Ex Parte Fong

Patent Trial and Appeal Board

Apr 27, 2017

12112448 (P.T.A.B. Apr. 27, 2017)

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.
12/112,448 04/30/2008 John J. FONG 911-005.035-1 (08FLJ001) 9239
4955 7590 05/01/2017
WARE, FRESSOLA, MAGUIRE & BARBER LLP
BRADFORD GREEN, BUILDING 5
755 MAIN STREET
MONROE, CT 06468
EXAMINER
FREAY, CHARLES GRANT
ART UNIT PAPER NUMBER
3746
NOTIFICATION DATE DELIVERY MODE
05/01/2017 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):
mail @ warefressola. com
uspatents @ warefressola. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN J. FONG
Appeal 2015-001159
Application 12/112,44s1
Technology Center 3700
Before ANTON W. FETTING, BRADLEY B. BAYAT, and
AMEE A. SHAH, Administrative Patent Judges.
BAYAT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
John J. Fong (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s decision rejecting claims 19—23. We have jurisdiction under
35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 Appellant identifies “Xylem IP Holdings Inc.” as the real party in interest.
Appeal Br. 2 (filed July 15, 2014).
Appeal 2015-001159
Application 12/112,448
THE INVENTION
Appellant’s “invention relates to a check valve; and more particularly
to a check valve for a pump or other suitable device.” Spec. 1:5—6. Claim
19, the sole independent claim and reproduced below, is representative of
the subject matter on appeal.
19. A check valve having a seat with an aperture formed
therein for enabling fluid to flow through the seat, and also
having a poppet with first and second ends, the poppet being
arranged in the aperture of the seat, the poppet opening in
response to fluid pressure in a first direction from a first end to
a second end of the poppet so as to enable fluid to flow in the
first direction, and the poppet closing in response to fluid
pressure in a second direction so as not to enable fluid to flow
in the second direction from the second end to the first end of
the poppet, wherein the improvement comprises:
the seat being made of a plastic material and having a
curved circumferential edge with a plastic sealing lip;
the poppet having a curved outer circumferential surface;
and
the plastic sealing lip being formed on the curved
circumferential edge of the seat at an interface between the seat
and the poppet, physically contacting with the curved outer
circumferential surface of the poppet in a sealing manner so as
not to enable fluid to flow in the second direction in response to
fluid pressure in the second direction, and having a thickness in
a range of 0.003" - 0.03", the thickness being measured in terms
of sealing material of the curved circumferential edge that
forms the plastic sealing lip and that physically contacts the
curved outer circumferential surface of the poppet, where the
use of the plastic material for the seat allows for the thickness
in the range of 0.003" - 0.03" of the plastic sealing lip.
Appeal Br. 21, Claims Appendix.
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Appeal 2015-001159
Application 12/112,448
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Jemigan et al.
(hereinafter “Jemigan”)
US 2005/0263187 Al Dec. 1, 2005
Nixon et al. US 7,036,523 B2 May 2, 2006
(hereinafter “Nixon”)
1. Claims 19-23 are rejected under 35 U.S.C. §112, first paragraph, as
failing to comply with the enablement requirement. Answer 2
(“Ans.,” mailed Aug. 18, 2014).
2. Claims 19-23 are rejected under 35 U.S.C. §112, first paragraph, as
failing to comply with the written description requirement. Id. at 6.
3. Claims 19-23 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Nixon and Jemigan. Id. at 7.
ANALYSIS
Enablement
A Specification is not enabling if a person of ordinary skill in the art
would be unable to practice the invention without “undue experimentation.”
In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). Factors relevant to a
determination of whether undue experimentation would be necessary
include:
(1) the quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence of
working examples, (4) the nature of the invention, (5) the state of the
prior art, (6) the relative skill of those in the art, (7) the predictability
or unpredictability of the art, and (8) the breadth of the claims.
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Application 12/112,448
Id. The initial burden is on the Examiner to set forth “a reasonable
explanation” of why the Examiner believes a person of ordinary skill in the
art, given what the Specification discloses, would be unable to practice the
invention without “undue experimentation.” See In re Wright, 999 F.2d
1557, 1561-62 (Fed. Cir. 1993).
In rejecting claim 19 as failing to comply with the enablement
requirement, the Examiner finds that the preamble of claim 19 includes a
check valve having a poppet that opens and closes in response to a fluid
pressure. Ans. 2—3. The Examiner determines that “the poppet is acted
upon by a spring member 4”, but the Specification fails to provide “detail
describing how the spring 4 and the seat 1 are attached to each other.” Id. at
3. The Examiner then concludes that “because the operation or operability
of the spring member is unclear, and the original disclosure does not fully
describe how this member operates, the mechanism by which the valve
opens and closes in response to pressure has not been clearly taught or
described.” Id. at 6.
Appellant argues
that claim 19 is a Jepson type claim having a preamble and a
body . . . [t]he preamble sets forth a check valve that is known
in the art. . . [and] may be read on a known springless check
valve, consistent with that set forth in U.S. Patent No.
4,570,669.
Appeal Br. 13. According to Appellant, “there are other types or kind of
springless check valves ... as well as a known garden hose coupling that is
sold in many hardware stores configured using a springless check valve to
prevent backflow in a garden hose.” Id. Therefore, “the improvement
regarding the new and unique sealing arrangement, which may be used in
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Application 12/112,448
spring or springless check valves ... is not intended to be limited to any
particular type or kind of check valve . . . [or] limited to only embodiments
having a spring.” Reply Br. 9—10 (filed Oct. 20, 2014).
Drafting independent claim 19 in Jepson format is taken as an implied
admission that the subject matter of the preamble is the prior art work of
another; everything prior to the final portion, which begins with “wherein
the improvement comprises,” is presumed to be descriptive of the prior
art. See In re Font, 675 F.2d297, 301 (CCPA 1982). Here, Appellant
expressly admits that the subject matter of the preamble is the prior art work
of another (see supra), and that the spring mechanisms by which the valve
opens and closes in response to pressure would have been known by one of
ordinary skill in the art at the time of the invention.2 In view of the claim
format chosen and Appellant’s express admission, we interpret claim 19 as
setting forth elements which are conventional or known in the portion
preceding “wherein the improvement comprises,” with conventional or
known elements forming part of the combination. See, e.g., Rowe v. Dror,
112 F.3d 473, 478 (Fed. Cir. 1997).
The problem with the Examiner’s analysis is that upon determining
that “the mechanism by which the valve opens and closes in response to
pressure has not been clearly taught or described” in Appellant’s disclosure,
the Examiner prematurely ends the analysis by concluding that the claims
fail to comply with the enablement requirement. See Ans. 6. Determining
what a specification does not disclose is merely a first step in determining
2 There is no indication in the record that Appellant’s amendment of claim
19 to Jepson format was an attempt to overcome or prevent a double
patenting rejection. See In re Ehrreich, 590 F.2d 902 (CCPA 1979).
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Application 12/112,448
whether a claimed invention is enabled because an applicant need not
disclose what is already well known in the art. See In re Wands, 858 F.2d at
737 (“Whether undue experimentation is needed is not a single, simple
factual determination, but rather is a conclusion reached by weighing many
factual considerations.”). Thus, the next step in the Examiner’s analysis
would require consideration of the relevant Wands factors in determining
whether undue experimentation would be necessary. But neither the Office
Action nor the Answer provides any discussion of the Wands factors, either
explicitly or implicitly, to properly make the determination that a person of
ordinary skill in the art would be unable to practice the invention without
“undue experimentation.” In other words, the Examiner fails to adequately
analyze and explain why one of ordinary skill in the art would have been
unable to implement an admittedly known spring mechanism without undue
experimentation. As such, a prima facie case of lack of enablement has not
been established in the first place.
Accordingly, we will not sustain the rejection of claims 19-23 as
failing to comply with the enablement requirement.
Written Description Requirement
The written description requirement is separate and distinct from the
enablement requirement. AriadPharms., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1340 (Fed. Cir. 2010) (en banc). To satisfy the written description
requirement, the specification must describe the claimed invention in
sufficient detail that one skilled in the art can reasonably conclude that the
inventor had possession of the claimed invention. Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1562—63 (Fed. Cir. 1991). “[T]he test for
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Application 12/112,448
sufficiency is whether the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.” Ariad, 598
F.3d at 1351 (citing Vas-Cath, 935 F.2d at 1563).
In rejecting claims 19—23 as failing to comply with the written
description requirement, the Examiner determines that the amendment of
claim 19 to a Jepson claim incorporates prior art valves that “were not set
forth in the original disclosure”, and, thus, claim 19 contains subject matter
which was not described in the Specification to reasonably convey to one
skilled in the art that Appellant had possession of the claimed invention.
Non-Final Action 3 (mailed Oct. 16, 2013). In particular, the Examiner’s
position is that “the applicant expanded his disclosure to include springless
check valves . . . [whereas] the original disclosure provided a specific
disclosure only directed to a spring biased check valve.” Ans. 12. In other
words, “[b]y expanding the intended valve type which is intended to be
improved by the Jepson claim to include non-spring biased valves the
applicant is attempting to claim subject matter which he did not originally
have possession of’ at the time of filing. Id. at 12—13.
In the Appeal Brief, Appellant merely alleges that the Specification
does contain written description support (see Appeal Br. 18—19), without
specifically addressing the Examiner’s position by identifying where in the
Specification written description support for spring-less check valves is
provided. Appellant’s response, therefore, amounts to a general allegation
that the disclosure complies with the written description requirement and
fails to show Examiner error.
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Application 12/112,448
In the Reply Brief, Appellant argues “that claim 19 does not recite a
spring, and none of the dependent claims recite a spring ... the operability
and workability of the underlying invention recited in claim 19 does not
depend on the claimed embodiment having a spring.” Reply Br. 15. But
that argument supports the Examiner’s position. The Specification and
originally filed claims only describe a check valve with an elastic member or
return spring 4. See Spec. 4. By amending claim 19 to a Jepson format,
Appellant effectively changed the claimed invention from a check valve
requiring a spring (elastomer) to a spring-less check valve. In other words,
the Specification does not describe in sufficient detail any embodiment with
a spring-less check valve to reasonably convey to those skilled in the art that
Appellant had possession of the claimed invention.
Accordingly, we sustain the rejection of claims 19—23 as failing to
comply with the written
Obviousness
We have considered Appellant’s arguments (Appeal Br. 6—11; Reply
Br. 3—7) but we are not persuaded the Examiner erred in asserting that the
combination of Nixon and Jemigan renders claims 19—23 obvious. We
adopt the Examiner’s findings and response to arguments in the Answer as
our own. We add the following for emphasis.
We disagree that “Nixon does not disclose, teach or suggest either that
the valve seat 17 has a curved edge or surface, [or] that the poppet 14 has a
curved outer circumferential surface, or that both elements in combination
are curved surfaces” (Reply Br. 7) at least because Figure 1A of Nixon
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Application 12/112,448
clearly shows valve seat 17 with a curved edge, and Figure 1A and IB show
poppet 14 with a curved outer circumferential surface.
Appellant also points to rigorous test data set forth in Figures 5a—5c
and described in embodiments of the Specification as providing a new and
unique curved sealing interface between the seat and the poppet, but those
embodiments and test data are directed to a spring biased check valve, rather
than the claimed spring-less check valve, and thus, unsuitable to overcome
the rejection of record. On the record before us, the preponderance of the
evidence weighs in favor of the Examiner’s position.
Accordingly, we sustain the rejection of claims 19—23 as obvious.
CONCLUSIONS
The rejection of claims 19-23 under 35 U.S.C. §112, first paragraph,
as failing to comply with the enablement requirement is not sustained.
The rejection of claims 19-23 under 35 U.S.C. §112, first paragraph,
as failing to comply with the written description requirement is sustained.
The rejection of claims 19-23 under 35 U.S.C. § 103(a) is sustained.
DECISION
The decision of the Examiner to reject claims 19—23 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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