Ex Parte Crosby et al

Patent Trial and Appeal Board

Jul 2, 2014

11930826 (P.T.A.B. Jul. 2, 2014)

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.
11/930,826 10/31/2007 MICHAEL THOLAN CROSBY 2802-107-064 1394
24045 7590 07/02/2014
PARKER-HANNIFIN CORPORATION
HUNTER MOLNAR CLARK FISTEK
6035 PARKLAND BOULEVARD
CLEVELAND, OH 44124-4141
EXAMINER
KASTURE, DNYANESH G
ART UNIT PAPER NUMBER
3746
MAIL DATE DELIVERY MODE
07/02/2014 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 MICHAEL THOLAN CROSBY, BILLIE FRANCES BURLEIGH,
and BRIAN TIMOTHY PAINTER
____________________

Appeal 2012-006509
Application 11/930,8261
Technology Center 3700
____________________

Before MEREDITH C. PETRAVICK, NINA L. MEDLOCK, and
BART A. GERSTENBLITH, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–9, 11, and 12. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.2

1 According to Appellants, the real party in interest in this appeal is
Parker-Hannifin Corporation (App. Br. 2).
2 Our decision will refer to Appellants’ Appeal Brief (“App. Br.,” filed
December 7, 2011) and Reply Brief (“Reply Br.,” filed March 9, 2012), and
the Examiner’s Answer (“Ans.,” mailed January 9, 2012).
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THE CLAIMED INVENTION
Appellants’ claimed invention “relates generally to axial piston
pumps, and more particularly to an end cover for an axial piston pump
having an orifice between the system ports and the charge pump pressure
cavity” (Spec. ¶ 2).
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A hydraulic apparatus comprising:
a housing body,
an end cover attachable to the housing, the end cover
comprising:
an end cover body comprising a first system port
and a second system port;
a charge pump pressure cavity formed in the end
cover body between the first system port and the second
system port;
a first valve port and a second valve port formed
coaxially in the end cover body and the axes of the valve
ports are perpendicular to the axes of the system ports,
the valve ports connecting the system ports to the charge
pump pressure cavity; and
a passageway, separate and distinct from the valve
ports, formed through a portion of the end cover body
connecting at least one of the first and second system
ports to the charge pump pressure cavity, the passageway
including an orifice.

THE REJECTIONS
The following rejections are before us for review:
Claims 1, 2, 6, 8, and 9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Trimble (US 6,332,393 B1, iss. Dec. 25, 2001) and
Phanco (US 7,296,594 B1, iss. Nov. 20, 2007).
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Claims 3, 11, and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Trimble, Phanco, and Beckman (US 2,187,010,
iss. Jan. 16, 1940).
Claims 4, 5, and 7 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Trimble, Phanco, and Bartos (US 6,651,695 B2,
iss. Nov. 25, 2003) or Beckman.

ANALYSIS
Independent claim 1 and dependent claim 2
Appellants argue that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because a person of ordinary skill in the art would have
had no reason (in order to provide smoother operation of the unit) to modify
the end cover of the Trimble pump to include bleed orifices, as taught by
Phanco, connecting the first and second system ports to the charge pump
pressure cavity, as the Examiner proposes (App. Br. 10). Appellants
maintain that Trimble already has an orifice (in the poppet of the relief
valve) for smoothing operation of the unit, and assert that “[n]othing in
Trimble identifies any deficiency with locating the orifice in the relief valve”
(id.). Therefore, according to Appellants, a person skilled in the art would
have had no reason to reposition the orifice in the body of a valve, as taught
by Phanco, to solve a problem that already was solved by the current
Trimble design (id.).
Appellants’ argument is not persuasive. Phanco merely discloses
alternative positioning of the orifice (i.e., outside the poppet, rather than in
the valve poppet) (Ans. 14). We agree with the Examiner that repositioning
the orifice in the Trimble pump, as taught by Phanco, is nothing more than a
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combination of prior art elements according to their established functions,
and yields a predictable result (id.). Therefore, it would have been obvious
at the time of Appellants’ invention to a person of ordinary skill in the art.
See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007) (“The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results”).
We also are not persuaded by Appellants’ argument that the
Examiner’s proposed modification would require a major redesign of the
Trimble pump (App. Br. 11). The test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference . . . . Rather, the test is what the combined
teachings of those references would have suggested to those of ordinary skill
in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981); see also In re
Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the
inventions of the references be physically combinable to render obvious the
invention under review.”); In re Nievelt, 482 F.2d 965 (CCPA 1973)
(“Combining the teachings of references does not involve an ability to
combine their specific structures.”).
The Examiner acknowledges that “Trimble does not disclose a
passageway that is separate and distinct from the valve ports, formed
through a portion of the housing body connecting at least one of the first and
second system ports to the charge pump pressure cavity, the passageway
including an orifice” (Ans. 6). And the Examiner relies on Phanco as
teaching “a passageway that is separate and distinct from the valve port that
connects the system port to the charge pump pressure cavity (to provide
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smoother operation)” (Ans. 13). However, the Examiner does not propose
any bodily incorporation of Phanco into Trimble, or vice versa.
Appellants next argue that “[e]ven if there was some reasonable
basis . . . to modify the Trimble pump in view of the Phanco,” the redesigned
Trimble pump “would still be plagued by the above-discussed problem of
the valves accidentally being replaced by valves without orifices” because
“[t]he valve body [element 32 in Phanco] includes the orifice 33 to which
the Examiner refers” (App. Br. 11–12; see also Reply Br. 2–4).3 However,
as the Examiner observes, Phanco describes that portions of the end cap can
replace some or all of the valve body 30 (Phanco, col. 3, ll. 56–60), and,
therefore, reasonably suggests positioning the orifice in the end cover rather
than in the valve body (Ans. 15).
In view of the foregoing, we sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 103(a). We also will sustain the rejection of
dependent claim 2, which was not argued separately.
Independent claim 6 and dependent claim 8
Claim 6 is substantially similar to claim 1 except that claim 6 is
specifically directed to the end cover. Claim 6 recites that the end cover
comprises, inter alia, “a passageway formed through a portion of the end
cover body through a wall of each of the first and second system ports, the
passageway being separate and distinct from the first and second valve ports,

3 The Specification describes that “[p]roblems with the orifices in the valves
include the fact that the valves may be accidentally replaced by valves
without orifices and that the special orifice valves are expensive”
(Spec. ¶ 6). Appellants assert that the claimed invention enables “separation
of the orifice from the valve, thereby avoiding the problem of a valve being
replaced with a valve that does not have the orifice and the higher cost of
special orifice valves” (App. Br. 6).
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the passageway fluidly connecting the first and second system ports, the
passageway including at least one orifice.”
Appellants argue that claim 6 is allowable with reference to
Appellants’ arguments with respect to claim 1 (App. Br. 12–13). We found
Appellants’ arguments unpersuasive with respect to claim 1, and we find
them equally unpersuasive with respect to claim 6. Therefore, we sustain
the Examiner’s rejection of claim 6 under 35 U.S.C. § 103(a) for the same
reasons as set forth above with respect to claim 1. We also sustain the
rejection of dependent claim 8, which was not argued separately except
based on its dependence on claim 6 (App. Br. 13).
Dependent claim 9
Claim 9 depends from claim 8, which depends, in turn, from claim 6.
Claim 8 recites that the end cover body comprises “a charge pump pressure
cavity formed in the end cover body between the first system port and the
second system port,” and claim 9 recites that “the charge pump pressure
cavity intersects at least a portion of the passageway.”
Appellants assert that “neither Trimble nor Phanco disclose[s] a
charge pump pressure cavity intersecting a passageway having the orifice.
This feature is totally missing from the applied references and for this
additional reason4 the rejection should be reversed” (App. Br. 13).
Appellants’ assertion does not rise to the level of a separate argument.
See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that the
Board reasonably interpreted 37 C.F.R. § 41.37 (c)(1)(vii) as requiring

4 Appellants also argue that the rejection of claim 9 should be reversed for
the same reasons set forth with respect to independent claim 6; as set forth
above, we sustain the Examiner’s rejection of claim 6.
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“more substantive arguments in an appeal brief than a mere recitation of the
claim elements and a naked assertion that the corresponding elements were
not found in the prior art”). Moreover, we agree with the Examiner that
Figure 12 of Phanco suggests this feature (Ans. 16).
Therefore, we sustain the Examiner’s rejection of claim 9 under
35 U.S.C. § 103(a).
Dependent claim 3
Claim 3 depends from claim 1, and recites that “a plug is positioned in
the passageway, the orifice being formed in the plug and also extending
through the plug.” The Examiner acknowledges that neither Trimble nor
Phanco discloses a plug positioned in the passageway, and relies on
Beckman as disclosing this feature (Ans. 10).
Beckman is directed to a gas burner, and discloses fluid flow from
orifice cap 11 to mixing chamber 10 through orifice 20 formed in plug 21
positioned in the passageway between cap 11 and mixing chamber 10
(Beckman, Fig. 1 and p. 1, right col., ll. 17–57).
Appellants argue that Beckman has nothing to do with hydraulic
apparatus, and that “Beckman is nonanalogous art unless it can be shown
that Beckman addresses a problem known by the skilled person in respect of
Trimble or Trimble with Phanco” (App. Br. 15).
We find that Beckman is analogous prior art because it would have
logically commended itself to a person skilled in the art considering the
substantially similar fluid flow issues addressed in Appellants’ application.
See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (Even when prior art
is not in the same field of endeavor as the claimed invention, it is still
analogous prior art if it is “reasonably pertinent” to the particular problem
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with which the inventor is involved); In re Clay, 966 F.2d 656, 659 (Fed.
Cir. 1992) (A reference is reasonably pertinent if, because of the matter with
which it deals, it logically would have commended itself to an inventor’s
attention in considering his problem). We also agree with the Examiner that
forming an orifice in a separate plug, as disclosed in Beckman, would have
been considered as involving no more than routine skill in the art (Ans. 16).
Therefore, we sustain the Examiner’s rejection of claim 3 under
35 U.S.C. § 103(a).
Dependent claims 11 and 12
Claims 11 and 12 depend from claims 9 and 6, respectively, and
include language substantially similar to the language of claim 3.
Appellants argue that each of claims 11 and 12 is allowable for the same
reasons as set forth with respect to the claim from which it depends and
further for the same reasons as set forth with respect to claim 3 (App.
Br. 15–16). We are not persuaded for the reasons set forth above that the
Examiner erred in rejecting any of claims 3, 6, and 9. Therefore, we sustain
the Examiner’s rejection of claims 11 and 12 under 35 U.S.C. § 103(a) for
the same reasons.
Dependent claims 4, 5, and 7
Each of claims 4 and 5 depends from claim 2, which, in turn, depends
from claim 1. Claim 2 recites that the end cover further comprises a second
passageway; claim 4 recites that the passageways are formed oblique to the
system ports; and claim 5 recites that the passageways are formed oblique to
the axes of the valve ports. Claim 7 depends from claim 6, and recites that
“at least a portion of the passageway is formed oblique to the system ports.”
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Appellants argue that the rejection of claim 4 should be reversed
because both Beckman, which relates to gas burners, and Bartos, which
relates to diaphragm operated pressure regulating valves, are nonanalogous
art (App. Br. 17; see also Reply Br. 5), and that the rejection of claims 5 and
7 should be reversed for the same reasons (App. Br. 17–18).
We are not persuaded by Appellants’ argument. We find that Bartos,
like Beckman, is analogous prior art because it would have logically
commended itself to a person skilled in the art considering the substantially
similar fluid flow issues addressed in Appellants’ application.
See In re Bigio, 381 F.3d at 1325. Therefore, we sustain the Examiner’s
rejection of claims 4, 5, and 7.

DECISION
The Examiner’s rejections of claims 1–9, 11, and 12 under 35 U.S.C.
§ 103(a) are 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)(1)(iv).

AFFIRMED

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