Ex Parte Frackowiak et al

Patent Trial and Appeal Board

Dec 29, 2014

12023707 (P.T.A.B. Dec. 29, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte STEVE A. FRACKOWIAK, MARK S. KACIK, YAAKOV
KORB, TODD C. LOSCHELDER, and W. RANDALL TUCKER
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Appeal 2012-012669
Application 12/023,7071
Technology Center 3700
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Before ANNETTE R. REIMERS, THOMAS F. SMEGAL and LEE L.
STEPINA, Administrative Patent Judges.

SMEGAL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Steve A. Frackowiak et al. (Appellants) seek our review under 35
U.S.C. § 134 of the Examiner’s final rejection of claims 1−4 and 20−23, the
only claims pending in the application on appeal. We have jurisdiction under
35 U.S.C. § 6(b).

We REVERSE.

1 According to Appellants, the real party in interest is Moen Incorporated of
North Olmsted, Ohio. Appeal Br. 4.
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Application 12/023,707

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CLAIMED SUBJECT MATTER
An understanding of the invention can be derived from a reading of
independent claim 1, which is reproduced below.
1. A valve cartridge for controlling a flow rate of a fluid and
operable to be secured in a valve body, the valve cartridge
comprising:
a housing;
an actuating mechanism; and
a fluid control member,
wherein the fluid control member is disposed in the
housing,
wherein a portion of the actuating mechanism extends
through an upper opening in the housing,
wherein movement of the actuating mechanism moves
the fluid control member to vary the flow rate of the fluid,
wherein the housing includes a lower portion and an
upper portion,
wherein the fluid control member is disposed in the lower
portion of the housing,
wherein the upper opening is formed in the upper portion
of the housing,
wherein a diameter of the lower portion is smaller than a
diameter of the upper portion, such that a seating ledge is
formed on an outer surface of the housing where the upper
portion and the lower portion meet, the seating ledge being
operable to rest on the valve body,
wherein the volume of the valve cartridge is a volume
from a bottom of the housing to the seating ledge, and
wherein a ratio of a maximum flow rate of the valve
cartridge at a pressure of 60 pounds per square inch gauge to a
volume of the valve cartridge is greater than or equal to 34.17
GPM/in³, and
wherein the ratio is achieved at least in part by inclusion
of a plurality of structural features selected from the group
consisting of:
a water outlet passage formed in the housing, the water
outlet passage having rounded edges;
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an aperture formed in the fluid control member as a water
inlet port, the aperture having at least one side wall that is
sloped;
an internal crossflow passage that allows water to flow
from one side of the valve cartridge to the other side of the
valve cartridge inside the housing;
an external cross flow passage that allows water to flow
around an external surface of the housing;
and a sealing member that fits into a lower opening of the
housing, the sealing member having an insert that strengthens
the sealing member by resisting radial compression of the base
seal while allowing axial compression of the base seal.

Claims App., Appeal Br. 28−29.

REJECTIONS ON APPEAL

The following Examiner’s rejections are before us for review.2

1. Claims 1−4, 20, and 21 are rejected under 35 U.S.C. § 102(b) as
anticipated by Buccicone (US 5,732,734, iss. Mar. 31, 1998).
2. Claims 1−4, 20, and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Buccicone.
3. Claims 1−4, 20, and 21 are rejected as anticipated by Orlandi (US
4,924,903, iss. May 15, 1990).
4. Claims 1−4, 20, and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Orlandi.
5. Claims 22 and 23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over either Buccicone or Orlandi in view of Iqbal (US
4,821,765, iss. Apr. 18, 1989).

2 The rejection of claims 20 and 21 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement, has been
withdrawn. Answer 4.
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ANALYSIS
Claims 1−4, 20, and 21 rejected as anticipated by either Buccicone or
Orlandi.
It is well settled that the burden of establishing a prima facie case of
anticipation resides with the Patent and Trademark Office (PTO). See In re
Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). When relying upon the
theory of inherency, the examiner must provide a basis in fact and/or
technical reasoning to reasonably support the determination that the
allegedly inherent characteristic necessarily flows from the teachings of the
applied prior art. See Continental Can Co.USA, Inc. v. Monsanto Co., 948
F.2d 1264 (F3d. Cir. 1991). “To establish inherency, the extrinsic evidence
‘must make clear that the missing descriptive matter is necessarily present in
the thing described in the reference, and that it would be so recognized by
persons of ordinary skill.’” In re Robertson, 169 F.3d 743, 745 (Fed. Cir.
1999) (quoting Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268
(Fed. Cir. 1991).
We are persuaded by Appellants’ arguments that the Examiner failed
to establish a prima facie showing of anticipation in rejecting claims 1−4,
20, and 21 over either Buccicone or Orlandi. See Appeal Br. 14, 18−20,
22−24.
The Examiner finds that either Buccicone or Orlandi shows “a valve
of substantially the same construction and proportions as that disclosed. It is
believed that the recited ratio will be inherent” Answer 4, 5. However,
Appellants contend that independent claims 1 and 3 recite valve cartridges
that are “based on the unique combination of features recited therein and the
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flow rate-to-volume ratios resulting therefrom, which are neither disclosed
nor suggested by the art of record.” Appeal Br. 13, 14. We agree with
Appellants that there is nothing in either Buccicone or Orlandi, to which the
Examiner has directed our attention, which inherently describes features that
produce substantially the same flow rate-to-volume ratios as that recited by
the claims. See id.; see also id. at 18, 19, 22, 23.
For the foregoing reasons, we reverse the Examiner’s rejection of
claims 1−4, 20, and 21 as being anticipated by either Buccicone or Orlandi.

Obviousness of claims 1−4, 20, and 21 over either Buccicone or
Orlandi.
We found that claims 1−4, 20, and 21 are not anticipated be either
Buccicone or Orlandi because the Examiner did not show by a
preponderance of the evidence that either Buccicone or Orlandi inherently
described features that would produce substantially the same flow rate-to-
volume ratios as recited by the claims.
The Examiner supports the obviousness rejections by determining that
“the recited ratios in the valve of Buccicone [or Orlandi] is an obvious
matter of design choice in view of the similarities in structure and proportion
between the Buccicone [or Orlandi] valve and the disclosed valve” Answer
5. However, while acknowledging that “[n]one of the references, and no
mixing valve reference the Examiner is aware of, disclose a metric in
GPM/in³”, the Examiner determines that “[i]n the Examiner’s opinion, if the
Prior Art suggests a valve with a plurality of the features recited then it is
reasonable to conclude the Prior Art possesses the cited metric.” See Answer
7.
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However, we agree with Appellants that
[N]one of the prior art references give any indication of scale or
proportion as it relates to a specific portion of a valve cartridge
(e.g., the seating volume as recited in claim 1 or the sealing
volume as recited in claim 3)… Furthermore, none of the prior
art references disclose their respective flow rates. It follows that
none of the prior art references disclose any relationship
between a size of the relevant portion of the valve cartridge and
the flow rate of the valve cartridge, such that a flow rate-to-
volume ratio falls within the claimed ranges. Indeed, the prior
art references relied on by the Examiner in no way recognize
this relationship, let alone quantify it.

Reply Br. 2−3. Moreover, we find that the Examiner’s legal conclusion of
obviousness is not supported by facts, and thus, cannot stand. See In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967) (holding that “[t]he legal
conclusion of obviousness must be supported by facts. Where the legal
conclusion is not supported by facts it cannot stand.”).
Therefore, we do not sustain the rejection of claims 1−4, 20, and 21 as
unpatentable over either Buccicone or Orlandi.
Obviousness of claims 22 and 23 over either Buccicone or Orlandi in
view of Iqbal.
The Examiner’s rejection of claims 22 and 23 over either Buccicone
or Orlandi in view of Iqbal (see Answer 6) is based on the same unsupported
findings discussed above with respect to the disclosure of either Buccicone
or Orlandi. The addition of Iqbal does not remedy the deficiencies of either
Buccicone or Orlandi, as discussed supra. Accordingly, for similar reasons
as discussed above for claims 1 and 3, we do not sustain the Examiner’s
rejection of claims 22 and 23 over either Buccicone or Orlandi in view of
Iqbal. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“[D]ependent
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claims are nonobvious if the independent claims from which they depend are
nonobvious.”).

DECISION

We REVERSE the Examiner’s rejections.

REVERSED