Ex Parte McNerney et al

Board of Patent Appeals and Interferences

Jan 12, 2009

10386267 (B.P.A.I. Jan. 12, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte GERALD J. McNERNEY and GARRY ROBIN MARTY
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Appeal 2009-0285
Application 10/386,267
Technology Center 3700
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Decided: January 12, 2009
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Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL

Gerald J. McNerney et al. (Appellants) seek our review under 35
U.S.C. § 134 of the final rejection of claims 1-7, 11, 15, and 23-25. We
have jurisdiction under 35 U.S.C. § 6(b) (2002). We reverse.
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The Appellants’ claimed invention relates to a multi-port diverter
valve that directs fluid from an inlet port to a specific combination of outlet
ports. Spec. 1:¶¶1-3. Specifically, the Appellants’ diverter valve includes a
housing having an inlet and at least two non-adjacent outlets. Within the
housing is a bore that includes an inlet port that corresponds to the inlet and
at least two outlet ports that correspond to the at least two non-adjacent
outlets. Within the bore is a cartridge defining a fluid chamber and includes
a boss in fluid communication with the inlet port. The cartridge rotates
within the bore and includes at least two outlet seats. The outlet seats are in
fluid communication with the fluid chamber and in selective communication
with at least two non-adjacent outlet ports depending upon the rotational
position of the cartridge. Spec. 2:¶¶5-7.
The Appellants seek our review of the rejection of claims 1, 2, 3, 6,
11, and 23-25 under 35 U.S.C. § 103(a) as unpatentable over U.S. Patent No.
3,076,478, issued February 5, 1963 to Winders and U.S. Patent No.
5,272,992, issued December 28, 1993 to Barbour and of the rejection of
claims 4, 5, 7, and 15 under 35 U.S.C. § 103(a) as unpatentable over U.S.
Patent No. 3,076,478, issued February 5, 1963 to Winders, U.S. Patent No.
5,272,992, issued December 28, 1993 to Barbour, and U.S. Patent. No.
6,196,266, issued March 6, 2001 to Breda.
Winders discloses a tank selector for directing oil flow from an inlet
port to a specified outlet port. The tank selector includes a distribution rotor.
The distribution rotor includes a disk and a projecting element. The
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projecting element will engage a pivoting latch that is connected to a
protractile member, which is above each outlet port. A float level indicator
within an oil tank actuates the pivoting latch. When a tank is full, the float
will cause the protractile member’s pivoting latch to be in a retracted
position. When the latch retracts, the rotor rotates until the projecting
element engages another pivoting latch that is a protracted position. When
the projecting element engages a protractile member’s pivoting latch, the
distribution rotor’s distributing element is fluidly seated over the specified
outlet port so that oil will flow from the inlet to the outlet and into the oil
tank.
Barbour discloses an apparatus for injecting slurry, i.e., fibrous waste
products that can be injected into the ground to enhance the growth of crops.
The distribution of the slurry to the ground injectors is by a distribution
device. The distribution device includes a valve member that is rotated by
the apparatus. The valve member includes a pair of diametrically opposed
outlets to deliver the slurry to a number of outlet ports connected to
conduits, which in turn are connected to the ground injectors. The valve
member’s outlets are fitted with insert sleeves having diamond-shaped
discharge orifices for the slurry to pass through before reaching the outlet
ports. The diamond-shape of the valve’s orifices along with the rotation of
the valve member permits slurry to be chopped up as the slurry passes
through the distribution device to the outlet ports.
The Examiner’s rejection applies the teachings within a fibrous waste
slurry distribution device to an oil tank selector apparatus in order to reach
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the claimed invention. The Appellants have pointed out in their Briefs, the
Examiner’s proposed modifications go against the teachings of Winders and
do not make sense in view of the operation of Winders; Winders and
Barbour address completely different problems; a worker skilled in the art
would not look to Winders and Barbour for solutions concerning multi-
hydraulic flow devices; Winders and Barbour incompatible; the desired
operation of Winders would be destroyed from the teachings of Barbour; no
benefit occurs by combining Winders and Barbour, as such, there is no
reason to combine; both Winders and Barbour are non-analogous art; and the
Examiner has used impermissible hindsight.
In our view, the Examiner proposes to combine a device that selects a
single oil tank distributer with a device that distributes among multiple
agricultural outlets, which on its face appears to be a combination of
contradictory applications. The Examiner’s only articulated reasoning is to
provide a larger capacity for outlet so as to speed flow (Answer 9), which
neither reference suggests, and for which the Examiner has provided no
evidence in support either alone or within the context of the invention.
Thus, the Examiner appears to be relying on Barbour only to show that the
claimed arrangement was known generally and separately providing the
rationale to combine, but without any evidence that such a rationale would
make sense in the context of Winders.
Because we disagree with the Examiner that one of ordinary skill in
the art would apply the teachings of prior art having contradictory
applications to reach the claimed invention, we determine that the Examiner
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has failed to set forth a prima facie case of obviousness, and we will not
sustain the rejection of claims 1, 2, 3, 6, 11, and 23-25 as unpatentable over
Winders and Barbour. We will also not sustain the rejection of claims 4, 5,
7, and 15 as unpatentable over Winders, Barbour, and Breda because it is
grounded in part on the Examiner’s improper application of prior art having
contradictory applications to reach the claimed invention.

CONCLUSIONS
We conclude that the Appellants have shown the Examiner erred in
rejecting claims 1, 2, 3, 6, 11, and 23-25 under 35 U.S.C. § 103(a) as
unpatentable over Winders and Barbour and in rejecting claims 4, 5, 7, and
15 under 35 U.S.C. § 103(a) as unpatentable over Winders, Barbour, and
Breda.

DECISION
The decision of the Examiner to reject claims 1, 2, 3, 6, 11, 23-25 as
unpatentable over Winders and Barbour is reversed.
The decision of the Examiner to reject claims 4, 5, 7, and 15 as
unpatentable over Winders, Barbour, and Breda is reversed.

Appeal No. 2009-0285
Appl. No. 10/386,267

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REVERSED

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