Ex Parte Arentsen et al

Patent Trial and Appeal Board

Sep 17, 2012

11405187 (P.T.A.B. Sep. 17, 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.
11/405,187 04/17/2006 Robert P. Arentsen XYBGP-101US1 3769
23122 7590 09/17/2012
RATNERPRESTIA
P.O. BOX 980
VALLEY FORGE, PA 19482-0980
EXAMINER
PRICE, CRAIG JAMES
ART UNIT PAPER NUMBER
3753
MAIL DATE DELIVERY MODE
09/17/2012 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERT P. ARENTSEN, CHALARD BUNLUAPHOB,
PRASERT BURANATUM, DANIEL E. SCHAFFER, and
LISA E. HATHY-RILES
____________

Appeal 2011-001389
Application 11/405,187
Technology Center 3700
____________

Before LINDA E. HORNER, JOHN C. KERINS, and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Robert P. Arentsen et al. (Appellants) seek our review under
35 U.S.C. § 134 of the Examiner’s decision rejecting claims 10-14. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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THE INVENTION
Appellants’ claimed invention “relates to adjustable flanges for
securing isolation valves in a fluid system.” Spec., para. [0001]. Claims 10
and 12 are independent. Claim 10, reproduced below, is representative of
the subject matter on appeal.
10. A valve assembly comprising:
a quarter turn ball valve including a valve housing having
inlet and outlet ports;
an insert having a body member including an exterior
surface and an internal flow channel, one end of the insert being
coupled to the valve housing so that the internal flow channel
communicates with one of the ports, a lip formed on the free
end of the body member, the lip being spaced from the valve
housing when the insert is assembled to the valve housing;
a flange carried on the exterior surface of the insert, the
flange being contained entirely between the lip and the valve
housing, the flange being freely rotatable relative to the insert
and the valve housing, the axial thickness of the flange being
less than the axial length of the space between the lip and the
valve housing, and fastener holes formed in the flange for
receiving fasteners that secure the valve assembly in a fluid
system.
PROCEDURAL HISTORY
The present application was before us in prior appeal 2008-1953,
decided January 16, 2009, in which the Board reversed the Examiner’s
rejections of claims 10-14 under 35 U.S.C. § 112, first paragraph; claims 10,
12, and 13 under 35 U.S.C. § 102(e) as anticipated by Rocheleau
(US 2002/0162986 A1; pub. Nov. 7, 2002); and claims 11 and 14 under
35 U.S.C. § 103(a) as unpatentable over Rocheleau and Keller
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(US 3,241,810; iss. Mar. 22, 1966). Subsequent to the Board’s decision, the
Examiner reopened prosecution and rejected the claims based on different
prior art as set forth infra. Final Office Action, dated Dec. 8, 2009.
Appellants appeal the rejections set forth in the Final Office Action. Br. 1.1
THE REJECTIONS
Appellants seek review of the following rejections:
1. Claims 10 and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Pierre (FR 2 602 297 A1; pub. Feb. 5, 1988) and
Caffrey (US 5,857,717; iss. Jan. 12, 1999).
2. Claims 11, 13, and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Pierre, Caffrey, and Keller.
ISSUE
With regard to the first ground of rejection, Appellants argue claims
10 and 12 as a group. Br. 9-10. We select claim 10 as representative, and
claim 12 stands or falls with claim 10. See 37 C.F.R. § 41.37(c)(1)(vii)
(2011). With regard to the second ground of rejection, Appellants argue
only that Keller “does not overcome the shortcomings of Caffrey and Pierre”
as argued in rebuttal of the first ground of rejection. Br. 10. As such, the
outcome of this appeal turns on our analysis of the first ground of rejection
as it applies to claim 10.

1 Appellants identify in the Brief a Board decision in related appeal 2009-
0793, decided January 16, 2009, for Application 10/721,481. Br. 3. The
‘481 application claims priority to the instant application.
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The Examiner determined that Pierre discloses the valve assembly of
claim 10 except that its insert nut 15 is not contained entirely between the lip
and the valve housing and having fastener holes formed in the flange for
receiving fasteners that secure the valve assembly in a fluid system. Ans. 3-
4. The Examiner determined that it would have been obvious “to substitute
a flange [16] as taught by Caffrey for the flange [insert nut] of Pierre et al. as
one would have expected the flange to perform as equally as well.” Ans. 4.
Appellants argue that one of ordinary skill in the art would not replace
Pierre’s insert nut 15 with Caffrey’s flange 16 because: (1) it is physically
impossible to mount a flange such as Caffrey’s onto Pierre’s valve housing;
(2) replacing Pierre’s insert nut 15 with Caffrey’s flange 16 would result in
Pierre’s valve stem 19 significantly protruding from the valve plug, which
would render Pierre’s valve unsatisfactory for its intended purpose of
accommodating the non-return valve 18 inside the plug valve; and
(3) replacing Pierre’s insert nut 15 with Caffrey’s flange 16 would result in
omission of the internal threads of Pierre’s insert nut 15, which would render
Pierre’s valve unsatisfactory for its intended purpose of mating with a male
threaded insert of a fluid carrying conduit. Br. 9-10.
The issue presented by this appeal is whether the Examiner articulated
adequate reasoning based on rational underpinnings to explain why it would
have been obvious to one of ordinary skill in the art to replace the insert nut
of Pierre with the flange of Caffrey.
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ANALYSIS
Pierre discloses a rotating spherical plug distributor valve that also has
a non-return valve on the pipes in order to prohibit any possible return of
polluted water into the drinking water circuit. Pierre, p. 2, first and second
paras.2 The object of Pierre is to produce such a distributor valve, inside of
which a non-return valve is integrated directly, so that the length space
requirement of the valve is “practically equal to that of a prior-art valve
which does not comprises [sic] the nonreturn valve.” Pierre, p. 2, third and
fifth paras. Pierre’s distributor valve includes a spherical plug 1 screwed
down between two annular sealing seats 6 and 7, which are arranged
between elements 8 and 9 which form the body of the valve. Pierre, p. 2,
eleventh para.; fig. 1. “The downstream element 9 has a smooth tip 13
provided at its end with a flange 14, which has an insert nut 15 of a type
known per se for connecting the valve to a downstream duct.” Pierre, p. 3,
first para.; fig. 1. “The two elements 8 and 9 are assembled by screwing
along a threading 17.” Pierre, p. 3, second para.; fig. 1. Pierre discloses a
conventional non-return valve 18 is accommodated inside element 9, the
valve 18 having a mobile seal 19 in front of its seat which is carried by an
annular base 20. Pierre, p. 3, third para.; fig. 1.
Caffrey discloses an improved device and method for plumbing a
recirculating water pump into a hot water heating system. Col. 1, ll. 4-6.

2 Citations to Pierre refer to the English language translation provided by
Appellants and included in the Evidence Appendix to the Appeal Brief.
Br. 13.
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Caffrey teaches that in a conventional system, when the hot water pipe is
soldered to a coupler, leaks at the threaded joint between the coupler and an
installation flange may be caused because heat from the soldering operation
may melt the pipe joint compound or Teflon tape at the threaded connection.
Col. 1, ll. 35-42; fig. 1. Caffrey teaches an improved leak-proof joint in
which the threaded connection is replaced with an unthreaded installation
flange 16 that is fitted over copper tubing 12 having a flared end 14. Col. 3,
ll. 4-7; figs. 3, 6. The flange 16 includes bolt holes 20 and is bolted to the
connecting flange of the recirculating pump with a flexible gasket 22
provided therebetween. Col. 3, ll. 7-10 and 15-20; figs. 2, 3. Caffrey
teaches that the bolt holes in the flange on the recirculating pump are
threaded so that as the bolts are tightened, the gasket 22 is compressed
between installation flange 16 and the flange of the recirculating pump to
make a leak-proof joint. Col. 3, ll. 33-36.
We agree with the Examiner’s determination that one of ordinary skill
in the art would recognize that Caffrey’s flange 16 would perform as well as
Pierre’s insert nut 15 for connecting the distributor valve in Pierre’s fluid
system. Ans. 4. See KSR Int’l. Co. v. Teleflex, Inc., 550 U.S. 398, 416
(2007) (“[W]hen a patent claims a structure already known in the prior art
that is altered by the mere substitution of one element for another known in
the field, the combination must do more than yield a predictable result.”)
(citation omitted).
Appellants’ arguments do not persuade us of error in the Examiner’s
determination of obviousness. In particular, Appellants’ argument (Br. 9-
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10) that “it may be physically impossible to assemble Caffrey’s flange 16
onto Pierre’s plug valve by installing Caffrey’s flange 16 over either Pierre’s
flange 14 or the chamfered shoulder of Pierre’s element 9” is not
convincing. As noted by the Court in KSR, “[a] person of ordinary skill is
also a person of ordinary creativity, not an automaton.” 550 U.S. at 421. A
person of ordinary skill would be able to modify the downstream housing
element 9 of Pierre’s assembly to allow for Caffrey’s flange 16 to be
mounted over the end so that it abuts the flange 14 on the downstream end of
element 9. For instance, upstream element 8 and downstream element 9 of
Pierre’s housing are assembled by screwing along a threading 17. One of
ordinary skill would appreciate that it would also be possible to connect the
chamfered upstream end of element 9 with the downstream flanged end of
element 9 via threading to allow for Caffrey’s flange 16 to be slid over the
downstream flanged end.
To justify combining reference teachings in support of a
rejection it is not necessary that a device shown in one
reference can be physically inserted into the device shown in
the other. The test for obviousness is not whether the features
of a secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references.
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (internal citations omitted).
Moreover, the artisan is not compelled to blindly follow the teaching of one
prior art reference over the other without the exercise of independent
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judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed.
Cir. 1984).
We are also not persuaded by Appellants’ argument (Br. 10) that the
proposed modification would render Pierre’s valve unsatisfactory for its
intended purpose of accommodating the non-return valve 18 inside the plug
valve because when modified, Pierre’s valve stem 19 would protrude from
the valve plug. We note that Pierre’s mobile seal 19, as disclosed, protrudes
into the downstream duct to which the valve is connected via insert nut 15.
Pierre, fig. 1 (downstream duct (not shown) screws into insert nut 15 such
that the stem end of mobile seal 19 protrudes into the downstream duct). As
such, we fail to see, and Appellants have not adequately explained, why
replacing Pierre’s insert nut 15 with Caffrey’s flange 16, which would also
allow the valve stem 19 to protrude into downstream duct, would render
Pierre’s valve unsatisfactory for its intended purpose.
We are likewise not persuaded by Appellants’ argument (Br. 10) that
the proposed modification would render Pierre’s valve unsatisfactory for its
intended purpose of mating with a fluid carrying conduit because Caffrey’s
flange 16 is not configured to connect to a mating male threaded insert of a
fluid carrying conduit. Caffrey’s flange 16 is configured to connect to
another conduit having a corresponding flange. See Caffrey, fig. 2
(installation flange 16 configured to mate with flange B of recirculating
pump A). It would have been obvious to one of ordinary skill that were one
to employ Caffrey’s flange 16 in place of Pierre’s insert nut 15, then one
would need to attach a corresponding flange onto the fluid carrying conduit
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(i.e., the downstream duct) to which the flange 16 would be attached. This
could easily be accomplished using the same technique as disclosed in
Caffrey for attaching installation flange 16 to the tubing F of the hot water
system. See Caffrey, col. 3, ll. 26-29 and 37-38 (describing the assembly of
tubing 12, flange 16, coupler 28, and tubing F). As such, Appellants’
arguments have not convinced us of error in the Examiner’s determination of
obviousness.
CONCLUSION
The Examiner articulated adequate reasoning based on rational
underpinnings to explain why it would have been obvious to one of ordinary
skill in the art to replace the insert nut of Pierre with the flange of Caffrey.
DECISION
We AFFIRM the decision of the Examiner to reject claims 10-14.
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).

AFFIRMED

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