Ex Parte Uhland et al

Patent Trial and Appeal Board

Jun 29, 2018

12987563 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/987,563 01/10/2011
23911 7590 07/03/2018
CROWELL & MORING LLP
INTELLECTUAL PROPERTY GROUP
P.O. BOX 14300
WASHINGTON, DC 20044-4300
FIRST NAMED INVENTOR
Thomas Uhland
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.
037068.62993US 8780
EXAMINER
REID, MICHAEL ROBERT
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
07 /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):
edocket@crowell.com
tche@crowell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS UHLAND and FRIEDBERT ROETHER
Appeal 2016-001104
Application 12/987 ,563
Technology Center 3700
Before JOHN C. KERINS, MICHAEL L. HOELTER, and
SEAN P. O'HANLON, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Thomas Uhland and Friedbert Roether ("Appellants") appeal under
35 U.S.C. § 134(a) from a final rejection of claims 1---6, 9, and 12-14. We
have jurisdiction under 35 U.S.C. § 6(b ). An oral hearing in this appeal was
conducted on May 15, 2018, with Mark H. Neblett, Esq., appearing on
behalf of Appellants. A transcript of the oral hearing will be made of record
in due course.
We AFFIRM.
Appeal 2016-001104
Application 12/987,563
THE INVENTION
Appellants' invention is directed to a valve, and a vehicle system that
includes a pneumatic transmission control system comprising a valve.
Claim 1, reproduced below, is illustrative:
1. A valve, comprising:
a valve housing;
a valve body movable in the valve housing;
at least one seal operatively configured to part1t10n a space
between the valve body and the valve housing, said at least one
seal being arranged concentrically around at least a portion of the
valve body; and
wherein the at least one seal comprises a metal carrier element,
the at least one seal is operatively configured to subdivide the
space multiple times at different sealing locations,
the valve body is constructed of a plurality of parts movable
independently of one another; and
the different sealing locations are arranged on different parts of
the valve body that are movable independently of one another.
2
Appeal 2016-001104
Application 12/987,563
The Examiner rejects:
REJECTIONS
(i) claims 1---6, 9, and 12-14 under 35 U.S.C. § 112, second paragraph,
as being indefinite;
(ii) claims 1, 2, 4, and 6 under 35 U.S.C. § 103(a) as being
unpatentable over Novakovi (US 5,217,043, issued June 8, 1993) in view of
Stubbs (US 5,725,007, issued Mar. 10, 1998);
(iii) claims 3 and 5 under 35 U.S.C. § 103(a) as being unpatentable
over Novakovi in view of Stubbs and Danko (US 4,917,357, issued Apr. 17,
1990);
(iv) claim 9 under 35 U.S.C. § 103(a) as being unpatentable over
Novakovi in view of Stubbs and Hanada (US 6,328,277 Bl, issued Dec. 11,
2001);
(v) claims 12 and 13 under 35 U.S.C. § 103(a) as being unpatentable
over Junker (US 2006/0033063 Al, published Feb. 16, 2006) in view of
Stubbs; and
(vi) claim 14 under 35 U.S.C. § 103(a) as being unpatentable over
Junker in view of Stubbs and Danko;
ANALYSIS
Rejection (i) - Indefiniteness
The Examiner takes the position that it is unclear how different
sealing locations can be arranged on different parts of a valve body, which
parts are moveable independently of one another. Final Act. 4; Ans. 2. The
Examiner further explains that the Specification and drawings do not admit
of a seal that is configured to subdivide the space between the valve body
3
Appeal 2016-001104
Application 12/987,563
and valve housing at different locations, as claimed, and that the
Specification and drawings are similarly deficient in describing or showing
parts of a valve body that are movable independently of one another. Ans.
9-12.
Appellants maintain that the disclosure in the Specification that the
seal is a single component capable of sealing at a plurality of different
sealing locations, together with the seal member illustrated in Figure 3,
would be understood as adequately disclosing the corresponding claim
limitation, such that the metes and bounds of that feature can be ascertained.
Appeal Br. 8-9. Appellants assert that what the Examiner interprets as
being either two or three different seals at different levels within the valve
housing in Figure 3 (Ans. 9) is actually intended to represent a single, multi-
level seal, acknowledging that links of some type that would join the upper
and lower portions are not shown in the schematic cross-section view of
Figure 3. Appeal Br. 8.
Notwithstanding the omission of what Appellants refer to as links
from the illustrations provided in the drawings that would evidence that
sealing components at different levels are joined to form a single member,
Appellants' Specification consistently refers to a seal member, and not a
plurality of seal members, providing the sealing at different sealing
locations. It does not appear that other, different embodiments with a
plurality of seal members are contemplated or disclosed. Accordingly, we
disagree with the Examiner that the metes and bounds of the claim are
unclear in this respect, and that Appellants have not distinctly claimed this
aspect of Appellants' invention.
4
Appeal 2016-001104
Application 12/987,563
Turning to the limitation directed to the valve body including a
plurality of parts movable independently of one another, although, as
Appellants point out, the Specification describes the valve body in this
manner, we agree with the Examiner that it remains unclear how this is
effected in the disclosed construction.
Appellants point to a statement in the Specification to the effect that
control air may be introduced in order that "a force can be exerted via
control surfaces on the valve body 16 in order to move the valve body within
the valve housing 14." Appeal Br. 10, citing Spec. i-f 30. Appellants assert
that this brief general statement would be understood by persons of ordinary
skill in the art to bring about no less than four different operations in the
valve, with certain parts of the valve body moving independently of others.
Id. Appellants further contend that persons of ordinary skill in the art would
also recognize that, if certain parts of the valve body were not capable of
moving independently, "the inventive valve would not be able to be closed
pneumatically." Id. (emphasis omitted). Appellant additionally criticizes
the Examiner's position as failing to take into account what a person of
ordinary skill in the art would understand from viewing Figure 3 and the
attendant disclosure. Reply Br. 3.
Aside from the mere statement in the Specification that valve body
may be built from a plurality of components which are movable
independently of one another, as by the use of magnets that are not in direct
contact with one another (see, e.g., Spec, i-f 28), neither Figure 3 nor any of
the other drawings originally filed with the application provide any inkling
as to what components would be movable independently from others, nor
how such action could be effected. Appellants' elaborate discussion as to
5
Appeal 2016-001104
Application 12/987,563
what a person of ordinary skill in the art would understand from the
admittedly schematic drawings and the disclosure that control air may be
introduced to move the valve body (and, notably, not any particular portion
of the valve body) is seen as attorney argument, which in this case does not
adequately substitute for competent evidence. See, Invitrogen Corp. v.
Clontech Labs, Inc., 429 F.3d 1052, 1068 (Fed. Cir. 2005).
Absent adequate disclosure as to how a valve may be constructed to
have different parts of the valve body move independently of one another,
and which components are able to do so, we agree with the Examiner that
the scope of the claim is unclear, and sustain the indefiniteness rejection of
claims 1-6, 9, and 12-14 on this basis. 1
Rejections (ii)-(iv) -- Obviousness
For these rejections, the Examiner relies on Novakovi as disclosing a
seal that subdivides a space between the valve body and valve housing
multiple times at different sealing locations. Final Act. 5. We agree with
Appellants (Appeal Br. 12) that the Examiner has misinterpreted Novakovi,
and that the portions ofNovakovi cited to by the Examiner as meeting this
limitation are actually portions, shown in cross-section, of a single seal
subdividing a space once at one single location. The Examiner does not rely
on the secondary references in any manner that would cure this deficiency.
Accordingly, we do not sustain the rejections of claims 1---6 and 9 as
being unpatentable over Novakovi and the cited secondary references.
1 Although we sustain the rejection of the pending claims as being indefinite
under 35 U.S.C. § 112, second paragraph, the indefiniteness does not impact
our consideration of their rejections under 35 U.S.C. § 103.
6
Appeal 2016-001104
Application 12/987,563
Rejections (v) and (vi) -- Obviousness
For these rejections, the Examiner relies on Junker as disclosing a seal
that subdivides a space between the valve body and valve housing multiple
times at different sealing locations. Final Act. 8. Appellants argue that the
Examiner has misinterpreted Junker, and that the portions of Junker cited to
by the Examiner as a seal, and a seal subdividing the space multiple times at
different sealing locations do not meet these limitations. Appeal Br. 13-14.
The Examiner cites to element 46 as the seal providing the
subdividing of space at different sealing locations. Final Act. 8. Appellants
point out that element 46 is not a seal, and instead element 28, described by
Junker as a seal member, actually provides the sealing function. Appeal Br.
14. Further, according to Appellants, even if element 46 were properly
regarded as being a seal, it only divides the space in which it is positioned a
single time at one location. Id.
Appellants' position is supported by a preponderance of the evidence,
and the Examiner has not correctly interpreted Junker in applying the
teachings thereof to the limitations in claim 12. Accordingly, we do not
sustain the rejections of claims 12-14 as being unpatentable over Junker and
the cited secondary references.
DECISION
The rejection of claims 1-6, 9, and 12-14 under 35 U.S.C. § 112,
second paragraph, as being indefinite, is AFFIRMED.
The rejections of claims 1---6, 9, and 12-14 under 35 U.S.C. § 103(a)
as being unpatentable, are REVERSED.
7
Appeal 2016-001104
Application 12/987,563
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
8