvity’s conduit
wall 23 and flap 20, the Examiner must show that the flap 20 is “supported
for movement within” the conduit wall 23, as claimed. The Examiner found
that Auvity is silent as to support of the flap 20 within the conduit wall 23,
but further found that the system “inherently has a shaft that the valve is
supported on.” (Ans. 6:8-9.) Appellants argue that Auvity’s flap 20 “could
be directly attached to the lever [24] without a shaft.” (Reply Br. 5:1-3.)1
[W]here the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to
require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.
In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). The at-issue claim
language – “valve supported for movement within said valve body” – does
not structurally define the invention, but rather functionally defines the

1 This inherency argument was raised in response to the obviousness
rejection of claim 1.
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invention as supporting movement of the valve. The Examiner provided
reason to believe that Auvity’s flap 20 is inherently supported for movement
within the conduit wall 23 because, without such support, the rotational
movement of the flap 20 would not be possible. Further, the rotational
movement would not be consistently centered on the illustrated location of
the first axis 22, as is clearly necessary for consistent and proper sealing of
the flap 20 against the stopper 32. Appellants’ argument – Auvity’s flap 20
and lever 24 could be directly attached – does not address the need for
supported movement of the flap 20, much less disprove that the flap 20 is
“supported for movement” as claimed.
The Examiner also had reason to specifically infer that a shaft, which
is not required by claim 1, supports the movement of the flap 20. Given that
the flap 20 and valve lever 24 are both carried on the first axis 22, it follows
that a shaft must journal at least through the conduit wall 23 and along the
first axis 22 so as to both connect and support the flap 20 and valve lever 24
along the first axis 22. See In re Preda, 401 F.2d 825, 826 (CCPA 1968)
(“[I]n considering the disclosure of a reference, it is proper to take into
account not only specific teachings of the reference but also the inferences
which one skilled in the art would reasonably be expected to draw
therefrom”). In that Auvity indicates that lever 24 rotates in a plane that is
normal to axis 22, Appellants have not explained how the lever 24 could be
attached directly to the flap 20, which also rotates around axis 22, as
opposed to the lever 24 being connected to such a shaft.
Appellants also argue (Reply Br. 2:24-28; see also App. Br. 2:5-21
and 3:16–4:12):
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One of ordinary skill in the art would not interpret the air
conditioning vent of Auvity as corresponding to the claimed
exhaust valve assembly with a valve body, valve, and thermal
isolator as defined in claim 1. As is well known in the art, an
exhaust valve controls exhaust flow, which is the escape or
release of vaporous waste material, as from an engine for
example. Auvity simply does not disclose such an exhaust
valve assembly.
Appellants have not shown that “exhaust” is limited to particular types
of emissions, much less limited to “vaporous waste material, as from an
engine” (Reply Br. 2:26-28). See Estee Lauder Inc. v. L’Oreal, S.A., 129
F.3d 588, 595 (Fed. Cir. 1997) (Attorney argument cannot take the place of
evidence lacking in the record.). We therefore disagree with Appellants’
argument for the reasons presented by the Examiner’s responding remarks
(Ans. 4:13–5:8). In support of those remarks, we note the Specification does
not restrict an “exhaust valve” to particular devices or uses. See Phillips v.
AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) (“[A
Specification] is the single best guide to the meaning of a disputed term.”
(citation omitted) (internal quotation marks omitted)). In fact, the
Specification does not even provide exemplary devices or uses for an
exhaust valve. See Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306,
1315 (Fed. Cir. 2003) (“[T]he best indicator of claim meaning is its usage in
context” (quoted with approval by Phillips, 415 F.3d at 1315)).
Appellants also argue that a skilled artisan would not consider
Auvity’s link arm 26 to be a “thermal isolator” because the operating
temperatures of Auvity’s system bear “no need for such an isolator.” (Reply
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Br. 4:11-12.)2 In addition to lacking supporting evidence, the argument
neglects that Auvity’s link arm 26 need be only capable of thermally
isolating the toothed wheel 16 from the flap 20. See In re Schreiber, 128
F.3d 1473, 1478-79 (“[As the prior art] would be capable of performing all
of the functions recited . . . . , the Board’s anticipation ruling must be
upheld.”). We therefore disagree with Appellants’ argument for the reasons
presented by the Examiner’s responding remarks (Ans. 6:2-6). In support of
those remarks, we note the Specification does not restrict a “thermal
isolator” to particular materials, uses, or capabilities (e.g., to a percent heat
transfer reduction), nor even provide examples of materials, uses, or
performance. On the contrary, the Specification states that a “thermal
isolator” can simply be a shaft that is “made from any type of material
including metallic and non-metallic materials” and “increased to reduce the
effects of heat transfer.” (Spec. ¶ [0027].) Appellants have not provided
persuasive evidence that Auvity’s link arm 26 fails to meet this description.
For the reasons above, the anticipation rejection of claim 1 is
sustained.
Claim 15 depends from claim 1. As Appellants merely restate the
arguments presented for claim 1 (Reply Br. 3:10-13), the anticipation
rejection of claim 15 is sustained.

2 This claim interpretation argument was raised in response to the
obviousness rejection of claim 1.
Appeal 2009-015102
Application 11/491,836

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THE § 103 REJECTION OF CLAIMS 1-3, 10, 11, AND 14-18
OVER THAYER AND AUVITY
Thayer
Thayer discloses an exhaust valve for a combustion engine. (Thayer
1:38-49.) Thayer’s Figure 2, reproduced in part below, shows an
embodiment of the valve. (Thayer 1:33-35.)

Thayer’s Figure 2 shows a transverse section view of Thayer’s
valve.
As shown, a valve flap 10 opens and closes an engine exhaust pipe 12
by rotating about “a shaft 11 or stem[,] which is journaled diametrically
through [the] cut-out pipe 12.” (Thayer 1:38-49.)
Claim 1
Because the Examiner deemed Auvity explicitly silent as to the
supporting structure of the flap 20 (Ans. 6), the Examiner alternatively
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rejected claim 1 (as well as claims 2, 3, 10, 11, and 14-18) as obvious over
Auvity and Thayer. The Examiner “simply rel[ied] on Thayer to teach a
valve supported by an actuator shaft.” (Ans. 6:20-21.) That is, assuming
arguendo that such a shaft is not implicitly disclosed by Auvity, the
Examiner showed that it would have been obvious to connect Auvity’s flap
20 and valve lever 24 with a shaft along the first axis 22 in view of Thayer.
(Ans. 3:13-16; 6:9–7:3.)
We have agreed, supra, that such a shaft is implicitly disclosed by
Auvity. We also agree that inclusion of such a shaft would have been
obvious in view of Thayer. More particularly, since Thayer’s shaft 11 is
“journaled diametrically through [the] cut-out pipe 12” to the actuating
linkage (Thayer 1:38-49; Fig. 3), it would have been obvious to likewise
support Auvity’s flap 20 with a shaft that journals through the conduit wall
23 to the valve lever 24. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
416 (2007) (“[W]hen a patent claims a structure already known in the prior
art that is altered by the mere substitution of one element for another known
in the field, the combination must do more than yield a predictable result.”).
Before addressing Appellants’ arguments as to claim 1, we note the
Answer confirms that Thayer was relied on as suggesting a shaft connecting
Auvity’s flap 20 and valve lever 24 along the first axis 22 and not as
suggesting a replacement of Auvity’s actuating linkage 24, 26, 10 with
Thayer’s actuating linkage 11, 32, 30, 26. (Ans. 6:9–7:3; see also Final Rej.
3:18-21 (Dec. 16, 2008).)
Despite acknowledging that Thayer was relied on as suggesting
merely a shaft (Reply Br. 5:18-20; 9:6-9, 17; 10:3-8), the Reply Brief
presents arguments that a replacement of Auvity’s actuating linkage 24, 26,
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10 was improperly proposed (Reply Br. 7:6-16, 21-29; 9:9-12). This
opinion does not address those arguments, both as submitted in the Appeal
Brief and Reply Brief, as the arguments are not directed to the Examiner’s
basis of rejection.
Turning back to claim 1, Appellants argue that “Auvity already
discloses a beneficial arrangement that ensures that the valve can fully
close,” while “Thayer teaches a valve configuration where the valve can be
loosened.” (Reply Br. 5:20-22.) According to Appellants, a skilled artisan
would therefore “not have reasonably looked to Thayer to solve [the]
problem of ensuring that a valve could be fully closed.” (Reply Br. 5:22-
24.) The argument is moot in view of our finding that Auvity implicitly
discloses a shaft along the first axis 22.
However, we note our disagreement with Appellants’ argument,
which is deficient in two respects. First, the argument addresses whether
Auvity and Thayer are directed to analogous arts of one another. The
analogous art requirement does not pertain to whether the combined
references are directed to analogous arts, but to whether the claimed
invention and a reference at issue are directed to analogous arts. See In re
Kahn, 441 F.3d 977, 986-87 (Fed. Cir. 2006) (“The analogous-art test
requires that the Board show that a reference is either in the field of the
applicant’s endeavor or is reasonably pertinent to the problem with which
the inventor was concerned in order to rely on that reference as a basis for
rejection.”). Second, an invention and prior art reference need not be
directed to the same problem to be analogous art, but may simply be in the
field of the applicant’s endeavor. Id. Appellants’ and Thayer’s inventions
fall squarely within the recognized field of valves and valve actuation (see,
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e.g., PTO search classification Class 251) and are even directed to the same
type of valve, namely butterfly/flap valves.
For the reasons above, the obviousness rejection of claim 1 is
sustained.
Claim 2
Claim 2 depends from claim 1 and adds “a shaft that supports said
valve with said actuator driving said shaft to control the position of the valve
within the valve body.” Appellants argue that “Auvity does not disclose a
shaft that supports a valve.” (App. Br. 6:26; see also Reply Br. 6:5-7.) As
explained above, such a shaft is implicitly disclosed by Auvity and would
have been rendered obvious in view of Thayer. Accordingly, the
obviousness rejection of claim 2 is sustained.
Claims 3 and 10
Claim 3 depends from claim 2 and adds “wherein said shaft comprises
a valve shaft, and including an actuator shaft driven by said actuator[,]
wherein said thermal isolator comprises a coupling that couples said actuator
shaft to said valve shaft to transfer torque between said actuator and said
valve.” Appellants argue that “Auvity does not disclose, suggest, or teach an
actuator shaft that is driven by the actuator,” but instead “teaches the use of a
toothed wheel that is used to drive driving lever 10.” (App. Br. 8:3-4.) The
argument is not persuasive, for two reasons.
First, a skilled artisan would have expected the toothed wheel 16 to
constitute the end portion of a driven shaft (passing into the illustration of
Auvity’s Figure 1), to be concentrically connected to such a shaft, or
otherwise driven by another shaft. See KSR, 550 U.S. at 421 (“A person of
ordinary skill is also a person of ordinary creativity, not an automaton.”).
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Second, the toothed wheel 16 clearly constitutes a shaft in view of
Appellants’ disclosure. With respect to machinery, a “shaft” is ordinarily
understood as “a rotating or oscillating round, straight bar for transmitting
motion and torque, usually supported on bearings and carrying gears,
wheels, or the like.” (WEBSTER’S ENCYCLOPEDIC UNABRIDGED DICTIONARY
OF THE ENGLISH LANGUAGE 1309 (1989).)
For the reasons above, the obviousness rejection of claim 3 is
sustained.
Claim 10 depends from and is argued collectively with claim 3. (App.
Br. 8:23.) Accordingly, the obviousness rejection of claim 10 is also
sustained.
Claim 11
Claim 11 depends from claim 10, which depends from claim 3. As
Appellants merely restate the arguments presented for claim 3 (App. Br.
9:1), the obviousness rejection of claim 11 is sustained.
Claim 14
Claim 14 depends from claim 2, which depends from claim 1. As
Appellants merely restate the arguments presented for claim 1 (App. Br.
9:14-19; Reply Br. 8:8-12), the obviousness rejection of claim 14 is
sustained.
Claim 15
Claim 15 depends from claim 1. As Appellants merely restate the
arguments presented for claim 1 (App. Br. 9:21-27), the obviousness
rejection of claim 15 is sustained.
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Claims 16-18
Claims 16-18 depend in series from claim 15, which adds that the
valve body defines an exhaust gas flow path and the actuator controls the
valve to vary the exhaust gas flow. As noted, the subject matter of claim 15
has been addressed supra.
Turning to claims 16-18, the Answer’s discussion of claim 18 reveals
how the Examiner reads the features of claims 16-18 on Auvity’s system.
We therefore address claims 16-18 collectively.
Claim 16 depends from claim 15 and recites that “said actuator
includes an actuator shaft and said valve is supported on a valve shaft, and
wherein said thermal isolator comprises a coupling that directly connects
said actuator shaft to said valve shaft.” Claim 17 depends from claim 16 and
recites that “said coupling comprises one of a bellows, rigid coupler
comprised of a non-metallic heat insulating material, a flexible shaft, or a
linkage.” Claim 18 depends from claim 17 and recites that
said coupling comprises a linkage that includes a first single
rigid link fixed to said actuator shaft and a second single rigid
link fixed to said valve shaft, and wherein said first and second
single rigid links directly contact each other to transfer torque
between said actuator and said valve.
Taken collectively, claims 16-18 accordingly add the following
subject matter:
 an “actuator shaft” of the actuator (claim 16);
 a “valve shaft” that supports the valve (claim 16);
 a “coupling” of the thermal isolator that directly connects the
actuator shaft and valve shaft (claim 16); and
 a “linkage” of the coupling (claim 17) that has directly
contacting “first and second single rigid links” for transferring torque
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and which are respectively fixed to the actuator shaft and valve shaft
(claim 18).
The Examiner reads the first rigid link on Auvity’s actuator lever 10
and the second rigid link on Auvity’s valve lever 24. (Ans. 3:9-11; 7:15-16.)
Because the first and second rigid links transfer torque between, and are
respectively fixed to, the actuator shaft and valve shaft (claim 18), we
understand the Examiner to be reading the actuator shaft on Auvity’s toothed
wheel 16 and the valve shaft on the implicit shaft along the first axis 22
(discussed supra). Because the coupling/linkage of the thermal isolator
directly connects the actuator shaft and valve shaft (claims 16 and 17), we
understand the Examiner to be reading the coupling/linkage on the linkage
of the actuator lever 10, link arm 26, and valve lever 24.
All limitations are met by the above findings, with one exception. As
pointed out by Appellants, Auvity’s actuator lever 10 (“first rigid link”) and
valve lever 24 (“second rigid link”) are not in direct contact with one another
(claim 18), but are, instead, separated by the link arm 26. (Reply Br. 10:3-
7.)
In view of the above findings, the obviousness rejection of claims 16
and 17 is sustained. The obviousness rejection of claim 18 is not sustained.

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§ 103 REJECTION OF CLAIM 13 OVER THAYER,
AUVITY, AND SEMEYN
Appellants argue that claim 13 is patentable in view of its dependence
from claim 2. (Reply Br. 10:14-16.) As we have found no errors with
respect to claim 2, the obviousness rejection of claim 13 is sustained.

DECISION
The rejection of claims 1 and 15 under 35 U.S.C. § 102(b) as
anticipated by Auvity is affirmed.
The rejection of claims 1-3, 10, 11, and 14-17 under 35 U.S.C.
§ 103(a) as obvious over Auvity and Thayer is affirmed.
The rejection of claim 18 under 35 U.S.C. § 103(a) as obvious over
Auvity and Thayer is reversed.
The rejection of claim 13 under 35 U.S.C. § 103(a) as obvious over
the combined teachings of Auvity, Thayer, and Semeyn is affirmed.
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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