UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte LAURENT ALBERT, ANTOINE DUTOT,
and NICOLAS RENARD
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Appeal 2012-003101
Application 12/090,221
Technology Center 3700
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Before MICHAEL W. KIM, GAY ANN SPAHN, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2012-003101
Application 12/090,221
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-13.1 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
As described in Appellants’ Specification, Appellants invented a
valve that may be used to regulate flow in an exhaust gas recirculation
(EGR) circuit of a combustion engine (Spec. 1, ll. 3-8). Claim 1, reproduced
below, is the only independent claim on appeal, and is representative of the
claims on appeal.
1. A valve comprising:
a first duct;
a second duct into which the first duct
opens, thereby defining an intersection that forms a
seat at right angles to the first duct for a valve disk
that slides in the second duct at right angles to the
seat between a closed position and an open
position; and
means of operating the valve disk between
its two positions,
wherein for the open position, the operating
means are controlled to bring the valve disk into
close proximity to a wall of the second duct that
faces the seat, such that for the open position, a
rear face of the valve disk is physically closer to
the wall of the second duct that faces the seat than
to the seat.
1 Our decision will refer to Appellants’ Specification (“Spec.,” filed April
14, 2008), Appeal Brief (“App. Br.,” filed July 11, 2011), and Reply Brief
(“Reply Br.,” filed December 5, 2011), as well as the Examiner’s Answer
(“Ans.,” mailed October 5, 2011).
Appeal 2012-003101
Application 12/090,221
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REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
claims 1-6 and 11-13 are rejected under 35 U.S.C. § 102(b) as
anticipated by Fitts (US 1,401,468, iss. Dec. 27, 1921); and
claims 7-10 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Fitts2.
ANALYSIS
Anticipation rejection of claims 1-6 and 11-13
Appellants argue the Examiner’s rejection of claim 1 is in error
because Fitts does not teach the limitation “a wall of the second duct . . .
faces the seat” (see App. Br. 7). In the rejection, the Examiner finds that:
Fitts discloses a valve comprising a first
duct (4), a second duct (5), a connecting portion
(2,3, upper wall of element 5 in [F]igure 1), an
intersection that forms a seat (3), a valve disk (7,
8), two flat walls (surface of element 3 and wall of
element 2 surrounding element 13 in [F]igure 1),
an end wall (2) that partially surrounds the valve
disk (7, 8) parallel to the direction of sliding at a
distance from an edge (edge of element 7 and 8) of
the valve disk (7, 8) such that for the open position
the end wall (2) defines with the edge (edge of
element 7 and 8) of the valve disk (7, 8) and the
seat (3) a passage (between elements 3 and 8) the
cross section of which increases from a median
axis (axis through element 4) of the end wall (2)
2 Although the Examiner’s Answer states that the claims are rejected as
“unpatentable over . . . Fitts . . . in view of engineering expedient [sic]”
(Ans. 6), we understand that claims 7-10 are rejected as unpatentable only
based on Fitts, because the rejection states that the proposed modification is
obvious (id. at 7), and does not rely on either another reference or Official
Notice, for example.
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Application 12/090,221
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toward regions where the end wall (2) meets the
second duct (5), means (14) of operating the valve
disk (7, 8) between its two positions are controlled
in such a way as to bring the valve disk (7, 8) into
close proximity to the flat wall (upper wall of
element 5 in figure 1) of the second duct (5) that
faces the seat (3)
(Ans. 4-5) (emphasis added). The Examiner relies on a broad interpretation
of the term “facing,” stating “it is the [E]xaminer’s position that any wall
portion that is across from the valve seat of Fitts, including the curved
portion and upper wall portion of the second duct (5) at the very least,
partially faces the valve seat” (Ans. 8). Conversely, Appellants cite the
dictionary definition of the root word “face” as “‘to have the front oriented
toward
’” (App. Br. 9, citing Merriam-Webster’s
Collegiate Dictionary (11th ed. 2011)), and argue, with reference to Fitts’s
Figure 1, that:
Indeed, as shown in Fig[ure] 1 of Fitts, even
though the upper wall of the duct 5 is parallel to
the seat, the upper wall does not face the seat 3
within the plain and ordinary meaning of the term.
Indeed, the front of the upper wall of the duct 5 is
not oriented toward the seat 3. At most, the upper
wall of the duct 5 only faces the lower wall of the
duct 5 . . . and is offset from the seat 3 in Fitts.
That is, . . . the upper wall of the duct 5 faces the
lower wall of the duct 5 because the front of the
upper wall is oriented toward the lower wall. In
this regard, the lower wall of the duct 5 is the only
component of Fig[ure] 1 of Fitts that the upper
wall of the duct 5 faces
(id. at 10). Inasmuch as we agree that in Fitts, the upper wall of duct 5 does
not have a front surface oriented toward seat 3, but at most, has a relatively
small, radiused side portion that may be oriented toward seat 3, we find that
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Application 12/090,221
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the Examiner has not sufficiently established by a preponderance of the
evidence that Fitts teaches a wall facing a seat, in combination with the other
limitations of claim 1. Moreover, consistent with Appellants’ argument,
duct 5 appears to be annular in shape, which would suggest it had only one
continuous front wall. We are unclear as to how one continuous annular
wall of duct 5 could face anything not disposed radially inward of duct 5.
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 1. Appellants argue claims 2-6 and 11-13 are allowable
for the same reasons as independent claim 1 (App. Br. 13). We do not
sustain the rejection of dependent claims 2-6 and 11-13 for the same reasons
as claim 1.
Obviousness rejection of claims 7-10
Among other arguments made by Appellants with respect to claims 7-
10, Appellants argue, “claims 7-10 are patentable over the combination of
Fitts and ‘engineering expedient’ for at least the same reasons as
independent claim 1” (App. Br. 17). Thus, we do not sustain the rejection of
dependent claims 7-10 for the same reasons as claim 1.
DECISION
The Examiner’s rejections of claims 1-13 under 35 U.S.C. §§ 102(b)
and 103(a) are REVERSED.
REVERSED
mls
