Ex Parte Russell et al

Patent Trial and Appeal Board

Nov 29, 2018

14504919 (P.T.A.B. Nov. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/504,919 10/02/2014
53609 7590 12/03/2018
REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
FIRST NAMED INVENTOR
Steven L. Russell
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.
510272 1087
EXAMINER
CAHILL, JESSICA MARIE
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
12/03/2018 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):
RockMail@reinhartlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN L. RUSSELL and DAVID CRITES
Appeal2018-004462 1
Application 14/504,919
Technology Center 3700
Before CHARLES N. GREENHUT, BRANDON J. WARNER, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner's final
decision rejecting claims 1, 3-5, and 8-20. 2, 3 We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.
1 The Appeal Brief indicates that Robertshaw Controls Company is the real
party in interest. Appeal Br. 2.
2 Claim 2 has been cancelled. Appeal Br. (Claims App. 1 ).
3 The Final Office Action indicates that "dependent" claims 6 and 7 recite
allowable subject matter. Final Act. 15. In an Amendment filed on August
16, 2017, these claims were placed in independent form, and this
Amendment was entered in an Advisory Action dated August 30, 2017.
Appeal2018-004462
Application 14/504,919
CLAIMED SUBJECT MATTER
The claims are directed to gas valves used for the supply and
regulation of the flow of gas to a downstream burner. Spec. ,r,r 1-2. Claim
1, reproduced below with emphasis added, is illustrative of the claimed
subject matter:
1. A gas valve assembly, comprising:
a pressure regulator;
a valve module having a housing body, the pressure
regulator mounted to the valve module along a mounting axis
defined by the valve module; and
wherein a mounting arrangement is formed between the
pressure regulator and the housing body of the valve module such
that the pressure regulator is removably mounted to the housing
body and rotationally fixed about the mounting axis and such that
the pressure regulator is capable of only a single orientation
relative to the valve module;
wherein the mounting arrangement includes a mounting
boss and a recess, the boss received within the recess, and
wherein the mounting boss defines a main port for a fluid flow
into the valve module.
Appeal Br. (Claims App. 1 ).
REFERENCES RELIED ON BY THE EXAMINER
Toliusis
Hamm
Fancher
us 4,524,807
us 5,675,978
US 2004/0084085 Al
REJECTIONS 4
June 25, 1985
Oct. 14, 1997
May 6, 2004
(I) Claims 1, 8-15, 17, and 18 are rejected under 35 U.S.C.
§ I02(a)(l) as anticipated by Fancher.
4 A rejection of claim 3 under 35 U.S.C. § 112( d) is withdrawn. See Ans. 2;
Final Act. 3.
2
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Application 14/504,919
(II) Claims 1, 3-5, and 8-18 are rejected under 35 U.S.C. § 103 as
unpatentable over Toliusis.
(III) Claims 19 and 20 are rejected under 35 U.S.C. § 103 as
unpatentable over Toliusis and Hamm.
OPINION
Rejection(!), Anticipation by Fancher
Claim 1
The Examiner finds Fancher teaches all the elements required by
claim 1, and in relation to the recited mounting boss, Fancher discloses a
boss on regulator 12 that is received in keyhole slot 46. Final Act. 4--5.
Appellants contend that Fancher fails to disclose the recited mounting
boss inasmuch as the element the Examiner identifies as corresponding to
the recited mounting boss is merely a fluid connection for regulator 12.
Appeal Br. 9.
In response, the Examiner states, "[t]he mounting boss does extend
through and into the valve module ( as so broadly recited, the structure at 10
is considered to be a valve module; Fig[ ure] 3 illustrates the mounting boss
extending into the valve module) and therefore, Fancher meets the claimed
recitations." Ans. 3. The Examiner provides an annotated version of Figure
3 of Fancher (reproduced below) in support of the rejection of claim 1. Id. at
4.
3
Appeal2018-004462
Application 14/504,919
Annotated Figure 3 of Fancher, reproduced above, is an exploded view of
housing 10, regulator 12, and associated hardware. Keyhole slot 46 is
identified as a "recess," and a fluid connection on regulator 12 is identified
as a mounting boss.
In reply, Appellants argue that the fluid connection on regulator 12 "is
not a mounting boss at all" (Reply Br. 14 ), and the Examiner erred in finding
that this component is received in a recess (keyhole 46) as required by claim
1. Appellants assert:
[T]he Examiner's alleged mounting boss that extends from the
pressure regulator 12 not only does not insert into the keyhole or
alleged recess 46, it does not even make contact with any portion
of the housing or alleged valve member 10, such that it cannot
possibly act in any way to mount the pressure regulator 12 to the
housing or alleged valve member 10 of Fancher.
Id. ( emphasis added). Thus, Appellants contend that a "mounting boss" as
recited in claim 1 must act in some way to mount the pressure regulator to
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Application 14/504,919
the valve module, and no component in Fancher identified by the Examiner
does so. Id.
Appellants have the better position because, as shown in Figures 1 and
3 of Fancher, keyhole slot 46 does not receive the portion of regulator 12
identified by the Examiner as a mounting boss. Instead, during mounting, a
different portion of regulator 12 is positioned within regulator hole 36 in
housing 10. See Pancheri-I 31. Once regulator 12 is mounted to housing 10,
hoses may be connected to regulator 12 via openings 44 on each side of
housing 10, and no portion of regulator 12 is located within keyhole slot 46.
Id. ,r 22. We agree with Appellants that a "mounting boss," being a
component of the recited "mounting arrangement," must assist with
removably mounting the recited regulator to the recited housing body so as
to define a port for a fluid to flow into the valve module. See Spec. ,r,r 9-10.
The Examiner does not identify any evidence supporting a finding that the
component identified by the Examiner in Fancher (which appears to function
only as a fluid port) assists in mounting the regulator 12 to the structure
regarded by the Examiner as the recited "housing body" (see Final Act. 4
("(10/20/22/24/26/28)"). Accordingly, a preponderance of the evidence
does not support the Examiner's finding that the identified portion of
regulator 12 qualifies as a "mounting boss" as required by claim 1, and we
do not sustain the rejection of claim 1 and claims 8-10 depending therefrom
as anticipated by Fancher.
Claim 11
Claim 11, like claim 1, recites a mounting boss ( albeit one that
projects from the side wall of the housing of the valve module). Appeal Br.
(Claims App. 3). As discussed above, a preponderance of the evidence does
not support the Examiner's finding that the portion of regulator 12 of
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Appeal2018-004462
Application 14/504,919
Fancher identified by the Examiner qualifies as a mounting boss.
Accordingly, we do not sustain the rejection of claim 11 and claims 12-15,
17, and 18 depending therefrom as anticipated by Fancher.
Rejection (11), Unpatentability over Toliusis
Independent claims 1 and 11 both require a pressure regulator. The
Examiner finds Toliusis teaches all the elements of claims 1 and 11 except
that Toliusis discloses a valve, not a pressure regulator as recited. Final Act.
8-9. Nonetheless, the Examiner determines that it would have been obvious
to a person of ordinary skill in the art to use a pressure regulator as a
substitute for the "solenoid valve"5 disclosed by Toliusis "since any desired
valve would fit within the modules of Toliusis[, and] Toliusis focuses on the
connection of adjacent members, not the particular valve features." Id. at 9.
The Examiner also finds that reference number 16 in Figure 10 of Toliusis
identifies structure that is a pressure regulator. 6 Id.
(i)
Appellants argue that reference number 16 of Toliusis refers to part of
a manifold (manifold module 11 ), which is not a pressure regulator.
In response, the Examiner appears to switch from finding that the
structure identified by reference number 16 is a pressure regulator to finding
that the structure identified by reference number 12 (which is described by
5 Although this portion of the Final Office Action does not refer to the
solenoid valve by reference number, we understand the Examiner to mean
valve 12, which Toliusis teaches may be a solenoid valve. See Toliusis
3:5-8.
6 It is not clear whether this finding relates to an alternate rejection based on
anticipation by Toliusis or the Examiner is referring to reference number 16
as support for the proposed modification to the structure of Toliusis to
include a pressure regulator in the particular arrangements recited in claims
1 and 11.
6
Appeal2018-004462
Application 14/504,919
Toliusis as a valve) is a pressure regulator. See Ans. 8; see also Toliusis
3:5-17, 32-36. In support of finding that valve 12 of Toliusis qualifies as a
pressure regulator, the Examiner refers to paragraph 35 of Appellants'
Specification and interprets the term "pressure regulator" to read on any
valve that can tum fluid flow on and off. Ans. 8.
In reply, Appellants argue that a pressure regulator is specifically
designed to regulate pressure, regardless of fluid flow. Reply Br. 19. In
contrast, Appellants contend, a valve, such as valve 12 of Toliusis, is
designed to regulate fluid.flow.
We agree with Appellants that the Examiner is applying an
unreasonably broad interpretation of the term "pressure regulator."
Although paragraph 35 of Appellants' Specification indicates that the
disclosed system "may be embodied as any type of pressure control device,
and in the exemplary embodiment, pressure regulator 24 is a diaphragm
style pressure regulator," we understand this statement to mean that any type
of device specifically designed to control pressure may be used, e.g., a
diaphragm style pressure regulator or some other type of pressure regulator,
not that any device that indirectly affects pressure ( such as an valve 12 of
Toliusis) qualifies as a pressure regulator. As for reference number 16 of
Toliusis, we agree with Appellants that this reference number refers to
structure unrelated to a pressure regulator. See Toliusis 3:32-36 (describing
body 16 as part of manifold module 11 ). Thus, Appellants' argument that
Toliusis fails to disclose the use of a pressure regulator is persuasive.
(ii)
With respect to the Examiner's proposed modification to the structure
taught by Toliusis "to substitute a solenoid valve of Toliusis for a pressure
regulator valve" (Final Act. 9), we agree with Appellants that the
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Examiner's reasoning is not supported by rational underpinnings.
Specifically, the fact that "any desired valve would fit within the modules of
Toliusis" (Final Act. 9) is merely a finding that Toliusis could be modified
as proposed by the Examiner, not explanation as to why a person of ordinary
skill in the art would have found it obvious to do so. Further, the valve
manifold taught by Toliusis is presented in the context of a plurality of three-
way or four-way valves that are supplied via a common pressure source.
The Examiner does not provide any evidence a pressure regulator would be
considered a simple substitution for a three-way or four-way valve.
Accordingly, we do not sustain the Examiner's rejection of independent
claims 1 and 11, and respective dependent claims 3-5, 8-10, and 12-18, as
unpatentable over Toliusis.
Rejection (111), Unpatentability over Toliusis and Hamm
Claim 19 7 recites a method of manufacture of a gas valve assembly
that provides structure similar to the elements discussed above regarding
claims 1 and 11. See Appeal Br. (Claims App. 2-5). The Examiner makes
findings regarding Toliusis substantially similar to those discussed above
regarding Rejection (II) and relies on Hamm only to teach the manufacture
of a housing, including passages and other features, via casting. See Final
Act. 14--15. Thus, for the same reasons discussed above regarding Rejection
(II), we do not sustain the rejection of claims 19 and 20 as unpatentable over
Toliusis and Hamm.
7 The Claims Appendix in the Appeal Brief lists claim 19 as withdrawn. See
Appeal Br. (Claims App. 4). However, the Final Office Action does not
indicate that claim 19 is withdrawn, and, instead, addresses claim 19 on the
merits. See Final Act. 1, 14--15. Similarly, Appellants make arguments for
the patentability of claim 19. See Appeal Br. 13-15. We, likewise, address
the rejection of claim 19 on the merits.
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Application 14/504,919
DECISION
The Examiner's decision to reject claims 1, 3-5, and 8-20 is reversed.
REVERSED
9