Ex Parte Moeller et al

Patent Trial and Appeal Board

Feb 13, 2019

14117397 (P.T.A.B. Feb. 13, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/117,397 11/13/2013
14299 7590 02/13/2019
WATERS TECHNOLOGIES CORPORATION
c/o Schmeiser, Olsen & Watts LLP
33 Boston Post Road West
Suite 410
Marborough, MA 01752
FIRST NAMED INVENTOR
Mark W. Moeller
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.
W-753-US2 (WAT-053US) 3531
EXAMINER
SOSKI, FREDERICK D
ART UNIT PAPER NUMBER
3753
MAIL DATE DELIVERY MODE
02/13/2019 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 MARK W. MOELLER and ROBERT A. JENCKS
Appeal2018-004315
Application 14/117 ,397
Technology Center 3700
Before GEORGE R. HOSKINS, LISA M. GUIJT, and
BRENT M. DOUGAL, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1, 5-9, and 12-16.2 We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as Waters Technologies
Corporation. Appeal Br. 4.
2 Appeal is taken from the Final Office Action dated June 1, 2017.
Appeal2018-004315
Application 14/117 ,397
STATEMENT OF THE CASE
Claims 1 and 9 are the independent claims on appeal. Claim 1,
reproduced below, is exemplary of the subject matter on appeal.
1. A rotary shear valve assembly, comprising:
a rotor assembly having a rotor and a drive shaft
with a head portion, the rotor having a substantially planar
surface with one or more grooves, a first hole having a
circular cross-section and a second hole having an
elliptical cross-section which is not circular, the head
portion having a first pin and a second pin, the first and
second pins being disposed substantially diametrically
opposite of each other on a line through a center of the
head portion, the first pin having a diameter that is less
than a diameter of the second pin, the first pin being mated
with the first hole in the rotor and the second pin being
mated with the second hole in the rotor, wherein the first
hole in the rotor is sized to receive closely the first pin.
THE REJECTIONS
I. Claims 1, 5, 6, 9, 12 and 13 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Zelechonok (US 5,920,006; issued July 6,
1999), Hara (US 2002/0002099 Al; published Jan. 3, 2002), and Potolsky
(US 4,619,640; issued Oct. 28, 1986).
II. Claims 1, 6-9, and 12-16 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Tower (US 2011/0006237 Al; published Jan.
13, 2011), Ogle (US 4,444,066; issued Apr. 24, 1984), and Hara.
III. Claims 1, 6-9, and 12-16 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Tower, Ogle, Hara, and Potolsky.
IV. Claims 5 and 13 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Tower, Ogle, Hara, and DaCunha (US 6,840,701 B2;
issued Jan. 11, 2005).
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Application 14/117 ,397
ANALYSIS
Rejection I
Regarding independent claim 1, the Examiner finds that Zelechonok
discloses, inter alia, a rotor assembly including a rotor (i.e., valve disc 262)
and a drive shaft having a head portion (i.e., housing 225, cylinder wall
274), the rotor having a substantially planar surface with rotor grooves (i.e.,
channels 78-1, 78-2), first and second holes of circular cross-section (i.e., as
shown by Fig. 11 in valve disc 262), and the head portion having two
substantially diametrically oppositely disposed pins (i.e., peripheral pins
268), wherein the first pin is mated with the first hole and the second pin is
mated with the second hole, and wherein the first hole is sized to receive
closely the first pin, as claimed. Final Act. 8 ( citing Zelechonok Figs. 2,
7A----C, 11); see also Zelechonok 7:54--55, 8:6-7.
The Examiner determines that Zelechonok does not disclose that the
second hole has an elliptical cross section which is not circular, as required
by claim 1, and relies on Hara for teaching a first hole (i.e., bolt-hole 4)
having a circular cross section and a second hole (i.e., bolt-hole 3) having an
elliptical cross section. Final Act. 8 ( citing Hara ,r,r 20, 21 ). The Examiner
also determines that neither Zelechonok nor Hara teaches two pins of
different diameters, and the Examiner relies on Potolsky for teaching a first
pin (i.e., projection 34), having a diameter less than the diameter of a second
pin (i.e., projection 35), as claimed. Id. (citing Potolsky, Fig. 4); see also,
Potolsky 5:9-11. The Examiner reasons that it would have been obvious to
utilize the hole arrangement, as taught by Hara, "to make sure that the pins
and holes for Zelechonok can be engaged in the event there is a tolerance
issue during manufacturing for the purpose ... of providing easy installation
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Application 14/117 ,397
at a proper position," and to utilize different diameter pins, as taught by
Potolsky, "for the purpose of ensuring proper assembly and orientation of
parts." Final Act. 8-9 (citing Hara ,r 8).
Appellants argue that claim 1 requires that "the one or more rotor
grooves and the first and second holes are features of the substantially planar
surface." Reply Br. 2. In view of this claim interpretation, Appellants argue
that "Hara does not teach or suggest a 'rotor having a substantially planar
surface with ... a first hole having a circular cross-section and a second hole
having an elliptical cross-section which is not circular."' Appeal Br. 7-8.
Appellants submit that Hara's bolt-hole 3 is in mounting stay 6, whereas
bolt-hole 4 is in mounting stay 7, such that Hara's bolt-holes 3, 4 are not
both in a planar surface. Id. at 8.
The Examiner correctly responds that claim 1, as set forth supra,
requires the substantially planar surface of the rotor to have one or more
rotor grooves, but does not require such planar surface to have first and
second holes. Notwithstanding, as set forth supra, the Examiner relies on
Zelechonok, not Hara, for disclosing a rotor having a substantially planar
surface with first and second holes. See Ans. 11 (finding, with reference to
Figure 11, that "Zelechonok depicts a substantial[ly] planar surface
(generally at 262) having holes (unlabeled, as seen as those holes occupied
by pins 268) for the pins (268)"). As the Examiner proposes modifying
Zelechonok's holes to use Hara's hole arrangement (i.e., a circular hole and
an elliptical hole), for easier positioning, as set forth supra, Appellants'
argument neither addresses the rejection as articulated by the Examiner nor
apprises us of error in the Examiner's findings or reasoning with respect to
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Application 14/117 ,397
the Examiner's proposed modification of Zelechonok's holes to be
differentially formed as disclosed by Hara.
Appellants also argue that the Examiner "improperly interprets" the
projections of Potolsky as the claimed pins, in that "there is no teaching,
suggestion or even mention of a 'pin' anywhere in the disclosure of Potolsky
nor are Potolsky's projections used or otherwise depicted as pins." Appeal
Br. 8. Appellants also argue that because Potolsky's projections 34, 35 (or
"alternatively shaped projections" or "spaced objects") are used to ensure
proper coupling with a complementary connecting body so there is no
mismatch of blood types between a blood source and a patient, "one of skill
in the art would not simply adopt the projections 34 and 35 disclosed in
Potolsky for use as the first and second pins of the head portion of a drive
shaft of a rotor assembly in accordance with Appellants' claim 1." Id.
(citing Potolsky, Abstract, 1:49--2:2, 5:1-30).
The Examiner responds that, in view of the lack of any special
definition of the claim term "pin" provided in Appellants' Specification, an
ordinary meaning of "pin" is "a piece of solid material (such as wood or
metal) used especially for fastening things together ... ," and the Examiner
determines that the function and structure of the claimed pins and Potolsky' s
projections 34, 35 are the same, namely, pieces of solid material that
"prevent relative rotation between two coupled parts," for at least the
purpose of "'keying' two parts together." Ans. 11-12 (citing
https://www.merriam-webster.com/ dictionary/pin; Potolsky, Abstract).
Appellants do not dispute the Examiner's definition of "pins," which
we accept as reasonable, in light of the Specification. Reply Br. 2--4. Figure
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3A of the present Specification, depicting pins 42-1, 42-2, and Figure 4 of
Potolsky, depicting projections 34, 35, are reproduced below.
Figure 3A of the Specification depicts "a side view of the drive shaft from
the end with the pins" (Spec. 3:4), and Figure 4 of Potolsky depicts "a
perspective view of connectors ... for assuring a proper matching"
(Potolsky 2:29-32); see also id. 5:4--11 (disclosing, with reference to Figure
4, that projections 34, 35 extend from flat face 32 and have "different
outside diameters indicated at dl and d2"). Potolsky's projections are pieces
of solid material used for fastening two connectors together, and Appellants
have not identified, nor do we discern, any structural difference requirement
of the claimed pins, which is not met by Potolsky's projections. Thus,
Appellants' argument does not apprise us of error in the Examiner's findings
with respect to Potolsky's projections 34, 35.
Appellants also appear to argue that because Potolsky's projections
"ensure that there is no mismatch of blood types and a patient, ... one of
ordinary skill in the art would not simply adopt the projections 34 and 35 for
use as the first and second pins of the head portion of a drive shaft of a rotor
assembly," as claimed. Appeal Br. 8. However, Appellants do not address
the Examiner's rationale, as stated supra, that it would have been obvious to
do so "for the purpose of ensuring proper assembly and orientation of parts."
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Final Act. 9; see also Ans. 12 (finding that "both Zelechonok and Potolsky
are known in the art of connecting one component to another component").
Thus, Appellants' argument does not apprise us of error in the Examiner's
reasoning with respect to Potolsky's projections 34, 35.
Accordingly, we sustain the Examiner's rejection of independent
claim 1 as unpatentable over Zelechonok, Hara, and Potolsky. Appellants
chose not to present separate arguments for the patentability of independent
claim 9 and claims 5, 6, 12, and 13 depending from independent claims 1 or
9, apart from those presented for claim 1 supra, and therefore, for essentially
the same reasons stated supra, we also sustain the Examiner's rejection of
claims 5, 6, 9, 12, and 13 as unpatentable over Zelechonok, Hara, and
Potolsky. Appeal Br. 9.
Re} ection II
Regarding independent claims 1 and 9, the Examiner finds that Tower
discloses, inter alia, a drive shaft having a head portion (i.e., drive shaft 35,
head assembly 36) having three pins (i.e., dowel pins 37), wherein at least a
first pin has a diameter less, or smaller, than the diameter of a second pin, as
claimed, because the magnitude of the difference required in diameters to be
less or smaller is not defined in the claims or the Specification, and the
diameter of Tower's first pin would necessarily be less or smaller that the
diameter of Tower's second pin if viewed "down to the atom," at least in
some instances, due to "machining tolerances." Final Act. 10-11 ( citing
Tower ,r,r 58, 68, Figs. 1, 8) (emphasis added); see also id. ,r 59; see also
Ans. 12-15 (finding that due to imperfect machining tolerances, the pin
diameters "cannot truly be equal," and therefore, one pin diameter is
inherently less or smaller than the other).
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Appellants correctly argue that the Examiner's claim interpretation is
"unreasonably broad." Appeal Br. 10; Reply Br. 3. The Examiner's
interpretation effectively reads the limitation requiring the first pin to have a
diameter less or smaller than the diameter of the second pin out of claims 1
and 9. In other words, the Examiner has not provided a sufficient disclosure
of these claim limitations in Tower.
Accordingly, we do not sustain the Examiner's rejection of
independent claims 1 and 9, and claims 6-8 and 12-16 depending therefrom,
as unpatentable over Tower, Ogle, and Hara.
Rejection III
Regarding independent claim 1, the Examiner relies on the same
findings with respect to Tower, Ogle, and Hara as applied in Rejection II
supra, however, the Examiner further relies on Potolsky for disclosing a first
pin having a diameter that is less than a diameter of a second pin, similar to
Rejection I supra. Final Act. 14. The Examiner reasons that it would have
been obvious "to utilize the pin and hole sizing of Potolsky as a component
alignment check within the rotary shear valve assembly of Tower for the
purpose of properly aligning the shaft and the rotor, which further ensures
the rotor grooves are positioned properly for engagement with the stator."
Id.
Appellants repeat their argument that Hara fails to show a rotor
having a substantially planar surface with a second hole having an elliptical
cross-section, as required by claim 1 and as presented in Rejection I supra,
and argue that the Examiner's reliance on Tower and Ogle does not cure
such deficiency. Appeal Br. 13; see also id. at 7-8, 11. However,
Appellants' argument does not apprise us of error in the Examiner's reliance
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on Hara for essentially the same reasons stated supra with respect to
Rejection I.
Appellants also submit that claim 9 requires the two pins to "extend
orthogonally from a distal surface of the head portion," and argue that the
Examiner "does not address the orthogonality requirement." Appeal Br. 13;
see also id. at 11. Appellants contend that "Ogle teaches that its pins extend
from a spherical surface and, as shown in FIG. 7, the pins 66 are clearly
shown as not being orthogonal to the spherical face 65." Id. at 11 (citing
Ogle, 3:60 to 4:8). The Examiner responds that Figure 11 of Tower depicts
pins (i.e., dowel pins 37) orthogonal to a distal surface of head assembly 36.
Ans. 15. Appellants reply that "there is no reason, suggestion or motivation
why one of ordinary skill in the art would overlook the context behind the
use of the pins disclosed in Ogle," which "extend non-perpendicularly from
a different type of component, a spherical surface of a spindle ... and are
used for a different purpose than diametrically opposite perpendicular pins
on Towers' flat surface." Reply Br. 3--4 (citing Ogle 3:51--4:10, Fig. 1).
Thus, regarding independent claim 9, the Examiner relies on Tower
for disclosing a rotor assembly having a drive shaft (i.e., drive shaft 35) and
a rotor (i.e., rotor device 25), with a head portion (i.e., head assembly 36).
Final Act. 10-12, 14 (citing Tower ,r,r 58, 68, Figs. 1, 8); see also Tower ,r
59. As set forth supra, in the Examiner's Answer, the Examiner further
relies on Tower for disclosing dowel pins 37 that extend orthogonally from
head assembly 36. Notably, the Examiner's reliance on Ogle for disclosing
first and second pins disposed substantially diametrically opposite of each
other addresses a limitation recited in claim 1, but not recited in claim 9;
however, claim 9 does require "only first and second pins," as disclosed in
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Ogle, whereas Tower depicts and refers to, as an example, three dowel pins.
Appeal Br. 17, 18 (Claims App.) (emphasis added); Final Act. 11; Tower ,r
60 ("[i]n a typical configuration, three strategically oriented dowel pins 37
extend distally from the distal surface 38 of the head assembly 36"), Fig. 11;
Final Act. 11. The Examiner reasons that it would have been obvious "to
utilize the pin arrangement of Ogle," (i.e., only first and second pins, as
required by claim 9) "in the rotary shear valve assembly of Tower for the
purpose of reducing the number of pins (37) and holes (41) required while
maintaining the torque balance across the head portion (3 6) which
concurrently reduces the amount of machining required (41)." Id. at 12;
Ans. 16 ("Ogle teaches a repositioning of the pins of Tower").
Appellants' argument does not address the rejection as articulated by
the Examiner. In particular, the Examiner's rejection does not require
modifying Tower's head assembly 36 to have a spherical shape as disclosed
in Ogle. Rather, the Examiner proposes modifying Tower's three dowel
pins 37, which is characterized as a typical configuration, to be arranged as a
set of two dowel pins, which would extend orthogonally from the planar
distal surface of Tower's head assembly 36, consistent with the teachings of
Tower. Appellants' argument also does not apprise us of error in the
Examiner's reasoning, as set forth supra, that doing so would reduce parts
and machining.
Finally, Appellants repeat their argument that Potolsky's projections
are not pins, as claimed, as presented in Rejection I. See Appeal Br. 13. For
essentially the same reasons discussed supra, we are not persuaded by
Appellants' argument.
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Accordingly, we sustain the Examiner's rejection of independent
claims 1 and 9 as unpatentable over Tower, Ogle, Hara, and Potolsky.
Appellants chose not to present separate arguments for the patentability of
dependent claims 6-8 and 12-16, apart from those presented for claims 1
and 9 supra, and therefore, for essentially the same reasons stated supra, we
also sustain the Examiner's rejection of claims 6-8 and 12-16 as
unpatentable over Tower, Ogle, Hara, and Potolsky. Appeal Br. 12.
Rejection IV
Appellants argue that "DaCunha fails to cure the deficiencies [ as
argued with respect to Rejection II] in connection with claims 1 and 9," and
therefore, because claims 5 and 13 depend from claims 1 and 9, claims 5 and
13 "represent allowable subject matter." Appeal Br. 15. We agree that the
Examiner's reliance on DaCunha for teaching a clamp does not cure the
deficiencies in the Examiner's findings as discussed supra with respect to
Rejection II. Notably, the Examiner does not reject claims 5 and 13 under
35 U.S.C. § 103(a) as unpatentable over Tower, Ogle, Hara, and Potolsky, as
applied to independent claims 1 and 9 pursuant to Rejection III.
Accordingly, we do not sustain the Examiner's rejection of claims 5
and 13 as unpatentable over Tower, Ogle, Hara, and DaCunha.
DECISION
The Examiner's decision rejecting claims 1, 5, 6, 9, 12 and 13 under
35 U.S.C. § 103(a) as unpatentable over Zelechonok, Hara, and Potolsky is
AFFIRMED.
The Examiner's decision rejecting claims 1, 6-9, and 12-16 under 35
U.S.C. § 103(a) as unpatentable over Tower, Ogle, and Hara is REVERSED.
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The Examiner's decision rejecting claims 1, 6-9, and 12-16 under 35
U.S.C. § 103(a) as unpatentable over Tower, Ogle, Hara, and Potolsky is
AFFIRMED.
The Examiner's decision rejecting claims 5 and 13 under 35 U.S.C.
§ 103(a) as unpatentable over Tower, Ogle, Hara, and DaCunha is
REVERSED.
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)(l )(iv).
AFFIRMED
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