Ex Parte Uy et al

Patent Trial and Appeal Board

Mar 22, 2018

14014660 (P.T.A.B. Mar. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/014,660 08/30/2013
23370 7590 03/26/2018
KILPATRICK TOWNSEND & STOCKTONLLP
Mailstop: IP Docketing - 22
1100 PEACHTREE STREET
SUITE 2800
ATLANTA, GA 30309
DindoUy
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.
612211884394 1532
EXAMINER
SCHNEIDER, CRAIG M
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
03/26/2018 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):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DINDO UY and EUSEBIO DOMINGO BARENG
Appeal2017-004891
Application 14/014,660
Technology Center 3700
Before JENNIFERD. BAHR, WILLIAM A. CAPP, and
SEAN P. O'HANLON, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant 1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1 and 3 under 35 U.S.C. § 103(a) as unpatentable
over the Jandy Valve Actuator Installation Manual (April 2008) (hereinafter
"Jandy") and Essam (US 6,920,409 B2, iss. July 19, 2005). We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Appellant is the Applicant, Zodiac Pool Systems, Inc., which, according to
the Appeal Brief, is the real party in interest. Appeal Br. 3.
Appeal2017-004891
Application 14/014,660
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A method of deploying a valve actuator forming part of a
water-recirculation system of a pool or spa, comprising:
a. communicatively coupling the valve actuator to an
electronic controller;
b. thereafter determining transit time, between first and
second positions, of a component of the valve actuator, the first
and second positions defining maximum transit boundaries of
the component during operation; and
c. thereafter communicating from the electronic
controller to the component so as to stop transit of the
component before elapse of the transit time and thereby permit
corresponding water flow through the valve for circulation in
the water-recirculation system of the pool or spa.
DISCUSSION
The rejection of claims 1 and 3 is predicated in pertinent part on the
Examiner's finding that "Essam teaches the step of determining transit time,
between first and second positions" defining maximum transit boundaries of
the component. Final Act. 4--5 (citing Essam 6:41--48; Fig. 3); Ans. 4, 8.
The Examiner explains, "[i]n order to produce a partial stroke test of the
valve based on the information gathered from the normal pressure/time
signature" (signature A in Figure 3), "a predetermined closure percentage
(10%, 20%, 30%, etc[.]) is chosen and input into a computer 200," thereby
setting "timing means 202 to a new time [that is] less than the 'default long
time"' (i.e., the time used to generate the normal full stroke pressure/time
signature (signature A) shown in Figure 3) "and calculated to provide the
predetermined percentage closure." Ans. 6-7 (citing Essam 6:26-7:6). The
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Application 14/014,660
Examiner continues, "[i]t is apparent from the foregoing that in order for the
partial stroke testing to occur, the testing control means must know several
parameters, namely, valve closing speed and time." Id. at 7 (emphasis
added).
Appellant acknowledges that Essam "arguably determines 'a default
long time,"' but contends that "this time is unrelated to any transit time of
valve 10 between two maximum positions" and, instead, is merely "a length
of time chosen to be sufficiently long as to ensure all of the desired pressure
information may be collected before relay means 203 again changes state."
Appeal Br. 7. Appellant submits that Essam does "not determine the length
of time required for valve 10 to travel from fully-open to fully-closed and
then utilize this maximum travel time as a proxy for position of the valve."
Id. Rather, Appellant argues that pressure signals are created as a function
of time as valve 10 moves, and these pressure signals are subsequently used
to adjust the time over which relay means 203 disconnects voltage from
line 19 for the partial stroke test. Id. at 7-8.
The Examiner acknowledges that the "default long time" used in
Essam's method to generate normal pressure/time signature A "is a time
period long enough for the valve to close," but insists that Essam's "control
means must inherently collect data regarding the transit time between a first
(open) and second (closed) position of the valve actuator 11" because the
partial stroke test is based on setting "timing means 202 to a new time less
than the default 'long time."' Ans. 7 (emphasis added). According to the
Examiner, "[ o ]nee the transit time between a first and second position of the
valve actuator 11 is known, it is possible to actuate the valve actuator 11 to a
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Application 14/014,660
predetermined closure percentage (10%, 20%, 30%, etc[.]) by altering the
timing means 202 to a value less than the default 'long time."' Id.
The Examiner finds, correctly:
[D]uring a normal testing of the valve, the timing means 202 is
set to a default "long time" and valve actuator 11 transits from a
fully open to a fully closed position. Pressure signal "A" is
generated (Fig. 3) and the data is stored in computer 201 on the
test control means 21. Based on this information, a
predetermined pressure closure figure (10%, 20%, 30%, etc[.])
is chosen and input and the timing means 202 is set to a new
time less than the default "long time."
Id. at 7-8; see Essam 6:41-7:6. However, the Examiner then deduces that
"[k ]now ledge of the transit time between the fully open and fully closed
position is required to set the timing means 202 to a new time in order to
produce a partial closure." Ans. 8 (emphasis added). The Examiner notes
that point 104 on trace A in Essam's Figure 3 represents full closure, and
asserts that "it is clear" from the graph of Figure 3 "that the timing control
means 21 is able to calculate the exact time that pressure reaches zero and
full closure is achieved." Id. (citing Essam 8:52-53) (emphasis added).
Thus, "[i]t is the Examiner's position that this time of full closure 104 is
used to configure the timing means 202 to a new time less than the default
'long time' in order to produce a predetermined valve closure (10%, 20%,
30%, etc[.])." Id. According to the Examiner, "[t]he disclosure of Essam,
therefore, inherently practices the method of determining a transit time
between a first and second positions defining maximum transit boundaries of
a valve actuator, and thereafter stopping transit of the valve actuator before
elapse of the transit time, required by the Appellant's claims." Id. (emphasis
added).
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Application 14/014,660
Thus, the Examiner, finding no express teaching in Essam of
determining the transit time between first and second positions defining
maximum transit boundaries of the valve actuator component (i.e., between
fully open and fully closed positions of the valve), relies on the theory of
inherency in addressing this claim limitation. "Inherency, however, may not
be established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient." In re
Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (quoting Continental Can Co.
v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991)). "The inherent
teaching of a prior art reference, a question of fact, arises both in the context
of anticipation and obviousness." In re Napier, 55 F.3d 610, 613 (Fed. Cir.
1995) (citing In re Grasselli, 713 F.2d 731, 739 (Fed. Cir. 1983)).
The pressure/time data produced by sensor 51 and reflected in
pressure signal A in Figure 3 of Essam provides enough information to
permit the transit time from the fully open, non-emergency position of valve
10 when relay means 203 disconnects voltage from line 19 (point 100) to the
fully closed position (which occurs at point 104) to be determined, or
calculated. However, the Examiner does not identify, nor do we discern,
any disclosure by Essam that such a calculation is actually made. Essam
teaches that "[a Jn analysis of the signature A will show the change in the
pressure applied to the actuator from full system pressure to atmospheric
over the time it takes for the emergency valve 10 to fully close." Essam
6:61---64 (boldface omitted). Essam discloses further that "[t]o produce a
partial closure of the emergency valve based on this information, a
predetermined percentage closure figure (e.g., 10%, 20%, 30%) is chosen
and input into [a computer] and transmitted to the computer in control
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Application 14/014,660
means 21," thereby causing timing means 202 to be set "at a new time less
than the default time and calculated to provide the predetermined percentage
closure figure." Id. 6:65-7:6 (boldface omitted).
As Appellant points out, although it is possible that Essam's system
calculates the "new time less than the default time" (Essam 7 :4) for partial
closure by first calculating the transit time of valve 10 from the fully open
position to the fully closed position "as supposed by the Examiner," this is
not necessarily how Essam calculates the new time. Reply Br. 3. Essam
teaches broadly analyzing signature A to "show the change in the pressure
applied to the actuator from full system pressure to atmospheric over the
time it takes for the emergency valve 10 to fully close." Essam 6:61---64
(boldface omitted). It is possible that, instead of calculating the transit time
from fully open to fully closed, Essam's computer analyzes the pressure
values to determine the pressure, and corresponding time, corresponding to
particular percentage closures (e.g., 10%, 20%, or 30%) of the valve. See
Reply Br. 4.
For the above reasons, Essam does not support by a preponderance of
evidence the Examiner's finding that Essam "inherently practices the
method of determining a transit time between a first and second positions
defining maximum transit boundaries of a valve actuator" (Ans. 8 (emphasis
added)). Accordingly, we do not sustain the rejection of claim 1, or claim 3,
which depends from claim 1, as unpatentable over Jandy and Essam.
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DECISION
The Examiner's decision rejecting claims 1 and 3 is reversed.
REVERSED
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