Dylan M. Lundberg et al.

Patent Trials and Appeals Board

Feb 26, 2020

14697705 - (D) (P.T.A.B. Feb. 26, 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.
14/697,705 04/28/2015 Dylan M. Lundberg 1576-1657 7409
10800 7590 02/26/2020
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
EXAMINER
GRAY, PAUL J
ART UNIT PAPER NUMBER
3753
MAIL DATE DELIVERY MODE
02/26/2020 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 PATENT TRIAL AND APPEAL BOARD
Ex parte DYLAN M. LUNDBERG and MARK W. MCMASTERS
____________

Appeal 2018-004725
Application 14/697,705
Technology Center 3700
____________

Before JAMES T. MOORE, MEREDITH C. PETRAVICK, and
MICHAEL L. WOODS, Administrative Patent Judges.

WOODS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–19. Appeal Br. 5. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). The Real Party in Interest is Bosch Automotive Service Solutions
Inc. and Robert Bosch GmbH. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
Appellant’s application is titled “Flow Control Valve for Injecting Oil
into an Air Conditioning Circuit” and the specification describes “flow
control valves for refrigerant service systems.” Spec. 1; Title, Technical
Field. Of the rejected claims, claims 1 and 11 are independent. Appeal Br.
26–30 (Claims App.). We reproduce claim 1, below, with emphasis added
to a particular limitation discussed in this Decision.
1. An air conditioning service system comprising:
an oil receptacle configured to store an oil;
a solenoid valve configured to selectively allow the oil to
flow from the oil receptacle into an oil injection line;
a coupling port in fluid communication with the oil
receptacle through the oil injection line when the solenoid valve
is in an open condition; and
a flow control valve including a chamber with an inlet
and an outlet, the inlet in fluid communication with the oil
receptacle when the solenoid valve is in the open condition, and
the outlet in fluid communication with the oil injection line
when the solenoid valve is in the open condition,
wherein the flow control valve is configured such that,
for a given pressure difference between the inlet and the outlet,
the oil flows from through the flow control valve at a flow rate
that is independent of a viscosity of the oil within a
predetermined range of viscosities.
Id. at 26 (emphasis added).

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Miller US 3,770,009 Nov. 6, 1973
Lace US 4,350,176 Sept. 21, 1982
Tinsler US 5,548,966 Aug. 27, 1996
Murray US 6,138,462 Oct. 31, 2000
Kobes US 6,915,813 B2 July 12, 2005
REJECTIONS
Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
1–19 112(a) Written Description
1–19 112(b) Indefiniteness
11–18 102(a) Kobes
1–10 103(a) Tinsler, Miller
19 103(a) Kobes
OPINION
I. Rejection Under 35 U.S.C. § 112(a)
The Examiner rejects claims 1–19 under 35 U.S.C. § 112(a) for failing
to comply with the written description requirement. Final Act. 5.
Independent claim 1 recites, inter alia, “wherein the flow control
valve is configured such that, for a given pressure difference between the
inlet and the outlet, the oil flows from through the flow control valve at a
flow rate that is independent of a viscosity of the oil within a predetermined
range of viscosities.” Appeal Br. 26 (Claims App.) (emphasis added).
Independent claim 11 recites a similar limitation. See id. at 29.
The Examiner finds that the limitations have “not been described in
the specification as to how this functionality is achieved.” Final Act. 5.
The purpose of the written description requirement is to convey with
reasonable clarity to those skilled in the art that applicant was in possession
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of the claimed invention when the application was filed. See Vas-Cath, Inc.
v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). “[T]he written
description requirement is satisfied by the patentee’s disclosure of ‘such
descriptive means as words, structures, figures, diagrams, formulas, etc., that
fully set forth the claimed invention.”’ Enzo Biochem, Inc. v. Gen-Probe
Inc., 323 F.3d 956, 969 (Fed. Cir. 2002) (quoting Lockwood v. American
Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)).
In contesting the rejection, Appellant references the Specification,
including its Figures 7 and 8. See, e.g., Appeal Br. 7. Figures 7 and 8 of the
Specification depict a flow control valve with different inflow forces. See
Spec. ¶¶ 33, 34.
We reproduce Figure 7, below:

Figure 7 depicts a cross-sectional view of a flow control valve with a high-
velocity inflow. Spec ¶ 33.
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We also reproduce Figure 8, below:

Figure 8 depicts the flow control valve of Figure 7 but with a low-velocity
flow. Spec. ¶ 34.
Appellant explains that the valve is tuned so that the flow rate through
the valve is constant for fluids with different viscosities. See Appeal Br. 7
(citing Spec. ¶¶ 64, 65, Figs 7, 8) (“the spring constant, inflow surface, and
the frustoconical surfaces of the valve are tuned . . . in such a way that the
opening cross-section for the various different positions of the valve plunger
. . . balances the change in viscosity for the claimed range of viscosities”
(emphasis added)). The Specification also describes:
In order to tune the valve 204, the maximum flow rate
through the valve 204 is set for the oil of the highest viscosity
that is to be used in the valve 204. The geometry of the
frustoconical surfaces 300, 308, the area and geometry of the
inlet facing surface 312, and the spring constant of the spring
268 are further tuned for oils of various viscosities such that the
flow rate through the valve is independent of the viscosity of the
oil flowing through the valve 204.

Id. ¶ 65 (emphasis added).

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In the Answer, the Examiner asserts that “there is no example of
‘tuning’ of the valve . . . [and Appellant does not provide] any details on
dimensions or values or even examples of how to determine the dimensions
and values as to how the above mentioned claimed limitation is met.” Ans.
13.
Although we agree with the Examiner that the Specification fails to
include specific dimensions of a “tuned” flow control valve, we nonetheless
find that the Specification contains sufficient written description that would
“allow one skilled in the art to visualize or recognize the identity of the
subject matter” recited in claim 1. Enzo Biochem, 323 F.3d at 968. The
rejection appears to conflate the written description and enablement
requirements, and impose what seems to be in some aspect a best mode
requirement. Regardless, we find that the Specification, which describes
tuning a valve “for oils of various viscosities such that the flow rate through
the valve is independent of the viscosity,” provides adequate written
description support for the claimed limitation. See, e.g., Spec. ¶ 65,
reproduced above indicating the spring constant and valve geometry.
For the foregoing reasons, we do not sustain the Examiner’s rejection
of claims 1–19 for failing to comply with the written description
requirement.

II. Rejection Under 35 U.S.C. § 112(b)
The Examiner rejects claims 1–19 under 35 U.S.C. § 112(b) as being
indefinite. Final Act. 6.

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During prosecution, “‘[a] claim is indefinite when it contains words or
phrases whose meaning is unclear.”’ Ex parte McAward, Appeal 2015-
006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential)
(quoting In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014) (per curium)).
The Examiner determines that it “is not clear how the flow rate of a fluid
flowing through the valve is independent of the fluid’s viscosity,” and,
“[f]urthermore, the range of viscosities in claim 11 is not clear.” Final Act.
6.
In contesting the rejection, Appellant asserts that “[t]here is nothing
unclear in this recitation.” Appeal Br. 10. As to the claimed “range of
viscosities,” Appellant explains that “the range of viscosities is intentionally
not recited in the claim because the range is highly dependent on the system
in which the valve is to be used.” Id. Appellant contends that a skilled
artisan would understand what a “predetermined range of viscosities” is.
See id.
In the Answer, the Examiner explains, “Appellant does not provide
any details as to how the valve is ‘tuned’ and this lack of detail necessitates a
112(b) rejection.” Ans. 16.
We agree with Appellant that the claimed limitation is sufficiently
clear. The Examiner’s position that the Specification fails to describe how
the valve is tuned (see Ans. 16) is again more relevant to an enablement
analysis, and conflates the requirements of 35 U.S.C. § 112(a) and (b).
Union Pacific Resources Co. v. Chesapeake Energy Corp., 236 F.3d 684,
692 (Fed. Cir. 2001) (citation omitted) (“The definiteness inquiry focuses on
whether those skilled in the art would understand the scope of the claim
when the claim is read in light of the rest of the specification. Even if the
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written description does not enable the claims, the claim language itself may
still be definite.”)
For the foregoing reasons, we do not sustain the Examiner's
indefiniteness rejection of claims 1–19.

III. Claims 11–18 Rejected as Anticipated by Kobes
The Examiner rejects claims 11–18 as anticipated by Kobes,
referencing Kobes’s Figure 1. Final Act. 7. We reproduce Kobes’s Figure
1, below:

Kobes describes Figure 1 as depicting a check valve. Kobes, 4:19–21.
As to the claimed limitation, “wherein the inlet facing surface, the
second end portion, and the biasing member are configured such that a flow
rate of fluid through the flow control valve remains constant over a
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predetermined range of viscosities of the fluid for a given differential
pressure across the flow control valve,” the Examiner finds that “as best
understood, the valve of Kobes meets this limitation since a range of fluids
of varying viscosity that would bias the valve into the fully open position
depicted in Fig. 1 would have the same flow potential through.” Final Act.
7.
In contesting the rejection, Appellant asserts that “when [Kobes’s]
valve is biased into the fully open state, the opening area is constant.”
Appeal Br. 13. Appellant further explains that “[f]luids having greater
viscosity, by definition, lose more energy to internal friction within the fluid,
and as a result, all else being equal, will move at a slower rate.” Id.
We find Appellant’s argument persuasive. Importantly, the Examiner
does not cite to anything in Kobes that supports a finding that Kobes
discloses a “flow rate of fluid through the flow control valve remains
constant over a predetermined range of viscosities.” See Final Act. 7. The
Examiner’s position that a fully-open check valve would have a constant
flow rate for fluids with different viscosities—as required by the claims—is
not supported by sufficient evidence in the record. See id.
For the foregoing reasons, we do not affirm the rejection of claims
11–18 as anticipated by Kobes.

IV. Claim 19 Rejected as Obvious over Kobes
In rejecting dependent claim 19 as obvious over Kobes, the Examiner
relies on the same finding that Kobes discloses the features of independent
claim 11. See Final Act. 14 (“Regarding claim 19, Kobes further discloses
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all of the limitations of claim 16”); see also id. at 8 (“Regarding claim 16,
Kobes further discloses the flow control valve of claim 11”).
Because we do not sustain the rejection of claims 11–18 as anticipated
by Kobes, for those same reasons we do not sustain the rejection of claim 19
as obvious over Kobes.

V. Claims 1–10 Rejected as Obvious over Tinsler and Miller
The Examiner rejects claims 1–10 as unpatentable over Tinsler in
view of Miller. Final Act. 9. The Examiner finds that Tinsler discloses the
limitations of independent claim 1 with the exception of “wherein the flow
control valve is configured such that, for a given pressure difference
between the inlet and the outlet, the oil flows from through the flow control
valve at a flow rate that is independent of a viscosity of the oil within a
predetermined range of viscosities.” Id. at 10. To address this limitation,
the Examiner relies on Miller. Id.
In particular, the Examiner finds that Miller teaches such a flow
control valve that “meets this limitation since a range of fluids of varying
viscosity that would bias the valve into the fully open position would have
the same flow potential through.” Id. (citing Miller’s Figure 3). We
reproduce Miller’s Figure 3, below:
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Miller describes Figure 3 as depicting a cross-sectional view of a check
valve. See Miller 1:41–46.
The Examiner proposes to modify Tinsler to include Miller’s check
valve “to provide an equivalent check valve that prevents back flow,” among
other reasons. Final Act. 11.
In contesting the rejection, Appellant argues, “for similar reasons
discussed above with regard to the Kobes reference, fluids of different
viscosities will flow through the Miller valve at different rates, even when
the valve is fully open.” Appeal Br. 18.
Appellant’s argument is persuasive. As similarly discussed above in
relation to Kobes’s valve, the record does not support a finding that Miller’s
fully-open check valve would provide the same flow rate for fluids at
different viscosities, as required by the claims. See Final Act. 10.
As such, we do not sustain the rejection of claims 1–10 as
unpatentable over Tinsler and Miller.
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CONCLUSION
The Examiner’s rejection of claims 1–19 under 35 U.S.C. § 112(a) is
reversed.
The Examiner’s rejection of claims 1–19 under 35 U.S.C. § 112(b) is
reversed.
The Examiner’s rejection of claims 11–18 under 35 U.S.C. § 102(a) as
anticipated by Kobes is reversed.
The Examiner’s rejection of claims 1–10 as unpatentable under 35
U.S.C. § 103(a) over Tinsler and Miller is reversed.
The Examiner’s rejection of claim 19 as unpatentable under 35 U.S.C.
§ 103(a) over Kobes is reversed.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–19 112(a) Written Description 1–19
1–19 112(b) Indefiniteness 1–19
11–18 102(a) Kobes 11–18
1–10 103(a) Tinsler, Miller 1–10
19 103(a) Kobes 19
Overall
Outcome
1–19

REVERSED