Ex Parte Lester et al

Patent Trial and Appeal Board

May 31, 2013

11728469 (P.T.A.B. May. 31, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte JOSEPH CRAIG LESTER, JULIUS AUSTRIA
CORONEL, and CHRISTOPHER LAWRENCE SMITH
____________________

Appeal 2011-002888
Application 11/728,469
Technology Center 3700
____________________

Before: LINDA E. HORNER, BARRY L. GROSSMAN, and
NEIL A. SMITH, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-002888
Application 11/728,469
2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
4. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

The invention relates to a discharge device or valve system. Abstract.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A discharge device comprising
i.) a body having a hollow interior;
ii.) a liquid inlet;
iii.) a liquid outlet having walls and comprising a first end
and a second end, wherein said first end comprises a button,
wherein said liquid outlet has an orifice comprising an orifice
surface area, said liquid outlet containing:
a.) a stem; and
b.) a valve system, said valve system comprising ribs and
a valve guide, wherein said stem passes through said valve
guide and said valve guide is secured to said walls of said liquid
outlet by said ribs; and
iv.) a liquid flow passageway around said stem and through
said valve system; wherein said valve system has a cross-
sectional surface area perpendicular to said liquid flow
passageway; and further wherein said valve system cross-
sectional surface area and said orifice surface area have a ratio
of less than about 35%.1

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:

1 Appellants acknowledge that claim 1 is “representative of claims 2-4.”
App. Br. 4. We therefore select claim 1 as representative, and the remaining
claims stand or fall with their representative claim. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
Appeal 2011-002888
Application 11/728,469
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Blackbourn US 6,470,910 B2 Oct. 29, 2002

REJECTIONS
The Examiner made the following rejection:
Claims 1-4 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Blackbourn. Ans. 3.

OPINION
Appellants argue first that Blackbourn fails to show a liquid
passageway provided through any valve system comprising ribs and a valve
guide. App. Br. 8. Claim 1 recites “a valve system, said valve system
comprising ribs and a valve guide, wherein said stem passes through said
valve guide and said valve guide is secured to said walls of said liquid outlet
by said ribs.” In particular, Appellants argue that the downwardly directed
fins and valve guide of Blackbourn direct the liquid differently than the
claimed valve system, and contest the Examiner’s interpretation that the
language “a liquid flow passageway around said stem and through said valve
system” need not require that the liquid in the passageway “pass around each
and every element of the valve system in order to be considered as passing
through the valve system much in the same way a motorist passes through a
city without having to travel on every street.” Reply Br. 4-7, citing Ans. 5. It
is Appellants’ position that the “static and moveable fin arrangement of fins
88 and 82 [of Blackbourn] provides separate chambers into which air can
enter and through which liquid can exit” (Reply Br. 5), so that the liquid
passageway is not provided through any valve system comprising ribs and a
valve guide, but that the liquid passageway of Blackbourn bypasses the ribs
Appeal 2011-002888
Application 11/728,469
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88 and the flange element 84. Reply Br. 6. Appellants note that the claim
requires:
the liquid flow passageway is around said stem (i.e., on all
sides) and through said valve system. See, for example, Pods,
Inc. v. Porta Stor, Inc., 484 F.3d 1359 (Fed. Cir. 2007)
(defining the term “around” as “on all sides of”). Thus, claim 1
requires that the liquid passageway be on all sides of the stem
and through the valve system which includes the ribs and the
valve guide. It is respectfully argued that the liquid passageway
disclosed by Blackbourn et al. is not around the stem 72 and
through the valve system as claimed by the Applicants.
Reply Br. 6-7 (emphasis added). 2
The Specification does not define the term “around,” let alone use it
so narrowly, so as to distinguish the prior art. The Specification actually
specifically defines several terms used therein, but not the term “around.”
Spec. 1-2. The claim language is used in the body of Specification, e.g.,
“liquid flows along a liquid flow passageway around the stem 36 and
through the valve system 35.” Spec. 3, l. 30 (emphasis added). But the word
is also used in a much broader sense in the Specification: “using a discharge
device 20 of this type avoids the problems caused by a number of soap
containers, bleach containers, conditioner containers, and other containers
around the laundry area.” Spec. 4, ll. 2-4 (emphasis added). Appellants also
say in the Specification about the same stem 36, that a sealing bead can
“surround the stem.” Spec. 6, l. 27, using more specific narrower language.
Appellants cannot overcome their own use of the term in their Specification
and failure to define it, as they could have done with the other terms they
defined in their Specification, by citation to a case from our appellate court

2 It appears that Appellants repeat in their Reply Brief much of what was
said in their opening Appeal Brief. Cf. 37 C.F.R. § 41.41(d) and (g).
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Application 11/728,469
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which, for purposes of the facts of that case, defined the term to their liking.
If Appellants had wanted the narrower requirement of “on all sides,” for
which they now argue, Rep. Br. parenthetical insert at 6, they could have so
stated, or used their other language (“surround”).
Moreover, to the extent that the Specification does not assign or
suggest a particular definition to a claim term, as is the case here, it is
appropriate to consult a general dictionary definition of the word or phrase
for guidance in determining the ordinary and customary meaning of the
claim term as viewed by a person of ordinary skill in the art. Comaper Corp.
v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010). An ordinary meaning
of “around” is: [i]n the immediate vicinity of; near.” THE AMERICAN
HERITAGE® DICTIONARY OF THE ENGLISH LANGUAGE (2007), retrieved from
http://www.credoreference.com/entry/hmdictenglang/around (last accessed
May 19, 2013). This general definition is fully consistent with the
Specification’s use of the term. The Examiner has proffered a broadest
reasonable interpretation of “around said stem,” which comports with
ordinary meaning of the terms, and the Appellants do not provide us with
any definition of the term “around” in the Specification or evidence to show
that the Examiner’s interpretation is unreasonable in light of the
Specification.
We find that the liquid flow passageway as shown in Figure 7B of
Blackbourn is thus sufficiently “around” the central stem thereof, within the
meaning of the term as it is generally used, within the usage of the term by
Appellants in their Specification, and within an ordinary meaning thereof.
Thus, in light of the Specification and a general dictionary definition, the
broadest reasonable interpretation of the phrase “around” supports the liquid
passageway of Blackbourn shown in Figure 7B thereof.
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Secondly, Appellants note that claim 1 further recites “said valve
system has a cross-sectional surface area perpendicular to said liquid flow
passageway; and further wherein said valve system cross-sectional surface
area and said orifice surface area have a ratio of less than about 35%”, and
argue that Blackbourn “actually teach[es] away from lowering this ratio of
the valve system cross-sectional surface area and the orifice surface area as
the liquid passageway of Blackbourn et al. actually bypasses (i.e., does not
flow through) the ribs 88 and the flange element 84.” App. Br. 8-9; Reply
Br. 7.
The Examiner acknowledges that Blackbourn fails to disclose that the
valve system surface area and the orifice surface area have a ratio of less
than about 35%-10% but found that Blackbourn does show that the valve
system surface area is less than the orifice surface area and that determining
this optimal or workable range would have been obvious since it involved
only routine skill. Ans. 4.
We agree with the Examiner. “[W]here the general conditions of a
claim are disclosed in the prior art, it is not inventive to discover the
optimum or workable ranges by routine experimentation.” In re Aller, 220
F.2d 454, 456 (CCPA 1955). A particular parameter must first be recognized
as a result-effective variable, i.e., a variable which achieves a recognized
result, before the determination of the optimum or workable ranges of said
variable might be characterized as routine experimentation. In re Antonie,
559 F.2d 618 (CCPA 1977).
The law is replete with cases in which the difference between
the claimed invention and the prior art is some range or other
variable within the claims. . . . In such a situation, the applicant
must show that the particular range is critical, generally by
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showing that the claimed range achieves unexpected results
relative to the prior art range.
In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir.1990).
Here Appellants’ ratio has not been shown or argued to be unexpected
relative to prior art ratios, or argued to not be recognized in the art as a
result-effective variable. The dependent claims, not here argued separately,
state ratios of varying numbers. Claims 2-4. We note also that not only do
Appellants not argue any criticality for their ratio[s], but their Specification
notes particularly: “[t]he dimensions and values disclosed herein are not to
be understood as being strictly limited to the exact numerical values recited.
Instead, unless otherwise specified, each such dimension is intended to mean
both the recited value and a functionally equivalent range surrounding that
value.” Spec. 3, ll. 10-12.

DECISION
For the above reasons, the Examiner’s rejection of claims 1-4 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)(1)(iv) (2009).

AFFIRMED

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