Victaulic Company

Patent Trials and Appeals Board

Jun 15, 2020

2019006554 (P.T.A.B. Jun. 15, 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.
15/355,510 11/18/2016 Yang Bae Park 22150.0412U1 8266
23859 7590 06/15/2020
Ballard Spahr LLP
SUITE 1000
999 PEACHTREE STREET
ATLANTA, GA 30309-3915
EXAMINER
CARY, KELSEY E
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
06/15/2020 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):
USpatentmail@ballardspahr.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte YANG BAE PARK
__________

Appeal 2019-006554
Application 15/355,510
Technology Center 3700
__________

Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–42. Claims 43–45 are withdrawn
from consideration. Final Act. 1 (Office Action Summary). We have
jurisdiction under 35 U.S.C. § 6(b). For the reasons explained below, we
find error in some of the Examiner’s rejections of these claims.
Accordingly, we AFFIRM IN PART the Examiner’s rejections.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as “Victaulic
Company.” Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to fluid control devices that are
combinations of valves and mechanical couplings.” Spec. 1. Apparatus
claims 1 and 22 are independent. Claim 1 is illustrative of the claims on
appeal and is reproduced below.
1. A valve coupling for joining pipe elements and
controlling flow therethrough, said valve coupling comprising:
a plurality of segments attached to one another end to end
and circumferentially surrounding a central space;
a valve housing captured between said segments;
a valve closing member movably mounted within said
valve housing, said valve closing member movable between an
open position permitting flow through said valve housing and a
closed position preventing flow there through;
at least one projection extending from one of said
segments into said central space, said at least one projection
engaging said valve housing and supporting at least two of said
segments in spaced relation.

REFERENCES RELIED ON BY THE EXAMINER
Gachot US 4,420,140 Dec. 13, 1983
Garrigues et al. US 4,653,724 Mar. 31, 1987
Abouelleil US 2016/0178067 A1 June 23, 2016

THE REJECTIONS ON APPEAL
Claims 1, 2, 4–6, 8–11, 19–23, 25–27, and 40–42 are rejected under
35 U.S.C. § 102(a)(1) as anticipated by Gachot. Final Act. 3.
Claims 1–4, 6, 8–15, 19–25, 27, 29–36, 40, and 41 are rejected under
35 U.S.C. § 102(a)(1) as anticipated by Garrigues. Final Act. 8.
Claims 1, 2, 4, 6–11, 15–23, 25, 27–32, and 37–41 are rejected under
35 U.S.C. § 102(a)(1) as anticipated by Abouelleil. Final Act. 17.
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ANALYSIS
The rejection of claims 1, 2, 4–6, 8–11, 19–23, 25–27, and 40–42
as anticipated by Gachot
Appellant states, “Claims 1, 2, 4–6, 8–11, 19–23, 25–27 and 40–42
[are] argued as a group.” Appeal Br. 3. Accordingly, we select claim 1 for
review, with the remaining claims standing or falling with claim 1. See also
37 C.F.R. § 41.37(c)(1)(iv)(2018).
Independent claim 1 recites “a plurality of segments attached to one
another end to end and circumferentially surrounding a central space.”
Appeal Br. 12 (Claims App.). Appellant contends that “it is clear on the face
of . . . [Gachot’s Figure 6] that plates 61 and 62 are neither attached to one
another end to end nor do they circumferentially surround a central space.”
Appeal Br. 4; see also id. at 6, Reply Br. 2–3.
Gachot’s Figure 6 is reproduced below.

Figure 6 of Gachot is described as “a view in perspective of another
form of construction of a valve according to the invention.” Gachot 2:57–
58. “The clamping action of the bolts tends to bring the rings 61, 62
together and to apply these latter against the annular member 10 in a leak-
tight fit.” Gachot 5:15–18.
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Gachot’s Figure 7 is also reproduced below.

Figure 7 of Gachot is described as “a view of the valve of FIG. 6” but
“taken in cross-section.” Gachot 2:59–60. This “cross-section” is expressed
as being “parallel to the direction of flow” and further, “the shaft and the
pivot of the valve disk having been removed.” Gachot 2:60–63.
Passageway 2 is also depicted in this Figure 7.
Appellant contends that “‘segments’ 61 and 62 are not attached to one
another end to end.” Appeal Br. 5. However, it is not clear from a review of
Figures 6 and 7 of Gachot how it can be said that the ends of the top, bottom,
and sides of segments 61 and 62 are not attached to one another via bolts 66.
See also Ans. 21. To the extent Appellant’s contention is that direct
abutment of the recited segments is required, Appellant does not direct our
attention to any specific claim to that effect. Appellant’s unsupported
contention does not apprise us of Examiner error on this point.
Regarding the limitation directed to the segments also
“circumferentially surrounding a central space,” we note that Appellant’s
Specification does not provide a special definition of the term
“circumferentially.” See Spec., passim. Accordingly, we look to the plain
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and ordinary meaning of this term, which includes such meanings as
“surround” and “lying along the outskirts.”2
On this matter of “circumferentially surrounding a central space,” the
Examiner finds:
The space is further circumferentially surrounded by
plates 61 and 62 in combination with fastener 66. The claim
does not necessitate full enclosure of the central space. As
seen in Appellant’s Figure 2B, it is the segments along with the
fastener that surrounds the central space. The segments
themselves are separated due to the housing. Therefore, the
plates 61 and 62 of Gachot are seen to be circumferentially
surrounding a central space.
Ans. 22; emphasis added. In other words, the Examiner deems Gachot’s
rings 61 and 62 (along with bolts 66) as surrounding and laying along the
outskirts of passageway 2 in much the same manner as Appellant’s segments
12 and 14 (together with bolts 24) surround and lay along the outskirts of
central passageway 16 as depicted in Appellant’s Figures 1, 2B.
Appellant disputes this stating that Gachot’s “[p]lates 61 and 62 are
flat plates in parallel, spaced relation and cannot reasonably [be] described
as arranged ‘circumferentially.’” Reply Br. 2. However, Appellant does not
explain how Gachot’s plates 61, 62, and bolts 66 fail to surround Gachot’s
annular member 10, or its enclosed passageway 2. See Gachot’s Figures 6
and 7 above. Appellant’s naked assertion does not apprise us of any specific
reasons how or why the recited limitations define around the subject matter
of Gachot relied upon by the Examiner.

2 For example, see https://www.dictionary.com/browse/circumferential (last
accessed May 15, 2020).
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Appellant further argues that “neither projection 18 nor 19 [of Gachot]
supports any segments in spaced relation” and that “[e]lement 10 [of
Gachot], and not a projection, holds ‘segments’ 61 and 62 in spaced
relation.” Reply Br. 4. As an initial matter, this argument was not raised in
Appellant’s Appeal Brief, and this argument is not responsive to any
argument raised in the Examiner’s Answer. As stated in 37 C.F.R.
§ 41.41(b)(2):
Any argument raised in the reply brief which was not raised in
the appeal brief, or is not responsive to an argument raised in the
examiner’s answer, including any designated new ground of
rejection, will not be considered by the Board for purposes of the
present appeal, unless good cause is shown.
Emphasis added. Accordingly, we do not consider these arguments as
timely presented. However, even should we consider such contentions, they
are unpersuasive. This is because claim 1 does not preclude the projection
from indirectly engaging and indirectly supporting the segments in spaced
relation. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“[A]ppellant’s
arguments fail from the outset because . . . they are not based on limitations
appearing in the claims.”). It has long been accepted practice in patent claim
drafting that, because the applicant has the ability to specify direct or
indirect connections in claim limitations, the failure to do so will be regarded
as encompassing both direct and indirect connections. Ullstrand v. Coons,
147 F.2d 698, 700 (CCPA 1945). Gachot’s seal 18, projection 19, and
annular member 10, together, can be said as engaging and supporting rings
61 and 62 in spaced relation. See Gachot Fig. 7. Thus, Appellant does not
apprise us of Examiner error on this point.
For these reasons, we sustain the Examiner’s rejections of claims 1, 2,
4–6, 8–11, 19–21, 23, 25–27, and 40–42 as anticipated by Gachot.
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The rejection of claims 1–4, 6, 8–15, 19–25, 27, 29–36, 40, and 41
as anticipated by Garrigues
The rejection of claims 1, 2, 4, 6–11, 15–23, 25, 27–32, and 37–41
as anticipated by Abouelleil
The anticipation rejections over Garrigues and Abouelleil are
sufficiently similar such that they can be discussed together. See Final Act.
8–25.
As noted above, independent claim 1 requires “a plurality of
segments” and, similarly, independent claim 22 requires “first and second
segments.” Appeal Br. 12, 16 (Claims App.). Appellant contends that
Garrigues and Abouelleil “do[] not disclose a valve comprising a plurality of
segments.” Appeal Br. 7, 10. The Examiner responds that “the term
segment is defined by The Free Dictionary as ‘any of the parts into which
something can be divided’” and that “[t]he term does not necessitate separate
parts[;] merely that the element can be divided.” Ans. 22 (citing
https://www.thefreedictionary.com/segment3); see also Final Act. 10, 18
(“the claim requires ‘segments’, but does not require the segments to be
separate pieces”).
Although the Examiner is correct in the above recitation of the plain
and ordinary meaning of the term “segment,” the Examiner, however, fails
to account for how this term, “segment,” is employed in Appellant’s
Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)
(“[T]he PTO applies to the verbiage of the proposed claims the broadest

3 More specifically, the definition aggregated from the American Heritage®
Dictionary of the English Language, Fifth Edition.
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reasonable meaning of the words in their ordinary usage as they would be
understood by one of ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by the
written description contained in applicant’s specification.”) (emphasis
added).
In the matter before us, Appellant’s Specification states:
Figure 1 shows an example embodiment of a combination valve
and mechanical coupling 10, hereafter referred to as a valve
coupling. Valve coupling 10 comprises a plurality of segments,
in this example, two segments 12 and 14 attached to one another
end to end to surround and define a central space 16.
Spec. 9; emphases added. Appellant’s Figure 1 is reproduced below.

Appellant’s Figure 1 illustrates valve coupling 10 that comprises “two
segments 12 and 14 attached to one another.” Spec. 9.4
In other words, Appellant chose to use the term “segments” to refer to
parts into which a whole body is, as opposed to “can be” divided. According

4 Appellant’s Specification lacks both paragraph and line numbering. We
thus reference Appellant’s Specification via page number only.
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to the Specification two such “segments” are employed to form the coupling
10 and “surround and define a central space 16.” Spec. 9. On this point,
Appellant proffers a separate definition from the same source,5 which “also
defines a segment as ‘one of the parts into which something is divided’
(emphasis added) and this is the definition which should be applied.” Reply
Br. 5. Appellant also contends, “the Examiner’s choice in defining the term
segment is unreasonable and a transparent attempt to contort the meaning of
a word to justify the rejection.” Reply Br. 5.
Where, as here, presented with competing dictionary definitions, our
reviewing court instructs:
In construing claim terms, the general meanings gleaned from
reference sources, such as dictionaries, must always be compared
against the use of the terms in context, and the intrinsic record
must always be consulted to identify which of the different
possible dictionary meanings is most consistent with the use of
the words by the inventor. “Where there are several common
meanings for a claim term, the patent disclosure serves to point
away from the improper meanings and toward the proper
meanings.”
Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1300 (Fed.
Cir. 2003) (quoting Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d
1243, 1250 (Fed. Cir. 1998)); Ferguson Beauregard/Logic Controls, Div. of
Dover Resources, Inc. v. Mega Sys., LLC, 350 F.3d 1327, 1338-39 (Fed. Cir.
2003). Indeed, “[when giving claim] terms their broadest reasonable
construction, the construction cannot be divorced from the specification.” In
re NTP, 654 F. 3d 1279, 1288 (Fed. Cir. 2011).

5 More specifically, the definition aggregated from the Collins English
Dictionary – Complete and Unabridged, 12th Edition.
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Here, the most appropriate definition, in light of the Specification, is
that proffered by Appellant, which implies, at the very least, a requirement
for some natural dividing line demarcating the boundary between each of the
plurality of segments. The arbitrary and hypothetical dividing line provided
by the Examiner in annotating figure 1 of each of Garrigues and Abouelleil
(Final Act. 8, 17) clearly does not satisfy that requirement. Consequently,
because the Examiner’s rejections are premised on an incorrect claim
interpretation, the anticipation rejections over Garrigues and Abouelleil
cannot stand.
For these reasons, the rejections of claims 1–4, 6, 8–15, 19–25, 27,
29–36, 40, and 41 as anticipated by Garrigues and of claims 1, 2, 4, 6–11,
15–23, 25, 27–32, and 37–41 as anticipated by Abouelleil are not sustained.

CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. § 
Reference(s)/Basis Affirmed Reversed
1, 2, 4–6, 8–
11, 19–23,
25–27, 40–42
102(a)(1)   Gachot 1, 2, 4–6,
8–11, 19–
23, 25–27,
40–42

1–4, 6, 8–15,
19–25, 27,
29–36, 40, 41
102(a)(1) Garrigues 1–4, 6, 8–
15, 19–25,
27, 29–36,
40, 41
1, 2, 4, 6–11,
15–23, 25,
27–32, 37–41
102(a)(1) Abouelleil 1, 2, 4, 6–
11, 15–23,
25, 27–32,
37–41
Overall
Outcome
1, 2, 4–6,
8–11, 19–
3, 7, 12–18,
24, 28–39
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Claims
Rejected
35
U.S.C. § 
Reference(s)/Basis Affirmed Reversed
23, 25–27,
40–42
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED IN PART