Ex Parte Middleton

Patent Trial and Appeal Board

Oct 4, 2017

13659625 (P.T.A.B. Oct. 4, 2017)

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.
13/659,625 10/24/2012 Peter Mark Middleton P183P0198US 9674
49458 7590 10/06/2017
DON W. BULSON (PARK)
RENNER, OTTO, BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE / 19TH FLOOR
CLEVELAND, OH 44115
EXAMINER
JELLETT, MATTHEW WILLIAM
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
10/06/2017 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):
ipdocket @ rennerotto. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER MARK MIDDLETON
Appeal 2016-001993
Application 13/659,625
Technology Center 3700
Before LINDA E. HORNER, ERIC C. JESCHKE, and
GORDON D. KINDER, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Peter Mark Middleton (“Appellant”)1 seeks review under 35 U.S.C.
§ 134(a) of the Examiner’s decision, as set forth in the Final Office Action
dated February 23, 2015 (“Final Act.”), rejecting claims 1, 6, 11, and 16—32
under 35 U.S.C. § 103(a) as unpatentable over Herrmann (US 3,045,963,
issued July 24, 1962), Miller (US 5,722,638, issued March 3, 1998), and
Moseley (US 1,778,865, issued Oct. 21, 1930). We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
1 Appellant identifies Parker-Hannifm Corporation as the real party in
interest. See Notification to Patent Trial and Appeal Board Regarding the
Real Party in Interest, filed December 7, 2015.
Appeal 2016-001993
Application 13/659,625
BACKGROUND
The disclosed subject matter “relates to valves and, more particularly,
to cone type plug valves.” Spec. 2,11. 3^4. Claims 1, 6, and 11 are
independent. Claim 1 is reproduced below with bracketed letters added to
identify each clause:
1. A cone plug valve, comprising:
[a\ a valve body having a fluid inlet, a
fluid outlet, a through passageway connecting the
fluid inlet and the fluid outlet, and a conical valve
seating surface;
[b] a valve stem axially movable along a
valve stem axis relative to the valve body; and
[c] a cone supported on the valve stem
and having a generally cone shaped exterior
surface, the cone having an annular sealing surface
extending outwardly from the generally cone
shaped exterior surface for sealing engagement
with the conical valve seating surface to close off
flow through the through passageway between the
fluid inlet and fluid outlet, the annular sealing
surface engaging the conical valve seating surface
at a peripheral portion of the conical valve seating
surface that surrounds the through passageway at
an intersection of the through passageway and the
conical valve seating surface;
[d] wherein the cone is axially movable
in response to axial movement of the valve stem,
the cone being axially movable between a closed
position where the annular sealing surface of the
cone is engaged with the conical valve seating
surface to block flow between the fluid inlet and
the fluid outlet and an open position where the
annular sealing surface of the cone is spaced from
the conical valve seating surface to allow flow
between the fluid inlet and the fluid outlet, and
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Application 13/659,625
[ie] wherein the cone is prevented from
rotationally moving relative to the valve body
during axial movement of the cone between the
closed and open positions.
DISCUSSION
Appellant argues the patentability of the three independent claims as a
group and does not provide separate arguments for any dependent claims.
Appeal Br. 10-18. We select independent claim 1 as representative, with the
remaining claims standing or falling with claim 1. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2014).
For claim 1, the Examiner relied on Herrmann for certain limitations
but stated that “Herrmann does not clearly disclose . . . the valve stem
axially movable along the valve stem axis, the cone movable in response to
the axial movement of the valve stem.” Final Act. 6 (emphasis omitted).2
The Examiner found, however, that Miller teaches a “valve stem (51 fig 1)
axially movable along the valve stem axis (25), the cone movable in
response to the axial movement of the valve stem (31 is connected via 3 la to
the stem 51 via a dove tail connection^], and the stem reciprocates outside
of the body 54.” Id. The Examiner also stated that “Herrmann does not
clearly disclose: the valve seating surface being conical, the gate being cone
2 We will refer to the emphasized aspects of the following limitations
as the “axial movement limitations”: (1) “a valve stem axially movable along
a valve stem axis” in clause b; (2) “wherein the cone is axially movable in
response to axial movement of the valve stem” and “the cone being axially
movable between a closed position . . . and an open position” in clause d;
and (3) the requirement for “axial movement of the cone” in clause e. We
understand the Examiner to rely on Miller for these aspects. See Final Act.
6-7.
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Application 13/659,625
shaped, the sealing surface being annular (i.e[.,] about a circumference of a
cone).” Id. (emphasis omitted).3 The Examiner found, however, that
Moseley teaches a “valve seating surface being conical (the seat defined by
1 Fig 1 is conical in shape to receive the cone of 5), the gate being cone
shaped (5 is a gate valve which is cone shaped), the sealing surface being
annular (i.e[.,] about a circumference of the cone).” Id. at 6—7. The
Examiner also provided reasoning to modify Herrmann with the relied-upon
aspects of Miller and of Moseley. Id. at 7. Below, we address each of
Appellant’s groups of arguments in turn.
First, Appellant argues that neither Miller nor Moseley “identify any
problem with the use of their respective valve members [element] 20 [in]
(Miller) and [element] 5 [in] (Moseley).” Appeal Br. 15. Appellant also
states that “[although Herrmann identifies no problem with the use of its
valve stem 18 or with its gate valve member 20 having planar sealing
surfaces, the Examiner looks to Miller” for certain aspects “and to Moseley”
for other aspects. Appeal Br. 14; see also id. at 15 (stating that “Herrmann
provides no issue with the shape of its gate valve member 20”). Appellant
also argues that the prior art “offer[s] absolutely no guidance directing the
skilled person to arrive at the unique cone valve member and corresponding
valve body as recited in” claim 1. Id. at 17.
3 We will refer to the emphasized aspects of the following limitations
as the “conical limitations”: (1) a “conical valve seating surface” in clauses
a, c, and d; (2) all recitations of “cone” to refer to a cone-shape gate; (3) the
“cone” having a “generally cone shaped exterior surface” in clause c; (4) the
“cone” having “an annular sealing surface” in clauses c and d. We
understand the Examiner to rely on Moseley for these aspects. See Final
Act. 6—7.
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Application 13/659,625
Contrary to Appellant’s argument, the Supreme Court has made clear
that an express teaching, suggestion, or motivation in the prior art is not a
requirement for an obviousness determination. See KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418—19 (2007) (holding that when the teaching-
suggestion-motivation test is applied as a rigid and mandatory formula, it is
incompatible with Supreme Court precedent); see also Ans. 15 (“Appellant’s
remarks are merely a statement that there is no teaching suggestion or
motivation to combine the references.”). Thus, the prior art need not
identify a “problem” or “issue” with the aspects modified in the Rejection
and also need not provide express guidance to perform the Examiner’s
proposed modification.
Second, Appellant argues that “Moseley includes no teaching or
suggestion of a raised sealing surface of a valve member for mating with a
correspondingly shaped surface of the valve body to provide a seal.” Appeal
Br. 16. The Examiner does not rely on Moseley, however, but rather
Herrmann, regarding the “sealing surface extending outwardly from the . . .
exterior surface” in clause c and relies on Moseley for the conical
limitations, including, to modify (1) the shape of Herrmann’s gate (element
20) to a cone shape and (2) the shape of the identified “sealing surface”
(element 1004 in Herrmann (see Final Act. 5)) to be “annular.” See Final
Act. 5—7; Ans. 17 (stating that “the modification of the shape of the valve
member of Herrmann by that of Moseley necessarily modifies the extended
exterior sealing surface of Hermann from a planar configuration to an
annular configuration”); see also In re Merck & Co., 800 F.2d 1091, 1097
(Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking
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Application 13/659,625
references individually where the rejection is based upon the teachings of a
combination of references.”).
Appellant also argues that “Miller provides no conical member and
instead includes a valve member 31 also having a planar mating surface, and
is . . . unrelated to cone plug valves.” Appeal Br. 15. As noted above, in the
Office Action, the Examiner stated that Miller teaches a “valve stem (51 fig
1) axially movable along the valve stem axis (25), the cone movable in
response to the axial movement of the valve stem . . . .” Final Act. 6
(emphasis added). We do not, however, view this as an indication that the
Examiner relied on Miller as teaching conical valves (or any other of the
conical limitations). See supra nn.2, 3. Instead, we view this statement as
addressing how the relied-upon aspects of Miller—i.e., teachings regarding
the axial movement limitations—would operate in the context of the overall
modified device, in which the structure of Herrmann has been modified with
Moseley to address the conical limitations. See Ans. 7 (providing reasoning
to modify Herrmann with Miller and Moseley).
Third, Appellant argues that “Moseley and Herrmann do not address
the issues addressed by [Appellant] in arriving at the cone having an annular
sealing surface extending outwardly from the generally cone shaped exterior
surface for sealing engagement with the conical valve seating surface.”
Appeal Br. 16. According to Appellant, “the construction of Herrmann’s
gate valve suffers from many of the problems the embodiments of the
present invention can overcome.” Id.', see also id. at 17 (arguing that “insert
1002” in Herrmann (see Final Act. 5) “is not only difficult to manufacture
. . . but even more difficult to fix”). Appellant also argues that “the
references do not identify the collective considerations identified by”
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Application 13/659,625
Appellant and that “one of ordinary skill in the art would . . . not understand
Herrmann as even being concerned with the aforementioned benefits of the
recited cone plug valve.” Id. at 17.
We are not apprised of error based on this argument because, “[i]n
determining whether the subject matter of a patent claim is obvious, neither
the particular motivation nor the avowed purpose of the patentee controls.”
KSR, 550 U.S. at 419; see also Alcon Res., Ltd. v. Apotex, Inc., 687 F.3d
1362, 1368 (Fed. Cir. 2012) (“We have repeatedly held that the motivation
to modify a prior art reference to arrive at the claimed invention need not be
the same motivation that the patentee had.”). “Under the correct analysis,
any need or problem known in the field of endeavor at the time of invention
and addressed by the patent can provide a reason for combining the elements
in the manner claimed.” KSR, 550 U.S. at 420. And, an express teaching,
suggestion, or motivation in the prior art is not required to support an
obviousness determination. See id. at 418—19. Moreover, as noted by the
Examiner, this argument is not commensurate in scope with the claim
language, because claim 1 does not recite the alleged “issues,” “problems,”
“considerations,” or “benefits” argued. See In re Self, 671 F.2d 1344, 1348
(CCPA 1982) (rejecting arguments “not based on limitations appearing in
the claims”); Ans. 18 (second and third paragraphs).
We turn now to Appellant’s argument, in the Reply Brief, that “there
is simply no motivation to combine the references” and that “[t]he
Examiner’s ‘motivations’ are provided merely to provide reason for piecing
together references where no combination is necessitated.” Reply Br. 2.
Appellant has not addressed the reasoning provided by the Examiner. See
Final Act. 7; Ans. 16; see also Ans. 16 (“Appellant fails to explicitly address
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Application 13/659,625
both of the motivations put forth by the office for combining Her[r]man[n]
with Moseley as well as Her[r]mann with Miller”). We determine that the
Examiner’s reasoning supports a prima facie case of obviousness of the
subject matter of claim 1. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992). By not addressing the reasoning provided, Appellant has not shown
error in the relevant findings or the conclusion as to obviousness.
Fourth, Appellant argues that “Moseley is nonanalogous art unrelated
to the primary reference Herrmann” because
Herrmann is directed to a gate valve for piping and is concerned
only with reducing the sound level caused by vibration of the
associated gate valve member (Herrmann, col. 1), while
Moseley is directed to a cone plug valve and is not at all
concerned with reducing piping system sound caused by
rattling.
Appeal Br. 17.
We are not apprised of error based on this argument. “Two separate
tests define the scope of analogous prior art: (1) whether the art is from the
same field of endeavor, regardless of the problem addressed and, (2) if the
reference is not within the field of the inventor’s endeavor, whether the
reference still is reasonably pertinent to the particular problem with which
the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
As an initial matter, we note that the tests do not assess the relationship
between the relied-upon prior art, but rather, the relationship between each
prior art reference and the invention. See id. A prior art reference that
satisfies either test is considered analogous art. See In re Kahn, 441 F.3d
977, 987—88 (Fed. Cir. 2006). Because Moseley satisfies the second test, we
do not address the first test. “If a reference disclosure has the same purpose
as the claimed invention, the reference relates to the same problem, and that
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Application 13/659,625
fact supports use of that reference in an obviousness rejection.” In re Clay,
966 F.2d 656, 659 (Fed. Cir. 1992). Here, consistent with the Examiner’s
finding on this issue, we consider the relied-upon aspects of Moseley to have
the same purpose as the claimed invention—i.e., “providing manual fluid
flow throttling control over the fluid line.” Ans. 18.
Fifth, Appellant argues that the identified “sealing surface”—element
1004 (see Final Act. 5)—is not a “raised sealing surface” because
“Herrmann shows a valve member 20 having merely a typical contour
conducive to reducing both material usage and part weight during molding
or other manufacturing of the valve member 20.” Appeal Br. 15.
The Examiner responds that “Her[r]man[n] teaches the raised sealing
surface extending from the exterior of the valve member.” Ans. 17.
According to the Examiner, “the Her[r]man[n] raised sealing surface is
outwardly extending from the inner plane or surface 20 as previously
indicated in the final action.” Id. The Examiner states that “Appellant[’]s
argument is merely one interpretation of a broadly drafted claimed phrase
which can also be interpreted as applied by the Office” and that, “[p]ut
simply, there is no requirement by the claims that the outwardly raised or
extending surface be the same arrangement as provided by in the written
description.” Id.
We are not apprised of error based on Appellant’s fifth argument. As
an initial matter, we note that clause c does not recite a “raised” sealing
surface, but rather, recites “an annular sealing surface extending outwardly
from the generally cone shaped exterior surface.” Appeal Br. 19 (Claims
App.). As discussed above, the Examiner does not rely on Miller for any
aspect of clause c and relies on Moseley to address only the “annular” and
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Application 13/659,625
“cone shaped” aspects of this language. See supra nn.2, 3; see also Ans. 17
(stating that “the modification of the shape of the valve member of
Herrmann by that of Moseley necessarily modifies the extended exterior
sealing surface of Hermann from a planar configuration to an annular
configuration”), 16 (discussing “the modification of changing the truncated
planar gate . . . of Her[r]man[n] to a truncated cone ... as taught in
Moseley”). The Examiner relies on element 1004 in Herrmann (see Final
Act. 5) to address the remainder of the claim language at issue—i.e., a
“sealing surface extending outwardly from the . . . exterior surface.” Thus,
Appellant’s argument that “neither Miller nor Moseley provide any teaching
or suggestion of an annular sealing surface extending from an exterior
surface of their respective valve members” (Appeal Br. 15) does not apprise
us of error because the Examiner does not rely on either of those references
as disclosing the entirety of the claim language argued. Moreover, for the
reasons below, we see no error in the Examiner’s finding that Herrmann
satisfies the sealing surface limitation.4
We first discuss the structure identified by the Examiner as satisfying
the sealing surface limitation. In the Office Action, the Examiner stated the
following regarding the beginning of clause c (which includes the sealing
surface limitation):
Herrmann discloses ... a [gate] (20) supported on the valve
stem and having a generally [gate] shaped exterior surface (20
has forward and aft truncated surfaces 1006 Fig 2 similar to
those of a cone in the instant application Figure 8), the [gate]
4 We will refer to the requirement for a “sealing surface extending
outwardly from the . . . exterior surface” in clause c as the “sealing surface
limitation.”
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Application 13/659,625
having a sealing surface (1004) extending outwardly from the
generally [gate] shaped exterior surface (1004 extends as a
body collar of sorts to receive the seat and maintain a recess at
the wall 20 Fig 2)... .
Final Act. 4—6.
The Examiner also provided annotated versions of Figures 1 and 2 of
Herrmann, identifying elements 1004 and 1006 discussed in the Examiner’s
statement above. For clarity, below, we provide alternate annotated versions
of Figures 1 and 2 from Herrmann, identifying all aspects we understand the
Examiner to rely on as elements 1004 and 1006.
Prior to annotation, Figure 1 depicted “a sectional, elevation view of a gate
valve constructed in accordance with [the] invention” and Figure 2 depicted
“a sectional view taken on line 2—2 of FIG. 1.” Herrmann, col. 1,11. 56—58.
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Application 13/659,625
Based on the statements in the Office Action (at 5—6), the Answer (at 17),
and based on the Examiner’s annotated figures (Final Act. 5), we understand
the Examiner to rely on (1) elements 1004 as the “sealing surface[s]” and (2)
elements 1006 as representing the “exterior surface” of the gate, from which
the “sealing surface” outwardly extends. See Final Act. 5—6.
We turn now to whether the identified structures satisfy the sealing
surface limitation. To the extent Appellant contends that this limitation
requires the “sealing surface” to be a separate element from the gate itself,
we disagree. See, e.g., Reply Br. 5 (arguing that the “Examiner-identified
surface 1004 of Her[r]mann is a planar exterior surface lacking any raised
sealing surface portion”). Such a construction would conflict with the
embodiment in, for example, Figure 4 of the Specification, which shows
“sealing surface[s]” 14, 16 with the same hatching as the gate, and thus,
shows surfaces 14, 16 as a portion of the gate (i.e., cone 12). See 37 C.F.R.
§ 1.84(h)(3) (2014) (“Hatching must be used to indicate section portions of
an object.... The various parts of a cross section of the same item should
be hatched in the same manner and should accurately and graphically
indicate the nature of the material(s) that is illustrated in cross section. The
hatching of juxtaposed different elements must be angled in a different
way.”); see also Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583
(Fed. Cir. 1996) (stating that a construction that excludes a preferred
embodiment “is rarely, if ever, correct and would require highly persuasive
evidentiary support”).
As to the assertion that “one of ordinary skill in the art would not
understand the Examiner-identified surface 1004 of Hermann as a raised
sealing surface” (Reply Br. 6), Appellant does not provide evidence—but
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Application 13/659,625
rather only attorney argument—to support this assertion. See In re Pearson,
494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot
take the place of evidence.”). Even assuming that Appellant is correct that
“one of ordinary skill in the art would understand the Examiner-identified
surfaces 1004 and 1006 to be merely a typical contour of a gate member
having non-raised planar surfaces conducive to reducing both material usage
and part weight during molding or other manufacturing of the valve member
20” (Reply Br. 6), Appellant has not shown why that demonstrates error in
the finding that Herrmann satisfies the sealing surface limitation.
For these reasons, we sustain the rejection of independent claim 1.
Claims 6, 11, and 16—32 fall with claim 1.
DECISION
We affirm the decision to reject claims 1,6, 11, and 16—32.
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
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