Frank Hermann et al.

Patent Trials and Appeals Board

Feb 6, 2020

14523288 - (D) (P.T.A.B. Feb. 6, 2020)

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.
14/523,288 10/24/2014 Frank Hermann 510309 8849
53609 7590 02/06/2020
REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
EXAMINER
HICKS, ANGELISA
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
02/06/2020 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):
RockMail@reinhartlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FRANK HERMANN and LUCAS MIKESCH
____________

Appeal 2019-002858
Application 14/523,288
Technology Center 3700
____________

Before STEFAN STAICOVICI, CHARLES N. GREENHUT, and
BRETT C. MARTIN, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE.
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Non-Final Office Action (dated May 1, 2018) rejecting
claims 1–11.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Bitzer Kuehlmaschinenbau GmbH is identified as the real
party in interest in Appellant’s Appeal Brief (filed Nov. 30, 2018). Appeal
Br. 2.
2 Claims 12–16 are canceled. Appeal Br. 13 (Claims App.).
Appeal 2019-002858
Application 14/523,288
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INVENTION
Appellant’s invention relates to a shut-off valve that “has the smallest
possible flow resistance in the open position of the valve element.” Spec. 1
para. 6.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. A shut-off valve including a valve housing, a valve seat
which is held on the valve housing, and a valve element which
is movable in the valve housing relative to the valve seat and is
movable by means of an adjusting unit, wherein the valve
element has a valve disc which is provided, on its side facing
the valve seat, with a sealing element that abuts against the
valve disc, the valve disc having, on a side facing the sealing
element, an elevated region that is arranged to circulate in a
closed manner and against which the sealing element abuts, the
elevated region being formed such that, when the sealing
element is urged in the direction of the valve disc, it digs into
the sealing element, the valve seat having an intake wall and an
outtake wall and a transitional surface rounded in cross-section
creating a transition from the intake wall to the outtake wall, the
sealing element having a conical outer surface by means of
which the sealing element is abuttable along a line of contact
against the rounded transitional surface forming the valve
seat;
and wherein a radius of the elevated region, that runs
peripherally and in a closed manner around a spindle axis, is
larger than the radius of the transitional surface.

REJECTIONS
I. The Examiner rejects claims 1–9 under 35 U.S.C. § 103(a) as
being unpatentable over Thompson3 and Urquhart.4

3 Thompson, US 4,249,717, issued Feb. 10, 1981.
4 Urquhart, US 2,311,009, issued Feb. 16, 1943.
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Application 14/523,288
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II. The Examiner rejects claim 10 under 35 U.S.C. § 103(a) as
being unpatentable over Thompson, Urquhart, and Davis.5
III. The Examiner rejects claim 11 under 35 U.S.C. § 103(a) as
being unpatentable over Thompson, Urquhart, Davis, and
Kollegen.6,7

ANALYSIS
Rejection I
The Examiner finds that the combined teachings of Thompson and
Urquhart disclose “a radius of the elevated region (Urquhart, 10) that runs
peripherally and in a closed manner around a spindle axis, is larger than the
radius of the transitional surface (See Urquhart Annotated Fig. 5).” Non-
Final Act. 5.
Appellant argues that “neither Thompson nor Urquhart, taken alone or
in combination, shows an elevated region having a radius such that the
elevated region runs peripherally and in a closed manner around the spindle

5 Davis, US 2,643,849, issued June 30, 1953.
6 The Examiner’s citation to “Kollegen (DE 2019332)” is not clear because
Kollegen refers to DE 299 19 332 U1 (published Mar. 2, 2000), not DE 2
019 332 (published Nov. 4, 1971). Non-Final Act. 6. However, we note
that the Examiner relies on “locking element (27)” (see id. at 7), which is
taught by DE 2 019 332 as “klemmutter 27,” i.e., locknut 27. See DE 2 019
332, page 6. In contrast, DE 299 19 332 refers to element 27 as a recess (see
English language Abstract in the image file wrapper of the instant
application). As such, we consider that in the context of this rejection the
Examiner relied on DE 2 019 332. For consistency purposes, like the
Examiner, we refer to DE 2 019 332 as “Kollegen.”
7 As claims 10 and 11 depend indirectly from independent claim 1, the
Examiner’s omission of Urquhart in the heading of Rejections II and III is
considered a typographical error. See Non-Final Act. 3, 6.
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Application 14/523,288
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axis, which radius is greater than the radius of the transitional surface.”
Appeal Br. 6. Appellant asserts that the Examiner is employing the separate
and distinct embodiments of Urquhart’s Figures 5 and 7, but “[does not]
clearly show[] how the two embodiments . . . are being combined with
Thom[pson].” Id. at 6–7.
The Examiner responds that “only figures 7 and 8 of Urquhart are
relied upon.” Ans. 8.8 The Examiner notes that “Thompson discloses the
elevated region as being element 40 and the transitional surface is element 5
of Urquhart.” Id. The Examiner further notes that “elements 16 and 18
were utilized as a manner to point out the location of the transitional
surface.” Id.
We appreciate the Examiner’s reliance on Thompson to disclose, inter
alia, a valve disc 26 having an annular rib 48 that corresponds to the claimed
“elevated region.” See Non-Final Act. 4; see also Thompson, Fig. 3. We
further appreciate the Examiner’s finding that Urquhart’s valve seat 5 is
provided with a curved surface, i.e., rounded surface, which corresponds to
the claimed “transitional surface.” See Non-Final Act. 4; see also Urquhart,
p. 2, ll. 10–13 (“[t]he valve seat 5 is provided with a rounded inner face
17.”), Fig. 7.
However, we agree with Appellant that the Examiner has not
adequately shown “how the elevated region in Thompson satisfies the
limitation requiring the radius of the elevated region to be larger than the
radius of the transitional surface [in Urquhart].” Reply Br. 7.9 In other
words, the Examiner’s determination that in the combined teachings of

8 Examiner’s Answer, dated Dec. 31, 2018.
9 Appellant’s Reply Brief, filed Feb. 27, 2019.
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Thompson and Urquhart, elevated region 48 of Thompson has a radius that
is larger than the radius of Urquhart’s transitional surface 17 requires
speculation on the Examiner’s part. Patentability determinations “should be
based on evidence rather than on mere speculation or conjecture.” Alza
Corp. v. Mylan Laboratories, Inc., 464 F. 3d 1286, 1290 (Fed. Cir. 2006).
Here, the Examiner does not articulate sufficient facts or technical reasoning
such that a person of ordinary skill in the art can determine by a
preponderance of the evidence that in the combined teachings of Thompson
and Urquhart elevated region 48 of Thompson would have a radius that is
larger than the radius of Urquhart’s transitional surface 17, as called for by
independent claim 1. Moreover, the Examiner does not articulate an
adequate reasoning why a skilled artisan would provide a radius to elevated
region 48 of Thompson that is larger than the radius of Urquhart’s
transitional surface 17. Hence, we find that the Examiner’s legal conclusion
of obviousness is not supported by sufficient factual evidence, and thus,
cannot stand. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967)
(holding that “[t]he legal conclusion of obviousness must be supported by
facts. Where the legal conclusion is not supported by facts it cannot
stand.”).
Accordingly, for the foregoing reason, we do not sustain the rejection
under 35 U.S.C. § 103(a) of independent claim 1, and its dependent claims
2–9, as unpatentable over Thompson and Urquhart.

Rejections II and III
The Examiner’s use of the Davis and Kollegen disclosures does not
remedy the deficiency of the Thompson and Urquhart combination discussed
above. See Non-Final Act. 6–7.
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Application 14/523,288
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Accordingly, for the same reasons discussed supra, we also do not
sustain the rejections under 35 U.S.C. § 103(a) of claim 10 as unpatentable
over Thompson, Urquhart, and Davis and of claim 11 as unpatentable over
Thompson, Urquhart, Davis, and Kollegen.

CONCLUSION

Claim(s)
rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–9 103(a) Thompson, Urquhart 1–9
10 103(a) Thompson, Urquhart,
Davis
10
11 103(a) Thompson, Urquhart,
Davis, Kollegen
11
Overall
outcome
1–11

REVERSED