Ex Parte Holder

Patent Trial and Appeal Board

Jan 24, 2017

12105309 (P.T.A.B. Jan. 24, 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.
12/105,309 04/18/2008 Gary N. Holder 2005P03180US01 5517
30031 7590 01/26/2017
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
P.O. BOX 3001
BRIARCLIFF MANOR, NY 10510
EXAMINER
LOUIS, LATOYA M
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
01/26/2017 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):
debbie.henn @philips .com
marianne. fox @ philips, com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARY N. HOLDER
Appeal 2015-0038731
Application 12/105,3092
Technology Center 3700
Before PHILIP J. HOFFMANN, JAMES L. WORTH, and
KENNETH G. SCHOPFER, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the rejection of
claims 6—13. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
According to Appellant, the invention is directed “to a gas conserving
device that utilizes an electronically controlled latching valve to regulate the
1 Our decision references Appellant’s Specification (“Spec.,” filed June 19,
2008), Appeal Brief (“Appeal Br.,” filed Sept. 29, 2014), and Reply Brief
(“Reply Br.,” filed Feb. 3, 2015), as well as the Examiner’s Answer
(“Answer,” mailed Dec. 4, 2014).
2 Appellant indicates that “[t]he real party in interest is RIC Investments,
LLC, . . . which is a subsidiary of Koninklijke Philips Electronics N.V.”
Appeal Br. 2.
Appeal 2015-003873
Application 12/105,309
flow of gas to a user.” Spec. 12. Claims 6, 8, 10, and 12 are the only
independent claims. See Appeal Br. We reproduce claim 6, below, as
representative of the appealed claims.
6. A gas conserving device comprising:
a gas flow switch having a plurality of selectable settings,
wherein a different quantity of gas to is delivered to a patient by
the gas conserving device for each setting in the plurality of
selectable settings;
a valve housing adapted to be disposed between a gas
source and a patient, wherein the valve housing includes a valve
body and a valve seat disposed in the valve body;
a valve element disposed within the valve body, wherein a
portion of the valve element is adapted to seat against the valve
seat responsive to the valve element being in a closed position,
and wherein the portion of the valve element is spaced apart from
the seat responsive to the valve element being in an open
position;
a resilient member configured to bias the valve element
toward the closed position; and
a permanent magnet configured to magnetically attract the
valve element toward the open position, and hold the valve
element in the open position without electrical energy or residual
magnetism caused by the electrical energy,
wherein, with the valve in the closed position, the bias
provided by the resilient member is stronger than the magnetic
attraction between the permanent magnet and the valve element
to maintain the valve element in the closed position, and with the
valve in the open position magnetic attraction between the
permanent magnet and the valve element is stronger than the bias
provided by the resilient member to the valve element to hold the
valve element in the open position; and
an electrical energy source adapted to move the valve
element between the closed position and the open position,
wherein the energy source provides substantially a same amount
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Application 12/105,309
of energy to move the valve element independent of the setting
of the gas flow switch.
Id.
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
I. claims 6—9 under 35 U.S.C. § 103(a) as unpatentable over
Phillips (US 5,928,189, iss. July 27, 1999) and Heinonen
(US 6,148,816, iss. Nov. 21, 2000);
II. claims 10—13 under 35 U.S.C. § 103(a) as unpatentable over
Phillips, Heinonen, Reinicke (US 4,482,346, iss. Nov. 13,
1984), and Bliss (US 6,484, 721 Bl, iss. Nov. 26, 2002);3 and
III. claims 12 and 13 under 35 U.S.C. § 103(a) as unpatentable over
Phillips, Heinonen, Bliss, and Moldenhauer (US 5,180,138, iss.
Jan. 19, 1993).
Final Action 2—9; see also Answer 2—10.
ANALYSIS
Independent claim 6 recites, among other limitations, “a permanent
magnet configured to magnetically attract the valve element toward the open
position, and hold the valve element in the open position without electrical
energy or residual magnetism caused by the electrical energy.” Appeal Br.,
Claims App. We agree with Appellant that the Examiner fails to establish
3 Although the Final Office Action and the Answer reference the rejection
of claim 14, this appears to be a typographical error as claim 14 is not
pending. See Final Action 4; see also Answer 4; see also Appeal Br.,
Claims App.
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Application 12/105,309
that any reference discloses this limitation. See Appeal Br. 7—11; see also
Reply Br. 2-A.
The Examiner does not find that Phillips discloses a magnet
(permanent or otherwise) that holds a valve element in an open position
without electrical energy or residual magnetism caused by electrical energy.
Rather, the Examiner finds that Phillips discloses “a magnetic stainless steel
element. . . configured to magnetically attract the valve element toward the
open position.” See. e.g., Answer 3. While it is unclear from the
Examiner’s determination, it appears that, in fact, Phillips may require
power to maintain the valve in the open position. See id. (“col. 2[,]
lines 10[—] 14, [and] col. 6[,] li[n]es 58[—]63 [of Phillips] disclose that the
valve is moved to the open position using a small amount of power and
remains in the open position without requiring additional power.”).
Instead, the Examiner relies on Heinonen to disclose the claimed
permanent magnet. Specifically, the Examiner determines that “Heinonen
teaches a permanent magnet (47) that is able to open a valve without residual
magnetism since it is a permanent magnet (col. 5[,] lines 60[—]65, col. 6[,]
lines 1[—]30).” Answer 4 (emphasis added). It is not apparent to us,
however, that any of the cited portions of Heinonen teaches that magnet 47
attract a valve element toward an open position, and holds the valve element
in the open position without electrical energy or residual magnetism caused
by electrical energy. See, e.g., Reply Br. 2—A. Further, to the extent that the
Examiner’s finding is that magnet 47 must operate to hold the valve element
in an open position without electrical energy or residual magnetism caused
by electrical energy because magnet 47 is a permanent magnet, we disagree
with the Examiner’s finding. The Examiner does not provide evidence
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Application 12/105,309
sufficient to establish, and it is otherwise not apparent to us, that every
permanent magnet must operate to hold a valve element in an open position
without electrical energy or residual magnetism caused by electrical energy.
See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (“Inherency,
however, may not be established by probabilities or possibilities. The mere
fact that a certain thing may result from a given set of circumstances is not
sufficient.”). Instead, it appears that Heinonen’s arrangement may use
“magnet 47 ... to attract. . . valve plate 41 into a closed position . . . when
electric current is supplied to actuator 46.” Reply Br. 4 (emphasis omitted).
Further, the Examiner does not establish that it would have been obvious to
combine Phillips and Heinonen to provide an arrangement in which
Heinonen’s magnet (or some other permanent magnet) is placed in Phillips’s
device to magnetically attract a valve element toward an open position and
hold the valve element in the open position without electrical energy or
residual magnetism caused by the electrical energy, as claimed.
Thus, based on the foregoing, we do not sustain the rejection of
independent claim 6. Further, we do not sustain any of the rejections of
independent claims 8, 10, and 12, each of which recites a limitation similar
to that discussed above for claim 6, and each of which the Examiner rejects
for reasons similar to those discussed above. Still further, we do not sustain
the rejections of claims 1,9, 11, and 13 that depend from the independent
claims, inasmuch as the Examiner does not establish that any other reference
remedies the deficiency in the rejections of the independent claims.
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DECISION
We REVERSE the Examiner’s obviousness rejections of claims 6—13.
REVERSED
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