Ex Parte Clifford et al

Patent Trial and Appeal Board

May 31, 2017

13052475 (P.T.A.B. May. 31, 2017)

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.
13/052,475 03/21/2011 Jason David Clifford 20040/82-12416 6552
34431 7590 06/02/2017
HANLEY, FLIGHT & ZIMMERMAN, LLC
150 S. WACKER DRIVE
SUITE 2200
CHICAGO, IL 60606
EXAMINER
MCCALISTER, WILLIAM M
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
06/02/2017 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):
mailroom @ hfzlaw. com
j flight @ hfzlaw. com
mhanley@hfzlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON DAVID CLIFFORD, TODD WILLIAM LARSEN,
and BRIAN JAMES TUTT
Appeal 2015-006901
Application 13/052,475
Technology Center 3700
Before JOHN C. KERINS, WILLIAM A. CAPP, and
FREDERICK C. LANEY, Administrative Patent Judges.
LANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jason David Clifford et al. (Appellants) seek our review under
35 U.S.C. § 134(a) of the Examiner’s Final Rejection of claims 1—4, 7—11,
13—15, 17—20, and 23—25, which are the only pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2015-006901
Application 13/052,475
THE INVENTION
The claimed invention presented in this appeal “relates generally to
fluid regulators.” Spec. 12. Claims 1, 9, and 19 are independent. Claim 1,
reproduced below with emphasis added, is illustrative of the claimed subject
matter:
1. A fluid regulator comprising:
a valve body defining a fluid flow passageway between an
inlet and an outlet;
a sensing chamber defining a portion of the fluid flow
passageway;
a diaphragm to sense a pressure in the sensing chamber,
the diaphragm having a peripheral edge clamped between the
valve body and a bonnet of the fluid regulator, a central portion,
and a movable portion positioned between the peripheral edge
and the central portion, the movable portion having a plurality of
convolutions formed prior to the diaphragm being positioned in
the valve body and to move in response to pressure changes in
the sensing chamber; and
a diaphragm interface adjacent the sensing chamber and
defined by the valve body, the diaphragm interface having a
curved surface and a shoulder adjacent the curved surface, the
curved surface shaped to matably receive at least one of the
convolutions to affect an amount of stress imparted to the
movable portion of the diaphragm during operation of the fluid
regulator.
THE REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 1—4, 7, 8, 23, and 24 under 35
U.S.C. § 102(b) as being anticipated by Rockwell (US
6,536,466 Bl, iss. Mar. 25, 2003).
2
Appeal 2015-006901
Application 13/052,475
II. The Examiner rejected claims 9—11, 13—15, 17, 18 and 25 under
35 U.S.C. § 102(b) as anticipated by Cho (US 7,357,143 B2,
iss. Apr. 15, 2008).
III. The Examiner rejected claims 19 and 20 under 35 U.S.C.
§ 102(b) as anticipated by Morgan (US 5,950,652, iss. Sept. 14,
1999).
IV. The Examiner rejected claim 9 under 35 U.S.C. § 102(b) as
anticipated by Hanning (US 5,586,569, iss. Dec. 24, 1996).
V. The Examiner rejected claims 3 and 4 under 35 U.S.C. § 103(a)
as unpatentable over Rockwell and Cho.
VI. The Examiner rejected claims 3 and 4 under 35 U.S.C. § 103(a)
as unpatentable over Rockwell and Morgan.
VII. The Examiner rejected claims 19 and 20 under 35 U.S.C.
§ 103(a) as unpatentable over Cho and, alternatively, Cho and
Bracey (US 5,904,178, iss. May 18, 1999).
ANALYSIS
Rejection I
Claim 1 recites, among other limitations, a diaphragm with a
“movable portion having a plurality of convolutions formed prior to the
diaphragm being positioned in the valve body.’ ’ Appeal Br. 28 (Claims
App.)(emphasis added). The Examiner finds Rockwell anticipates claim 1,
but does not identify any evidence Rockwell discloses the claimed
diaphragm with a plurality of convolutions formed prior to assembly. Final
Act. 3^4. Instead, the Examiner identifies evidence that Rockwell discloses
a diaphragm with a plurality of convolutions formed after assembly and
3
Appeal 2015-006901
Application 13/052,475
during operation. Id. The Examiner sidesteps the plain language of claim 1
requiring the diaphragm to have a plurality of convolutions independent of
assembly and/or operation by asserting this is a product-by-process
limitation. Id.', see also, Ans. 2.
Appellants argue the Examiner erred by failing to give the “pre­
formed convolutions” in the diaphragm any patentable weight and, if the
Examiner had, Rockwell cannot anticipate claim 1 because it is missing this
limitation. Appeal Br. 14—16. We agree. Limiting the geometry of the
diaphragm to having convolutions “formed prior to the diaphragm being
positioned in the valve body” is not properly characterized as a product-by­
process limitation. Rather than describing the diaphragm structure by how it
is created, this limitation defines the diaphragm structure itself and makes
clear the plurality of convolutions are part of the structure independent of its
application. Because the Examiner does not identify any evidence Rockwell
discloses a diaphragm with “a plurality of convolutions formed prior to the
diaphragm being positioned in the valve body,” a preponderance of the
evidence fails to support Rockwell anticipates claim 1. Therefore, we do not
sustain the rejection of claim 1, or claims 2-4, 7, 8, 23, and 24 depending
therefrom.
Rejection II
Similar to claim 1, claim 9 recites, among other limitations, a
diaphragm with “a plurality of convolutions formed prior to assembling the
diaphragm to the valve body and the bonnet.” Appeal Br. 30 (Claims
App.)(emphasis added). The Examiner finds Cho anticipates claim 9, but
does not identify any evidence Cho discloses the claimed diaphragm with a
plurality of convolution formed prior to assembly. Final Act. 6—8. Instead,
4
Appeal 2015-006901
Application 13/052,475
the Examiner again determines this is a product-by-process limitation. Id. at
7. For the same reasons discussed above (see supra, Rejection I), the
Examiner’s determination is erroneous. Because the Examiner does not
identify any evidence Cho discloses a diaphragm with “a plurality of
convolutions formed prior to assembling the diaphragm to the valve body
and the bonnet,” a preponderance of the evidence fails to support Cho
anticipates claim 9. Therefore, we do not sustain the rejection of claim 9, or
claims 10, 11, 13—15, 17, 18, and 25 depending therefrom.
Rejection III
Like claim 1, claim 19 also recites, among other limitations, a
diaphragm with “a plurality of convolutions formed onto a movable portion
of the diaphragm prior to positioning the diaphragm in the fluid regulator.'1'’
Appeal Br. 32 (Claims App.)(emphasis added). The Examiner finds Morgan
anticipates claim 19, but does not identify any evidence Morgan discloses
the claimed diaphragm with a plurality of convolution formed prior to
assembly. Final Act. 10—11. Instead, the Examiner yet again determines
this is a product-by-process limitation. Id.at 11. For the same reasons
discussed above (see supra, Rejection I), the Examiner’s determination is
erroneous. Because the Examiner does not identify any evidence Morgan
discloses a diaphragm with “a plurality of convolutions formed onto a
movable portion of the diaphragm prior to positioning the diaphragm in the
fluid regulator,” a preponderance of the evidence fails to support Morgan
anticipates claim 19. Therefore, we do not sustain the rejection of claim 19,
or claim 20 depending therefrom.
5
Appeal 2015-006901
Application 13/052,475
Rejection IV
The Examiner also finds Hanning anticipates claim 9, but does not
identify any evidence Hanning discloses the claimed diaphragm with a
plurality of convolution formed prior to assembly. Final Act. 12—13.
Instead, the Examiner again determines this is a product-by-process
limitation. Id. at 12. For the same reasons discussed above (see supra,
Rejection I), the Examiner’s determination is erroneous. Because the
Examiner does not identify any evidence Hanning discloses a diaphragm
with “a plurality of convolutions formed prior to assembling the diaphragm
to the valve body and the bonnet,” a preponderance of the evidence fails to
support Hanning anticipates claim 9. Therefore, we do not sustain the
rejection of claim 9.
Rejections V VI
Claims 3 and 4 depend indirectly from independent claim 1 and, thus,
include all the limitations of independent claim 1 and any other intervening
claims. See Appeal Br. 28—29. The Examiner’s use of the disclosures of
Rockwell, Cho, and Morgan in various combinations does not remedy the
deficiencies discussed supra for claim 1 (see Rejection I). See Final Act.
13-14.
Accordingly, for the foregoing reasons, we also do not sustain
Rejections V—VI.
Rejections VII
Determining claim 19 would have been obvious in view of Cho alone,
or in combination with Bracey, the Examiner again fails to identify any
evidence either reference discloses the claimed diaphragm with a plurality of
convolution formed prior to assembly. Final Act. 15—16. Instead, the
6
Appeal 2015-006901
Application 13/052,475
Examiner yet again determines this is a product-by-process limitation. Id. at
15. For the same reasons discussed above (see supra, Rejection I), the
Examiner’s determination is erroneous. Because the Examiner does not
identify any evidence from either Cho or Bracey disclosing a diaphragm
with “a plurality of convolutions formed onto a movable portion of the
diaphragm prior to positioning the diaphragm in the fluid regulator,” a
preponderance of the evidence fails to support the Examiner’s determination
claim 19 would have been obvious. Therefore, we do not sustain the
rejection of claim 19, or claim 20 depending therefrom.
DECISION
The rejections of claims 1—4, 7—11, 13—15, 17—20, and 23—25 is
reversed.
REVERSED
7