Ex Parte Peric et al

Board of Patent Appeals and Interferences

Jun 12, 2009

11110029 (B.P.A.I. Jun. 12, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte YURI PERIC and BRIAN E. CHEADLE
____________________

Appeal 2009-002187
Application 11/110,029
Technology Center 3700
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Decided:1 June 12, 2009
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1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Before: WILLIAM F. PATE, III, JENNIFER D. BAHR and
LINDA E. HORNER, Administrative Patent Judges.

PATE, III, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-002187
Application 11/110,029

2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
1-7 and 14-17. App. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). The
claims are directed to a flapper valve assembly and a heat exchanger having
a flapper valve assembly. Claim 1, reproduced below, is illustrative of the
claimed subject matter:

1. A flapper valve assembly for use with a fluid device
having a flow chamber from which intermittent flow is desired,
the flapper valve assembly comprising:
a shim plate having a fluid port therethrough for
communication with said flow chamber;
a face plate overlying and brazed to the shim plate and
having an outlet port communicating with said fluid port;
a flapper valve having a first portion and a flexible
second portion;
the shim plate and the face plate defining a slot located
between the shim plate and the face plate through which the
flapper valve can be inserted, the slot extending between one of
the fluid and outlet ports and the periphery of at least one of the
shim plate and the face plate;
the first portion of the flapper valve being slidably
located in said slot and the second portion being movable from
a first position where the second portion at least partially blocks
flow through the fluid port, to a second position where the
second portion unblocks flow through the fluid port;
flapper gripping means for locking the first portion
against movement in the slot; and
bias means for urging the second portion into the first
position.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Frost US 4,561,494 A Dec. 31, 1985
Appeal 2009-002187
Application 11/110,029

3

Claims 1-7 and 14-17 stand rejected as unpatentable under 35 U.S.C.
§ 102(b) or 35 U.S.C. § 103(a) over Frost.2

ISSUES
Appellants argue the rejected claims 1, 2 and 14-16 as a group.
Br. 12-16. We select claim 1 as the representative claim, and claims 2 and
14-16 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii). Regarding
claim 1, Appellants contend that the space in Frost located between header
64, read as the claimed “shim plate,” and dome plate 34, read as the claimed
“face plate,” and occupied by spring valve 146, read as the claimed “flapper
valve,” does not reasonably constitute a “slot through which the flapper
valve can be inserted” as required by claim 1. App. Br. 13. Appellants allege
that the disadvantage of Frost’s design as compared to Appellants’ is that
Appellants’ slot provides for greater flexibility with respect to the shape of
the oil filter that can be used. App. Br. 14. Appellants further contend that
this space does not extend between the fluid or outlet port to the periphery of
at least one of the dome plate and upper header as required by claim 1. App.
Br. 14. Appellants further contend that no portion of the spring valve 146 of
Frost is slidably located in the space read as the claimed slot as required by
claim 1. App. Br. 15. In light of these contentions the first issue presented is:
Have Appellants established that the Examiner erred in rejecting
claim 1 because Frost does not teach or suggest the claimed slot through

2 The rejection of claims 1-2 and 14-16 as unpatentable under 35 U.S.C. §
102(b) over U.S. Patent No. 4,360,055 to Frost has been withdrawn by the
Examiner and is not before us for review. Ans. 2.
Appeal 2009-002187
Application 11/110,029

4
which the flapper valve can be inserted extending between one of the fluid
and outlet ports and the periphery of at least one of the shim plate and the
face plate wherein a first portion of the flapper valve is slidably located in
the slot?
Appellants argue the rejected claims 3 and 4 as a group. Br. 16-17.
Appellants also argue the rejected claims 5-7 as a group but present
substantially the same argument presented regarding claims 3 and 4.
Appellants argue claim 17 separately but again present substantially the
same argument set forth regarding claims 3-7. Since the arguments presented
regarding claim 3 are representative of those arguments presented with
respect to claims 5 and 17, we select claim 3 as the representative claim, and
claims 4-7 and 17 will stand or fall with claim 3.
Regarding claim 3, Appellants contend that the hinge portion of
flapper valve 146 in Frost is inserted into the space read as the claimed slot
first and not the portion that is movable to block or unblock the flow through
the fluid port. Therefore Frost provides no indication that the space read as
the claimed slot is dimensioned to permit such a sequence as required by
claim 3. In light of these contentions the next issue presented is:
Has Appellant established that the Examiner erred in rejecting claim 3
because Frost does not teach or suggest a slot dimensioned to permit a
flapper valve first potion to be positioned in the slot by firstly inserting a
second portion of the flapper valve that is movable to block or unblock flow
through the fluid port?

Appeal 2009-002187
Application 11/110,029

5
FINDINGS OF FACT
1. Frost discloses a valve assembly for use with a fluid device having a flow
chamber from which intermittent flow is desired 12 (col. 5, ll. 24 et seq.),
the valve assembly comprising: an upper header 64 (“shim plate”) having
a fluid port 142 therethrough for communication with said flow chamber;
a dome plate 34 (“face plate”) overlying and brazed to (col. 5, ll. 52-54)
the upper header and having an outlet port 144 communicating with said
fluid port 142; a spring valve 146 (“flapper valve”) having a first portion
(proximate numeral 146 in figs. 2 and 3) and a flexible second portion
148; the upper header 64 and the dome plate 34 defining a slot located
between the upper header 64 and the dome plate 34 through which the
spring valve 146 can be inserted (col. 5, ll. 67-68; fig. 2), the slot
extending between one of the fluid and outlet ports and the periphery of
one of the header and dome plates (fig. 2); the first portion of the spring
valve being slidably located in the slot and the second portion being
movable from a first position where the second portion at least partially
blocks flow through the fluid port, to a second position where the second
portion unblocks flow through the fluid port (col. 5, ll. 29-38); gripping
means for locking the first portion against movement in the slot (upper
left portion of spring valve as viewed in figure 2 engaging dome plate);
and bias means (curvature of the spring valve) for urging the second
portion into the first position (the closed condition).
2. Frost fails to discloses that the slot is dimensioned to permit the spring
valve first potion (proximate numeral 146 in figs. 2 and 3) to be
positioned in the slot by firstly inserting the second portion of the spring
Appeal 2009-002187
Application 11/110,029

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valve 148, that is movable to block or unblock flow through the fluid
port.
3. The ordinary and customary meaning of the term slot is a narrow
opening, groove or slit. See The American Heritage® Dictionary of the
English Language (2000)

PRINCIPLES OF LAW
The examiner bears the initial burden of factually supporting any
prima facie conclusion of obviousness. The key to supporting any prima
facie conclusion of obviousness under 35 U.S.C. § 103 is the clear
articulation of the reason(s) why the claimed invention would have been
obvious. The Supreme Court in KSR International Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007) noted that the analysis supporting a rejection under 35
U.S.C. § 103 should be made explicit. The Federal Circuit has stated that
“rejections on obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.” In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550
U.S. at 418.
The Supreme Court in KSR reaffirmed the framework for determining
obviousness as set forth in Graham v. John Deere Co. (383 U.S. 1 (1966)).
The factual inquiries set forth in Graham that are applied for establishing a
background for determining obviousness under 35 U.S.C. § 103(a) are
summarized as follows:
1. Determining the scope and contents of the prior art.
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Application 11/110,029

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2. Ascertaining the differences between the prior art and the claims at
issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating
obviousness or nonobviousness.
Where no explicit definition for a term is given in the specification,
the term should be given its ordinary meaning and broadest reasonable
interpretation. E-Pass Technologies, Inc. v. 3Com Corporation, 343 F.3d
1364, 1368 (Fed. Cir. 2003). The ordinary and customary meaning of a
claim term is the meaning that the term would have to a person of ordinary
skill in the art in question at the time of the invention. Phillips v. AWH
Corp., 415 F.3d 1303, 1319 (Fed. Cir. 2005) (en banc). An applicant is
entitled to be his or her own lexicographer and may rebut the presumption
that claim terms are to be given their ordinary and customary meaning by
clearly setting forth a definition of the term that is different from its ordinary
and customary meaning(s). See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
1994).

ANALYSIS
Initially we note that the Examiner apparently set forth a rejection of
claims 1-7 and 14-17 under both 35 U.S.C. § 102(b) and 35 U.S.C. § 103(a)
because there seemed to be some uncertainty regarding whether header plate
64, read as the claimed “shim plate” is brazed to the dome plate 34, read as
the claimed “face plate.” Cf. Ans. 3 and 4. The conclusion that Frost
discloses this feature (See Fact 1) or in the alternative would have rendered it
obvious is not contested by Appellants.
Appeal 2009-002187
Application 11/110,029

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Regarding claim 1, the space between upper header 64 and dome plate
34 is a narrow opening having the spring valve 146 therein extending from
one side to the other and is therefore a slot through which the flapper valve
can be inserted within the broadest reasonable definition of that term. See
Facts 1 and 3; contra App. Br 13. While the invention described in
Appellants’ preferred embodiment may have certain advantages over the
apparatus depicted in Frost (App. Br. 14), it is the claims and not the
preferred embodiment described in the Specification that must patentably
distinguish Appellants’ invention from the prior art to meet the requirements
of 35 U.S.C. § 102(b) and 35 U.S.C. § 103(a). Although the claims are
interpreted in light of the Specification, limitations from the Specification
are not read into the claims. Contrary to Appellants’ assertion (App. Br. 14)
this slot need not extend from one of the ports “to the” periphery of the
dome plate or header, merely between them. The slot can extend between
one of the ports and the periphery of the dome plate or header without
sharing a common boundary. Where Appellants have employed broader
language in the claims to define a feature that is more narrowly described in
the Specification it would be improper to import those limitations from the
Specification into the claims. See Superguide Corp. v. DirecTV Enterprises,
Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim
language may be aided by the explanations contained in the written
description, it is important not to import into a claim limitations that are not
a part of the claim. For example, a particular embodiment appearing in the
written description may not be read into a claim when the claim language is
broader than the embodiment.”). Appellants’ proposed interpretation of the
phrase “the flapper valve slidably located in [the] slot” to exclude Frost’s
Appeal 2009-002187
Application 11/110,029

9
spring valve because it is mechanically captured or contained in the slot
(App. Br. 15) contradicts the definition one of ordinary skill in the art would
attribute to that phrase when read in light of the Specification and claims.
Claim 1 specifically calls for a gripping means for locking the first portion
of the flapper valve against movement in the slot. To conclude that Frost’s
structure for mechanically capturing or containing the valve within the slot
precludes Frost’s valve from being reasonably interpreted as “slidably
located” within the slot would force us to conclude that Appellants’ claimed
valve is also not slidably located within the slot, since it contains the same
structure. This is not a reasonable interpretation of claim 1. The fact that,
like Appellants’ valve, Frost’s valve is mechanically captured in its final
position by a gripping means does not mean that Frost’s valve is not
“slidably located” within the slot. One of ordinary skill in the art would
recognize that Frost’s valve is capable of insertion into the slot and removal
therefrom by sliding and is therefore “slidably located in [the] slot” within
the broadest reasonable interpretation of that term.
For these reasons Appellants have not established that the Examiner
erred by rejecting claim 1 under 35 U.S.C. § 102(b) or 35 U.S.C. § 103(a)
over Frost.
Regarding claim 3, the second portion of the claimed flapper valve is
the portion that is movable to block or unblock flow through the fluid port.
This “second portion” corresponds to valve flapper 148 in Frost. Contrary to
the Examiner’s assertion (Ans. 6) one of ordinary skill in the art would not
consider that portion as being inserted into the slot before the first portion
(the portion of valve 146 residing in the slot in fig. 2). It does not appear that
the second portion of the valve 146 is ever inserted into the slot. Only the
Appeal 2009-002187
Application 11/110,029

10
first portion of the valve 146 is inserted into the slot and the portion 148
remains protruding therefrom in order to block or unblock the flow through
the fluid port. Accordingly, it is erroneous to conclude that the slot of Frost
is dimensioned to permit the flapper valve first portion to be positioned in
the slot by firstly inserting the second portion of the flapper valve as
required by claim 3, as well as claims 4-7 and 17, which depend from claim
3. The Examiner has not proffered any reasoning to establish that this feature
would have been obvious to one having ordinary skill in the art.
For this reason Appellants have established that the Examiner erred by
rejecting claim 3 under 35 U.S.C. § 102(b) and 35 U.S.C. § 103(a) over
Frost.

CONCLUSION OF LAW
On the record before us, Appellants have not established that the
Examiner erred by rejecting claims 1, 2 and 14-16 under 35 U.S.C. § 102(b)
or 35 U.S.C. § 103(a) over Frost. Appellants have established that the
Examiner erred by rejecting claims 3-7 and 17 under 35 U.S.C. § 102(b) and
35 U.S.C. § 103(a) over Frost.

DECISION
For the above reasons, the Examiner’s rejection of claims 1, 2 and 14-
16 is affirmed and the Examiner’s rejection of claims 3-7 and 17 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)(1)(iv) (2007).

AFFIRMED-IN-PART
Appeal 2009-002187
Application 11/110,029

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