Ex Parte Moeller et al

Patent Trials and Appeals BoardFeb 13, 2019

14117397 - (D) (P.T.A.B. Feb. 13, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/117,397 11/13/2013 14299 7590 02/13/2019 WATERS TECHNOLOGIES CORPORATION c/o Schmeiser, Olsen & Watts LLP 33 Boston Post Road West Suite 410 Marborough, MA 01752 FIRST NAMED INVENTOR Mark W. Moeller 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 ATTORNEY DOCKET NO. CONFIRMATION NO. W-753-US2 (WAT-053US) 3531 EXAMINER SOSKI, FREDERICK D ART UNIT PAPER NUMBER 3753 MAIL DATE DELIVERY MODE 02/13/2019 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 MARK W. MOELLER and ROBERT A. JENCKS Appeal2018-004315 Application 14/117 ,397 Technology Center 3700 Before GEORGE R. HOSKINS, LISA M. GUIJT, and BRENT M. DOUGAL, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's rejection of claims 1, 5-9, and 12-16.2 We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 Appellants identify the real party in interest as Waters Technologies Corporation. Appeal Br. 4. 2 Appeal is taken from the Final Office Action dated June 1, 2017. Appeal2018-004315 Application 14/117 ,397 STATEMENT OF THE CASE Claims 1 and 9 are the independent claims on appeal. Claim 1, reproduced below, is exemplary of the subject matter on appeal. 1. A rotary shear valve assembly, comprising: a rotor assembly having a rotor and a drive shaft with a head portion, the rotor having a substantially planar surface with one or more grooves, a first hole having a circular cross-section and a second hole having an elliptical cross-section which is not circular, the head portion having a first pin and a second pin, the first and second pins being disposed substantially diametrically opposite of each other on a line through a center of the head portion, the first pin having a diameter that is less than a diameter of the second pin, the first pin being mated with the first hole in the rotor and the second pin being mated with the second hole in the rotor, wherein the first hole in the rotor is sized to receive closely the first pin. THE REJECTIONS I. Claims 1, 5, 6, 9, 12 and 13 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Zelechonok (US 5,920,006; issued July 6, 1999), Hara (US 2002/0002099 Al; published Jan. 3, 2002), and Potolsky (US 4,619,640; issued Oct. 28, 1986). II. Claims 1, 6-9, and 12-16 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Tower (US 2011/0006237 Al; published Jan. 13, 2011), Ogle (US 4,444,066; issued Apr. 24, 1984), and Hara. III. Claims 1, 6-9, and 12-16 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Tower, Ogle, Hara, and Potolsky. IV. Claims 5 and 13 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Tower, Ogle, Hara, and DaCunha (US 6,840,701 B2; issued Jan. 11, 2005). 2 Appeal2018-004315 Application 14/117 ,397 ANALYSIS Rejection I Regarding independent claim 1, the Examiner finds that Zelechonok discloses, inter alia, a rotor assembly including a rotor (i.e., valve disc 262) and a drive shaft having a head portion (i.e., housing 225, cylinder wall 274), the rotor having a substantially planar surface with rotor grooves (i.e., channels 78-1, 78-2), first and second holes of circular cross-section (i.e., as shown by Fig. 11 in valve disc 262), and the head portion having two substantially diametrically oppositely disposed pins (i.e., peripheral pins 268), wherein the first pin is mated with the first hole and the second pin is mated with the second hole, and wherein the first hole is sized to receive closely the first pin, as claimed. Final Act. 8 ( citing Zelechonok Figs. 2, 7A----C, 11); see also Zelechonok 7:54--55, 8:6-7. The Examiner determines that Zelechonok does not disclose that the second hole has an elliptical cross section which is not circular, as required by claim 1, and relies on Hara for teaching a first hole (i.e., bolt-hole 4) having a circular cross section and a second hole (i.e., bolt-hole 3) having an elliptical cross section. Final Act. 8 ( citing Hara ,r,r 20, 21 ). The Examiner also determines that neither Zelechonok nor Hara teaches two pins of different diameters, and the Examiner relies on Potolsky for teaching a first pin (i.e., projection 34), having a diameter less than the diameter of a second pin (i.e., projection 35), as claimed. Id. (citing Potolsky, Fig. 4); see also, Potolsky 5:9-11. The Examiner reasons that it would have been obvious to utilize the hole arrangement, as taught by Hara, "to make sure that the pins and holes for Zelechonok can be engaged in the event there is a tolerance issue during manufacturing for the purpose ... of providing easy installation 3 Appeal2018-004315 Application 14/117 ,397 at a proper position," and to utilize different diameter pins, as taught by Potolsky, "for the purpose of ensuring proper assembly and orientation of parts." Final Act. 8-9 (citing Hara ,r 8). Appellants argue that claim 1 requires that "the one or more rotor grooves and the first and second holes are features of the substantially planar surface." Reply Br. 2. In view of this claim interpretation, Appellants argue that "Hara does not teach or suggest a 'rotor having a substantially planar surface with ... a first hole having a circular cross-section and a second hole having an elliptical cross-section which is not circular."' Appeal Br. 7-8. Appellants submit that Hara's bolt-hole 3 is in mounting stay 6, whereas bolt-hole 4 is in mounting stay 7, such that Hara's bolt-holes 3, 4 are not both in a planar surface. Id. at 8. The Examiner correctly responds that claim 1, as set forth supra, requires the substantially planar surface of the rotor to have one or more rotor grooves, but does not require such planar surface to have first and second holes. Notwithstanding, as set forth supra, the Examiner relies on Zelechonok, not Hara, for disclosing a rotor having a substantially planar surface with first and second holes. See Ans. 11 (finding, with reference to Figure 11, that "Zelechonok depicts a substantial[ly] planar surface (generally at 262) having holes (unlabeled, as seen as those holes occupied by pins 268) for the pins (268)"). As the Examiner proposes modifying Zelechonok's holes to use Hara's hole arrangement (i.e., a circular hole and an elliptical hole), for easier positioning, as set forth supra, Appellants' argument neither addresses the rejection as articulated by the Examiner nor apprises us of error in the Examiner's findings or reasoning with respect to 4 Appeal2018-004315 Application 14/117 ,397 the Examiner's proposed modification of Zelechonok's holes to be differentially formed as disclosed by Hara. Appellants also argue that the Examiner "improperly interprets" the projections of Potolsky as the claimed pins, in that "there is no teaching, suggestion or even mention of a 'pin' anywhere in the disclosure of Potolsky nor are Potolsky's projections used or otherwise depicted as pins." Appeal Br. 8. Appellants also argue that because Potolsky's projections 34, 35 (or "alternatively shaped projections" or "spaced objects") are used to ensure proper coupling with a complementary connecting body so there is no mismatch of blood types between a blood source and a patient, "one of skill in the art would not simply adopt the projections 34 and 35 disclosed in Potolsky for use as the first and second pins of the head portion of a drive shaft of a rotor assembly in accordance with Appellants' claim 1." Id. (citing Potolsky, Abstract, 1:49--2:2, 5:1-30). The Examiner responds that, in view of the lack of any special definition of the claim term "pin" provided in Appellants' Specification, an ordinary meaning of "pin" is "a piece of solid material (such as wood or metal) used especially for fastening things together ... ," and the Examiner determines that the function and structure of the claimed pins and Potolsky' s projections 34, 35 are the same, namely, pieces of solid material that "prevent relative rotation between two coupled parts," for at least the purpose of "'keying' two parts together." Ans. 11-12 (citing https://www.merriam-webster.com/ dictionary/pin; Potolsky, Abstract). Appellants do not dispute the Examiner's definition of "pins," which we accept as reasonable, in light of the Specification. Reply Br. 2--4. Figure 5 Appeal2018-004315 Application 14/117 ,397 3A of the present Specification, depicting pins 42-1, 42-2, and Figure 4 of Potolsky, depicting projections 34, 35, are reproduced below. Figure 3A of the Specification depicts "a side view of the drive shaft from the end with the pins" (Spec. 3:4), and Figure 4 of Potolsky depicts "a perspective view of connectors ... for assuring a proper matching" (Potolsky 2:29-32); see also id. 5:4--11 (disclosing, with reference to Figure 4, that projections 34, 35 extend from flat face 32 and have "different outside diameters indicated at dl and d2"). Potolsky's projections are pieces of solid material used for fastening two connectors together, and Appellants have not identified, nor do we discern, any structural difference requirement of the claimed pins, which is not met by Potolsky's projections. Thus, Appellants' argument does not apprise us of error in the Examiner's findings with respect to Potolsky's projections 34, 35. Appellants also appear to argue that because Potolsky's projections "ensure that there is no mismatch of blood types and a patient, ... one of ordinary skill in the art would not simply adopt the projections 34 and 35 for use as the first and second pins of the head portion of a drive shaft of a rotor assembly," as claimed. Appeal Br. 8. However, Appellants do not address the Examiner's rationale, as stated supra, that it would have been obvious to do so "for the purpose of ensuring proper assembly and orientation of parts." 6 Appeal2018-004315 Application 14/117 ,397 Final Act. 9; see also Ans. 12 (finding that "both Zelechonok and Potolsky are known in the art of connecting one component to another component"). Thus, Appellants' argument does not apprise us of error in the Examiner's reasoning with respect to Potolsky's projections 34, 35. Accordingly, we sustain the Examiner's rejection of independent claim 1 as unpatentable over Zelechonok, Hara, and Potolsky. Appellants chose not to present separate arguments for the patentability of independent claim 9 and claims 5, 6, 12, and 13 depending from independent claims 1 or 9, apart from those presented for claim 1 supra, and therefore, for essentially the same reasons stated supra, we also sustain the Examiner's rejection of claims 5, 6, 9, 12, and 13 as unpatentable over Zelechonok, Hara, and Potolsky. Appeal Br. 9. Re} ection II Regarding independent claims 1 and 9, the Examiner finds that Tower discloses, inter alia, a drive shaft having a head portion (i.e., drive shaft 35, head assembly 36) having three pins (i.e., dowel pins 37), wherein at least a first pin has a diameter less, or smaller, than the diameter of a second pin, as claimed, because the magnitude of the difference required in diameters to be less or smaller is not defined in the claims or the Specification, and the diameter of Tower's first pin would necessarily be less or smaller that the diameter of Tower's second pin if viewed "down to the atom," at least in some instances, due to "machining tolerances." Final Act. 10-11 ( citing Tower ,r,r 58, 68, Figs. 1, 8) (emphasis added); see also id. ,r 59; see also Ans. 12-15 (finding that due to imperfect machining tolerances, the pin diameters "cannot truly be equal," and therefore, one pin diameter is inherently less or smaller than the other). 7 Appeal2018-004315 Application 14/117 ,397 Appellants correctly argue that the Examiner's claim interpretation is "unreasonably broad." Appeal Br. 10; Reply Br. 3. The Examiner's interpretation effectively reads the limitation requiring the first pin to have a diameter less or smaller than the diameter of the second pin out of claims 1 and 9. In other words, the Examiner has not provided a sufficient disclosure of these claim limitations in Tower. Accordingly, we do not sustain the Examiner's rejection of independent claims 1 and 9, and claims 6-8 and 12-16 depending therefrom, as unpatentable over Tower, Ogle, and Hara. Rejection III Regarding independent claim 1, the Examiner relies on the same findings with respect to Tower, Ogle, and Hara as applied in Rejection II supra, however, the Examiner further relies on Potolsky for disclosing a first pin having a diameter that is less than a diameter of a second pin, similar to Rejection I supra. Final Act. 14. The Examiner reasons that it would have been obvious "to utilize the pin and hole sizing of Potolsky as a component alignment check within the rotary shear valve assembly of Tower for the purpose of properly aligning the shaft and the rotor, which further ensures the rotor grooves are positioned properly for engagement with the stator." Id. Appellants repeat their argument that Hara fails to show a rotor having a substantially planar surface with a second hole having an elliptical cross-section, as required by claim 1 and as presented in Rejection I supra, and argue that the Examiner's reliance on Tower and Ogle does not cure such deficiency. Appeal Br. 13; see also id. at 7-8, 11. However, Appellants' argument does not apprise us of error in the Examiner's reliance 8 Appeal2018-004315 Application 14/117 ,397 on Hara for essentially the same reasons stated supra with respect to Rejection I. Appellants also submit that claim 9 requires the two pins to "extend orthogonally from a distal surface of the head portion," and argue that the Examiner "does not address the orthogonality requirement." Appeal Br. 13; see also id. at 11. Appellants contend that "Ogle teaches that its pins extend from a spherical surface and, as shown in FIG. 7, the pins 66 are clearly shown as not being orthogonal to the spherical face 65." Id. at 11 (citing Ogle, 3:60 to 4:8). The Examiner responds that Figure 11 of Tower depicts pins (i.e., dowel pins 37) orthogonal to a distal surface of head assembly 36. Ans. 15. Appellants reply that "there is no reason, suggestion or motivation why one of ordinary skill in the art would overlook the context behind the use of the pins disclosed in Ogle," which "extend non-perpendicularly from a different type of component, a spherical surface of a spindle ... and are used for a different purpose than diametrically opposite perpendicular pins on Towers' flat surface." Reply Br. 3--4 (citing Ogle 3:51--4:10, Fig. 1). Thus, regarding independent claim 9, the Examiner relies on Tower for disclosing a rotor assembly having a drive shaft (i.e., drive shaft 35) and a rotor (i.e., rotor device 25), with a head portion (i.e., head assembly 36). Final Act. 10-12, 14 (citing Tower ,r,r 58, 68, Figs. 1, 8); see also Tower ,r 59. As set forth supra, in the Examiner's Answer, the Examiner further relies on Tower for disclosing dowel pins 37 that extend orthogonally from head assembly 36. Notably, the Examiner's reliance on Ogle for disclosing first and second pins disposed substantially diametrically opposite of each other addresses a limitation recited in claim 1, but not recited in claim 9; however, claim 9 does require "only first and second pins," as disclosed in 9 Appeal2018-004315 Application 14/117 ,397 Ogle, whereas Tower depicts and refers to, as an example, three dowel pins. Appeal Br. 17, 18 (Claims App.) (emphasis added); Final Act. 11; Tower ,r 60 ("[i]n a typical configuration, three strategically oriented dowel pins 37 extend distally from the distal surface 38 of the head assembly 36"), Fig. 11; Final Act. 11. The Examiner reasons that it would have been obvious "to utilize the pin arrangement of Ogle," (i.e., only first and second pins, as required by claim 9) "in the rotary shear valve assembly of Tower for the purpose of reducing the number of pins (37) and holes (41) required while maintaining the torque balance across the head portion (3 6) which concurrently reduces the amount of machining required (41)." Id. at 12; Ans. 16 ("Ogle teaches a repositioning of the pins of Tower"). Appellants' argument does not address the rejection as articulated by the Examiner. In particular, the Examiner's rejection does not require modifying Tower's head assembly 36 to have a spherical shape as disclosed in Ogle. Rather, the Examiner proposes modifying Tower's three dowel pins 37, which is characterized as a typical configuration, to be arranged as a set of two dowel pins, which would extend orthogonally from the planar distal surface of Tower's head assembly 36, consistent with the teachings of Tower. Appellants' argument also does not apprise us of error in the Examiner's reasoning, as set forth supra, that doing so would reduce parts and machining. Finally, Appellants repeat their argument that Potolsky's projections are not pins, as claimed, as presented in Rejection I. See Appeal Br. 13. For essentially the same reasons discussed supra, we are not persuaded by Appellants' argument. 10 Appeal2018-004315 Application 14/117 ,397 Accordingly, we sustain the Examiner's rejection of independent claims 1 and 9 as unpatentable over Tower, Ogle, Hara, and Potolsky. Appellants chose not to present separate arguments for the patentability of dependent claims 6-8 and 12-16, apart from those presented for claims 1 and 9 supra, and therefore, for essentially the same reasons stated supra, we also sustain the Examiner's rejection of claims 6-8 and 12-16 as unpatentable over Tower, Ogle, Hara, and Potolsky. Appeal Br. 12. Rejection IV Appellants argue that "DaCunha fails to cure the deficiencies [ as argued with respect to Rejection II] in connection with claims 1 and 9," and therefore, because claims 5 and 13 depend from claims 1 and 9, claims 5 and 13 "represent allowable subject matter." Appeal Br. 15. We agree that the Examiner's reliance on DaCunha for teaching a clamp does not cure the deficiencies in the Examiner's findings as discussed supra with respect to Rejection II. Notably, the Examiner does not reject claims 5 and 13 under 35 U.S.C. Â§ 103(a) as unpatentable over Tower, Ogle, Hara, and Potolsky, as applied to independent claims 1 and 9 pursuant to Rejection III. Accordingly, we do not sustain the Examiner's rejection of claims 5 and 13 as unpatentable over Tower, Ogle, Hara, and DaCunha. DECISION The Examiner's decision rejecting claims 1, 5, 6, 9, 12 and 13 under 35 U.S.C. Â§ 103(a) as unpatentable over Zelechonok, Hara, and Potolsky is AFFIRMED. The Examiner's decision rejecting claims 1, 6-9, and 12-16 under 35 U.S.C. Â§ 103(a) as unpatentable over Tower, Ogle, and Hara is REVERSED. 11 Appeal2018-004315 Application 14/117 ,397 The Examiner's decision rejecting claims 1, 6-9, and 12-16 under 35 U.S.C. Â§ 103(a) as unpatentable over Tower, Ogle, Hara, and Potolsky is AFFIRMED. The Examiner's decision rejecting claims 5 and 13 under 35 U.S.C. Â§ 103(a) as unpatentable over Tower, Ogle, Hara, and DaCunha is REVERSED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 12