Ex Parte Smith et al

Patent Trial and Appeal Board

Dec 31, 2018

14958359 (P.T.A.B. Dec. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/958,359 12/03/2015
29855 7590 01/03/2019
Blank Rome LLP - Houston General
717 Texas Avenue, Suite 1400
Houston, TX 77002
FIRST NAMED INVENTOR
Robert E. Smith III
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.
221-0lOOUSD 7172
EXAMINER
PATEL, VISHAL A
ART UNIT PAPER NUMBER
3675
NOTIFICATION DATE DELIVERY MODE
01/03/2019 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):
houstonpatents@blankrome.com
mbrininger@blankrome.com
smcdermott@blankrome.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT E. SMITH III, FRANK HAROLD HOLLISTER,
RICHARD R. WATSON, and DANE TIPTON
Appeal2018-009042
Application 14/958,359
Technology Center 3600
Before EDWARD A. BROWN, ANNETTE R. REIMERS, and
JEREMY M. PLENZLER, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2018-009042
Application 14/958,359
STATEMENT OF THE CASE 1
Robert E. Smith III et al. ("Appellants") appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision to reject claims 1--4, 29, and 30.
Claim 5-28 have been withdrawn from consideration. We have jurisdiction
under 35 U.S.C. § 6(b ).
We REVERSE.
CLAIMED SUBJECT MATTER
The claimed subject matter "relates to sub plate mounted, pilot
actuated spool valves." Spec. ,r 2, Figs. 5A, 5B. Claims 1 and 3 are
independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A seal for a pilot-actuated spool valve comprising:
a single-piece steel disk having a generally planar upper
surface, a generally planar lower surface, a generally cylindrical
outer surface and a central axial opening extending from the
upper surface to the lower surface;
an annular groove in the lower surface having a first, lesser
width in a first portion adjacent the lower surface and a second,
greater width in a portion remote from the lower surface;
a first shoulder in the annular groove between the first
portion adjacent the lower surface and the portion remote from
the lower surface;
1 We note the Examiner has also objected to the drawings. Final Office Action
2 ("Final Act."), dated Sept. 21, 201 7; see also Appeal Brief 19-20 ("Appeal
Br."), filed May 14, 2018. We also note an apparent discrepancy about an
election/restriction requirement. See Final Act. 3; see also Appeal Br. 18-19.
These matters are not appealable, but, rather, are petitionable, and, thus, are
not within the jurisdiction of the Board. See In re Berger, 279 F.3d 975, 984
(Fed. Cir. 2002); and In re Mindick, 371 F.2d 892, 894 (CCPA 1967); see also
Examiner's Answer 8 ("Ans."), dated July 16, 2018. Thus, we do not address
these matters in this Appeal.
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Application 14/958,359
a second shoulder in the annular groove between the first
portion adjacent the lower surface and the portion remote from
the lower surface opposite the first shoulder; and
a polyoxymethylene insert in the annular groove having at
least one generally planar surface that is substantially flush with
the lower surface of the metal disk.
REJECTIONS
I. Claims 1 and 3 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Walsh (US 494,402, issued Mar. 28, 1893), Halama (US
6,783,161 B2, issued Aug. 31, 2004), and Glynn (US 3,737,169, issued June
5, 1973).
II. Claims 1 and 3 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Walsh, Kane (US 6,932,354 B2, issued Aug. 23, 2005),
Glynn, and Halama.
III. Claims 1 and 3 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Jabcon (US 7,849,876 B2, issued Dec. 14, 2010), Walsh,
Hosokawa (US 7,311,311 B2, issued Dec. 25, 2007), and Halama.
IV. Claims 2 and 4 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Jabcon, Walsh, Hosokawa, Halama, and Appellants'
Admitted Prior Art (AAPA) (Figure 1).
V. Claims 29 and 30 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Jabcon, Walsh, Hosokawa, and Halama.
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Appeal2018-009042
Application 14/958,359
ANALYSIS
Rejection I
Each of independent claims 1 and 3 is directed to a seal for a pilot-
actuated spool valve having "an annular groove," "a first shoulder in the
annular groove," and "a second shoulder in the annular groove." Appeal Br.
22, 23 Claims App.
The Examiner finds Walsh discloses first and second shoulders. Ans.
5; see also id. (the Examiner's annotated version of Figure 2 of Walsh);
Final Act. 4--5; id. (the Examiner's annotated version of Figure 4 of Walsh).
In particular, the Examiner finds "[t]he end of the element is larger in
thickness and hence is considered to be a shoulder." Ans. 5; see also id. (the
Examiner's annotated version of Figure 2 of Walsh).
Appellants contend "[a] dovetail groove such as is employed in the
gasket packing of Walsh does not have a 'shoulder."' Appeal Br. 14.
Claims are construed with an eye toward giving effect to all terms in
the claim. Bicon Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006);
see also Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir.
2007) ( denouncing claim constructions which render phrases in claims
superfluous). Appellants' Specification describes: (1) "Metal seal plate 500
comprises annular cavity 522 having a generally T-shaped cross section (see
Figure 5B) which comprises outboard undercut groove 524 and inboard
undercut groove 526 ... undercut grooves 524 and 526 ... anchor[] insert
518 in cavity 522" (Spec. ,r 59, Fig. 5B); and (2) "Metal seal plate 501
comprises annular cavity 523 having a generally L-shaped cross section (see
Figure 5D[)] which comprises outboard undercut groove 525 and inboard
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Appeal2018-009042
Application 14/958,359
undercut groove 527 ... undercut grooves 525 and 527 ... anchor[] insert
519 in cavity 523" (Id. ,r 63, Fig. 5D).
Here, the Examiner does not give proper effect to the claimed annular
groove having first and second shoulders. See Final Act. 4--5; see also Ans.
5; Reply Br. 3. 2 Walsh merely discloses a flat strip of ductile metal 1 that
has dovetailed grooves 2 upon each side. See Walsh col. 1:20-22, 45--47,
Figs. 2, 4. As correctly pointed out by Appellants, the "end of the element"
identified by the Examiner in the Examiner's annotated Figure 2 of Walsh
"is not in the annular groove - it is simply one end [ flange 4] of the dovetail
groove [2] described in Walsh." See Ans. 5; see also Reply Br. 3. Stated
differently, to interpret the claimed term "shoulder" as encompassing flange
portion 4 of dovetail groove 2 of Walsh in effect renders meaningless, or
superfluous, the phrase "shoulder in the annular groove." We agree with
Appellants that "[n]o shoulder in an annular groove is described in Walsh."
Reply Br. 3. 3
For these reasons, we do not sustain the Examiner's rejection of
claims 1 and 3 as unpatentable over Walsh, Halama, and Glynn. 4
2 Reply Brief ("Reply Br."), filed Sept. 17, 2018.
3 The Examiner notes that the Stannard reference (US 4,828,274, issued May
9, 1989) has been provided for "why a dove tail groove has shoulders." See
Ans. 7; see also Final Act. 9. A review of Figure 3 of Stannard merely
illustrates a dovetail groove. Stannard, Fig. 3. The Examiner does not direct
us to any discussion in Stannard about a dovetail groove having shoulders.
See Ans. 7; see also Final Act. 9.
4 The Examiner relies on the teachings of Halama and Glynn for limitations
other than those discussed above for Walsh. See Final Act. 4--6.
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Appeal2018-009042
Application 14/958,359
Rejections 11-V
The Examiner relies on the same unsupported findings in Walsh for
Rejections II-Vas discussed above for Rejection I. See Final Act. 6-10.
The Examiner does not rely on the teachings of Kane, Jabcon, Hosokawa, or
AAPA to remedy the deficiencies of Walsh, Halama, and Glynn.
Accordingly, for reasons similar to those discussed above for
Rejection I, we do not sustain Rejections II-V.
DECISION
We REVERSE the Examiner's decision to reject claims 1--4, 29, and
30 under 35 U.S.C. § 103(a).
REVERSED
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