Ex Parte Podgorski et al

Patent Trial and Appeal Board

Mar 25, 2019

13621376 (P.T.A.B. Mar. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/621,376 09/17/2012
26096 7590 03/27/2019
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
David J. Podgorski
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.
59948US01;
67036-541PUS1
CONFIRMATION NO.
5661
EXAMINER
BURKE, THOMAS P
ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
03/27/2019 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):
ptodocket@cgolaw.com
cgolaw@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID J. PODGORSKI and PETER M. BALLARD
Appeal2017-005355
Application 13/621,376
Technology Center 3700
Before DANIEL S. SONG, LYNNE H. BROWNE, and JILL D. HILL,
Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the rejection of
remaining pending claims 1-5, 7, 8, 10-13, 16, and 17. Appeal Br. 1. We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm-in-part.
CLAIMED SUBJECT MATTER
The claims are directed to a minimum pressure shut-off valve and a
fuel system for a gas turbine engine including such a valve. Claims 1 and 10
Appeal2017-005355
Application 13/621,376
are independent. Claim 1, reproduced below with emphasis added, is
illustrative of the subject matter at issue in this appeal:
1. A minimum pressure valve comprising:
a sleeve defining a bore that extends along an axis and
includes at least a first window, a second window and a third
window, with only the third window including a notch and the
first window and the second window including an identical size
and shape;
a spool movable within the bore that restricts flow through
the first window and the second window;
a cap received within the chamber holding the sleeve
against an inner surface of a chamber and a spring against the
spool; and
a spring seat received within the cap that is movable for
adjusting a minimum force exerted by the spring on the spool.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Harper
Greune
Kelly
Koizumi
Lewis
us 4,596,321
us 4,719,749
US 2003/0047216 Al
US 2007/0170389 Al
US 7,322,373 B2
REJECTIONS
June 24, 1986
June 19, 1988
Mar. 13, 2003
July 26, 2007
Jan.29,2008
I. Claims 1-5, 7, 8, 10-13, 16, and 17 stand rejected under 35
U.S.C. § 112(b) as indefinite.
II. Claims 1, 4, 5, and 7 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Lewis and Harper.
III. Claims 2 and 3 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Lewis, Harper, and Koizumi.
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Application 13/621,376
IV. Claim 8 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Lewis, Harper, Koizumi, and Kelly.
V. Claims 10, 13, and 16 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Lewis, Harper, and Greune.
VI. Claims 11 and 12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lewis, Harper, Greune, and Koizumi.
VII. Claim 17 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Lewis, Harper, Greune, Koizumi, and Kelly.
'' . . '' a. mznzmum
DISCUSSION
Rejection I-Indefiniteness
Claims 1 and 10 both require "a spring seat received within the cap
that is movable for adjusting a minimum force exerted by the spring on the
spool." Appeal Br. 9, 10. The Examiner determines that "[t]he term
'minimum' in [these claims] is a relative term which renders the claim
indefinite." Final Act. 3. In support of this determination the Examiner
explains that "[t ]he term 'minimum" is not defined by the claim[ s ], the
specification does not provide a standard for ascertaining the requisite
degree, and one of ordinary skill in the art would not be reasonably apprised
of the scope of the invention." Id.
Appellants contend that "[t ]he term 'minimum' is not a relative term
because it is not dependent on other features." Appeal Br. 4. Appellants
assert that "[i]t is well understood that the minimum amount of force exerted
by a compression spring is when it is at i[t]s greatest length. As the spring is
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Application 13/621,376
compressed, the force exerted by the spring is increased. This is a known
feature." Id.
In response to Appellants' arguments the Examiner maintains his
position opining that the "'minimum force', or initial starting point of the
spring, is dependent on the initial pressure of fluid applied to the spool, and
can be altered by a change in pressure of the fluid." Ans. 3. The Examiner
does not directly contest Appellants' assertion that one skilled in the art
would understand the meaning of the term "minimum." Rather, the
Examiner further asserts that "the 'greatest length' of the compression spring
is not defined either; consequently Applicant is attempting to clarify one
indefinite term i.e., 'minimum force' by invoking another indefinite term,
. ' . 1 h' " Td 1.e., maximum engt . 1, •
Responding to the Examiner's further explanations, Appellants
reiterate that "the term 'minimum' refers to the 'force exerted by the spring
on the spool."' Reply Br. 1-2. Appellants further contend that "even if all
of the Examiner's 'what if' scenarios are considered, such arguments merely
go to breadth not clarity." Id. at 2. Appellant concludes by asserting that
"[ o ]ne skilled in the art would understand this term in the context of the
specification." Id.
We agree with Appellants that one of ordinary skill in the art would
have understood what a "minimum" force refers to with respect to a spring
as claimed. For example, we understand that when the spring 40 is in its
uncompressed state the minimum force claimed would be zero. When the
seat 42 is adjusted to compress the spring, the minimum force exerted by the
spring would increase corresponding to the amount of adjustment.
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Application 13/621,376
For these reasons, we do not sustain the Examiner's decision rejecting
claims 1 and 10, and their respective dependent claims (2-5, 7, 8, 11-13, 16,
and 17) as indefinite.
b. "a ratio of the axial position to an open percentage"
Claims 4 and 13 recite "a ratio of an axial position of the spool to
an open percentage of the at least first window and second window is
between 0.000 and 1.2600." Appeal Br. 9, 11. The Examiner determines
that this phrase is indefinite because "[i]t is unclear how a ratio of a
position (length) to an open percentage(%) can be quantifiable." Final
Act. 3. The Examiner explains that "[ a ]t the very least, the units of the
ratio should have been given, and shown on a graph, to clarify its
application." Id. at 4.
Appellants contend that "[ a ]relationship between an axial position
of a spool and the opening for fluid flow that corresponds with that
position is within the knowledge of someone skilled in the art." Appeal
Br. 5. In support of this contention, Appellants assert that "the
specification and figures (Please see Figures 6-10) provide sufficient
support to enable one skilled in the art to determine the scope of the
range recited in claims 4 and 13." Id.
Responding to Appellants' arguments the Examiner notes that
although "a relationship between an axial position of a spool and the
opening for fluid flow that corresponds with that position is within the
knowledge of someone skilled in the art," "a ratio of an axial position to
an open percentage of the windows being between 0.000 and 1.2600 is
unclear." Ans. 3--4. The Examiner explains that Appellants "give[] no
value of any axial position of a spool for any opening percentage and
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Application 13/621,376
fails to define what a ratio of an axial position to an opening percentage
requires." Id. at 4.
In response, Appellants contend that "[ t ]he specification and
figures (Please see Figures 6-10 and at least paragraph 35) provide
sufficient support to enable one skilled in the art to determine the scope
of the range recited in claims 4 and 13." Reply Br. 2. We disagree with
the Appellants. Although, Figures 6-10 illustrate the axial position of the
spool 50 and differing amount of opening of the windows 76, 78;
[ compare Figs. 6 and 7 to Figs. 8 and 9], these figures do not illustrate
the claimed ratio. Further, paragraph 35 in the Specification does not
sufficiently describe the claimed ratio or explain how the claimed ratio
would be determined. Without such description or explanation via the
figures and/or Specification, ascribing meaning to the recited ratio
limitation would require speculation by one of ordinary skill.
For these reasons, we sustain the Examiner's decision rejecting
claims 4 and 13 as indefinite.
Rejection II- Obviousness Based on Lewis and Harper
The Examiner finds Lewis and Harper disclose or suggest all of the
limitations of claim 1. See Final Act. 4---6. In particular, the Examiner finds
that Lewis discloses "a spring seat (72) received within the cap ... that is
movable for adjusting a minimum force (the starting force being the
minimum) exerted by the spring (92) on the spool (16)." Id. at 4.
Noting that claim 1 requires a spring seat that is movable, Appellants
contend that "the upper seal seat 72, read by the Examiner as the required
spring seat is not movable to adjust a spring force." Appeal Br. 6.
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Appellants are correct. In Lewis, the spring 92 extends between seal seat 72
and cover 49. Lewis 4:55-56. There is no indication in Lewis, however,
that seal seat 72 is movable to adjust the spring force. The Examiner's
application of Harper does not cure this deficiency in Lewis.
For this reason, we do not sustain the Examiner's decision rejecting
claim 1, and claims 4, 5, and 7 which depend therefrom.
Rejections III-VII
Rejections III-VII rely on the Examiner's erroneous finding that
Lewis discloses a spring seat as claimed in independent claims 1 and 10.
The Examiner's application of Kozumi, Kelly, or Guene cures this
deficiency. Accordingly, we do not sustain the Examiner's decision in
Rejections III-VII for the reasons discussed above.
DECISION
The Examiner's rejection of claims 4 and 13 under 35 U.S.C. § 112(b)
is AFFIRMED.
TheExaminer'srejectionofclaims 1-3, 5, 7, 8, 10-12, 16, and 17
under 35 U.S.C. § 112(b) is REVERSED.
The Examiner's rejections of claims 1-5, 7, 8, 10-13, 16, and 17
under 35 U.S.C. § 103(a) is 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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