Ex Parte Greeb et al

Patent Trials and Appeals Board

Apr 22, 2019

14803711 - (D) (P.T.A.B. Apr. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/803,711 07/20/2015
53609 7590 04/24/2019
REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
FIRST NAMED INVENTOR
Kevin E. Greeb
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
508762-CON 9835
EXAMINER
BARSS, KEVIN R
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
04/24/2019 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):
RockMail@reinhartlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN E. GREEB, PHILIP A. LAFLEUR,
JONATHAN P. WORKMAN, and JOHN J. BEEN
Appeal2018-006299
Application 14/803,711
Technology Center 3700
Before MICHAEL L. HOELTER, BRETT C. MARTIN, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.
FITZPATRICK, Administrative Patent Judge.
DECISION ON APPEAL
Kevin E. Greeb, Philip A. Lafleur, Jonathan P. Workman, and John J.
Been ("Appellants" 1) appeal under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1 and 14--22. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm-in-part.
1 Appellants identify assignee Woodward, Inc., as the real party in interest.
Appeal Br. 2.
Appeal2018-006299
Application 14/803,711
STATEMENT OF THE CASE
The Specification
The disclosure is directed "to electro-hydraulic actuators or servo-
valves." Spec. i-f2.
The Rejected Claims
Claims 1-22 are pending. Final Act. 1. Claims 2-13 were allowed,
and claims 1 and 14--22 were rejected. Id. Independent claims 1 and 14 are
representative of the rejected claims and reproduced below.
1. A valve assembly comprising:
a housing including at least one port; and
a rotary valve disposed within the housing, the rotary
valve comprising:
an outer sleeve with at least one port aligned with the at
least one port of the housing;
a spool rotationally disposed within the sleeve, the spool
including a shaft and at least one valve element disposed along
the shaft, the at least one valve element including at least one
port formed thereon;
a first and a second anti-friction element supporting
opposing ends of the shaft of the spool;
a rotary electric actuating device coupled to an end of the
shaft, the rotary electric actuating device operable to rotate the
spool to selectively align the at least one port of the spool with
the at least one port of the sleeve; and
wherein the sleeve incorporates a radially-outwardly-
directed contoured spot face lead-in area adjacent the at least
one port of the sleeve, and wherein the at least one valve
element includes a radially-inwardly-directed contoured spot
face lead-in area adjacent the at least one port thereof, wherein
the radially-outwardly directed contoured spot face lead-in area
and the radially-inwardly-directed contoured spot face lead-in
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Application 14/803,711
area face away from one another when the at least one port of
the spool and the at least one port of the sleeve are aligned.
14. A valve assembly comprising:
a housing; and
a rotary valve disposed within the housing, the rotary
valve comprising:
an outer generally cylindrical sleeve having a bore
therethrough;
a spool concentrically and rotationally disposed within
the bore, the spool including a shaft and at least one valve
element disposed along the shaft, wherein the spool is in a
concentric clearance fit relationship with the sleeve such that a
radial gap of between about 0.0005 inches to about 0.005
inches is maintained between an outer diameter of the spool and
an inner diameter of the sleeve;
a first and a second anti-friction element, the first anti-
friction element supporting one end of the shaft, the second
anti-friction element supporting the other end of the shaft,
wherein the at least one valve element is interposed between the
first and second anti-friction elements; and
a rotary electric actuating device coupled to an end of the
shaft adjacent one of the first and second anti-friction elements,
the rotary electric actuation device operable to selectively rotate
the spool.
Claims App. 1, 4--5.
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Application 14/803,711
The Appealed Rejections
The following rejections are before us for review:
1. claim 16 as indefinite under 35 U.S.C. § 112(b)/i-f2 (Final
Act. 3);
2. claim 1 as unpatentable under 35 U.S.C. § 103 over Sallas2 and
Clerc 3 (id. at 5);
3. claims 14, 15, and 20-22 as unpatentable under 35 U.S.C.
§ 103 over Sallas and Williams4 (id. at 6);
4. claims 16 and 17 as unpatentable under 35 U.S.C. § 103 over
Sallas, Williams, and Hunt5 (id. at 10).
5. claim 18 as unpatentable under 35 U.S.C. § 103 over Sallas,
Williams, and Phillips6 (id. at 11 ); and
6. claim 19 as unpatentable under 35 U.S.C. § 103 over Sallas,
Williams, Romanin 7 (id. at 13).
DISCUSSION
Rejection 1
The Examiner rejected claim 16 under 35 U.S.C. § 112(b )/i-f2 as
indefinite. Final Act. 3. Claim 16 depends from claim 14 and recites that
"the housing, rotary electric actuating device, and an integrated driver circuit
2 US 5,467,800, issued Nov. 21, 1995 ("Sallas").
3 US 5,150,737, issued Sept. 29, 1992 ("Clerc").
4 US 3,012,576, issued Dec. 12, 1961 ("Williams").
5 US 4,201,005, issued May 6, 1980 ("Hunt").
6 US 5,273,072, issued Dec. 28, 1993 ("Phillips").
7 US 2010/0065585 Al, published Mar. 18, 2010 ("Romanin").
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Application 14/803,711
board adjacent the rotary electric actuating device are compliant with Div.
I/Zone 1 hazardous location requirements." Claims App. 5.
The Examiner's indefiniteness rejection states in whole: "Where
claim limitation is a standard requirement and does not disclose what part of
the standard is being used or how it is being applied to the structural
components of the claim it is considered to make the claim unclear or
indefinite." Final Act. 3; see also Ans. 2 (identical statement). The
Examiner provided more detail in an Advisory Action, stating:
[W]here there is no date associated with the standard, as such the
actual condition under which the [limitation] is viewed cannot be
determined. That is to say that the [specification] year in which
the standard was issued could be significantly [different] from
the [specification] that is in use today.
Advisory. Act. (mailed October 10, 2017).
Appellants argue that a date is unnecessary when citing a standard
because it is understood that the version of the standard recited in the claims
is the version in effect when the Application was filed. See Appeal Br. 5-7.
We agree with Appellant, as this Board has previously rejected such a view
as expressed by the Examiner. See, e.g., Ex parte Fiala, Appeal No. 1998-
000024, at 6-7 (BPAI Sept. 4, 1998).
Accordingly, we reverse the Examiner's rejection of claim 16 under
35 U.S.C. § 112(b )/i-f2 as indefinite.
Rejection 2
The Examiner rejected claim 1 as unpatentable under 35 U.S.C. § 103
over Sallas and Clerc. Final Act. 5. The Examiner found that Sallas
discloses all of the subject matter of claim 1 except for-as the Examiner put
it-"a radially outward spot face on sleeve aligned with a radially inward
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Application 14/803,711
spot face on spool with ports aligned."8 Id. For a teaching of these spot
faces, the Examiner relied on Clerc's teaching ( in the context of a water tap)
that "[f]lared surfaces 12 and 13, radii or chamfers may be provided to
improve the flow of fluid upstream and downstream of the area of contact
between the two discs." Id. at 5---6 (citing Clerc 5:30-33). Appellants point
out that Clerc's flared surfaces do not extend all the way around an opening
or port. Appeal Br. 9-10. Instead, the flared surfaces appear to extend
around only half of an opening. Id.; Clerc Fig. 1.
However, the Examiner determined that "the claim does not require
the spot face to transverse the entirety of the hole." Final Act. 2. The
Examiner based his construction of "spot face" based on Appellants' use of
it "for flow characteristics." Id. Thus, according to the Examiner, it
encompasses any "contoured lead in surface that impacts the flow
characteristics." Id.
Appellants disagree with the Examiner's construction and argue that,
under a correct construction, the proposed combination fails to satisfy the
spot face limitations. Appeal Br. 8-12. In that regard, Appellants argue
8 The claim language paraphrased by the Examiner states:
wherein the sleeve incorporates a radially-outwardly-directed
contoured spot face lead-in area adjacent the at least one port of
the sleeve, and wherein the at least one valve element includes a
radially-inwardly-directed contoured spot face lead-in area
adjacent the at least one port thereof, wherein the radially-
outwardly directed contoured spot face lead-in area and the
radially-inwardly-directed contoured spot face lead-in area face
away from one another when the at least one port of the spool
and the at least one port of the sleeve are aligned.
Claims App. 1.
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Application 14/803,711
that a "spot face" should be construed as: a finished circular surface around
the top of a hole. Id. at 11. Hence, Appellants would require that the spot
face fully encircle the opening of the hole.
The Specification discloses spot faces that fully encircle the opening
of holes (i.e., "ports"). See Spec. Fig. 6 (ref. 162), Fig. 7, (ref. 164). The
Specification does not disclose a spot face that only partially encircles a port.
Further, Appellants cite extrinsic evidence that supports their construction,
as follows:
One definition of a spot face is: "A finished circular
surface around the top of a hole to seat a bolthead or washer, or
to allow flush mounting of mating parts." McGraw-Hill
Dictionary of Scientific & Technical Terms, 6E, Copyright
© 2003 by The McGraw-Hill Companies, Inc. See also
"spotface" on Wikipedia.org ( discussing the "most common
application of spotfacing (spot facing)" which involves "facing
the area around a bolt hole where the bolt's head will sit, which
is often done by cutting a shallow counterbore, just deep enough
'to clean up' --that is, only enough material is removed to get
down past any irregularity and thus make the surface flat")
available at https://en.wikipedia.org/wiki/Spotface.
Appeal Br. 11.
In fact, the Examiner himself conceded that "[ s ]pot faces are normally
associated in providing a seating surface of a bolt, which would generally
infer a bolt is being seated though a hole and would require that the spot
face would transverse the entirety of the hole." Final Act. 2 (emphasis
added).
The Examiner's alternative construction (i.e., "contoured lead in
surface that impacts the flow characteristics" (Final Act. 2) is unreasonably
broad in view of the Specification as well as the extrinsic evidence of record.
Rather, a "spot face," as recited in claim 1, is understood to refer to a surface
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that fully encircles the respective port. Thus, the "radially-outwardly-
directed contoured spot face" and the "radially-inwardly-directed contoured
spot face" limitations require the recited contouring around the entirety of
the respective port. The prior art of record does not teach these features.
Accordingly, we reverse the Examiner's rejection of claim 1 under 35
U.S.C. § 103 as unpatentable over Sallas and Clerc.
Rejection 3
The Examiner rejected claims 14, 15, and 20-22 over Sallas and
Williams. Final Act. 6. Appellants argue these claims together. See Appeal
Br. 15-22. We select independent claim 14 as representative. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
The Examiner found that Sallas discloses all of the subject matter of
claim 14 except for the limitation reciting "a radial gap of between about
0.0005 inches to about 0.005 inches is maintained between an outer diameter
of the spool and an inner diameter of the sleeve." Final Act. 7; Claims
App. 5. For that feature, the Examiner cited Williams as teaching:
In control valves, it is desirable that valve closure clearances be
very close to prevent leakage, for example clearances on the
order of .0002 inch, between the engaging-portions of the bore
and the spool which controls the flow of fluid pressure are
common.
Id. ( quoting Williams 1: 12-18). The Examiner concluded that it would have
been obvious to one of skill in the art "to control the clearance of the spool
shaft to sleeve in the Sallas device as taught by and for the reasons of
Williams." Id.
We agree with and adopt the Examiner's findings of fact, reasoning,
and conclusion of obviousness.
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Application 14/803,711
Appellants first argue that Williams does not teach the limitation in
question because it "teaches 'clearances on the order of.0002 inch,' (see
Williams at col. 1, line 15), which is outside the range of 'about 0. 0005
inches to about 0.005 inches."' Appeal Br. 16. This argument is not
persuasive for multiple reasons.
Williams is not limited to 0.0002 inches. Williams teaches small
clearances generally. Williams 1:12-14. It then discloses "for example
clearances on the order of .0002 inch." Id. at 1:14--15. Further, "clearances
on the order of .0002 inch" are within the recited range, the low end of
which is not 0.0005 inches but rather "about 0.0005 inches." Appellants
have not proposed a construction, let alone supported it, that would exclude
clearances on the order of .0002 inches. Nor have they established the
criticality of the range. See In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir.
1997) ("Only if the 'results of optimizing a variable' are 'unexpectedly
good' can a patent be obtained for the claimed critical range.") (quoting In
re Antonie, 5 59 F .2d 618, 620 ( CCP A 1977) ). Williams' s explicit teaching
of small clearances generally is sufficient in the absence of evidence that
recited range is critical.
Appellants next argue that a person of ordinary skill in the art would
not have incorporated Williams' s teachings about very close clearances to
avoid leakage because Sallas already avoids leakage by using an o-ring.
Appeal Br. 18. This argument is not persuasive. Rather, it is obvious to
those skilled in the art to substitute one known equivalent for another. See
In re Omeprazole Patent Litig., 483 F.3d 1364, 1374 (Fed. Cir. 2007)
("[T]his court finds no ... error in [the] conclusion that it would have been
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obvious to one skilled in the art to substitute one ARC [ alkaline reactive
compound] for another.").
Finally, Appellants argue that Williams actually teaches away from
what it explicitly teaches one of skill to do. Appeal Br. 19-21. That is,
Appellants argue that Williams, despite teaching "for example clearances on
the order of .0002 inch," ultimately teaches away from such clearances
because it goes on to describe how difficult it is to implement such small
clearances. Id. at 20-21. We are not persuaded. Despite the noted
difficulty, the fact remains that Williams teaches to employ such clearances.
For the foregoing reasons, we affirm the Examiner's rejection of
claim 14 under 35 U.S.C. § 103 as unpatentable over Sallas and Williams.
For the same reasons, we also affirm the Examiner's rejection of claims 15
and 20-22, which were not separately argued. See Appeal Br. 15-22; 37
C.F.R. § 4I.37(c)(l)(iv).
Rejections 4-6
The Examiner rejected claims 16-19 over Sallas, Williams and an
additional reference. Final Act. 10-13. Appellants argue against these
rejections solely on the basis that the additional reference does not cure the
purported deficiency in the rejection of claim 14 over Sallas and Williams.
See Appeal Br. 23 ("[T]he Examiner does not cite to the Hunt reference to
correct the deficiencies of the Examiner's proposed combination of Sallas in
view of Williams."), 24 ("[T]he Examiner does not cite to the Phillips
reference to correct the deficiencies of the Examiner's proposed combination
of Sallas in view of Williams."), 25 ("[T]he Examiner does not cite to the
Romanin reference to correct the deficiencies of the Examiner's proposed
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combination of Sallas in view of Williams.). As there is no such deficiency,
we affirm the rejections of claims 16-19.
DECISION
The Examiner's rejection of claim 16 as indefinite under 35 U.S.C.
§ 112(b )/i-f2 is reversed.
The Examiner's rejection of claim 1 as unpatentable under 35 U.S.C.
§ 103 over Sallas and Clerc is reversed.
The Examiner's rejection of claims 14, 15, and 20-22 as unpatentable
under 35 U.S.C. § 103 over Sallas and Williams is affirmed.
The Examiner's rejection of claims 16 and 17 as unpatentable under
35 U.S.C. § 103 over Sallas, Williams, and Hunt is affirmed.
The Examiner's rejection of claim 18 as unpatentable under 35 U.S.C.
§ 103 over Sallas, Williams, and Phillips is affirmed.
The Examiner's rejection of claim 19 as unpatentable under 35 U.S.C.
§ 103 over Sallas, Williams, Romanin is affirmed.
TIME PERIOD
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-IN-PART
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