Ex Parte Auer

Patent Trial and Appeal Board

Jan 10, 2018

13522868 (P.T.A.B. Jan. 10, 2018)

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.
13/522,868 07/18/2012 Dirk Auer 5372-41-PCT-US 7931
7590
LUCAS & MERCANTI, LLP
30 BROAD STREET
21st FLOOR
NEW YORK, NY 10004
EXAMINER
COLON MORALES, DAVID
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
01/12/2018 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DIRK AUER
Appeal 2016-005955
Application 13/522,868
Technology Center 3700
Before EDWARD A. BROWN, GEORGE R. HOSKINS, and
FREDERICK C. LANEY, Administrative Patent Judges.
HOSKINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Dirk Auer (“Appellant”)1 appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 8—13 in this application under
35 U.S.C. § 103(a) as unpatentable over Hennig (US 4,512,379, iss. Apr. 23,
1985) and Bircann (US 6,729,351 B2, iss. May 4, 2004).2 The Board has
jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM.
1 The Appeal Brief (filed July 22, 2015, “Appeal Br.”) identifies Elopak
Systems AG as the real party in interest. Appeal Br. 1.
2 The Final Office Action (mailed Dec. 10, 2014, “Final Act.”) rejected
claims 12 and 13 under 35 U.S.C. § 112, second paragraph, as indefinite,
because the term “the closed position” in claim 12, line 4, lacked antecedent
basis. In an After-Final Amendment (filed Mar. 9, 2015), Appellant
Appeal 2016-005955
Application 13/522,868
CLAIMED SUBJECT MATTER
Claims 8 and 12 are independent. Claim 8 illustrates the subject
matter on appeal, and it recites:
8. A liquid flow control device, comprising:
an inlet and an outlet;
a valve seat;
a sealing element cooperating with the valve seat, the
sealing element being movable to a first open position and a
second open position, a flow cross section between the valve seat
and the sealing element in the second open position being larger
than the flow cross section between the valve seat and the sealing
element in the first open position, the sealing element comprising
a first part and a second part that encircles at least a portion of
the first part; and
an outflow piece disposed at the outlet and having a
plurality of passages arranged next to each other, an end surface
of the outflow piece facing the sealing element forming at least
part of said valve seat, wherein the first and second parts of the
sealing element can be respectively positioned on orifices of said
passages to close all passages of said plurality of passages, and
the first and second parts being configured so that passages
closable by the first part are open and passages closable by the
second part are closed in the first open position and passages
closable by both the first and second parts are open in the second
open position.
Appeal Br. 12 (Claims App.).
proposed an amendment to claim 12, replacing “the” with “a” to overcome
the rejection. In a first Advisory Action (mailed Mar. 19, 2015), the
Examiner refused to enter the amendment, but stated the rejection “would be
overcome[]” if the amendment were entered. In a second Advisory Action
(mailed Mar. 22, 2016), the Examiner entered the amendment, and stated it
“overcomes” the indefiniteness rejection. Thus, claim 12 as presented on
appeal recites “a closed position” in line 4, and there is no indefiniteness
rejection for us to review. See Answer (mailed Mar. 22, 2016, “Ans.”) 7—8.
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Application 13/522,868
ANALYSIS
Claims 8—10, 12, and 13
In rejecting claim 8, the Examiner finds Hennig discloses a liquid
flow control device comprising a valve seat corresponding to the top surface
of plate 4, and movable sealing element 8 cooperating with the valve seat to
open and close the valve. Final Act. 5, 6. The Examiner finds Hennig’s
valve also includes an outflow piece comprising a plurality of passages,
because plate 4 has a plurality of outflow bores 9. Id. at 5. The Examiner
determines Hennig’s valve does not, however, “allow[] for a two-stage
metering” such as recited in claim 8. Id.
The Examiner cites Bircann’s two-stage valve 26 as “providing
greater metering control of the fluid to be delivered than what could be
obtained with a single-stage valve” such as Hennig’s. Id. (citing Bircann,
4:42—52). The Examiner determines it would have been obvious to modify
Hennig’s single-stage valve to be a two-stage valve, “to provide greater
metering control of the fluid ... by having a smaller first stage valve within
a larger second stage valve and controlling said valves sequentially by a
single operator.” Id. at 5—7; see also id. at 2—3 (describing how one would
“envision” modifying Hennig’s valve to employ two stages).
Appellant argues the combination of Hennig and Bircann fails to
disclose a two-part sealing element having two open positions, along with an
outflow piece comprising a plurality of passages, as recited in claim 8.
Appeal Br. 5—7. This is because “all of the spout bores 9 of Hennig are
closed or open simultaneously,” while Bircann’s two-stage valve 26 “has
nothing to do with sealing an outlet with multiple passages.” Id.
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Application 13/522,868
The Examiner does not err in finding the combination of Hennig and
Bircann discloses a two-part sealing element having two open positions,
along with an outflow piece comprising a plurality of passages. A
preponderance of the evidence supports the Examiner’s findings that Hennig
discloses a valve sealing element with an outflow piece comprising a
plurality of passages, and that Bircann discloses a two-part valve sealing
element having two open positions. See Hennig, Fig. 1, 3:53 4:5; Bircann,
Figs. 2-4, 4:4—29. Thus the cited prior art, taken together, discloses each
and every limitation of claim 8. Appellant’s argument to the contrary does
not establish error in the rejection. See In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986) (nonobviousness cannot be established by
attacking references individually when unpatentability is predicated upon a
combination of prior art disclosures).
Appellant also argues the combination of Hennig and Bircann does
not lead to the invention of claim 8, because Bircann’s two-stage valve
structure is not suited to seal the planar valve seat of Hennig. Appeal Br. 7—
10; Reply Br. 1—2. In support, Appellant notes Bircann’s valve heads 20 and
20' provide seals when their respective ffustoconical mating surfaces 30 or
30' contact respective valve seats 14 or 14', not when their “bottom surfaces”
contact a valve seat. Appeal Br. 7, 9; Reply Br. 1—2. Thus, “the valve of
Bircann has to be modified” to be used with Hennig’s planar valve seat and
rectangular fields 10 of bores 9. Appeal Br. 8—9.
These arguments are not persuasive of Examiner error. A
preponderance of the evidence supports the Examiner’s finding that a person
of ordinary skill in the art would have known to modify Hennig’s valve to
achieve a two-stage actuation, in connection with a planar valve seat. See
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Application 13/522,868
Final Act. 2—3; Ans. 13. The test for obviousness is not whether the features
of one reference (such as Bircann) may be bodily incorporated into the
structure of the other reference (such as Hennig), but rather is “what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). “A
person of ordinary skill is also a person of ordinary creativity, not an
automaton.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
Appellant further faults the Examiner’s stated reason for modifying
Hennig’s valve to be a two-stage valve. In this regard, the Examiner cites
the following disclosure of Bircann:
The advantage conferred by a two-stage pintle valve in
accordance with the invention is shown clearly in FIG. 5. A prior
art single-stage valve ... is capable of metering flow only over a
limited flow range, such as is indicated to by curve 54 or
curve 56, depending upon the actual size of the valve. However,
by placing a smaller valve within the metering head of a larger
valve and operating both valves sequentially with a single pintle
and actuator, as shown in FIGS. 2-4, an expanded metering
range is obtained which is greater than can be obtained with any
comparable single-stage valve.
Bircann, 4:42—52 (emphases added); Final Act. 5; Ans. 10. The Examiner
finds the quoted Bircann disclosure reflects that a two-stage valve
“provide[s] greater metering control” than a one-stage valve, thus motivating
a person of ordinary skill in the art to modify Hennig’s one-stage valve to be
a two-stage valve. Final Act. 2, 5—6.
Appellant argues “there is no need to extend the dynamic range of
Hennig.” Appeal Br. 6, 7. Appellant points out the cited discussion in
Bircann of increasing the metering flow range of a valve is in the context of
an exhaust gas circulation valve used to meter gas in a wide range of
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Application 13/522,868
automobile engine sizes. Id. at 7 (citing Bircann, 1:58—61). Appellant
suggests such metering flow range flexibility would not be beneficial in the
context of Hennig’s valve, which is used to fill a container with liquid, while
reducing the amount of foam generating by the filling. Id. at 7—8, 10.
The Examiner responds that Hennig and Bircann are both directed to
the same field of fluid control, and both dispense fluid using a reciprocating
valve member. Ans. 11. The Examiner maintains the proposed
modification of Hennig’s valve “would provide the predictable result of
providing a greater metering control of the fluid to be delivered to the
container by having” two stages, as taught by Bircann, “thus allowing
greater fluid control in dispensing the fluid.” Id.
The Examiner’s rejection has a rational underpinning, supported by a
preponderance of the evidence, sufficient to support the legal conclusion of
obviousness. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with
approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In
particular, increasing the metering control of Hennig’s single-stage valve by
adding a second stage would advantageously permit the modified valve to
fill a greater range of container sizes with liquid, directly akin to the
usefulness of Bircann’s valve with a wide range of engine sizes. See KSR,
550 U.S. 398, 420 (2007) (“Common sense teaches, however, that familiar
items may have obvious uses beyond their primary purposes, and in many
cases a person of ordinary skill will be able to fit the teachings of multiple
patents together like pieces of a puzzle.”). Indeed, Bircann itself provides:
“The embodiments described are chosen to provide an illustration of
principles of the invention and its practical application to enable thereby one
of ordinary skill in the art to utilize the invention in various embodiments
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Application 13/522,868
and with various modifications as are suited to the particular use
contemplated.” Bircann, 5:22—27, 1:10-33.
In the Reply Brief, Appellant argues Hennig teaches away from
opening bores 9 in stages, because Hennig’s bores 9 are disposed at angles
which account for pumping pressure, and Hennig’s lips 12 consolidate the
liquid jets emerging from bores 9 into a single jet in each field 10. Reply
Br. 2 (citing Hennig, 3:65—4:5, 4:12—23). This argument was not presented
in the Appeal Brief. See Appeal Br. 5—10. “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, including any designated new
ground of rejection, will not be considered by the Board for purposes of the
present appeal, unless good cause is shown.” 37 C.F.R. § 41.41(b)(2).
Appellants have not shown good cause for initially raising this argument in
the Reply Brief, which deprives the Examiner of an opportunity to respond.
For example, Appellants do not cite, and we cannot find, any analysis in the
Answer that differs materially from the Final Office Action. We, therefore,
will not consider Appellant’s late-raised teaching away argument for
purposes of the present appeal.
For the foregoing reasons, we sustain the rejection of claim 8 as
unpatentable over Hennig and Bircann. Appellant argues for the
patentability of claims 9, 10, 12, and 13 in a group with claim 8. See Appeal
Br. 10. We, therefore, likewise sustain the rejection of those claims as
unpatentable over Hennig and Bircann. See 37 C.F.R. § 41.37(c)(l)(iv).
Claim 11
Claim 11 depends from claim 8, and recites “a force-transmission
device connected to the first part for opening the sealing element, wherein
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Application 13/522,868
the first part is connected to the second part such that the second part rests
on the valve seat until the first opening position is reached.” Appeal Br. 13
(Claims App.). The Examiner finds Bircann correspondingly discloses a
single actuator which moves pintle 48 to open, sequentially, first stage 27
and then second stage 29. Final Act. 8 (citing Bircann, Figs. 3—4). In
particular, according to the Examiner, primary mating surface 30 of first
stage 27 initially separates from primary valve seat 14, while secondary
mating surface 30' of second stage 29 remains in contact with secondary
valve seat 14'. Id.', see Bircann, Figs. 2—3. Then, when shoulder 50 of first
stage 27 abuts flange 40 of second stage 29, secondary mating surface 30'
begins to separate from secondary valve seat 14'. Final Act. 8; see Bircann,
Figs. 3—4.
Appellant argues:
Support for this limitation [of claim 11] is found at Fig. 1
[of Appellant’s Specification] which shows a compression
spring 26 supported between the valve body 11 and the
plunger 10. In contrast, a spring 46 is connected between the
secondary valve head 20' and the valve body 12 in Bircann.
Thus, Bircann does not disclose that the second part is connected
to the first part so that the second part is held on the valve seat
until the first opening position. Rather, Bircann discloses that
the valve head 20' is connected to the valve body 12.
Appeal Br. 11.
We agree with the Examiner’s position that Appellants’ argument
rests upon limitations not present in claim 11. See Ans. 13—14. In
particular, it is true that Appellant’s spring 26 is compressed by spring
plate 27 on plunger 10. See Substitute Specification (filed July 18, 2012),
Fig. 1, 13:9-13. By contrast, Bircann’s spring 46 is compressed within
well 44 of valve body 12, surrounding Bircann’s pintle 48. See Bircann,
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Application 13/522,868
Figs. 2 and 4, 3:47—52. However, there is no limitation in claim 11
concerning a spring, much less the structure which holds a spring.
As the Examiner sufficiently articulates, and as Bircann illustrates in
Figures 2 and 3, Bircann’s secondary mating surface 30' rests upon
secondary valve seat 14' during the initial separation between primary valve
head 20 and primary valve seat 14. See Bircann, 4:4—10. As Bircann
illustrates in Figures 3 and 4, it is only when shoulder 50 abuts flange 40 that
secondary mating surface 30' begins to separate from secondary valve
seat 14'. Id. at 4:10-13, 4:23—29. Thus, Bircann’s second sealing element
part (i.e., mating surface 30') rests on the valve seat (i.e., secondary valve
seat 14'), until the first opening position is reached (i.e., Figure 3). This is
what is recited in claim 11.
For the foregoing reasons, we sustain the rejection of claim 11 as
unpatentable over Hennig and Bircann.
DECISION
The rejection of claims 8—13 under 35 U.S.C. § 103(a) as unpatentable
over Hennig and Bircann 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)(l)(iv).
AFFIRMED
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