Shawn Pollock et al.

Patent Trials and Appeals Board

May 7, 2021

2020001153 (P.T.A.B. May. 7, 2021)

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.
14/248,015 04/08/2014 Shawn Justin Pollock 510054 4177
53609 7590 05/07/2021
REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
EXAMINER
FOX, JOHN C
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
05/07/2021 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 SHAWN JUSTIN POLLOCK and
STEVEN CHARLES STUMBO
____________

Appeal 2020-001153
Application 14/248,015
Technology Center 3700
____________

Before STEFAN STAICOVICI, EDWARD A. BROWN, and
WILLIAM A. CAPP, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s
decision rejecting claims 2–8 and 10–12.2,3 We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Woodward, Inc., as the real party in
interest. Appeal Br. 2.
2 Claims 1, 9, and 13 are cancelled, and claims 14–20 are withdrawn from
consideration. Appeal Br. 2.
3 The Board previously issued a Decision on August 31, 2018 in Appeal No.
2017-006337, in the present application.
Appeal 2020-001153
Application 14/248,015

2
CLAIMS
Claims 2 and 10 are independent. Claims 3–8 depend from claim 2,
and claims 11 and 12 depend from claim 10. Claim 2 is illustrative, and
reads:
2. An air valve for modulating bleed air from the
compressor section of a turbine engine, the air valve
comprising:
a housing defining an inlet and first and second outlets,
wherein a flow path extends through the housing and between
the inlet and first and second outlets;
a metering element disposed within the housing and
within the flow path, the metering element including a first flow
port, and a second flow port, the metering element having a side
wall with a curved outer periphery, the first and second flow
ports extending through the side wall;
a first and a second shoe disposed on either side of the
metering element, the first shoe operable to communicate bleed
air received from the first flow port to the first outlet, the
second shoe operable to communicate bleed air received from
the second flow port to the second outlet;
wherein the first port has a width which extends along
the curved outer periphery at a first arc length; and
wherein the second port has a width which extends along
the curved outer periphery at a second arc length greater than
the first arc length.

Appeal Br. (Claims App. 1).

REJECTION
Claims 2–8 and 10–12 are rejected under 35 U.S.C. § 102(a)(1) as
anticipated by Engelbrecht (US 7,954,513 B2, issued June 7, 2011).

Appeal 2020-001153
Application 14/248,015

3
ANALYSIS
Claims 2, 8, and 10
Appellant indicates that claims 2 and 10 stand and fall together. Final
Act. 6. We select claim 2 as representative.
For claim 2, the Examiner finds that Engelbrecht discloses all recited
limitations, including, inter alia, a valve comprising a housing (valve body
60) defining a first outlet (boom port 30), and a second outlet (bypass port
26), a metering element (valve ball 74) including a first flow port (second
circular opening 120) and a second flow port (wedge-shaped opening 122), a
first shoe (valve seat 84) operable to communicate bleed air received from
the first flow port to the first outlet, and a second shoe (valve seat 76)
operable to communicate bleed air received from the first flow port to the
first outlet. Id. at 4–5 (citing Engelbrecht, Figs. 3, 4).
Appellant disagrees that Engelbrecht discloses first and second shoes
that are “‘operable to communicate bleed air received from the first [or
second] flow port to the first [or second] outlet.’” Appeal Br. 6. Appellant
asserts, Engelbrecht’s valve seats 76, 84 “do not have any structure that is
operable to communicate bleed air received from a port of the ball valve to
an outlet.” Id. at 7. Appellant disagrees with the Examiner’s finding that
“‘the radially inner surfaces of the valve seats of Engelbrecht form part of
the flow paths and are, in fact, operable to communicate fluid received from
the first [or second] flow port to the first [or second] outlet.’” Id. at 8.
(citing Final Act. 3). Appellant asserts that, in Engelbrecht, the radially
inner surfaces of the valve seats sit in contact with ball valve 74 and support
its positioning. Id.
Appeal 2020-001153
Application 14/248,015

4
We disagree with Appellant’s contentions. In Engelbrecht, the curved
surfaces of valve seats 76, 84 are shaped to seat against valve ball 74. See
Engelbrect, Figs. 2–4; col. 2, l. 65–col. 3, l. 9. However, these curved
surfaces are not the “radially inner surfaces” of valve seats 76, 84 found by
the Examiner. Rather, the Examiner identifies the location of a “radially
inner surface” of valve seat 76 in an annotated version of Figure 2 of
Engelbrecht. Ans. 4. The identified “radially inner surface” of valve seat 76
does not contact ball valve 74. The “radially inner surface” of valve seat 76,
and of valve seat 84, are depicted as generally flat surfaces in Engelbrecht,
and, as such, it is not apparent how these surfaces could sit in contact with
ball valve 74, as Appellant contends.
Appellant contends that Engelbrecht fails to disclose that valve seats
76 and 84 are “‘operable to communicate bleed air received from the first [or
second] flow port to the first [or second] outlet’” because Engelbrecht is not
directed to an air valve for the compressor section of a turbine engine, but
rather, “is directed to ‘[a] regulator valve [that] includes an inlet coupled for
receiving a spray solution delivered by a fixed displacement pump coupled
to a solution tank.’” Appeal Br. 8.
The Examiner construes the term “bleed air” and the recitation “for
modulating bleed air from a compressor section of a turbine engine” as
intended use and not as positive structural limitations of the valve. Final
Act. 3; Ans. 3. The Examiner submits that a recitation of an intended use of
a claimed invention must result in a structural difference between the
claimed invention and the prior art in order to patentably distinguish the
claimed invention from the prior art, and, if the prior art structure is capable
of performing the intended use, then it meets the claim. Ans. 3.
Appeal 2020-001153
Application 14/248,015

5
The Examiner’s position is more persuasive. First, in claim 2, the
source of the bleed air, that is, “a compressor section of a turbine engine,” is
recited only in the claim preamble. “In general, a preamble limits the
invention if it recites essential structure or steps, or if it is ‘necessary to give
life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). Conversely, a
preamble “generally is not limiting when the claim body describes a
structurally complete invention such that deletion of the preamble phrase
does not affect the structure . . . of the claimed invention.” Id. at 809.
Additionally, a preamble is generally not limiting when it only states a
purpose or intended use for the invention. Id. “[D]ependence on a particular
disputed preamble phrase for antecedent basis may limit claim scope
because it indicates a reliance on both the preamble and claim body to define
the claimed invention.” Id. at 807. See also Bell Commc’ns Research, Inc.
v. Vitalink Commc’ns Corp., 55 F.3d 615, 620 (Fed. Cir. 1995).
Here, the body of claim 2 describes a structurally complete device,
and, as such, deletion of the source of the bleed air in the preamble does not
affect the claimed structure. Also, the recitation of the source of the bleed
air in the preamble does not provide antecedent basis for any limitation in
the claim body. Nor does Appellant argue persuasively that understanding
any limitation in the body requires reliance on this recitation in the
preamble. Hence, we agree with the Examiner that this recitation as to the
source of the bleed air only states a purpose or intended use for the air valve
having a structure as recited in the claim body.
Regarding the term “bleed air,” however, its recitation in the preamble
provides antecedent basis for its recitation in the claim body. Nonetheless,
Appeal 2020-001153
Application 14/248,015

6
as the claim body describes a structurally complete device, deletion of this
term in the preamble does not appear to affect the claimed structure.
It is Examiner’s position that the “radial inner surfaces” of valve
seats 76, 84 would be capable of communicating bleed air received from a
port of the ball valve to an outlet, as claimed. Ans. 3. The Examiner states
that Appellant’s shoes “may have a longer length relative to the entire flow
path than that of Engelbrecht.” Id. The Examiner points out, however, that
the length of the flow path provided by recited first and second shoes is not
claimed. Id. The relevant issue is whether Engelbrecht’s valve seats are
capable of communicating bleed air, as claimed.
“It is well settled that the recitation of a new intended use for an old
product does not make a claim to that old product patentable.” See In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997); In re Casey, 370 F.2d 576,
580 (CCPA 1967) (the manner in which a device is to be used is not
germane to the issue of patentability of the device itself). As stated in
Schreiber:
[W]here the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to
require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.
Schreiber, 128 F.3d at 1478.
Appellant does not apprise us of error in the Examiner’s determination
that Engelbrecht’s valve seats would be capable of “communicating bleed
air.” According to Appellant, “[t]he inner radial surfaces of the valve seats
76, 84 are so small that they do not even extend out of the housing portions
Appeal 2020-001153
Application 14/248,015

7
60, 88 into the cited outlets 26, 30. Instead, if anything, the housing portions
60, 88 communicate fluid from the ports to the outlets.” Reply Br. 8.
This contention is unpersuasive. Figure 4 of Engelbrecht, for
example, shows the inner radial surface of valve seat 84 as being
approximately aligned with the radial inner surfaces of adjusting nut 88 and
boom port 30. Appellant does not explain persuasively why the radial inner
surfaces of the valve seats would be incapable of communicating bleed air,
as claimed. We therefore sustain the rejection of claim 2, and claims 8 and
10 which are not separately argued, as anticipated by Engelbrecht.
Claims 3, 4, 11, and 12
Claims 3 and 11 both recite:
further comprising a first biasing element interposed between a
shoulder of the first shoe and an internal surface of the housing
to bias the first shoe against the side wall of the metering
element and a second biasing element interposed between a
shoulder of the second shoe and an internal surface of the
housing to bias the second shoe against the sidewall of the
metering element.
Appeal Br. (Claims App. 1, 3) (emphasis added).
For claims 3 and 11, the Examiner finds that Engelbrecht discloses a
first biasing element (o-ring 90) interposed between a shoulder (“outside
surface”) of the first shoe (valve seat 84) and an internal surface of the
housing (“internal surface of . . . [adjusting nut] 88”) to bias the first shoe
against the side wall of the metering element (valve ball 74), and a second
biasing element (o-ring 82) interposed between a shoulder (“outside
surface”) of the second shoe (valve seat 76) and an internal surface (“inside
surface of . . . [valve body] 60 as seen in [F]igure 3”) of the housing (valve
Appeal 2020-001153
Application 14/248,015

8
body 60, adjusting nut 88) to bias the second shoe against the sidewall of the
metering element. Final Act. 3, 11; see also Engelbrecht, Fig. 3. The
Examiner submits that elements 82, 90 will inherently create a “bias”
pressing elements 76, 84 into the outer surface of element 74. Id.
Appellant disagrees that Engelbrecht’s o-rings 82, 90 will inherently
(i.e., necessarily) create bias due to having elasticity. Appeal Br. 10.
Appellant submits that “the valve seats [76, 84] could be journaled or press-
fit within the housing such that it compresses the o-ring without the o-ring
providing bias on the valve seat against the metering element,” and “[t]he
valve seats 76, 84 could be press fit or journaled into their respective
housing part (88 or 60) with the housing parts then being assembled around
the ball valve 74.” Id. Appellant submits that, “[i]n this manner, the o-rings
would still provide sealing without biasing the valve seats against the ball
valve 74.” Id.
In response, the Examiner maintains that “[t]his is such a notoriously
old and well known feature that a routineer in the art would readily
understand how the O-rings and seats of Engelbrecht work.” Ans. 5.
According to the Examiner, “Class 251, Subclass 174 includes over 600 US
publications which at least nominally disclose a valve with a separate sealing
element spring biased against the surface of a movable valve head.” Id.
Engelbrecht discloses the function of o-rings 82, 90, as follows:
Disposed centrally within the valve body 60 is a hollow,
spherical valve ball 74, which, as viewed in FIGS. 2–4, has its
right side seated against an annular, right valve seat 76
positioned within an annular recess 78 formed within a right
end section of the valve body and being joined to an o-ring
groove containing an o-ring 82 for preventing flow across the
interface between the right valve seat 76 and the valve body 60.
Appeal 2020-001153
Application 14/248,015

9
The left side of the ball 74 is seated against an annular left
valve seat 84 positioned within an annular recess 86 formed
within a right end of an adjusting nut 88 having exterior threads
engaged with interior threads at a left end region of the valve
body 60. Leakage along the interface between the valve seat 84
and the adjusting nut 88 is prevented by an o-ring 90 which is
received in an o-ring groove joined to the recess 86.
See Engelbrecht col. 2, l. 65–col. 3, l. 12 (boldface omitted, emphasis
added). Accordingly, o-ring 82 prevents flow across the interface between
valve seat 76 and valve body 60, and o-ring 90 prevents leakage along the
interface between valve seat 84 and adjusting nut 88. Id. Engelbrecht does
not explicitly describe that o-ring 82 biases valve seat 76, or o-ring 90 biases
valve seat 84, against the sidewall of valve ball 74, as required by claims 3
and 11.
To establish inherency, the claimed biasing limitation must
necessarily be present in Engelbrecht; mere possibility is insufficient. See,
e.g., Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1336–37
(Fed. Cir. 2010) (“A prior art reference may anticipate without disclosing a
feature of the claimed invention if that missing characteristic is necessarily
present, or inherent, in the single anticipating reference.”) (brackets
omitted). As pointed out by Appellant, “[i]n relying upon the theory of
inherency, the examiner must provide a basis in fact and/or technical
reasoning to reasonably support the determination that the allegedly inherent
characteristic necessarily flows from the teachings of the applied prior art.”
Appeal Br. 10 (citing Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App.
& Inter. 1990)); see also MPEP ¶ 2112(IV). Here, even assuming the
Examiner is correct that publications exist that “at least nominally disclose a
valve with a separate sealing element spring biased against the surface of a
Appeal 2020-001153
Application 14/248,015

10
movable valve head,” the Examiner does not rely on any such publication in
rejecting claims 3 and 11. Thus, the Examiner has provided no evidence to
support the determination that Engelbrecht’s o-rings 82, 90 inherently, that
is, necessarily, provide the recited biasing.
For these reasons, we do not sustain the rejection of claims 3 and 11,
and claims 4 and 12 depending therefrom, as anticipated by Engelbrecht.
Claims 5 and 6
Claim 5 recites, “at least one of the housing and metering element are
formed from a high temperature material.” Appeal Br. (Claims App. 2).
The Examiner acknowledges that Engelbrecht does not disclose any specific
materials. Final Act. 8. However, the Examiner finds that “‘high
temperature’ is considered to be extremely broad and non-limiting therefore
any material can be considered ‘high temperature.’” Id. (emphasis added).
Appellant’s Specification describes that “[m]etering element 58 and
shoes 62, 64 may be made from high temperature materials. Additionally,
these components may also incorporate high temperature coatings.” See
Spec. ¶ 35. The Specification does not specifically define a “high
temperature material.” However, the Specification describes, “[a]s one
example, air valve 22 may modulate air flow there through at a temperature
ranging from about negative 100° F to about 1200° F.” Id. ¶ 29. Appellant
submits that “the [S]pecification describes temperatures as high as 1200 °F,
and thus, the [S]pecification provides a measure for what can be considered
as ‘high temperature.’” Appeal Br. 11. The Examiner maintains that
“1200°F is 922K and the disclosed range ‘as high as 1200°F’ includes
everything between 1 and 922K.” Final Act. 3.
Appeal 2020-001153
Application 14/248,015

11
We agree with the Examiner that “as high as 1200°F” encompasses
temperatures up to this value. Final Act. 3. However, one of ordinary skill
in the art would understand that “a high temperature material” is one that can
be used in (i.e., withstand) a high temperature environment. We agree with
Appellant that it is unreasonable to construe “high temperature” as broadly
as a range of “between 1 and 922K.” Appeal Br. 11–12. It is also
unreasonable to find that “any material can be considered ‘high
temperature,’” as the Examiner submits. Final Act. 9. This overly-broad
interpretation effectively reads out the term “high temperature” in claim 5,
thereby making the term superfluous. See, e.g., Stumbo v. Eastman
Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim
constructions that render claim language superfluous). The Examiner does
not find that Engelbrecht’s housing or valve ball can be formed of a material
that a person of ordinary skill in the art would consider a “high temperature
material” when claim 5 is read in light of Appellant’s disclosure. Thus, the
Examiner does not establish with sufficient evidence that Engelbrecht
discloses the limitation of claim 5 under a proper construction of “high
temperature material.” Therefore, we do not sustain the rejection of claim 5
as anticipated by Engelbrecht.
Claim 6 depends from claim 2 and recites “the first and second shoes
are at least one of formed from a high temperature material or include a high
temperature coating.” Appeal Br. (Claims App. 2). The Examiner finds that
Engelbrecht’s discloses that the first and second shoes (i.e., valve seats 76,
84) meet this limitation. Final Act. 8. The Examiner acknowledges,
however, that Engelbrecht does not disclose any specific materials. Id.
Appeal 2020-001153
Application 14/248,015

12
For the same reasons as discussed for claim 5, the Examiner does not
establish with sufficient evidence that Engelbrecht discloses the limitation of
claim 6. Therefore, we do not sustain the rejection of claim 6 as anticipated
by Engelbrecht.
Claim 7
Claim 7 recites that “the metering element is rotationally supported
within the housing by upper and lower bearings.” Appeal Br. (Claims App.
2). The Examiner finds that Engelbrecht discloses that the metering element
(valve ball 74) is rotationally supported within the housing by upper and
lower bearings (“surface of housing 60 in contact with the collar surface of
element 108 and the surface of element 60 supporting the bottom surface of
element 74”). Final Act. 8. The Examiner also determines that “the upper
halves of the valve seats can be taken together as an upper bearing and the
lower halves of the valve seats can be taken together as a lower bearing.” Id.
Appellant first contends that Engelbrecht’s element 60 does not
support the bottom surface of element 74. Appeal Br. 12. Rather, Appellant
contends, valve ball 74 is seated in valve seats 76, 84, as Figures 2 and 3
clearly show that the bottom of valve ball 74 rests on valve seats 76, 84, not
on valve body 60. Id. Second, Appellant contends that there is no support
in Engelbrecht “to treat the upper halves of two different elements as a
single bearing and the lower halves of those two elements as another
separate bearing.” Id. at 13. Appellant asserts that the Examiner has
provided no basis to conclude that a person of ordinary skill in the art would
consider halves of two separate valve seats as corresponding to a single
bearing. Id. Third, Appellant contends that if the valve seats are relied on as
corresponding to the claimed bearings, then Engelbrecht does not disclose
Appeal 2020-001153
Application 14/248,015

13
shoes as recited in parent claim 2. Id. Appellant contends that the valve
seats cannot be both shoes and bearings because claims 2 and 7 identify
shoes and bearings as being two different elements. Id.
The Examiner responds that claim 7 does not use the language
“further comprising,” which might preclude the seats from also being
bearings, and claim 7 does not require the upper and lower bearings to be
separate structures or components of the valve. Ans. 6. The Examiner also
submits that the plain meaning of the terms “upper” and “lower” in the claim
can be reasonably interpreted to mean above and below the center line of the
valve. Id.
Appellant responds that claim 2 describes the shoes as being disposed
on either side of the metering element, whereas claim 7 describes the
bearings as being upper and lower with respect to the housing of the
metering element. Reply Br. 13. Appellant contends that the Specification
does not support the Examiner’s interpretation that the shoes and bearings
can be the same element, but instead, the Specification, drawings, and claim
language all indicate that the bearings are a different structure than the
shoes. Id.
Appellant’s contentions are persuasive. We note, for example, that
paragraph 37 of the Specification describes that material element 58 is
supported for rotation by upper bearing 76 and lower bearing 78, as depicted
in Figure 4. This figure shows clearly that bearings 76, 78 are separate and
distinct structures from shoes 62, 64, to provide different functions. The
Examiner’s finding that Engelbrecht’s valve seats 76, 84 correspond to both
the claimed first and second shoes in claim 2 and the upper and lower
Appeal 2020-001153
Application 14/248,015

14
bearings in claim 7 is inconsistent with the language of claims 2 and 7 read
in light of Appellant’s disclosure.
For these reasons, we do not sustain the rejection of claim 7 as
anticipated by Engelbrecht.

CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
2–8, 10–12 102(a)(1) Engelbrecht 2, 8, 10 3–7, 11,
12

TIME PERIOD FOR RESPONSE
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) (2019).

AFFIRMED IN PART