11848736 (P.T.A.B. Dec. 19, 2014)

Ex Parte Frost et al

Patent Trial and Appeal BoardDec 19, 2014

11848736 (P.T.A.B. Dec. 19, 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. 11/848,736 08/31/2007 Timothy Lee Frost 09401-0193 4292 3490 7590 12/19/2014 DOUGLAS T. JOHNSON MILLER & MARTIN 1000 VOLUNTEER BUILDING 832 GEORGIA AVENUE CHATTANOOGA, TN 37402-2289 EXAMINER RIPLEY, JAY R ART UNIT PAPER NUMBER 3679 MAIL DATE DELIVERY MODE 12/19/2014 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 TIMOTHY LEE FROST and TONY BYRON LEESEBERG ____________________ Appeal 2012-009212 Application 11/848,736 Technology Center 3600 ____________________ Before: LYNNE H. BROWNE, LISA M. GUIJT, and MICHAEL L. WOODS, Administrative Patent Judges. BROWNE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Timothy Lee Frost and Tony Byron Leeseberg (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1–19. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER The claims are directed to orifice holder construction. Claim 1, reproduced below, is illustrative of the claimed subject matter: Appeal 2012-009212 Application 11/848,736 2 1. An orifice holder assembly comprising: an orifice holder having a base connected by at least one arm to a boss, said boss located below the base and having a bore therethrough extending from a first boss surface to a second boss surface with said second boss surface located above the first boss surface; a tube received by the boss, said tube having a preformed bead disposed about the tube spaced from a tube end, said bead contacting the first boss surface with a portion of the tube extending through the bore of the boss, said tube then deformed at the tube end to provide a lip with a lip engagement surface in contact with the second boss surface external to the bore with the lip and the bead forming a mechanical connection of the tube to the boss by entrapping a portion of the boss between the lip and bead; and an orifice body connected to the tube end and having a bore therethrough, said orifice body located below the base with a space above the orifice body and below the base and said orifice body terminating internal to the boss above the first boss surface. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Meyer Ridenour US 3,063,494 US 5,727,303 Nov. 13, 1962 Mar. 17, 1998 Dane WO 2006/040414 A1 Apr. 20, 2006 REJECTIONS I. Claims 1, 2, 5, and 8–17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Dane1 and Ridenour. II. Claims 3, 4, 6, 7, 18, and 19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Dane2, Ridenour, and Meyer. 1 The Examiner refers to US 2008/0090192 A1, which is an English language equivalent of Dane, throughout the rejection. Ans. 5–11. Appeal 2012-009212 Application 11/848,736 3 OPINION Rejection I — Claims 1, 2, 5, and 8–17 Appellants argue claims 1, 2, 5, and 8–17 together. See Appeal Br. 8– 10. We select independent claim 1 as the illustrative claim and claims 2, 5, and 8–17 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). The Examiner finds that the combined teachings of Dane and Ridenour disclose or suggest all of the limitations of independent claim 1. In particular, the Examiner finds that Ridenour teaches a tube “having a lip at the tube end and a lip engagement surface in contact with a second plate surface external to the bore, the lip extending above a respective contact surface” as claimed. Ans. 7–8. The Examiner further finds that “[t]he purpose [of] the invention of Ridenour is to allow attaching a tube and orifice to some structure, e.g. a boss, such that a fluid tight seal is not needed between the tube and the structure.” Id. at 8 (citing Ridenour, col. 3, ll. 32– 43). Based on these findings, the Examiner reasons that it would have been obvious to modify the orifice holder of Dane et al to have a lip at the tube end with a lip engagement surface in contact with the second boss surface external to the bore, the lip forming a mechanical connection of the tube to the boss that entraps a portion of the boss between the lip and the bead, and the orifice body terminating internal to the boss above the first boss surface, as taught by Ridenour to allow attaching the tube and orifice to the boss such that a fluid tight seal is not needed between the tube and the boss. Id. Appellants argue that one of ordinary skill in the art would not substitute Ridenour’s staked bead created through movement of the tube 2 Note 1. Appeal 2012-009212 Application 11/848,736 4 toward the fitting for Dane’s preformed bead. See App. Br. 9; see also Reply Br. 2. Appellants’ argument is not responsive to the rejection as articulated by the Examiner. As discussed supra, the proposed modification is to add Ridenour’s lip to Dane’s tube end. Appellants do not explain why modification of Dane’s tube end to include a lip would not be obvious in view of Ridenour’s teachings. Thus, Appellants do not apprise us of error. Appellants further contend that the “rejection is believed to lack motivation to combine prior art references.” App. Br. 9; Reply Br. 2. This argument is foreclosed by KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), in which the Court rejected the rigid requirement of a teaching, suggestion, or motivation to combine known elements in order to show obviousness. KSR, 550 U.S. at 415. The Court noted that an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418. Moreover, in this case, the Examiner articulated the reasons for the proposed modification as discussed supra. Appellants have not shown that the Examiner’s reasoning lacks rational underpinnings. Accordingly, Appellants have not apprised us of error. For these reasons, we sustain the Examiner’s decision rejecting independent claim 1, and claims 2, 5, and 8–17 which fall therewith. Rejection II — Claims 3, 4, 6, 7, 18, and 19 Appellants essentially repeat the arguments discussed supra and argue that claims 3, 4, 6, 7, 18, and 19 are allowable based on their dependence from either independent claim 1 or 11. See App. Br. 10–11. Appellants’ arguments are not persuasive for the reasons discussed supra. Appellants’ additional arguments pertaining to claims 3 and 4 are discussed infra. Appeal 2012-009212 Application 11/848,736 5 Claim 3: Appellants argue that in claim 3 “[t]he arm is integrally connected to the boss in this claim whereas the structure cited in Dane is removable.” See App. Br. 11. Appellants’ argument is not responsive to the rejection as articulated by the Examiner, as the rejection relies upon Meyer to teach this limitation. See Ans. 12. Accordingly, Appellants have not apprised us of error. Therefore, we sustain the Examiner’s decision rejecting claim 3. Claim 4: Appellants contest the Examiner’s characterization of the limitation “wherein the at least one arm is integrally connected to the base and the first boss surface against the bead is the lowest portion of the boss” (App. Br. 15, Clms. App’x.) as “a design consideration within the skill of the art” (Ans. 13). See App. Br. 11–12. However, Appellants merely state that “there is discussion of the terms in the specification, drawings and/or prosecution history which support the claimed structure.” Id. at 11. Appellants do not explain why this limitation is critical. They do not identify, nor is it readily apparent, where the Specification discusses such criticality. Accordingly, Appellants’ argument is not persuasive and we sustain the Examiner’s decision rejecting claim 4. Claims 6, 7, 18, and 19: Appellants do not present additional arguments for claims 6, 7, 18, and 19. App. Br. 10–12. Accordingly, we sustain the Examiner’s decision rejecting these claims. DECISION The Examiner’s rejection of claims 1–19 is AFFIRMED. Appeal 2012-009212 Application 11/848,736 6 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 mls