Ex Parte Mortensen et al

Patent Trials and Appeals BoardJun 4, 2019

14900669 - (D) (P.T.A.B. Jun. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/900,669 12/22/2015 35301 7590 06/06/2019 MCCORMICK, PAULDING & HUBER LLP CITY PLACE II 185 ASYLUM STREET HARTFORD, CT 06103 FIRST NAMED INVENTOR Ole Mortensen 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. 6495-0723WOUS 5196 EXAMINER JELLETT, MATTHEW WILLIAM ART UNIT PAPER NUMBER 3753 NOTIFICATION DATE DELIVERY MODE 06/06/2019 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): patentdocket@ip-lawyers .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte OLE MORTENSEN, MICHAEL BIRKELUND, OLE HOLST CHRISTENSEN, KRISTJAN ARNOR GRETARSSON, and ANDERS PEDERSEN1 Appeal 2018-007 669 Application 14/900,669 Technology Center 3700 Before KEVIN F. TURNER, DANIELS. SONG, and BRENT M. DOUGAL, Administrative Patent Judges. SONG, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant appeals under 35 U.S.C. Â§ 134(a) from the Examiner's Final Office Action ("Final Act.") rejecting claims 16, 18-31, 34, and 36 in the present application. Appeal Br. 1. We have jurisdiction under 35 U.S.C. Â§Â§ 6(b) and 134(a). We AFFIRM. 1 Collectively referred to as "Appellant" herein. The Appellant identifies the real party in interest as DANFOSS A/S. Appeal Brief ("Appeal Br.") 2. Appeal 2018-007 669 Application 14/900,669 The claimed invention is directed to a solenoid valve. Spec., Title. Representative independent claim 16, which is the sole independent claim on appeal, reads as follows: 16. A solenoid valve comprising a housing having an inlet and an outlet, wherein the solenoid valve further comprises a valve element and an orifice, wherein the orifice comprises an orifice inlet and an orifice outlet, and the orifice is provided in a membrane, and wherein the orifice has a diffuser characteristic in a direction from the orifice inlet to the orifice outlet, wherein the orifice comprises at least one conical orifice section, and wherein walls of the conical orifice section are inclined relative to a central axis of the orifice by an angle of less than 10Â°. Appeal Br. (Claims App'x, emphasis added). REJECTIONS 1. The Examiner rejects claims 16, 18, 20-24, 27-31, 34, and 36 under 35 U.S.C. Â§ 102(a)(l)/(a)(2) as anticipated by Kolze (US 4,283,040, iss. Aug. 11, 1981)2. Final Act. 6, 9. 2. The Examiner rejects claims 16, 18-24, 27-31, 34, and 36 under 35 U.S.C. Â§ 103 as obvious over Kolze in view of Herbert (US 8,576,032 B2, iss. Nov. 5, 2013 (prior pub. Mar. 4, 2010)). Final Act. 7. 3. The Examiner rejects claims 16, 18-24, 27-31, 34, and 36 under 35 U.S.C. Â§ 103 as obvious over Kolze in view of Schlenker (US 2011/0095217 Al, pub. Apr. 28, 2011). Final Act. 9. 4. The Examiner rejects claims 25 and 26 under 35 U.S.C. Â§ 103 as obvious over Kolze, and optionally Herbert or Schlenker, further in view ofBaechle (DE 19948446 Al, pub. Apr. 12, 2001). Final Act. 13. 2 The rejection of claim 19 as being anticipated by Kolze has been withdrawn by the Examiner. Ans. 12. 2 Appeal 2018-007 669 Application 14/900,669 ANALYSIS Only those arguments actually made by the Appellant have been considered in this decision. Arguments that the Appellant could have made but chose not to make have not been considered and are deemed to be waived. See 37 C.F.R. Â§ 41.37(c)(l)(iv); In re Jung, 637 F.3d 1356, 1365- 66 (Fed. Cir. 2011); Ex parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2010 (precedential) ). Rejection 1 The Examiner rejects claims 16, 18-24, 27-31, 34, and 36 as anticipated by Kolze, finding that Kolze discloses each and every limitation of independent claim 16, wherein the orifice comprises at least one conical orifice section ( each cylindrical portion of 54 has a conical transition from the smaller diameter to the larger adjacent diameter), wherein walls of the conical orifice section are inclined (i.e. they transition from an incline to an angle of nearly zero or parallel with the central axis which is less than 1 O.degrees, the recitation less than [IO.degrees] taken as a range from zero to just about equal to but less than 1 O.degrees) relative to a central axis of the orifice by an angle of less than 1 O.degrees. Final Act. 6-7; see also id. at 9. The Appellant argues that "Kolze's specification is completely silent with respect to the wall angle of the orifice shown in the drawings," and "it is improper to use proportions of features in a drawing as evidence of actual proportions when there is no indication that the drawings are to scale." Appeal Br. 10. Thus, the Appellant argues that Kolze's drawings "cannot be relied upon to establish the wall angle of the cited conical transitions," and 3 Appeal 2018-007 669 Application 14/900,669 one cannot presume that the angle Kolze's conical transition is inherently less than 10Â°. Reply Br. 4; see also Reply Br. 3 (reproducing portion of Figure 3 of Kolze with arrows with annotations "Conical Transitions".) Initially, although the Appellant understands the Examiner's anticipation rejection to be based solely on the "conical transitions" of Kolze, it appears that the Examiner's rejection also relies on the cylindrical portions of the orifice, which have an angle of 0Â° and increase in diameter toward the exit of the orifice with intervening conical transitions. See Final Act. 6-7; Ans. 13 ("The shown/taught drawing angles relied upon (i.e. the nearly straight lines that approach the 0Â° of the range between 0Â° and 10Â°) would still remain the same regardless of whether or not the drawings were scaled."). Regardless of whether the rejection is premised exclusively on the conical transitions or in combination with the cylindrical portions, we ultimately agree with the Appellant that the Examiner's anticipation rejection of claim 16 is inadequate. To the extent that the Examiner's position may be that the progressive enlargement of the cylindrical portions constitutes a conical orifice, we observe that these are nonetheless cylindrical portions, and not conical as required by claim 16. In that sense, we disagree with the Examiner that an angle of 0Â° is encompassed by claim 16 in that the recited orifice section must be "conical," thereby requiring the orifice section to have an angle greater than 0Â°. To the extent that the Examiner's position may be that conical transitions correspond to the recited conical orifice sections having a wall angle less than 10Â°, we disagree with that finding. As noted by the Appellant, extraction of quantitative values based on measurements of a 4 Appeal 2018-007 669 Application 14/900,669 drawing are of little value. In re Wright, 569 F.2d 1124, 1127 (CCPA 1977). However, that does not mean that the drawings of a prior art reference is not pertinent because drawings can be relied on for what they reasonably disclose and suggest to one of ordinary skill in the art. See In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972); In re Aslanian, 590 F.2d 911, 914 (CCPA 1979). Although the figures ofKolze disclose conical transitions, and the Examiner explains that the rejection "is not relying upon the drawing 'scale' per-se ... but relying upon the necessarily disclosed features taught by the primary reference[']s figures" (Ans. 12-13), the figures ofKolze do not reasonably disclose that the conical transitions are less than 10Â°. To the contrary, simple examination of these figures of Kolze appear to indicate that the conical transitions are angled significantly more than 10Â°. See Kolze Figs. 1, 3, and 4. Therefore, because we disagree with the Examiner's implicit claim construction and finding with respect to Kolze, we reverse this rejection of independent claim 16. Accordingly, we also reverse this anticipation rejection as to claims 18, 20-24, 27-31, 34, and 36, which ultimately depend from independent claim 16. Rejection 2 The Examiner rejects claims 16, 18-24, 27-31, 34, and 36 as obvious over Kolze in view of Herbert, finding that to any extent Kolze does not disclose walls inclined by an angle less than 10Â° as recited in independent claim 16, Herbert discloses "the funnel opening ([conduit] 406 of Figure 6) being continuously inclined over most of the length of the orifice and inclined at an angle greater than O.degrees but less than a second angle." 5 Appeal 2018-007 669 Application 14/900,669 Final Act. 7 ( citing Herbert, Fig. 6). The Examiner also finds that a person of ordinary skill in the art would recognize that an outlet that is larger than an inlet allows for reducing the outlet pressure. Final Act. 7. The Examiner further finds that "choosing an angle for the cone is necessary as taught by Herbert's figures to affect the fluid flow as desired" for a particular outlet fluid pressure. Final Act. 7. Accordingly, the Examiner concludes that it would have been obvious to one of ordinary skill in the art to have, in lieu of the Kolze['s] stepped conical transition sections of the diffuser orifice, to provide a uniform cone shaped transition along the length of the entire outlet as taught in Herbert and having an angle from between ... O.degrees and a second angle (for example 5.degrees) from the central axis of the funnel of Kolze as suggested by Herbert, for the purpose of providing a smooth fluid flow transition as taught in Herbert with an angle for the funnel of Kolze as taught/suggested in Herbert that functions to allow fluid flow based on slight variations of delivery pressure as well as based on the desired fluid flow characterization value. Final Act. 8. Claim 16 The Appellant initially argues that the rejection is improper because "Herbert does not disclose that its drawings are drawn to scale" and "is completely silent with respect to the wall angle of the orifice shown in the drawings." Appeal Br. 12. Thus, the Appellant argues that the Examiner has failed to establish that Herbert's orifice is inclined by an angle less than 10Â°, and that "the Examiner's assertion that a 5Â° wall angle could be gleaned from Herbert's drawings is improper." Appeal Br. 12; Reply Br. 5-6 6 Appeal 2018-007 669 Application 14/900,669 ("Herbert's drawings cannot be relied upon as teaching a 5Â° wall angle specifically, or a wall angle that would reasonably fall within the range of less than 10Â°. "). However, we find the rejection to be sufficiently supported by the record, and that the arguments of the Appellant are not dispositive to the appeal in that this rejection is based on obviousness. In particular, we do not understand this rejection to be premised on a finding that Herbert's drawing discloses a 5Â° wall angle, but rather, is based on the conclusion that it would have been obvious to design the conical orifice section to have such an angle. In that regard, the rejection establishes that the Examiner is relying on Herbert for disclosing "at an angle greater than O.degrees but less than a second angle." Final Act. 7; see also Ans. 13 (the Examiner explaining "the scale is not being referenced[,] merely the recognized features."); Final Act. 8 ("having an angle from between ... O.degrees and a second angle (for example 5.degrees)"). As noted above, drawings can be relied on for what they reasonably disclose and suggest to one of ordinary skill in the art. In re Mraz, 455 F.2d at 1072; In re Aslanian, 590 F.2d at 914. Indeed, Herbert's figures clearly disclose a conical orifice section 406 that is inclined at a small angle. Herbert Figs. 6, 7; see also id. Figs. 2, 4-4C. The record further indicates that the Examiner rejects claim 16 based on the conclusion that it would have been obvious to have modified the stepped orifice of Kolze in view of Herbert, to provide a conical orifice with an inclined wall like that disclosed in the figures of Herbert, and to design the conical orifice to "reduce the outlet pressure" and to "provid[ e] a smooth fluid flow transition" such that "desired fluid flow characterization value" is attained. Final Act. 7-8. As to the recited angle of the wall of the conical 7 Appeal 2018-007 669 Application 14/900,669 orifice being less than 10Â°, the Examiner explains that such an angle would have been an "obvious matter of design choice, [] considering the reasons for the change in degree as noted above (i.e. the pressure reducing cone with widening angle from inlet to outlet)" (Ans. 14 ), and optimization of fluid flow properties, such as fluid pressure reduction. Ans. 15. The Appellant's arguments do not persuade us that the Examiner's obviousness rejection is erroneous for the reasons discussed below. The Appellant argues that "there is no evidentiary support for the Examiner's assertion that it would have been obvious to modify Kolze's conical transition to have a wall angle of, e.g., 5Â°, as an optimization of a result- effective variable." Appeal Br. 12; see also Reply Br. 7 ("Appellant respectfully submits that the Examiner has failed to establish how or why a 5Â° wall angle of the conical orifice section would be optimal for achieving reduced fluid pressure at the outlet."). Similarly, the Appellant further argues that "the Examiner does not indicate how or why a 5Â° wall inclination of the conical orifice section would achieve this unknown 'desired fluid flow characterization value"' as stated by the Examiner. Appeal Br. 13, quoting Final Act. 8. However, we first note that the Examiner's rejection is not directed to merely the Kolze's conical transition, but rather to the stepped orifice, which is replaced with a conical orifice such as that shown in Herbert for the reasons noted above. In addition, the rejection is not asserting that 5Â° angle would be optimal, but rather, that it would have been obvious and within the skill of ordinary skill in the art to design the conical orifice to have an angle to attain the fluid flow characteristic desired and to optimize such a characteristic. We agree with this reasoning in view of the fact that an angle 8 Appeal 2018-007 669 Application 14/900,669 for the conical orifice must be selected, and a person of ordinary skill in the art would have understood that changes to the geometry of an orifice would change the characteristics of the flow of fluid flowing therethrough. In that regard, it cannot be reasonably asserted that the desired fluid flow characteristic would be a fixed parameter common to all valves, regardless of the application and working pressures of the valve. See In re Kumar, 418 F.3d 1361, 1366 (Fed. Cir. 2005) ("Aprimafacie case of obviousness may be made when the only difference from the prior art is a difference in the ... value of a particular variable."); see also In re Boesch, 617 F.2d 272, 276 (CCP A 1980) (selection of an optimal value of a result effective variable is ordinarily within the skill of the art); In re Aller, 220 F.2d 454,456 (CCPA 1955). The Appellant further argues that "Kolze and Herbert do not provide any suggestion or motivation for modifying Kolze in view of Herbert to have a conical orifice section with walls inclined at an angle of less than 10Â° ," because "Herbert teaches away from providing an orifice in membrane 90." Appeal Br. 13. However, this argument is unpersuasive because Kolze is relied upon for disclosing an orifice through a membrane, and Herbert is relied upon for disclosing a conical orifice. See Final Act. 6-7; Ans. 16. Therefore, in view of above considerations, we are not persuaded that the Examiner erred in rejecting independent claim 16, and we affirm the same. Except for claim 19, the Appellant does not set forth separate arguments specifically directed to the remaining dependent claims 18, 20- 24, 27-31, 34, and 36, but instead, relies on their dependency on claim 16 for patentability. Appeal Br. 13. Thus, these dependent claims fall with independent claim 16. 9 Appeal 2018-007 669 Application 14/900,669 Claim 19 Claim 19 recites that "the walls of the conical orifice section are inclined relative to the central axis of the orifice by an angle of more than 2.5Â°." Appeal Br. 19 (Claims App'x). The Appellant relies on the same arguments to assert patentability of claim 19, and further asserts that neither Kolze nor Herbert discloses the specifically recited angle. Appeal Br. 13. We affirm the Examiner's rejection of claim 19 for substantially the same reasons discussed above relative to claim 16. Rejection 3 The Examiner rejects claims 16, 18-24, 27-31, 34, and 36 as obvious over Kolze in view of Schlenker, finding that to any extent Kolze does not disclose walls inclined less than 10Â°, Schlenker discloses the funnel opening being continuously inclined over most of the length of the orifice an[ d] inclined at an angle greater than O.degrees but less than 90.degrees, preferably between IO.degrees and SO.degrees (paragraph 0017, for the purpose of providing a funnel opening angle that functions to allow fluid flow based on slight variations of delivery pressure and based on the desired fluid flow characterization.) Final Act. 9-10. The Examiner concludes that it would have been obvious to one of ordinary skill in the art in lieu of the Kolze stepped conical transition sections of the diffuser orifice, to provide a uniform cone shaped transition along the length of the entire outlet as taught in Schlenker and having an angle from between as taught by Schlenker O.degrees and less than IO.degrees from the central axis of the funnel of Kolze as taught in Schlenker for the orifice section of Kolze, for the purpose of providing a smooth fluid flow transition as 10 Appeal 2018-007 669 Application 14/900,669 taught in Schlenker with an angle for the funnel of Kolze as taught in Schlenker that functions to allow fluid flow based on slight variations of delivery pressure as well as based on the desired fluid flow characterization value. Final Act. 10. Thus, this rejection is similar to Rejection 2 discussed above, but further relies on the explicit disclosure in Schlenker that the angle of the orifice wall is greater than 0Â° but less than 90Â°, and preferably, is between 10Â° and 50Â°. Schlenker ,i 17. Claim 16 The Appellant argues that "Schlenker discloses a wall angle between 0Â° and 90Â°, and preferably between 10Â° and 50Â°. . . . Accordingly, to the extent Schlenker teaches any meaningful range for the wall angle, it is a range between 10Â° and 50Â°, which is outside the claimed range of less than 10Â°." Appeal Br. 14. According to the Appellant, "there is no evidentiary support for the Examiner's assertion that a wall inclination of less than 10Â° would have been obvious as a matter of engineering design choice." Appeal Br. 15. However, these arguments are unpersuasive because while Schlenker teaches a preferable range between 10Â° and 50Â°, it nonetheless discloses a broader range that encompasses the claimed range of less than 10Â°. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) ("In cases involving overlapping ranges, we and our predecessor court have consistently held that even a slight overlap in range establishes a prima facie case of obviousness."); id. at 1330 ("where the "claimed ranges are completely 11 Appeal 2018-007 669 Application 14/900,669 encompassed by the prior art, the conclusion [ that the claims are prima facie obvious] is even more compelling than in cases of mere overlap."). Moreover, claim 16 recites an angle less than 10Â°, which encompasses, for example, 9.99Â°. Considering Schlenker discloses a preferred angle range beginning with 10Â°, the Appellant's argument is also unpersuasive considering that the ranges are very close to each other, and the Federal Circuit has upheld obviousness rejections in cases involving the situation presented here. In re Brandt, 8 86 F .3 d 1171, 1177 (Fed. Cir. 2018) ("the claimed range of 'less than 6 pounds per cubic feet' and the prior art range of 'between 6lbs/ft3 and 25lbs/ft3 ' are so mathematically close that the examiner properly rejected the claims as primafacie obvious."); see also In re Peterson, 315 F .3d at 1329 ("a prima facie case of obviousness exists when the claimed range and the prior art range do not overlap but are close enough such that one skilled in the art would have expected them to have the same properties."). The Appellant further argues that "[h Javing a conical orifice with a wall angle less than 10Â° is critical to the invention of claim 16 and provides unexpected results compared to the orifice taught by Schlenker." Appeal Br. 14-15 (citing Specification ,-J,-J 11, 47); see also Appeal Br. 16; Reply Br. 10. We find the Appellant's assertion to be unpersuasive. In asserting criticality and unexpected results, the Appellant is required to show that the claim range achieves unexpected results relative to the prior art range. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). In that regard, "when unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art." In re 12 Appeal 2018-007 669 Application 14/900,669 Baxter Travenol Labs., 952 F.2d 388,392 (Fed.Cir.1991); In re Geisler, 116 F.3d 1465, 1469 (Fed.Cir.1997). Although the Appellant relies on paragraph 11 of the Specification in support of its assertion of unexpected results, this paragraph discusses the benefits of "[u]sing an orifice with a diffuser characteristic," i.e., a "conical orifice section," which are not attained by prior art "orifice with a substantially cylindrical shape." Spec. ,i 11. This does not establish any particular unexpected results of the recited wall angle of less than 10Â° as compared to other wall angles. Related thereto, the Appellant does not establish what results would have been expected from the angle range disclosed in Schlenker, which renders the results attained via the claimed angle range unexpected to a person of ordinary skill. The Appellant's reliance on paragraph 4 7 of the Specification suffer from similar deficiencies in that paragraph 4 7 identifies benefits of a "conical orifice section" as compared to prior art "cylindrical orifices." Spec. ,i 4 7. According, the Appellant's assertion of unexpected results is unpersuasive. The Appellant also argues that there is no evidence "to establish that the prior art .... would have served the same advantage/purpose" as the recited invention of claim 16. Appeal Br. 16. However, the reason for combining the references does not have to be the same as that of the inventors to establish obviousness. In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996). The Appellant further argues that "the Examiner does not indicate what the 'desired fluid flow characterization value' is" (Appeal Br. 17) and that the art does not suggest choosing a specific wall angle to achieve a desired diffuser characteristic (Reply Br. 10). However, these 13 Appeal 2018-007 669 Application 14/900,669 arguments are unpersuasive for substantially the same reason discussed above. Therefore, in view of above considerations, we are not persuaded that the Examiner erred in rejecting independent claim 16, and we affirm the same. Except for claim 19, the Appellant does not set forth separate arguments specifically directed to the remaining dependent claims 18, 20- 24, 27-31, 34, and 36, but instead, relies on their dependency on claim 16 for patentability. Appeal Br. 17. Thus, these claims also fall with independent claim 16. Claim 19 The Appellant relies on the same arguments to assert patentability of claim 19, and further asserts that neither Kolze nor Schlenker disclose the recited angle. Appeal Br. 17. We affirm the Examiner's rejection of claim 19 for substantially the same reasons discussed above relative to claim 16. Rejection 4 The Examiner rejects claims 25 and 26 as obvious over Kolze and Herbert or Schlenker, further in view of Baechle. Final Act. 13. The Appellant argues that "Baechle does not overcome the deficiencies of Kolze, Herbert and Schlenker with respect to claim 16. Appeal Br. 18. However, having found no deficiencies in the Examiner's obviousness rejection of claim 16 in Rejections 2 and 3, we affirm Rejection 4 as well. CONCLUSIONS 1. Rejection 1 is REVERSED. 14 Appeal 2018-007 669 Application 14/900,669 2. Rejections 2-4 of the claims on appeal are AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ l .136(a). See 37 C.F.R. Â§ l.136(a)(l )(iv). AFFIRMED 15