Ex Parte Zub

Board of Patent Appeals and Interferences

Jul 20, 2012

11301220 (B.P.A.I. Jul. 20, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/301,220 12/12/2005 Walter A. Zub 80000/091 7987
36122 7590 07/20/2012
The Ollila Law Group LLC
2569 Park Lane
SUITE 202
Lafayette, CO 80026
EXAMINER
FOX, JOHN C
ART UNIT PAPER NUMBER
3753
MAIL DATE DELIVERY MODE
07/20/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WALTER A. ZUB
____________

Appeal 2009-014679
Application 11/301,220
Technology Center 3700
____________

Before STEFAN STAICOVICI, GAY ANN SPAHN, and
CHARLES N. GREENHUT, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Walter A. Zub (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s final rejection of claims 1-4, 6, 7, and 10 under 35 U.S.C.
§ 102(b) as anticipated by Brake (US 3,902,526, issued Sep. 2, 1975). The
Examiner cancelled claims 5, 8, and 9 pursuant to an Order Remanding to
Examiner mailed July 9, 2009. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2009-014679
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THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, with emphasis added, is illustrative of the
subject matter on appeal.
1. An apparatus, comprising:
an operator for a valve where the operator
has a front end, a back end and a top side;
at least two openings formed into the top
side where the at least two openings are formed in
a line and the line is perpendicular to an axis
running between the front end and the back end;
the at least two openings configured to mate
with a set of fluid passageways of a solenoid when
the solenoid is mounted onto the top side of the
operator.

OPINION
Claims 1-4
The Examiner determines that Brake discloses each and every
limitation to anticipate independent claim 1. Ans. 3-4. In particular, the
Examiner finds that Brake has openings E and F in the top side of housing
C, a “[p]assage G lead[ing] down from opening F and join[ing] passage 68,
which extends to the left end of housing C,” and “[p]assages 110/112
[which] form one passageway and passages G/68 [which] form a second
passageway.” Ans. 3-4 (citing to reference characters from an annotated
reproduction of Brake’s Figures 1, 2, and 4 at Ans. 7-8). The Examiner also
finds that Brake’s “solenoid valve is mounted to the top side of the housing
C,” and “[f]luid flows from opening E to passage K in one position of the
valve, and fluid flows from opening F to opening E in the other position of
the valve.” Ans. 5-6 (again citing to reference characters from the annotated
reproduction of Brake’s Figures 1, 2, and 4 at Ans. 7-8). Therefore, the
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Examiner states that “[t]he elements of the solenoid valve define the path
that the fluid takes in each case,” and “[t]hose flow paths fairly respond to
the claimed passageways.” Ans. 6.
Appellant contends that:
regardless of whether “fluid flows from opening E
to passage K in one position of the valve, and fluid
flows from opening F to opening E in the other
position of the valve”, as the Examiner contends,
as shown in figure 1 of Brake, the solenoid of
Brake is simply not provided with “a set of fluid
passageways” that “mate” with openings E and F
when the solenoid 122 is mounted onto the
housing 12.
Reply Br. 2.
We agree with Appellant. The two openings E and F depicted on the
Examiner’s annotated copy of Brake’s Figures 1, 2, and 4 are not capable of
performing claim 1’s recited intended use of being “configured to mate with
a set of fluid passageways of a solenoid when the solenoid is mounted onto
the top side of the operator.” Where a functional limitation in a claim
expressly or impliedly requires a particular structure different from that in
the prior art, the claimed subject matter is distinguishable from the prior art.
Cf. In re Casey, 370 F.2d 576, 579-581(CCPA 1967) (holding that a claim to
“[a] taping machine comprising … a brush … being formed with projecting
bristles which terminate in free ends to collectively define a surface to which
adhesive tape will detachably adhere” is obvious over a prior art reference
which taught a machine for perforating sheets, because “the references in
[the claim] to adhesive tape handling do not expressly or impliedly require
any particular structure in addition to that of [the prior art].”) In the present
case, as shown in the Examiner’s annotated copy of Figures 1, 2, and 4 of
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Application 11/301,220

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Brake, the Examiner has only identified a single fluid passageway K in the
solenoid assembly 120 and the openings E and Fare concentric, and are not
configured to mate with a set of fluid passageways.
Accordingly, we do not sustain the Examiner’s rejection of claim 1,
and claims 2-4 dependent thereon, under 35 U.S.C. § 102(b) as anticipated
by Brake.
Claims 6 and 7
Claim 6 recites “a slot for mounting the solenoid, where the slot is
formed into the top side [of the operator].” App. Br., Clms. App’x.
The Examiner determines that Brake discloses each and every
limitation to anticipate claim 6. Ans. 3-4. In particular, the Examiner finds
that Brake discloses a solenoid valve 120 or 122 which includes: “seat 104
having passage 106; valve element-armature 126 having seals 126a, 126b;
coil 124; and exhaust seat 128.” Ans. 4. The Examiner also finds that “[a]ll
of the listed valve elements are disposed below the top surface H of the end
walls D1, D2 of the cover D as shown in Figure 1,” and “[e]nd walls D1 and
D2 form a slot in which the solenoid valve is mounted.” Ans. 4 (citing to
reference characters from an annotated reproduction of Brake’s Figures 1, 2,
and 4 at Ans. 7-8). The Examiner notes that “[t]he recitations of ‘formed
into’ relate to a method of making the apparatus and do not distinguish over
the apparatus of Brake.” Ans. 4.
Appellant contends that “the term ‘formed’ does not limit these claims
to a particular method of making the device.” Reply Br. 3-4.
We agree with Appellant. The claim recitation of “formed into” in
claim 6 is merely reciting the location of the slot in the top side of the
operator, and not a method by which the slot is made. Indeed, the ordinary
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and customary meaning of the verb “form” is “34. to serve to make up; serve
as; compose; constitute,”1 and the ordinary and customary meaning of the
preposition “into” is “5. (used to indicate entry, inclusion, or introduction in
a place or condition).”2 Thus, one of ordinary skill in the art would
understand the claim term “formed into” to mean that the slot for mounting
the solenoid is “constituted for entry or inclusion” in the top side of the
operator. Since the Examiner found that “[e]nd walls D1 and D2 form a
slot in which the solenoid valve is mounted,” and endwalls D1 and D2 are
formed into the solenoid assembly 120 or cover D, not into housing 12 or C,
we cannot sustain the Examiner’s rejection of claim 6, and claim 7
dependent thereon, under 35 U.S.C. § 102(b) as anticipated by Brake.
Claim 10
Claim 10 is directed to a device including:
an operator for a valve with a means for
mounting a solenoid perpendicular to an axis
running from a front end of the operator to the
back end of the operator;
the means for mounting the solenoid having
a means for protecting the solenoid from physical
blows to the sides of the solenoid.
App. Br., Clms. App’x.
The Examiner determines that Brake discloses each and every
limitation to anticipate independent claim 10. Ans. 3-4. In particular, the
Examiner finds that “[e]nd walls D1 and D2 [of the cover D] form a slot in

1 form. Dictionary.com. Dictionary.com Unabridged. Random House, Inc.
http://dictionary.reference.com/browse/form (accessed: July 19, 2012).
2 into. Dictionary.com. Dictionary.com Unabridged. Random House, Inc.
http://dictionary.reference.com/browse/into (accessed: July 19, 2012).

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which the solenoid valve is mounted,” and the “[c]over D inherently
provides protection for the solenoid valve and is thus inherently equivalent
to the slot disclosed in the application, and [thus] meets the means plus
function recitation of claim 10.” Ans. 4, 6 (citing to reference characters
from an annotated reproduction of Brake’s Figures 1, 2, and 4 at Ans. 7-8).
Appellant contends that “the means for protecting the solenoid recited
in claim 10 includes sidewalls of a slot on the operator,” and “walls D1 and
D2 are not ‘sidewalls’” of a slot on the operator. Reply Br. 2-3 (citing to
reference characters from an annotated reproduction of Brake’s Figures 1, 2,
and 4 at Ans. 7-8). Emphasis omitted.
We agree with Appellant. In determining the meaning of independent
claim 10’s recitation of “an operator for a valve with a means for mounting a
solenoid,” we must determine the scope of the claim, particularly the word
“with,” not solely on the basis of the claim language, but upon giving the
claim its broadest reasonable construction in light of the specification as it
would be interpreted by one of ordinary skill in the art. See In re Am. Acad.
of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). An ordinary and
customary meaning of the word “with” is “1. accompanied by;
accompanying.”3 Another ordinary and customary meaning of the word
“with” is “3. characterized by or having.” As we must interpret the meaning
of the claim term “with” in light of the Specification, we note that the
Specification states
Single solenoid operator 1056 comprises an
operator body . . . . Operator body 1070 has a

3 with. Dictionary.com. Dictionary.com Unabridged. Random House, Inc.
http://dictionary.reference.com/browse/with (accessed: July 19, 2012).

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solenoid mount formed into the top surface of the
operator body 1070. Solenoid mount includes two
side walls or flanges 1078 that extend on both
sides of the solenoid mount forming a slot into
which the solenoid 1008 is mounted. The flanges
1078 protect the solenoid 1008 from damage.

Spec. 10-11. Thus, in light of the Specification, the claim language of “an
operator for a valve with a means for mounting a solenoid” would be
understood by one of ordinary skill in the art to mean that the operator for
the valve is characterized by or has the means for mounting the solenoid,
i.e., the slot.
In view of our construction, the Examiner’s finding that Brake’s
sidewalls D1 and D2 form a slot does not satisfy claim 10’s language,
because the slot (sidewalls D1 and D2) are located in Brake’s solenoid
assembly 120 or cover D, not in Brake’s operator or housing 12 or C. As the
Examiner has failed to make a finding that Brake’s operator or housing 12 or
C includes a slot or means functioning to mount a solenoid perpendicular to
an axis running from a front end of the operator to the back end of the
operator, and which includes a means functioning to protect the solenoid
from physical blows to the side of the solenoid, we do not sustain the
Examiner’s rejection of claim 10 under 35 U.S.C. § 102(b) as anticipated by
Brake.

DECISION
We reverse the Examiner’s decision to reject claims 1-4, 6, 7, and 10.

REVERSED

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