Ex parte Yumoto

Board of Patent Appeals and Interferences

Feb 26, 1998

08226521 (B.P.A.I. Feb. 26, 1998)

Application for patent filed April 12, 1994.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte HIDEAKI YUMOTO

_____________
Appeal No. 97-1242
Application 08/226,5211
______________
ON BRIEF
_______________
Before McCANDLISH, Senior Administrative Patent Judge, and COHEN
and MEISTER, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
Appeal No. 97-1242
Application 08/226,521
2
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 5, all of the claims in the application. In the answer
(page 1), the examiner now indicates that dependent claim 5 is
allowable. Accordingly, we have before us for review the
rejection of claims 1 through 4.
Appellant’s invention pertains to a thermally-actuated
steam trap. An understanding of the invention can be derived
from a reading of exemplary claim 1, a copy of which appears in
the APPENDIX to appellant’s main brief (Paper No. 17).
As evidence of obviousness, the examiner has applied
the documents listed below:
Stalker 1,572,970 Feb. 16, 1926
Clayton et al. (Clayton) 4,295,605 Oct. 20, 1981
Yumoto 5,197,669 Mar. 30, 1993
A reference already of record in the application and applied by
this panel of the board in a new ground of rejection, infra, is:
Jones 2,289,020 Jul. 7, 1942
The following rejections are before us.
Claim 1 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Yumoto in view of Stalker.
Appeal No. 97-1242
Application 08/226,521
In our evaluation of the applied teachings, we have2
considered all of the disclosure of each teaching for what it
would have fairly taught one of ordinary skill in the art. See
In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA 1966).
Additionally, this panel of the board has taken into account not
only the specific teachings, but also the inferences which one
skilled in the art would reasonably have been expected to draw
from the disclosure. See In re Preda, 401 F.2d 825, 826, 159
USPQ 342, 344 (CCPA 1968).
3
Claims 2 through 4 stand rejected under 35 U.S.C. § 103
as being unpatentable over Yumoto in view of Stalker, as applied
above, further in view of Clayton.
The full text of the examiner's rejections and response
to the argument presented by appellant appears in the final
rejection and answer (Paper Nos. 13 and 18), while the complete
statement of appellant’s argument can be found in the main and
reply briefs (Paper Nos. 17 and 19).

OPINION
In reaching our conclusion on the obviousness issues
raised in this appeal, this panel of the board has carefully
considered appellant’s specification and claims, the applied
patents, and the respective viewpoints of appellant and the2
examiner. As a consequence of our review, we make the
determinations which follow.
Appeal No. 97-1242
Application 08/226,521
4
The respective rejections of claim 1 and claims 2
through 4 under 35 U.S.C. § 103 are reversed.
We, of course, fully appreciate the examiner’s
assessment of the applied prior art, as well as the manner in
which the examiner proposes that the references be applied.
However, the difficulty that we have with the rejections is that
when we set aside what appellant has disclosed to us in the
present application, it is at once apparent to us that the
applied patents themselves would not have been suggestive of the
invention now claimed.
The Yumoto patent clearly addresses a thermally-
actuated steam trap, acknowledged by appellant (main brief,
page 12) to include a diaphragm member 15, 16 with a wave-like
configuration (Figures 1 and 2). As depicted in Figure 2 of
Yumoto, when the valve member 17 is seated on the valve seat
member 9, the movable diaphragm member 15, 16 engages the
apparently smooth top surface of the bottom member 18.
The examiner proposes to modify the aforementioned
teaching based upon the Stalker patent. This reference relates
to a fluid pressure diaphragm including an inner pressure
containing capsule of relatively light or thin material (discs
Appeal No. 97-1242
Application 08/226,521
5
14, 19) combined with an outer capsule of relatively heavy and
strong
material (discs 8,9) constructed to resist fatigue and to
“continuously support” the expansive movement of the lighter
inner capsule to the interior of which pressure is applied.
From our perspective, the teaching of Stalker would not
have been suggestive of modifying the upper surface of the bottom
member 18 of Yumoto to be of wave-like shape. Simply stated,
unlike the operation of the diaphragm within the steam trap of
Yumoto, which is a working member movable between the cover
member 15 and the bottom member 18, the inner discs 18, 19 are
continuously supported by the outer discs 8,9 effecting the com-
posite wall structure of the Stalker diaphragm. Stalker simply
lacks a teaching of a movable diaphragm that can engage a member
at one extent of its movement.
The patent to Clayton concerns itself with a “balanced”
pressure thermostatic element of a bellows (Figure 1) or a multi-
diaphragm arrangement (Figures 2A and 2B) wherein volatile fluid
surrounds and supports the element, distinct from the steam trap
of the present invention and that of the Yumoto reference. Of
interest, is the spring-biased configuration of Clayton which
Appeal No. 97-1242
Application 08/226,521
6
enables the leaves of the bellows (Figure 1), as well as the
diaphragms of corrugated form (Figure 3), to fully nest to
withstand great pressure upon a further heating (superheating)
and overpressurization of the volatile fluid after the closing
of the trap (valve member seating). The Clayton patent does not
overcome the deficiency of the Yumoto and Stalker patents.
NEW GROUND OF REJECTION
Under the authority of 37 CFR § 1.196(b), this panel of
the board introduces the following new ground of rejection.
Claims 1 and 2 are rejected under 35 U.S.C. § 103 as
being unpatentable over Yumoto in view of Jones.
The patent to Yumoto (Figures 1 through 4) addresses
the claimed invention but for a curved region on the upper
surface of the lower disk-shaped wall member 18 corresponding to
the wave configuration of the diaphragm member 15, 16.
The Jones patent informs us (page 2, column 2, lines 28
through 57, and page 3, column 1, lines 40 through 46) that in
the steam trap art, at the time of appellant’s invention, it was
known to provide a rigid backing with annular concentric ribs
corresponding to the configuration of a movable disc-like member
Appeal No. 97-1242
Application 08/226,521
The test for obviousness is what the combined teachings of3
references would have suggested to one of ordinary skill in the
art. See In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091
(Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425, 208 USPQ
871, 881 (CCPA 1981).
7
(Figures 1 and 5) whereby when the movable disk-like member
contacts the rigid backing the member is not subject to injury
due to excessive pressure, i.e., no undue stretching or rupture
of the disk-like member can take place.
In applying the test for obviousness, this panel of3
the board determines that it would have been obvious to one
having ordinary skill in the art, from a combined consideration
of the applied teachings, to configure the upper surface of the
lower disk-shaped wall member 18 of Yumoto with a curved region
corresponding to the wave configuration of the diaphragm member
15, 16. In our opinion, the incentive on the part of one having
ordinary skill in the art for making this modification would have
simply been to gain the art recognized advantage thereof, i.e.,
protecting the diaphragm from undue stretching or rupture, as
taught by Jones. For this reason, the subject matter of claim 1
is unpatentable. We note that the particular content of claim 2
Appeal No. 97-1242
Application 08/226,521
8
is addressed by the teaching of an elastic holding member 20 in
Yumoto.
In summary, this panel of the board has:
reversed the rejection of claim 1 under 35 U.S.C. § 103
as being unpatentable over Yumoto in view of Stalker; and
reversed the rejection of claims 2 through 4 under
35 U.S.C. § 103 as being unpatentable over Yumoto in view of
Stalker and Clayton.
Additionally, we have introduced a new ground of
rejection for claims 1 and 2 pursuant to our authority under
37 CFR § 1.196(b).
The decision of the examiner is reversed.
This decision contains a new ground of rejection pur-
suant to 37 CFR § 1.196(b) (amended effective Dec. 1, 1997, by
final rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997),
1203 Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR § 1.196(b) provides that “[a] new ground of rejection
shall not be considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exer-
Appeal No. 97-1242
Application 08/226,521
9
cise one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings (37 CFR
§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of
the claims so rejected or a showing of facts
relating to the claims so rejected, or both,
and have the matter reconsidered by the
examiner, in which event the application will
be remanded to the examiner. . . .
(2) Request that the application be
reheard under § 1.197(b) by the Board of
Patent Appeals and Interferences upon the
same record. . . .
No time period for taking any subsequent action in con-
nection with this appeal may be extended under 37 CFR § 1.136(a).
REVERSED
37 CFR 1.196(b)
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge )
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JAMES M. MEISTER )
Appeal No. 97-1242
Application 08/226,521
10
Administrative Patent Judge )
Appeal No. 97-1242
Application 08/226,521
11
Jordan and Hamburg
122 East 42nd Street
New York, NY 10168