Ex Parte Millius

Patent Trial and Appeal BoardAug 18, 2017

12329749 (P.T.A.B. Aug. 18, 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. 12/329,749 12/08/2008 Michael J. Millius 506964 9496 53609 7590 08/22/2017 REINHART BOERNER VAN DEUREN P.C. 2215 PERRYGREEN WAY ROCKFORD, IL 61107 EXAMINER FOX, JOHN C ART UNIT PAPER NUMBER 3753 NOTIFICATION DATE DELIVERY MODE 08/22/2017 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): RockMail@reinhartlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL J. MILLIUS Appeal 2015-004762 Application 12/329,749 Technology Center 3700 Before MICHAEL L. HOELTER, LYNNE H. BROWNE, and THOMAS F. SMEGAL, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2015-004762 Application 12/329,749 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1—27. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. The disclosed subject matter “relates to gas valves and more particularly to variable flow gas valves.” Spec. 11. Method claims 1 and 25, and apparatus claim 14, are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method of controlling a gas control valve having a plurality of discrete open configurations including at least a first discrete open configuration providing a first flow rate and a second discrete open configuration providing a second flow rate, different than the first flow rate, the method comprising the step of: continuously cycling between the first and second discrete open configurations to provide a desired average output flow rate that is different than the first and second flow rates. THE CLAIMED SUBJECT MATTER REFERENCES Roberts Okamoto Watson US 3,115,896 US 4,546,795 US 2004/0191711 A1 Dec. 31, 1963 Oct. 15, 1985 Sept. 30, 2004 2 Appeal 2015-004762 Application 12/329,749 REJECTIONS1 Claims 1—10, 14—17, and 23—27 are rejected under 35 U.S.C. § 103(a) as unpatentable over Okamoto. Claims 11—13 are rejected under 35 U.S.C. § 103(a) as unpatentable over Okamoto and Watson. Claims 18—22 are rejected under 35 U.S.C. § 103(a) as unpatentable over Okamoto and Roberts. ANALYSIS The rejection of claims 1—10, 14—17, and 23—27 as unpatentable over Okamoto Appellant argues all the claims together. App. Br. 9—11. We select independent method claim 1 for review with the remaining claims standing or falling therewith. See 37 C.F.R. § 41.37(c)(l)(iv). The Examiner states that it would have been obvious “to modulate the valve of Okamoto” as recited because “there are only two ways to use the valve of Figure 8 to produce a continuum of flow rates between the extremes.”2 Final Act. 4. The Examiner references KSR International Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) and states, “choosing from a finite 1 “The rejection of record under § 102 is withdrawn.” Ans. 4. 2 Examiner discusses modulating “between the lowest and the middle rate with one of the openings” 30A or 30B (i.e. 0%—50%) and “between the one opening and the other” (i.e., between 30A and 30B) “to modulate between the lowest and the highest” (i.e., 0%—100%). Final Act. 4. Additionally (and consistent with the above), the Examiner states that it would have been obvious “to use the Okamoto et al valve at a 50% and 100% duty cycle.” Final Act. 4. 3 Appeal 2015-004762 Application 12/329,749 number of identified, predictable solutions, with a reasonable expectation of success, is an indication of obviousness.” Final Act. 4. Appellant contends that it is not possible to employ Okamoto in the manner described “[b]ecause it is only possible to either fully open ... or fully close ... the valve of Okamoto.” App. Br. 10; see also id. at 11. Appellant’s contention that Okamoto operates in only either the fully open or fully closed condition is not persuasive because Okamoto states that “a wide range of flow rate is possible” with the embodiment depicted in Figure 8. Okamoto 4:64—65. Okamoto states that the uppermost aperture 30A can be opened by the solenoid, or it can be closed by the solenoid. Okamoto 5:3—6. Whether upper aperture 30A is opened or closed, however, Okamoto states, “the gas which has passed through the [lower] aperture 30B is allowed to advance,” or this lower aperture 30B can itself be blocked too. Okamoto 5:6—9. Thus, Appellant’s contention that Okamoto’s valve is either fully opened or fully closed disregards Okamoto’s explicit teaching that gas can still flow through lower aperture 3 OB even if upper aperture 30A is blocked (i.e., achieving a middle flow rate between the two extremes of fully opened and fully closed). We are thus not persuaded the Examiner erred in relying on Okamoto for disclosing a plurality of open gas flow settings. Further, given Okamoto’s explicit disclosure of such operation, there is a reasonable expectation of success in operating Okomoto’s valve in the manner described by the Examiner. See Final Act. 4; see also Ans. 8. Appellant’s contentions to the contrary are not persuasive. See App. Br. 10- 11. Appellant also describes Okamoto as depicting various waveforms for use in the operation of its solenoid. See App. Br. 10 (referencing Okamoto 4 Appeal 2015-004762 Application 12/329,749 Figures 3 and 4). Appellant states, “[t]here are no intermediate settings because the solenoid valve 5 is only capable of two positions — either the fully open or the fully closed position.” App. Br. 10. Accordingly, as per Appellant, “the amount of gas is controlled in Okamoto by merely switching between a fully open and a fully closed condition for a specific amount of time.” App. Br. 10-11 (emphasis added). Although, we agree with Appellant on the point that gas flow in Okamoto is controlled by switching between different positions “for a specific amount of time,” this is not indicative of error because Okamoto depicts variable time periods during which an aperture is opened (or closed) thereby allowing the amount of gas passing therethrough to vary. See Okamoto Fig. 4; 3:34-40. Appellant further contends, “[t]he inventions recited in the rejected claims cycle between discrete open position” (as, perhaps, in contrast to cycling between an opened and a closed position). App. Br. 11. However, as discussed supra, Okamoto teaches that upper aperture 30A can be opened/closed while gas still flows through lower aperture 3 0B. Okamoto 5:3—9. In other words, Okamoto teaches switching between gas flowing only through aperture 3 0B and, alternatively, gas flowing through both apertures 30A and 30B. See also Okamoto Fig. 8 (depicting gas flowing through both apertures). The Examiner’s statement, “the control of solenoid valves is so notoriously old and well known that the recited method [i.e., between discrete open positions] can be used in Okamoto et al with only common knowledge and there is a reasonable expectation of success,” is consistent with this teaching. Ans. 7—8. In light of such teachings, Appellant does not explain how Okamoto is incapable of such a modification (should a modification even be warranted), or how such 5 Appeal 2015-004762 Application 12/329,749 modification (if warranted) is beyond the ability of one skilled in the art. See also Final Act. 5. Accordingly, and based on the record presented, we are not persuaded the Examiner erred in rejecting claims 1—10, 14—17, and 23—27 as unpatentable over Okamoto. The rejection of claims 11—13 as unpatentable over Okamoto and Watson Appellant argues claims 11—13 together. App. Br. 11—13. We select claim 11 for review with claims 12 and 13 standing or falling with claim 11. Claim 11 includes the additional “step of performing a warm up sequence.” The Examiner relies on the additional teachings of Watson for this claimed step. Final Act. 6. The Examiner states that Watson’s teaching of “producing a higher heat than desired and then lowering the flow to reduce hysteresis'1'’ “is read as a warm up sequence as recited.” Final Act. 6 (emphasis added). Watson describes “hysteresis” as pertaining to gas flow at a valve position varying as a function of the travel of the valve to that position.3 Watson 13. Appellant states, “[t]he different flow rates are not a function of the valve position, as in Watson, but a function of the relative rate of opening and closing.” App. Br. 12. Although Appellant does not explain how a different flow rate is not a function of valve position, Appellant appears to agree with Watson’s description of hysteresis that a different flow rate is a function of the opening and closing of the valve. 3 To be specific, Watson states, “[a]n example of hysteresis is when the gas flow at the same valve position varies as a function of the length of travel of the valve during the just prior actuation and the direction in which the valve is actuated for setting the intended gas flow.” Watson 13. 6 Appeal 2015-004762 Application 12/329,749 Appellant thereafter argues, “Okamoto does not suffer from a hysteresis problem” and that one skilled in the art would not combine Okamoto and Watson “to solve a non-existent problem.” App. Br. 12. In other words, “the Examiner has impermissibly used these claims as a guide or roadmap in formulating the rejection.” App. Br. 12. Appellant is only partially correct in stating that Okamoto does not have a hysteresis problem. Okamoto discusses the movement of the solenoid up and down to open or close apertures stating that gas flow may be controlled “in accordance with the pulse signal, without being affected by the electric hysteresis.” Okamoto 3:48—53. However, the hysteresis addressed in Watson (and relied on by the Examiner) is one directed to gas flow (i.e., valve position) and not current flow or a pulse signal. Thus, Appellant’s contention that “Okamoto does not suffer from a hysteresis problem” is not correct when addressing gas flow hysteresis as discussed in Watson. Thus, based on the record presented, we are not persuaded the Examiner erred when “reading” Watson’s disclosure as pertaining to “a warm up sequence as recited.” Final Act. 6. We sustain the Examiner’s rejection of claims 11—13 as being unpatentable over Okamoto and Watson. The rejection of claims 18—22 as unpatentable over Okamoto and Roberts Appellant argues claims 18—22 together. App. Br. 13—14. Appellant also presents a separate argument regarding dependent claims 21 and 22. App. Br. 14. We select claims 18 and 21 for review with the remaining claims standing or falling with the claim from which they depend. 7 Appeal 2015-004762 Application 12/329,749 Claim 18 Dependent claim 18 includes, among other limitations, a recitation to a gas control valve “including a selector” to establish a user-defined flow rate. The Examiner relies on the teachings of Roberts for such limitations. Final Act. 6—7; Ans. 8. Appellant argues, “there is no reasonable expectation of success” when combining Robert’s selector valve with the teachings of Okamoto because “[t]he ‘selector’ of Roberts et al. is a manually adjustable valve with different sized flow passages of different size.” App. Br. 13; see also Reply Br. 12. Appellant does not elaborate as to why a manually adjustable valve that itself contains differently sized flow passages therein (see Roberts Figs. 3—8) cannot be coupled to Okamoto’s system. The Examiner states that it would have been obvious to combine the two teachings to “allow a user to set the flow rate” and further, “[a] rotary control dial [as is Roberts’ device] is notoriously well known in gas valves.” Final Act. 7. Appellant is not persuasive that there would have been no expectation of success if one skilled in the art were to have installed a rotary control dial as taught by Roberts with Okamoto in order to “allow a user to set the flow rate.” Final Act. 7. We sustain the Examiner’s rejection of claims 18—20. Claim 21 Dependent claim 21 includes the additional limitation “wherein the selector is digital.” Appellant contends that Robert’s “mechanical control cannot be ‘read as’ digital” and that “the Roberts reference teaches nothing to do with such electronic control.” App. Br. 14; see also Reply Br. 12. The Examiner states that Robert’s mechanical selector “is read as digital” because “[t]he term ‘digital’ is typically used to mean a stepwise change.” 8 Appeal 2015-004762 Application 12/329,749 Final Act. 7. Appellant disagrees with this finding by the Examiner because “‘digital’ clearly refers to an electronic selector” which is distinguished “from the mechanical selector taught by Roberts.” Reply Br. 12. The Examiner provides no justification or reason as to why “digital” is understood to mean “stepwise change.” Common definitions of the term “digital” (when applied to devices) bolster Appellant’s argument and include, “characterized by electronic and especially computerized technology,”4 “involving or relating to the use of computer technology,”5 and “of, relating to, or using numerical calculations.”6 We thus do not agree with the Examiner that one skilled in the art, upon reviewing Robert’s selector valve, would “read” this purely mechanical device as “digital.” Final Act. 7. Accordingly, and based on the record presented, we reverse the Examiner’s rejection of claim 21, and its dependent claim 22, as being obvious over Okamoto and Roberts. DECISION The Examiner’s rejections of claims 1—20 and 23—27 are affirmed. The Examiner’s rejection of claims 21 and 22 are reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED-IN-PART 4 See https://www.merriam-webster.com/dictionary/digital (last visited August 15, 2017). 5 See https://en.oxforddictionaries.com/defmition/digital (last visited August 15,2017). 6 See http://www.dictionary.com/browse/digital?s=t (last visited August 15, 2017). 9