Ex Parte Cripps et al

Board of Patent Appeals and Interferences

Jul 30, 2012

11419642 (B.P.A.I. Jul. 30, 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.
11/419,642 05/22/2006 Brian M. Cripps P202P0022USC 8504
49458 7590 07/30/2012
DON W. BULSON (PARK)
RENNER, OTTO, BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE / 19TH FLOOR
CLEVELAND, OH 44115
EXAMINER
FRISTOE JR, JOHN K
ART UNIT PAPER NUMBER
3753
MAIL DATE DELIVERY MODE
07/30/2012 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 BRIAN M. CRIPPS, DENNIS MUDGE,
and KEVIN WILSON
____________

Appeal 2010-005830
Application 11/419,642
Technology Center 3700
____________

Before PHILLIP J. KAUFFMAN, MICHAEL L. HOELTER, and
JAMES P. CALVE, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the rejection of claims
1-17 and 21-23. App. Br. 2. Claims 18-20 have been canceled. We have
jurisdiction under 35 U.S.C. § 6.
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
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Application 11/419,642

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CLAIMED SUBJECT MATTER
Claim 1 is representative of the claimed subject matter on appeal:
1. In combination, a solenoid assembly, a conduit
carrying electrical lines, and a hub for coupling the solenoid
assembly to the conduit;
the solenoid assembly comprising a casing including a
boss through which lead lines extend;
the conduit having threads;
the hub comprising a conduit-coupling portion and a
boss-attaching portion;
the conduit-coupling portion having threads engaged
with the threads of the conduit;
the boss-attaching portion including a rim crimped to the
outer surface of the boss to attach the hub to the solenoid
assembly; and
the hub being able to rotate relative to the boss whereby
it may be rotated without rotation of the solenoid assembly
and/or the conduit, whereby the hub can be turned to achieve a
threaded coupling between the threads of the hub and the
threads of the conduit.

REJECTIONS
Claims 1-4, 9, 10, 15-17, and 21-23 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Hrytzak (US 5,722,634; iss. Mar. 3, 1998) and
Herrmann (US 4,090,759; iss. May 23, 1978).
Claims 5-7 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Hrytzak, Herrmann, and Kalny (US 5,199,894; iss. Apr. 6, 1993).
Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Hrytzak, Herrmann, and Stirling (US 5,662,489; iss. Sep. 2, 1997).
Claims 11, 13, and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hrytzak, Herrmann, and Frankenberg (US 5,460,146; iss.
Oct. 24, 1995).
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Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Hrytzak, Herrmann, and Johnson (US 6,050,542; iss. Apr. 18, 2000).
ANALYSIS
Claims 1-4, 9, 10, 15-17, and 21-23 as unpatentable over Hrytzak and
Herrmann
Appellants argue claims 1-3, 9, 17, and 21 as a group and separately
argue claims 4, 10, 15, 16, and 22-23. App. Br. 11-20. We select claim 1 as
representative of the group and address Appellants’ arguments as to claims
4, 10, 15, 16, and 22-23. See 37 C.F.R. 41.37(c)(1)(vii) (2011). Claims 2, 3,
9, 17, and 21 stand or fall with claim 1.
Claims 1-3, 9, 17, and 21
The Examiner found that Hrytzak discloses a solenoid assembly with
a hub 22, electrical lines T, casing and boss 16, and conduit coupling portion
24, but lacks a hub that can be turned to achieve a threaded coupling with a
conduit. Ans. 3. The Examiner found that Herrmann discloses a coupling
with a boss 40, a conduit having threads 2, a hub 56 with a conduit-coupling
portion (threads) to engage threads of the conduit 2 and a boss attaching
portion 58, and a rim 50, where the hub 56 is able to rotate relative to the
boss 40 to couple the threads of the hub 56 to the threads 8 of the conduit 2.
Ans. 3. The Examiner determined that it would have been obvious to
modify Hrytzak with Herrmann’s rotatable conduit connector as a known
way of connecting electrical lines to a valve assembly to yield predictable
results and as a simple substitution of known electrical conduit connecting
portions (Ans. 3-4) and because a threaded connection provides a more
positive connection and safer environment so that disconnection of the
electrical lines is less possible (Ans. 7-8).
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Appellants argue that Hrytzak and Herrmann are from different arts
and the Examiner has not provided a basis for why a skilled artisan would
combine the references. App. Br. 11. Appellants further argue that Hrytzak
relates to solenoid valves and Herrmann relates to high-voltage electrical
connectors. App. Br. 11. These arguments do not persuade us of error in the
Examiner’s finding that Hrytzak and Herrmann both disclose couplings for
conduits for electrical lines.1
Appellants also argue that the Examiner has not provided any factual
support for the contention that a threaded connection yields a more positive
connection between electrical lines than a snap-in connection. Reply Br. 2.
In this regard, Appellants assert that a threaded connection when subject to
vibration can become unthreaded whereas a snap-in connector like Hrytzak
would not be subject to unscrewing so that it is not seen how one type of
connection is superior to the other. Reply Br. 2. Appellants also assert that
threaded arrangements are known in the solenoid valve art but the Examiner
has not identified a reference with a rotatable hub attached to a solenoid
valve even though 30 years have passed since Hrytzak and Herrmann issued
as patents. App. Br. 12. Appellants argue that the proposed modification
eliminates Hrytzak’s quick-connect feature rendering Hrytzak unsuitable for
its intended use. App. Br. 13-14. These attorney arguments do not persuade
us of error in the Examiner’s reason for substituting Herrmann’s threaded
connection for Hrytzak connection to provide a more positive connection.
See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007) (when a patent

1 Appellants’ disclose their invention as a means for coupling a valve and/or
solenoid assembly to a conduit that carries electrical lines. Spec. 1, ll. 8-10;
Spec. 2, ll. 5-10.
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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). Hrytzak discloses only that
the ends of terminals T are surrounded by a shell 22 to form an electrical
connector plug 24 that is adapted to mate with a plug (not shown) of an
electrical wiring harness. Col. 2, ll. 49-53; fig. 1. Appellants have not
identified any disclosure in Hrytzak as to how the connector plug 24 and
mating plug connect. Nor have Appellants persuaded us that features of this
largely undisclosed connection outweigh the benefits of providing a threaded
connection as taught by Herrmann. See Winner Int’l Royalty Corp. v. Wang,
202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000). Absent a showing of long-felt
need or the failure of others, the mere passage of time without the claimed
invention is not evidence of nonobviousness. In re Kahn, 441 F.3d 977,
990-91 (Fed. Cir. 2006) (citation omitted).
Appellants also assert that Hrytzak and Herrmann cannot be combined
without significant and extensive modifications to Hrytzak. App. Br. 12. In
this regard, Appellants argue that Herrmann’s ring 56 cannot be slipped over
the shell 22 of Hrytzak and to do so would require a further deconstruction
and extensive modifications of Hrytzak’s valve that would lead a skilled
artisan away from any combination of Hrytzak and Herrmann. App. Br. 13;
Reply Br. 3-5. These arguments are largely speculative and not persuasive
because a determination of obviousness does not require an actual, physical
substitution of elements or a showing that the features of a secondary
reference may be bodily incorporated into the structure of a primary
reference or physically combined with another reference. In re Mouttet,
2012 WL 2384056, at *5 (Fed. Cir. Jun. 26, 2012) (citations omitted).
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Appellants also contend that the proposed combination does not
disclose a crimped rim. Reply Br. 5. Appellants further contend that the
Examiner’s treatment of the crimped rim as a product-by-process limitation
ignores the fact that the crimped rim is a structural limitation of claim 1.
App. Br. 14-15. Appellants also assert that the rim or lip 58 of Herrmann is
not an equivalent structure because the claimed crimped rim has increased
rigidity due to plastic deformation from being crimped, facilitates formation
of a watertight seal, and provides a relatively permanent connection between
the hub and solenoid assembly. App. Br. 15; Reply Br. 5-6. We agree with
Appellants that the crimped rim is a limitation that imparts structure to the
solenoid assembly. However, we also agree with the Examiner that the
inwardly projecting annular flange 58 of Hrytzak corresponds to the claimed
crimped rim or is an obvious variant. Appellants define “crimp” to mean “to
press, pinch, deform, mold, compress, or otherwise mechanically form a
material into a desired general shape.” Spec. 7; ll. 9-11. The Examiner
reasonably concluded that Hrytzak’s flange 58 corresponds to the claimed
crimped rim in that it is formed by a bending, pressing, or other mechanical
forming process into a desired shape. Ans. 8; see Hazani v. United States
Int’l Trade Comm’n, 126 F.3d 1473, 1479 (Fed. Cir. 1997). We decline to
read unclaimed features of the crimped rim from the Specification into claim
1. Accordingly, we sustain the rejection of claims 1-3, 9, 17, and 21.
Claim 4
Claim 4 depends from claim 1 and recites that the boss has a ledge on
its outer surface wherein the crimped rim of the hub is situated in this ledge.
The Examiner found that Hrytzak discloses a ledge (annular flange 50) as
part of boss 40. Ans. 8 (citing fig. 5). Appellants argue that the proposed
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combination of Hrytzak and Herrmann would require further modifications
if Hrytzak’s annular flange 50 corresponds to the claimed ledge. Reply Br.
7. Appellants further assert that a skilled artisan would not make such
extensive modifications as deconstructing and replacing the entire upper half
of Hrytzak’s solenoid valve including sensor cap 16 and shell 22. Reply Br.
7. These arguments are speculative and not persuasive because the test for
obviousness is what the combined teachings of the references would have
suggested to skilled artisans and not whether the structure of Herrmann may
be bodily incorporated into or physically combined with Hrytzak. We also
note that a person of ordinary skill in the art is a person of ordinary creativity
and not an automaton and that Herrmann discloses flanges and locking rings
that could be used to retain a ring on Hrytzak’s boss (fig. 5). As such, we
sustain the rejection of claim 4.
Claim 10
Claim 10 depends indirectly from claim 1 and calls for a fastener for
attaching one or more flow-controlling components to the solenoid assembly
and a seal positioned between the fastener and the casing of the solenoid
assembly. The Examiner found that Hrytzak discloses a fastener (clinch ring
26) and seal (above element 120 in figure 1) that is located between an upper
portion of the fastener 26 and a lower portion of the shell 14. Ans. 3, 8-9
(citing fig. 1). Appellants argue that Hrytzak’s seal is positioned between
the sensor cap 16 and the shell 14 of the solenoid assembly, not between the
fastener (clinch ring 26) and the shell 14. App. Br. 17. We agree with
Appellants that Hrytzak discloses what appears to be an o-ring in cross-
section located between the shell 14 and the sensor cap 16 rather than in
between the clinch ring 26 and shell 14. However, these arguments as to
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this feature do not apprise us of error in the Examiner’s finding that Hrytzak
also discloses a seal that is clamped between an upper portion of the clinch
ring 26 and the shell 14. As such, we sustain the rejection of claim 10.
Claim 15
Independent claim 15 calls for a kit for coupling a solenoid assembly to a
conduit. The Examiner rejected claim 15 on the same grounds as claim 1.
Ans. 3-4, 7-8. Appellants argue that Hrytzak and Herrmann do not disclose
the crimped rim and ledge for the same reasons set forth for claims 1 and 4.
App. Br. 17-18. Appellants also argue that the proposed combination is not
practical and does not disclose a boss-attaching portion being sized to slip
over at least a distal portion of the boss to a predetermined position due to
interference between the flange 50 and projecting flange 58 on the ring 56 of
Hrytzak. App. Br. 18; Reply Br. 9. As discussed supra for the rejections of
claims 1 and 4, we agree with the Examiner that Hrytzak discloses a crimped
rim and ledge. Appellants’ speculation as to modifications required to be
made to physically incorporate structure of Herrmann into Hrytzak are not
persuasive because the test for obvious is what the combined teachings of
the references would have suggested to skilled artisans. We agree with the
Examiner that Hermann discloses a hub (ring 56) that can slide over a boss
38 and that it would have been obvious to combine such teachings with
Hrytzak. See Ans. 9. As such, we sustain the rejection of claim 15.
Claim 16
Claim 16 depends from claim 15 and calls for a seal for positioning
between the hub and the boss. The Examiner found that Hrytzak discloses a
seal and fastener as previously discussed for claim 10. However, we do not
discern a finding by the Examiner regarding a seal between the hub and
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boss. App. Br. 19-20. The Examiner relied on Kalny to disclose this same
feature in claim 5, which depends from claim 1. As such, we cannot sustain
the rejection of claim 16. However, we enter a New Ground of Rejection of
claim 16 based on Hrytzak, Herrmann, and Kalny as set forth below.
Claims 22, 23
Claims 22 and 23 depend from claims 1 and 15 respectively and recite
a method of assembling the combination of claim 1 and the kit of claim 15
by crimping the rim onto the ledge to attach the hub to the solenoid
assembly and rotating the hub relative to the boss. The Examiner found that
the subject matter of these claims recites process features that do not
distinguish the claimed assembly or kit over the combination of Hrytzak and
Herrmann. Ans. 4. Appellants argue that Hrytzak and Herrmann do not
disclose a crimped rim or a structural equivalent of a crimped rim for the
reasons discussed for claim 1. App. Br. 20; Reply Br. 10. As discussed
supra for claim 1, we agree with the Examiner that Hrytzak discloses a
crimped rim or an obvious variant. As such, we sustain the rejection of
claims 22 and 23.
Claims 5-7 as unpatentable over Hrytzak, Herrmann, and Kalny
Claims 5-7 depend from claim 1 and call for a seal to be positioned
between the outer surface of the boss and the inner surface of the hub. The
Examiner relied on Kalny to disclose this feature. Appellants argue that
Kalny does not overcome the deficiencies of Hrytzak and Herrmann and that
Kalny relates to self-locking connectors that are different art than Hrytzak’s
solenoid valves. App. Br. 21. Because we sustain the rejection of claim 1,
there are no deficiencies for Kalny to correct in this regard. Appellants’
arguments regarding the fields of endeavor of Kalny and Hrytzak do not
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persuade us of error in the Examiner’s finding that these references relate to
couplings for electrical lines and are reasonably pertinent to the problem
addressed by Appellants of coupling a valve or other device to a conduit for
electrical lines. Nor have Appellants apprised us of error in the Examiner’s
determination that it would have been obvious to modify Hrytzak by placing
an o-ring in a seal of the hub as taught by Kalny to seal the hub with respect
to the boss and conduit. As such, we sustain the rejection of claims 5-7.
Claim 8 as unpatentable over Hrytzak, Herrmann, and Stirling
Claim 8 depends from claim 1 and calls for the outer surface of the
conduit-coupling portion of the hub to have a hexagonal profile. The
Examiner relied on Stirling to disclose this feature. Ans. 5. Appellants
argue that this rejection should be reversed at least for the reasons set forth
for claim 1. App. Br. 21; Reply Br. 10. Because we sustain the rejection of
claim 1, we also sustain the rejection of claim 8.
Claims 11, 13, and 14 as unpatentable over Hrytzak, Herrmann, and
Frankenberg
Claims 11, 13, and 14 depend indirectly from claim 1 and recite other
features of the combination, which the Examiner relied on Hrytzak and
Frankenberg to disclose. Ans. 5. Appellants argue that the rejection should
be reversed at least for the reasons set forth for claim 1. App. Br. 22; Reply
Br. 10. Because we sustain the rejection of claim 1, we also sustain the
rejection of claims 11, 13, and 14.
Claim 12 as unpatentable over Hrytzak, Herrmann, and Johnson
Claim 12 depends indirectly from claim 1 and recites other features of
the combination. The Examiner relied on Johnson to disclose these features.
Ans. 6. Appellants argue that the rejection should be reversed at least for the
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reasons set forth for claim 1. App. Br. 22; Reply Br. 10. Because we sustain
the rejection of claim 1, we also sustain the rejection of claim 12.
NEW GROUND OF REJECTION
Claim 16 depends from claim 15 and recites “a seal for positioning
between the hub and the boss.” We agree with the Examiner that Hrytzak
and Herrmann render obvious the claimed subject matter of claim 15 and
adopt the Examiner’s findings and conclusion of obviousness as our own.
As discussed supra, the Examiner rejected claim 5, which recites “a seal is
positioned between the outer surface of the boss and the inner surface of the
hub.” The Examiner relied on Kalny to disclose the claimed seal positioned
in a groove of a hub between the hub and boss. See Ans. 4. We agree with
the Examiner that Kalny discloses this feature. We also agree with the
Examiner that it would have been obvious to a skilled artisan to modify the
combined teachings of Hrytzak and Herrmann with the further teachings of
Kalny to provide a seal between the hub and boss and adopt the Examiner’s
findings and conclusions of obviousness as our own. We conclude that it
would have been obvious to modify the combination of Hrytzak and
Herrmann as applied to claim 15 further in view of Kalny to provide a seal
positioned between the hub and the boss as called for in claim 16, and enter
a new ground of rejection as to claim 16 under 35 U.S.C. § 103(a) as
unpatentable over Hrytzak and Herrmann as applied to claim 15, further in
view of Kalny.
DECISION
The rejection of claims 1-4, 9, 10, 15, 17, and 21-23 under 35 U.S.C.
§ 103(a) as unpatentable over Hrytzak and Herrmann is AFFIRMED and the
rejection of claim 16 is REVERSED.
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The rejection of claims 5-7 under 35 U.S.C. § 103(a) as unpatentable
over Hrytzak, Herrmann, and Kalny is AFFIRMED.
The rejection of claim 8 under 35 U.S.C. § 103(a) as unpatentable
over Hrytzak, Herrmann, and Stirling is AFFIRMED.
The rejection of claims 11, 13, and 14 under 35 U.S.C. § 103(a) as
unpatentable over Hrytzak, Herrmann, and Frankenberg is AFFIRMED.
The rejection of claim 12 under 35 U.S.C. § 103(a) as unpatentable
over Hrytzak, Herrmann, and Johnson is AFFIRMED.
For the reasons provided supra, we enter NEW GROUNDS OF
REJECTION of:
Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Hrytzak, Herrmann, and Kalny.
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
“Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board.”
In addition to affirming the Examiner's rejections of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the claims
so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the Examiner, in which event the
proceeding will be remanded to the Examiner….
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(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record….

Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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