Ex Parte Kim

Patent Trial and Appeal Board

Nov 9, 2012

11715855 (P.T.A.B. Nov. 9, 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.
11/715,855 03/08/2007 Yong C. Kim 06/118 6335
7590 11/09/2012
LEON D. ROSEN
FREILICH, HORNBAKER & ROSEN
Suite 1220
10960 Wilshire Blvd.
Los Angeles, CA 90024
EXAMINER
CHAUDRY, ATIF H
ART UNIT PAPER NUMBER
3753
MAIL DATE DELIVERY MODE
11/09/2012 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 YONG C. KIM
____________

Appeal 2010-010538
Application 11/715,855
Technology Center 3700
____________

Before JENNIFER D. BAHR, HYUN J. JUNG, and JEREMY M.
PLENZLER, Administrative Patent Judges.

PLENZLER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-010538
Application 11/715,855

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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 1-3. Claims 4-8 are cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
Appellant’s claimed invention relates to a control valve having a
tapered passage. Spec. 3, ll. 11-12. Claims 1, 2, and 3 are independent.
Claim 2, reproduced below, is illustrative:
2. A vehicle control valve, which flows pressured air
that is received at a valve inlet (14) of a valve housing, to a
valve outlet (16) of the housing to maintain the valve outlet at a
predetermined pressure below the inlet pressure, which includes
a passage (22) that extends within said housing between said
valve inlet and said valve outlet, said passage including an inlet
passage portion (160) connected to said inlet and an outlet
passage portion (162) connected to said outlet, said inlet
passage portion including a blockable passage part (24), a
piston (26) that has a front piston end (30) that lies in said
blockable passage part and blocks it, said piston being
moveable rearward along a piston path away from an initial
piston position and then forward to its initial position, said
housing having a spring chamber (40) extending rearward from
said blockable passage part and rearward of said piston, said
spring chamber being coupled to said outlet passage portion,
and a spring (36) lying in said spring chamber and pressing said
piston forwardly (F), in addition to force applied by air pressure
in said chamber, so a low pressure in said outlet and in said
chamber results in the piston front end moving rearward to a
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Application 11/715,855

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position in said blockable passage part where pressured air can
flow past the piston front end to flow into said outlet passage
portion, wherein:
said blockable passage part (24) has an enlarged rear end
(24R) that is tapered in diameter to have a progressively greater
diameter at progressively more rearward locations therealong,
to allow pressured air to flow rapidly around said piston front
end (30) into said spring chamber and then through said
chamber hole toward said outlet, when the forward piston end
(32) has moved sufficiently rearward.

REJECTIONS
Appellant seeks review of the following rejections:
1. Claim 1 is rejected under 35 U.S.C. § 103(a) as being unpatentable over
Rosaen (US 4,622,994; iss. Nov. 18, 1986) and Naedler (US 6,401,743 B1;
iss. Jun. 11, 2002);
2. Claims 2 and 3 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rosaen and Simon (US 3,482,594; iss. Dec, 9, 1969); and
3. Claims 2 and 3 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rosaen and Eickman (US 1,375,497; iss. Apr. 19, 1921).

OPINION
Claim 1
Appellant has not presented arguments regarding the rejection of
claim 1 in the Appeal Brief and has instead indicated that “Applicant does
not appeal the rejection of claim 1.” App. Br. 1. Therefore, Appellant has
waived any arguments regarding the rejection of claim 1. Thus, we sustain
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the rejection of claim 1 under 35 U.S.C. § 103(a) as being unpatentable over
Rosaen and Naedler.

Claims 2 and 3
In the rejection of claims 2 and 3 based on Rosaen and Simon, the
Examiner has determined that Rosaen discloses each of the features of
claims 2 and 3 except the enlarged rear end of the blockable passage. Ans.
4-5. Instead, the Examiner cites Simon as “teach[ing] a pressure actuated
valve comprising a blockable passage 31 having a tapered and progressively
enlarged rear end 18 abutting a piston 10.” Ans. 5. The Examiner concludes
that it would have been obvious to include the enlarged rear end of the
blockable passage from Simon in the valve of Rosaen “in order to improve
flow between the piston and blockable passage and as a known substitute
valve seat arrangement having predictable flow control characteristics of
increased flow with rearward movement of the piston because of the taper.”
Id. We agree.
Appellant contends that Rosaen “does not show his passage having a
progressively enlarged end that would allow very rapid inflation of an empty
tire.” App. Br. 4. However, the Examiner does not rely on Rosaen as
disclosing the enlarged end. Instead, the Examiner notes that Simon “has
been cited to show [the] tapered diameter with [the] progressively enlarged
end.” Ans. 7.
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As noted by the Examiner, “Appellant’s arguments [are] against the
references individually.” Ans. 6-7. “Non-obviousness cannot be established
by attacking references individually where the rejection is based upon the
teachings of a combination of references.” In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986) (citing Keller, 642 F.2d at 425). In determining
obviousness, a reference “must be read, not in isolation, but for what it fairly
teaches in combination with the prior art as a whole.” Id.
Instead of addressing the combination of Rosaen and Simon,
Appellant has evaluated the individual references in isolation. Appellant
focuses on the internal passages in the piston of Simon and contends that
“[e]ven when [Simon’s] opening 8 rises to reach his conical surface 18, flow
is restricted primarily by his very narrow subconduit 7.” App. Br. 4. In
response, the Examiner explains:
Simon (Fig. 2) teaches a pressure actuated valve comprising a
blockable passage 31 having a tapered and enlarged rear end 18
abutting a piston which allows pressurized air to flow rapidly
around the piston 10 when the piston 10 moves rearward . . .
since the flow passage (uncovered area of opening 8) increases
gradually from zero (totally closed) to a maximum as the piston
moves rearward.
Ans. 7. We agree. The openings in Simon are increased as the piston is
moved rearward and the tapered walls provide at least some degree of
increased flow as the piston is displaced rearward.
As noted above, the Examiner has cited Simon as disclosing tapered
walls in the passage and has cited Rosaen as disclosing the rest of the
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features of the claimed valve. Ans. 4-5. The Examiner has proposed
modifying Rosaen to include the tapered walls. Ans. 5. The Examiner’s
proposed modifications to Rosaen do not include the internal passages of
Simon. Appellant contends that the combination of Simon and Rosaen
“does not show a passage part enlarged rear end to allow pressurized air to
flow rapidly around the piston front end when the piston moves far
rearward.” App. Br. 4. We disagree. The modified valve of Rosaen
including the tapered walls would allow pressurized air to flow rapidly
around the piston front end as claimed in view of the increased opening
provided by the tapered walls of the passage.
One skilled in the art would appreciate the improved flow provided by
the tapered passage, as evidenced by Rosaen’s explanation that the valve
member may include “a tapered or frustoconical surface which cooperates
with a cylindrical surface at the valve seat to provide a variable area opening
between the valve seat and the valve member.” Col. 1, ll. 43-46. Rosaen
explains that “[t]he area of this opening increases . . . with the movement of
the valve member from its closed and towards its open position.” Col. 1, ll.
46-49. Placing the taper on the valve instead of the passage would provide
similar results. Appellant has failed to persuasively argue why one skilled in
the art would not modify the passage in Rosaen to include a tapered and
enlarged rear end.
Based on Appellant’s arguments, we do not see any error in the
Examiner’s reasoning to modify Rosaen to include the tapered walls from
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the passage in Simon. Therefore, we affirm the Examiner’s decision
rejecting claims 2 and 3 as being unpatentable over Rosaen and Simon.
Because our affirmance of the rejection of claims 2 and 3 as being
unpatentable over Rosaen and Simon is dispositive as to claims 2 and 3, we
do not reach the Examiner’s rejection of claims 2 and 3 as being
unpatentable over Rosaen and Eickman.

DECISION
We AFFIRM the Examiner’s decision to reject claims 1-3.
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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