Ex parte Parker

Board of Patent Appeals and Interferences

Aug 17, 1998

08467295 (B.P.A.I. Aug. 17, 1998)

Application for patent filed June 6, 1995. According 1
to appellant, the application is a division of Application
08/307,348, filed September 16, 1994.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 9
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte THOMAS W. PARKER

_____________
Appeal No. 96-4164
Application 08/467,2951
______________
ON BRIEF
_______________
Before CALVERT, FRANKFORT and STAAB, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
Appeal No. 96-4164
Application 08/467,295
2
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 14, 22 and 23. Claims 1 through 12 have been
canceled. Claims 13 and 15 through 21 stand allowed. Claim 24,
the only other claim pending in the application, was objected to,
but has been indicated to be allowable if rewritten in independ-
ent form.
Appellant's invention relates to a method of operating
a reversing valve, such as that found in a vapor compression
refrigeration system (e.g., a heat pump system). Of importance
to appellant is that the reversing valve be so constructed and
arranged that the valve member “is relieved from system fluid
pressure forcing it against its seat as it moves between alterna-
tive flow directing positions along a path of travel by which it
is separated from its seat, thereby avoiding substantial friction
forces opposing valve member motion and enabling use of simple,
low force valve actuators” (specification, page 4, lines 17-23).
Independent claim 14 is representative of the subject matter on
Appeal No. 96-4164
Application 08/467,295
3
appeal and a copy of that claim may be found in Appendix A of
appellant’s brief.
The sole prior art reference of record relied upon by the
examiner in rejecting claims 14, 22 and 23 is:
Van Allen et al. (Van Allen) 2,855,000 Oct. 7, 1958
Claims 14, 22 and 23 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Van Allen. According to the
examiner (answer, page 3), “[t]he method steps recited [in the
claims on appeal] are inherent to the apparatus of Van Allen
et al.”
Rather than reiterate the conflicting viewpoints
advanced by the examiner and appellant regarding the above § 102
rejection, we make reference to the examiner's answer (Paper
No. 8, mailed September 4, 1996) for the examiner's complete
reasoning in support of the rejection, and to appellant's brief
(Paper No. 7, filed August 2, 1996) for appellant's arguments
thereagainst.
OPINION
Appeal No. 96-4164
Application 08/467,295
4
In reaching our decision in this appeal, we have given
careful consideration to appellant's specification and claims, to
the applied prior art reference, and to the respective positions
articulated by appellant and the examiner. As a consequence of
our review, we have made the determination that the examiner’s
rejection cannot be sustained. Our reasons follow.
Claim 14 on appeal expressly requires that the method
therein include, inter alia, the steps of “e. moving said valve
member out of engagement with the seating face; f. shifting
said valve member into juxtaposition with a second position; and,
g. seating the valve member against a sealing face in the second
position . . . .” As urged by appellant on page 7 of the brief,
the specific issue before us on appeal is whether the above-noted
steps of the claimed method are inherent in the operation of the
valve disclosed by Van Allen. Like appellant, we find that the
method set forth in claim 14 on appeal, and, more specifically,
steps e), f) and g) thereof are not inherent to the apparatus of
Van Allen.
Appeal No. 96-4164
Application 08/467,295
5
The examiner's position (answer, pages 5-10) that the
claimed method steps are inherent to the apparatus of Van Allen,
in our opinion, is without factual support in the applied refer-
ence and is based on extensive speculation by the examiner. In
contrast to the position of the examiner, we find that the method
as set forth in claim 14 on appeal cannot be said to be the
natural result flowing from the operation of the apparatus of
Van Allen, and, more particularly, that the steps e), f) and g)
recited in claim 14 cannot be said to be inevitably present in
the operation of the apparatus of Van Allen. See, for example,
In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981).
Even though it appears possible that the high pressure side of
the valve member (38) of Van Allen might move out of engagement
with the header (16) under some given set of circumstances if the
ports (52) and (68) were sized to permit a sufficient reduction
of the high pressure in the chamber (11), any such movement of
the valve member is contrary to the clear intent of Van Allen.
In this regard, we agree with the arguments made by appellant on
pages 11 through 14 of the brief and in paragraphs 9 through 14
of the declaration filed December 4, 1995 (as an attachment to
Paper No. 4).
Appeal No. 96-4164
Application 08/467,295
6
Moreover, we note that it has been a long-standing
maxim of patent law that, during examination, “claims are to be
given their broadest reasonable interpretation consistent with
the specification” and in, addition, that the “claim language
should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Sneed,
710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983)(emphasis
added). Our Court of review has also informed us that the
drawings included in the application may aid in the interpre-
tation of claim limitations, in that the “drawings alone may be
sufficient to provide the 'written description of the invention'
required by § 112, first paragraph. Vas-Cath Inc. v. Mahurkar,
935 F.2d 1555, 1564, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991).
Thus, in those instances where a visual representation can flesh
out words, as in the present application, drawings can and should
be used like the written specification to provide evidence rele-
vant to claim interpretation and used to interpret what the in-
ventor intended by the claim terms. Applying these precepts to
the present application, we find that, when the claim language
under consideration is read in light of the present application
disclosure as such would be interpreted by the hypothetical per-
Appeal No. 96-4164
Application 08/467,295
7
son possessing ordinary skill in the art, and particularly when
this language is viewed in light of the invention as seen in
Figure 5B of the application drawings, the claim language requir-
ing the step of “moving said valve member out of engagement with
the seating face” in appellant’s claim 14 on appeal would be
understood to require that the entirety of the valve member be
moved out of engagement with the seating face, prior to shifting
of the valve member to the second position, which step is
clearly not present in Van Allen. Note particularly, page 9,
lines 15-17, of appellant’s specification, wherein it is indi-
cated that the valve member “moves to its second position by
shifting axially away from the port plate 36,” rotating 90
degrees about the longitudinal housing assembly axis (70) and
then shifting back into engagement with the port plate (36). In
the paragraph bridging pages 15 and 16 of appellant’s specifica-
tion, it is again emphasized that the valve member (24) is
unseated and shifted axially away from the port plate (36), with
the result that the valve member is “freely rotatable relative to
the guide member 72 and slide 102 so that negligible frictional
resistance to valve member rotation about the axis 70 exists.”
Thus, it is clear that the examiner’s comments in the paragraph
Appeal No. 96-4164
Application 08/467,295
8
bridging pages 7 and 8 of the answer, concerning the scope of
claim 14 on appeal and step e) in particular, are based on too
broad a construction of step e) when such step is properly
understood and interpreted in light of appellant’s disclosure.
The above interpretation of step e) of claim 14 on appeal is
consistent with appellant’s arguments bridging pages 12-14 of the
brief and with his position as expressed in the declaration filed
December 4, 1995.
To summarize our decision, the examiner's rejection of
claims 14, 22 and 23 under 35 U.S.C. § 102(b) has been reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
Appeal No. 96-4164
Application 08/467,295
9
LAWRENCE J. STAAB )
Administrative Patent Judge )
Appeal No. 96-4164
Application 08/467,295
10
Watts Hoffmann Fisher and Heinke Co.
P.O. Box 99839
Cleveland, OH 44199-0839