Zuck, James C. et al.

Patent Trials and Appeals Board

Mar 2, 2020

15407588 - (D) (P.T.A.B. Mar. 2, 2020)

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.
15/407,588 01/17/2017 James C. Zuck 065486.00081 7686
27305 7590 03/02/2020
HOWARD & HOWARD ATTORNEYS PLLC
450 West Fourth Street
Royal Oak, MI 48067
EXAMINER
PRICE, CRAIG JAMES
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
03/02/2020 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):
IPDocket@HowardandHoward.com
dtrost@HowardandHoward.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAMES C. ZUCK and ALEX L. HOFFMAN

Appeal 2019-002023
Application 15/407,588
Technology Center 3700
____________

Before EDWARD A. BROWN, WILLIAM A. CAPP, and
BRENT M. DOUGAL, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–14. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Marshall
Excelsior Co. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
Appellant’s disclosure “relates to a valve assembly, and more
specifically, a valve assembly for controlling pressures on opposing sides of
the valve assembly prior to opening the valve assembly.” Spec. ¶ 2.
Claims 1, 7, 8, and 14 are independent claims. Claim 1 illustrates the
claimed subject matter.
1. A valve assembly comprising:
a housing having an inlet and an outlet spaced from each
other, a first chamber defining said inlet, a second chamber
defining said outlet, and a valve seat disposed between said first
and second chambers, wherein fluid communicates between
said first and second chambers;
a valve head disposed in said housing and moveable
relative to said housing between an open position spaced from
said valve seat and a closed position engaged with said valve
seat;
a valve stem coupled to said valve head and being
rotatably and reciprocally movable for moving said valve head
between said open and closed positions;
a retainer plate coupled to said valve head;
a valve seal disposed between said valve head and said
retainer plate; and
wherein said valve head includes an integrally formed
rivet that secures said retainer plate to said valve head, thereby
retaining said valve seal to said valve head.

Appeal Br. (Claims App.).

REJECTION
Claims 1–14 are rejected under 35 U.S.C. § 102(b) as anticipated by
Novakovi (US 5,217,043, issued June 8, 1993).

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ANALYSIS
Claims 1–6
The Examiner finds that Novakovi discloses all limitations of claim 1
including a valve head (plate 4), a retainer plate (diaphragm guide 9)
coupled to the valve head, and a valve seal (central portion 80 of diaphragm)
disposed between the valve head and the retainer plate, wherein the valve
head includes an integrally formed rivet (“the un-numbered portion of 4 at
the bottom most part of 4 which mates with 9”) that secures the retainer
plate to the valve head, thereby retaining the valve seal to the valve head.
Final Act. 2–3 (citing Novakovi Fig. 3).
In support of these findings, the Examiner provides an annotated
Figure 3 of Novakovi, which identifies the “plate,” “seal,” “valve head,” and
“rivet.” Id. at 6. The Examiner explains that the “rivet” is shown as “the
enlarged section which abuts the outer portion of plate 9 to retain the
assembly together and passes through the plate in a similar manner as
applicant’s device.” Id. The Examiner notes that Figure 1 of Novakovi
shows a screw 8 used to retain the assembly, but finds that Figure 3 does not
depict a screw 8. Id. The Examiner finds that, in Figure 3, “[t]he cross-
section lines for part 4 are uniform and unbroken throughout the complete
part of the valve head through and including the rivet section/portion,
therefore the rivet is included integrally with the valve head.” Id.; see also
Ans. 10 (“Part 4 in Novakovi is shown as being one piece, there are no
broken lines or other construction lines within the cross-section of Figure 3
which indicates that an additional part is present within part 4 (the cross-
section lines (angled lines) are bold and consistent within part 4).”). The
Examiner submits that as Figure 3 does not show a screw 8 threaded into the
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Application 15/407,588

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valve head, therefore, the valve has a rivet integrally formed with the valve
head. Final Act. 6.
Alternatively, the Examiner finds that, “if a screw 8 was threaded into
the valve head 4 of Figure 3, then the screw 8 once fully threaded into the
valve head would be formed by the threading process into the valve head
and then would become integral to the valve head.” Id. at 7–8.
Appellant contends that Novakovi does not disclose a valve seal
disposed between a valve head and a retainer plate coupled to the valve
head, where the valve head includes an integrally formed rivet that secures
the retainer plate to the valve head, thereby retaining the valve seal to the
valve head. Appeal Br. 17. In contrast, Appellant contends, a screw 8
secures diaphragm guide 9 to valve plate 4. Id. Appellant disagrees that the
unnumbered portion at the bottom-most part of valve plate 4 which mates
with diaphragm guide 9 is “an integrally formed rivet.” Id. at 17–18.
Appellant contends that Novakovi does not describe a rivet, but only screw 8
to secure diaphragm guide 9 to valve plate 4. Id. at 18.
Appellant further contends:
Novakovi further states that FIGS. 3 and 4 show a first alternate
or second embodiment of the invention which has two
additional features from the first embodiment of FIG. 1 (Col. 8,
lines 55–57). Contrary to the Examiner, the second
embodiment of FIG. 3 includes the screw 8 (although not shown
in broken outline) to secure the diaphragm guide 9 to the valve
plate 4 to form a diaphragm connector and not a valve head
including an integrally formed rivet that secures a retainer
plate to the valve head, thereby retaining the valve seal to the
valve head. In other words, FIG. 3 is merely a genericized
representation of the same screw 8 as Figure 1, without being
numbered. This part in FIG. 3 is not a rivet. Nowhere does
Novakovi suggest this is a rivet, and nowhere does Novakovi
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suggest that anything other than a screw is used to secure
diaphragm guide 9 to the valve plate 4.
Appeal Br. 19 (emphasis added).
Appellant points out paragraph 46 of Appellant’s Specification
describes the rivet. Id. Appellant contends that “those having ordinary skill
in the art recognize that the term ‘rivet’ is more than a screw and generally
comprises a fastener that requires some manner of deformation to connect
two parts together.” Id. at 20.
The Examiner responds:
Figure 3 in Novakovi shows a cylindrical shaped protrusion
(the post part of 4 which goes through seal 80 and plate 9) that
is flattened (deformation must occur in order to form the
flattened rivet end) at its distal end once the retainer plate 76 is
positioned over the rivet 80 to form a head (the lowermost end
of 4 immediately above numeral 9 has a flange that abuts plate
9 which is flattened to form a head).
Ans. 11 (emphasis added).
Appellant’s contentions are more persuasive. As described in
Novakovi, “[a] screw 8, broken outline, secures the diaphragm guide 9 to the
valve plate 4 to form a diaphragm connector.” Novakovi, col. 4, ll. 13–15
(boldface omitted), Fig. 1. The reference number 8 is shown only in
Figure 1. As pointed out by Appellant, Novakovi describes that the second
embodiment shown in Figures 3 and 4 “has two additional features from the
first embodiment of FIG. 1.” Appeal Br. 19; see Novakovi, col. 8, ll. 55–58.
Novakovi does not, however describe that either of these “two additional
features” relates to replacing screw 8 with an alternative fastener to secure
diaphragm guide 9 to valve plate 4 in the second embodiment. See, e.g.,
Novakovi, col. 8, l. 55–col. 10, l. 68.
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We note that Novakovi describes the first embodiment shown in
Figure 1 with reference to Figure 2. See Novakovi, col. 3, l. 55–col. 5, l. 22.
The bottom-most end of valve plate 4 shown in Figure 1 has a similar
configuration as the bottom-most end of valve plate 4 shown in Figure 2.
Figure 2 does not, however, show that diaphragm guide 9 is secured to valve
plate 4 by a screw, as indicated in Figure 1. This appears to imply that the
configuration of the bottom-most end of valve plate 4 shown in Figure 2 is a
more simplified version than shown in Figure 1. Also, we note that valve
plate 4 shown in Figure 2 appears to have the same cross-hatching pattern as
valve plate 4 shown in Figure 3. We agree with Appellant that the cross-
hatching pattern used for valve plate 4 in Figure 3 does not, by itself,
establish by a preponderance of the evidence that the second embodiment
does not include a screw to secure diaphragm guide to valve plate 4
Further, the “post part of 4 which goes through seal 80 and plate 9”
shown in Figure 3 of Novakovi described by the Examiner (Ans. 11) appears
to have a closely similar structure as the “post part of 4 which goes through
seal 80 and plate 9” shown in Figure 1 of Novakovi. Also, screw 8 shown in
Figure 1 appears to have a closely similar structure as the “flattened rivet
end” of “the post part of 4” in Figure 3. We agree with Appellant that the
Examiner has not established by a preponderance of the evidence that the
valve shown in Figure 3 of Novakovi necessarily has a “flattened rivet end.”
As noted, the Examiner provides an alternative position that, if a
screw 8 was fully threaded into the valve head (valve plate 4) of Figure 3 of
Novakovi, then the screw 8 would become integral to the valve head. See
Final Act. 7–8. Appellant’s Specification describes a threaded fastener 78 as
shown, for example, in Figure 4, and separately describes a rivet 80, as
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shown in Figures 52 and 11, as alternatives. See Spec. ¶ 44, Figs. 4. As
such, Appellant’s Specification distinguishes threaded fastener 78 from rivet
80. As described, threaded fastener 78 extends through retainer plate 76 into
valve head 36, whereas “the valve head 36 includes an integrally formed
rivet 80 that secures the retainer plate 76 to the valve head 36.” Spec. ¶ 44
(emphasis added). In view of this disclosure, even assuming, arguendo, that
the second embodiment shown in Figure 3 of Novakovi includes a screw to
secure diaphragm guide 9 to valve plate 4, this would not establish by a
preponderance of the evidence that Novakovi discloses a “valve head [that]
includes an integrally formed rivet that secures said retainer plate to said
valve head,” as recited in claim 1.
For the foregoing reasons, we do not sustain the rejection of claim 1,
or claims 2–6 depending therefrom, as anticipated by Novakovi.
Claim 7
Claim 7 is directed to a valve assembly and recites, inter alia, “said
valve head includes a post extending from said front portion [of said post]”
and “said post has an enlarged head at a distal end of said post spaced from
said front portion to secure said retainer plate to said valve head, thereby
retaining said valve seal to said valve head.” Appeal Br. 34–35 (Claims
App.) (emphasis added).
The Examiner finds that Novakovi discloses a valve head (valve
plate 4) including a post (“the section of 4 which passes through the opening
in 9 and 80) extending from said front portion”), and that the post has an
enlarged head (“the portion of the post that abuts 9 at the lower most portion

2 See replacement Figure 5 filed on Sept. 18, 2017.
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of the post”) at a distal end spaced from the front portion of the valve head
to secure the retainer plate to the valve head, thereby retaining the valve seal
to the valve head. Final Act. 4–5 (citing Novakovi, Fig. 3).
Appellant contends that, in Novakovi, screw 8 secures diaphragm
guide 9 to valve plate 4, but Novakovi does not disclose a post having an
enlarged head at a distal end of the post spaced from a front portion of the
valve head to secure the retainer plate to the valve head, thereby retaining a
valve seal to the valve head. Appeal Br. 22. Appellant asserts that the
unnumbered portion of valve plate 4 at the bottom most part of valve plate 4
which mates with diaphragm guide 9 is not an enlarged head at a distal end
of a post. Id.
As discussed above for claim 1, the Examiner has not established that
Figure 3 of Novakovi discloses an integrally formed rivet at the lower most
portion of valve plate 4. However, claim 7 does not recite an “integrally
formed rivet” or that the post is “integrally formed” with the valve head.
Accepting Appellant’s argument that Novakovi’s valve shown in Figure 3
includes a screw, such as screw 8 shown in Figure 1, which secures
diaphragm guide 9 to valve plate 4, Appellant has not provided any
persuasive argument why such screw cannot be considered as having “an
enlarged head at a distal end of said post,” as recited in claim 7.
We sustain the rejection of claim 7 as anticipated by Novakovi.
Claims 8–13
Claim 8 is directed to a method of assembling a valve assembly,
comprising, inter alia, the steps of “disposing a valve seal adjacent the valve
head,” “disposing a retainer plate adjacent the valve seal,” and “forming a
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rivet integrally with the valve head and securing the retainer plate to the
valve head, thereby retaining the valve seal to the valve head.” Appeal
Br. 35 (Claims App.) (emphasis added). The Examiner finds that “the
device shown by Novakovi in Figure 3, will perform the methods as recited
in claims 8–14, during normal operational use of the device.” Final Act. 5.
However, claim 8 is directed to a method of assembling the recited
valve assembly, and, accordingly, the Examiner is required to establish that
Novakovi discloses each of the assembly steps recited. As discussed above,
however, we agree with Appellant that the Examiner has not established
with sufficient evidence that Novakovi discloses “forming a rivet integrally
with the valve head,” as recited in claim 8. Appeal Br. 23–27.
Accordingly, we do not sustain the rejection of claim 8, or claims 9–
13 depending therefrom, as anticipated by Novakovi.
Claim 14
Claim 14 is also directed to a method of assembling a valve assembly,
comprising, inter alia, the step “enlarging the post at a distal end of the post
to form an enlarged head by orbital forming to form a rivet integrally with
the valve head and securing the retainer plate to the valve head, thereby
retaining the valve seal to the valve head.” Appeal Br. 36–37 (emphasis
added).
As noted above, the Examiner’s position for claim 14 is that the
device shown in Figure 3 of Novakovi will perform the recited method
“during normal operational use of the device.” Final Act. 5. However, we
agree with Appellant that the Examiner has not established with evidence
that Novakovi discloses the claimed enlarging step. Appeal Br. 28–32.
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Regarding this step, the Examiner states, “[i]n regards to the limitations for
orbital forming the rivet,” and then quotes language from In re Thorpe, 777
F.2d 695, 698 (Fed. Cir. 1985), that pertains to product-by-process claims.
To the extent the Examiner construes the “enlarging” step as a product-by-
process limitation, or construes claim 14 as a whole as being directed to the
valve assembly itself (i.e., a product as opposed to a method), we disagree.
Claim 14 is directed to assembling the valve assembly. The “enlarging”
step, in combination with the preceding steps of the method, positively
describes how the valve assembly is assembled. It is improper to disregard
how the post is enlarged by the enlarging step in this method. As the
Examiner has not established that Novakovi discloses the enlarging step, we
do not sustain the rejection of claim 14 as anticipated by Novakovi.

DECISION SUMMARY
In summary:
Claims
Rejected
§ Reference(s) Affirmed Reversed
1-14 102(b) Novakovi 7 1-6, 8-14

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED IN PART