Ex Parte Wade

Board of Patent Appeals and Interferences

Jun 27, 2012

10229414 (B.P.A.I. Jun. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte TIM WADE
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Appeal 2010-003992
Application 10/229,414
Technology Center 3700
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Before: JENNIFER D. BAHR, LINDA E. HORNER, and
JOHN C. KERINS, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003992
Application 10/229,414
2
STATEMENT OF THE CASE
Tim Wade (Appellant) originally appealed under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 17, 19-29, and 31-35.
Subsequently, in an Amendment filed September 3, 2009, Appellant
canceled claim 34. Thus, this appeal involves claims 17, 19-29, 31-33, and
35. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The Claimed Subject Matter
Claim 17, reproduced below, is illustrative of the claimed subject
matter.
17. A positive crankcase ventilation valve assembly
comprising:
a housing having a fluid inlet and a fluid outlet;
a poppet valve disposed in the housing between the fluid
inlet and the fluid outlet and movable in an axial direction
between a plurality of positions respectively defining a plurality
of fluid flow rates; and
a plurality of ribs extending radially from one of the
poppet valve and the housing in the axial direction, the plurality
of ribs defining a bearing surface between the housing and the
poppet valve, and wherein the plurality of ribs include a leading
edge facilitating insertion of the poppet valve into the housing
during assembly, and the plurality of ribs and the one of the
poppet valve and the housing are a single component.
Evidence
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Pittsley
McMullen
Otto
US 3,359,960
US 3,766,898
US 4,625,703
Dec. 26, 1967
Oct. 23, 1973
Dec. 2, 1986
Appeal 2010-003992
Application 10/229,414
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Rejections
The following rejections made by the Examiner are before us for
review:1
(1) claims 17, 20, 24-26, 29, 31-33, and 35 under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as
obvious in view of Otto;
(2) claims 19, 27, 28, and 31 under 35 U.S.C. § 103(a) as unpatentable
over Otto; and
(3) claims 21-23 under 35 U.S.C. § 103(a) as unpatentable over Otto and
either McMullen or Pittsley.
OPINION
Rejection (1)
Appellant does not present any separate arguments for the
patentability of claims 20, 24-26, 29, 31-33, and 35 apart from claim 17. See
App. Br. 6. Thus, in accordance with 37 C.F.R. § 41.37(c)(1)(vii) (2011),
we select claim 17 as representative, with the remaining claims standing or
falling with claim 17.
In rejecting claim 17 under 35 U.S.C. § 102(b) as anticipated by Otto,
the Examiner takes the position that Otto’s means 57 (finned part 58), which
carries ribs (fins 59), and valve member 30 are a “single component”
because they are assembled integrally and act as a single functional unit.
Ans. 5. In the alternative, the Examiner rejects claim 17 under 35 U.S.C.
§ 103(a), taking the position that it would have been obvious “to form the
ribs with either the housing or the valve, since it has been held that forming

1 The rejection of claim 34 under 35 U.S.C. § 112, second paragraph is
moot, as Appellant canceled claim 34.
Appeal 2010-003992
Application 10/229,414
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in one piece an article which has formerly been formed in two pieces and put
together involves only routine skill in the art.” Id.
Appellant contests both of the Examiner’s positions in addressing the
“single component” limitation of claim 17. App. Br. 5; Reply Br. 1-2.
Thus, the issues raised in the appeal of rejection (1) are whether Otto’s valve
member 30 and finned part 58 together are “a single component,” as
required in claim 17, or, in the alternative, whether it would have been
obvious to modify Otto’s valve member 30 and finned part 58 to make them
one piece.
Otto discloses that the stem portion 53 of the valve member 30 carries
a means 57, comprising a finned part 58 having a plurality of
circumferentially spaced apart fins 59 that cooperate with the internal
peripheral surface means 46 of the housing means 22 on the outlet side 55 of
the valve seat means 25 to reduce vibration, oscillation, or wobble of the
valve member 30. Col. 4, ll. 52-64. Otto discloses that “[t]he reduced end
62 of the stem portion 53 of the valve member 30 can be secured in the
opening 61 of the finned part 58 in any suitable manner, such as by having
the part 58 press-fitted thereon, adhesively secured thereon, etc.” Col. 5, ll.
1-5.
Otto also discloses two alternatives for assembly of the flow control
device 20. In a first alternative, the control device 20 is completely
assembled except for the finned part 58, leaving the stem portion 53
projecting through the opening 54 in the valve seat means 25 “a sufficient
distance to permit the finned part 58 to be inserted through the outlet 24 and
be forced onto the reduced part 62 of the valve member 30.” Col. 6, ll. 39-
50. According to Otto, the first alternative “permits a finned part 58 to be
assembled onto the valve member 30 after the valve member 30 has been
Appeal 2010-003992
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disposed in the housing means 22 and the housing members 38 and 39 have
been secured together.” Col. 6, ll. 53-56. In a second alternative, “if the
diameter of the opening 54 of the valve seat means 25 is larger than the
outside diameter of the finned part 58, the finned part 58 can be
preassembled on the valve member 30” before the “preassembled valve
member” is placed within the housing member 39. Col. 6, ll. 56-66.
Appellant contests the Examiner’s finding that Otto’s valve member
30 and finned part 58 “act as a single functional unit” and thus are a “single
component,” because Otto’s ribs 59 are carried on a means 57 separate from
the housing or the valve member and can be inserted within the valve after
the valve member 30. App. Br. 5; Reply Br. 1-2. Appellant’s argument
appears to be premised on an unduly narrow reading of “single component”
and is not convincing.
Otto describes a component of the control device comprising the valve
member 30 and the finned part 58 (which includes the fins 59) integrally
secured together. In fact, Otto refers to this component as the “preassembled
valve member.” Col. 6, l. 60. Thus, the Examiner did not err in finding that
Otto’s fins 59 and valve member 30 are a “single component” as called for
in claim 17.
Appellant contests the Examiner’s determination that it would have
been obvious to form Otto’s ribs (fins) with either the valve member or the
housing, because, according to Appellant, the proposed modification would
destroy the “optional function” of permitting the means 57 to be inserted
within the valve after the valve member 30. App. Br. 5; Reply Br. 2. This
argument is not convincing.
As we found above, Otto discloses two alternative techniques for
assembling the control device 20, one of which comprises securement of the
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finned part 58 to the valve member 30 after the valve member has been
placed within the valve housing and the other of which comprises securing
the finned part 58 to the valve member 30 before placing the preassembled
valve member/finned member component into the valve housing. As
pointed out by the Examiner (Ans. 8), Otto does not attribute any particular
advantage to either technique. Neither does Otto disclose “an ‘optionally
removable’ function” of the fins 59 as alleged by Appellant (Reply Br. 2).
Thus, there is no such optional function that is destroyed by the Examiner’s
proposed modification.
In light of Otto’s disclosure of a preassembled valve member with an
integral finned part, a person of ordinary skill in the art would have
immediately envisaged the possibility of forming the finned part with the
valve member as proposed by the Examiner. “A person of ordinary skill is
also a person of ordinary creativity, not an automaton.” KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 421(2007). See also Perfect Web Tech., Inc. v.
InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) (“while an analysis of
obviousness always depends on evidence … it also may include recourse to
logic, judgment, and common sense available to the person of ordinary skill
that do not necessarily require explication in any reference”). The Examiner
did not err in determining it would have been obvious to form the fins 59
with Otto’s valve member 30.
For the above reasons, we sustain the Examiner’s rejection of claim
17 and claims 20, 24-26, 29, 31-33, and 35, which fall with claim 17, under
35 U.S.C. § 102(b) as anticipated by, or, in the alternative, under 35 U.S.C.
§ 103(a) as obvious in view of Otto.
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Rejections (2) and (3)
(4) In contesting rejections (2) and (3). Appellant relies on the argument
that the Examiner’s proposed modification to form the ribs with either
the housing or the valve would destroy the option of having a separate
finned part. App. Br. 6. This argument is not convincing for the
reasons discussed above. We sustain the rejections of claims 19, 27,
28, and 31 as unpatentable over Otto and of claims 21-23 as
unpatentable over Otto and either McMullen or Pittsley.
DECISION
The Examiner’s decision rejecting claims 17, 19-29, 31-33, and 35 is
affirmed.
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).
AFFIRMED

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