Ex Parte Smith et al

Patent Trial and Appeal Board

Mar 13, 2017

12997350 (P.T.A.B. Mar. 13, 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.
12/997,350 12/10/2010 Kristopher Smith 60426-942 PUS 1 5910
75227 7590 03/15/2017
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
BACON, ANTHONY L
ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
03/15/2017 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):
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 KRISTOPHER SMITH, JACK GURD, ROBERT D. JEFFORD,
and BENJAMIN WILLIAMS
Appeal 2015-005472
Application 12/997,3501
Technology Center 3700
Before LINDA E. HORNER, THOMAS F. SMEGAL, and
BRENT M. DOUGAL, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Kristopher Smith et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s rejection2 under 35 U.S.C. § 103(a) of claims 1—8,
16, and 173 as obvious overNanba (US 7,540,278 B2, iss. June 2, 2009) and
1 According to Appellants, the real party in interest is Continental
Automotive Systems, Inc. Appeal Br. 1.
2 Appeal is taken from the adverse decision of the Examiner as set forth in
the Final Office Action, dated April 10, 2014 (“Final Act.”).
3 While listing claims 16 and 17 among the rejected claims on page 1 of the
Final Action, the Examiner does not include claims 16 and 17 in this
rejection in the Final Action. See Final Act. 2. The Examiner notes,
however, that claims “9-12, 14 and 16-19 ... are rejected for the grounds
previously presented.” Id. at 7. Appellants argue as if these claims 16 and
Appeal 2015-005472
Application 12/997,350
Gozdawa (US 6,471,404 Bl, iss. Oct. 29, 2002); and of claims 9—12, 14, 18,
and 19* * * 4 as obvious over Crow (US 3,961,769, iss. June 8, 1976), Nanba, and
Gozdawa. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Claims 1 and 9 are independent. Claim 1 is reproduced below and
illustrates the claimed subject matter, with disputed limitations emphasized.
1. An Exhaust Gas Recirculation (EGR) valve
assembly comprising:
a rotatable shaft supported within a housing; and
a flap attached to the shaft and rotatable within the housing
for controlling flow through a passage defined within the
housing, wherein the shaft includes an integrally formed collar
disposed outside of the passage that fixes an axial position of the
flap within the passage.
ANALYSIS
Obviousness of Claims 1—8, 16, and 17 over Nanba and Gozdawa
Appellants argue claims 1—8, 16, and 17 together in contesting the
rejection of these claims as obvious over Nanba and Gozdawa. See Appeal
Br. Reply Br. 1—3. We select claim 1 as the representative claim for
this group, and the remaining claims stand or fall with claim 1. See 37
C.F.R. § 41.37(c)(l)(iv).
17 are included in the first ground. See Appeal Br. 2, 4, 7; Reply Br. 3.
Therefore, we consider the omission of claims 16 and 17 from the statement
of the rejection to be an inadvertent error.
4 We correct the Examiner’s inadvertent inclusion of claim 15 in this
rejection as it was canceled in an amendment filed February 12, 2014, (see
Final Act. 4).
2
Appeal 2015-005472
Application 12/997,350
The Examiner finds that Nanba discloses an Exhaust Gas
Recirculation (EGR) valve assembly including, inter alia, a rotatable shaft
within a housing, but that Nanba’s shaft does not include “an integrally
formed collar disposed outside of the passage that fixes an axial position of
the flap within the passage.”5 Final Act. 2. However, the Examiner also
finds that Gozdawa “discloses a shaft (1) having a collar (la) arranged such
that the collar has an integrally formed extended diameter larger than the
inner diameter of a bearing (2),” which “acts to restrain axial displacement
of the shaft.” Id. at 2—3 (citing Gozdawa, col. 4,1. 60 to col. 8,1. 32).
Based on the foregoing, the Examiner determines that it would have
been obvious “to include a shaft having an integrally formed collar as taught
by Gozdawa in the system of Nanba since it is known [] from Gozdawa that
such an arrangement restrains axial movement of the shaft,” and “[i]t is
readily apparent to place the collar outside the passage in order to provide
this functionality.” Id. at 3.
In taking issue with the analysis and conclusions presented in the
Final Office Action, Appellants reason that the shaft of Nanba is “supported
for rotation by ball bearing 39,” so that “shaft 2 is fixed axially and can only
rotate radially.” Appeal Br. 3. Appellants then contend that to modify “the
fixed shaft [of Nanba] with the floating bearing configuration disclosed in
Gozdawa . . . would change the intended operation of Nanba and therefore
teach away from the proposed combination.” Id.; see also Reply Br. 2—3.
5 Nanba teaches ball bearing 39 that fixes the axial position of shaft 2 along
with the butterfly valve (flap) 1. See Nanba, col. 8,11. 9-43.
3
Appeal 2015-005472
Application 12/997,350
Without referring to any limitation of claim 1, Appellants also
contend that “[t]he modification to Nanba proposed by the Examiner would
require a constant flow of gases to provide the required support of the
bearing as is shown in Gozdawa,” but that “because the Nanba device is a
valve, such flow is not always available, and may vary depending on a
position of the valve,” concluding that “the bearing configuration disclosed
in Gozdawa for a constantly rotating shaft teaches away from use with a
valve such as is disclosed in the base reference of Nanba.” Appeal Br. 3^4.
Still further, Appellants contend that “the addition of a bearing relying on
the flow of gases as is shown in Gozdawa destroys the intended operation of
the Nanba valve.” Id. at 4; see also Reply Br. 3.
However, we find Appellants’ contentions to be unpersuasive, first
because they appear to rely upon the bodily incorporation of Gozdawa into
Nanba, which is not the standard for an obviousness rejection. As the
Examiner explains, “Gozdawa was relied on solely to teach a collar on the
shaft, and has NOT [been] bodily incorporated into Nanba.” Ans. 7. Thus,
we agree with the Examiner that the use of a portion of Gozdawa’s teaching
is appropriate in that all of the features of a secondary reference need not be
bodily incorporated into the primary reference. See In re Keller, 642 F.2d
413,425 (CCPA 1981).
In addition, as the Examiner explains, “the prior art’s mere disclosure
of more than one alternative does not constitute a teaching away from any of
these alternatives because such disclosure does not criticize, discredit, or
otherwise discourage the solution claimed” Final Act. 8—9. See In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Thus, Appellants’
contentions are unavailing as they are not commensurate with the scope of
4
Appeal 2015-005472
Application 12/997,350
claim 1, which merely recites “a rotatable shaft supported within a housing.”
See Appeal Br. 8, Claims App. As we are instructed by our reviewing court,
“limitations are not to be read into the claims from the [Specification.” In
re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citing In reZletz, 893
F.2d 319, 321 (Fed. Cir. 1989)).
The Examiner also points out that “Gozdawa aims to fix axial
movement of a rotatable shaft (column 4, lines 63-67), which . .. would
actually achieve the purpose of placing the collar on the shaft according to
Appellant’s disclosure,” and “would not destroy Nanba in any way
according to Appellants’ argument.”6 Id. Furthermore, we note that
“[cjlaims may be obvious in view of a combination of references, even if the
features of one reference cannot be substituted physically into the structure
of the other reference.” Orthopedic Equip. Co. v. U.S., 702 F.2d 1005, 1013
(Fed. Cir. 1983) (citation omitted). Thus, “if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.” KSR Int 7
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
Summarizing the foregoing, we find that the Examiner’s findings and
conclusions are supported by the record and based on rational
underpinnings. See Ans. 6—9. Moreover, Appellants do not provide any
evidence or argument sufficient to show that the proposed modification
would have been beyond the level of ordinary skill in the art. Neither do
6 The Specification discloses (paragraph 4) that “[bjecause the collar fixes
the axial position of the shaft, axial movement of the flap and a sealing ring
relative to the valve seat is eliminated or significantly reduced.”
5
Appeal 2015-005472
Application 12/997,350
Appellants provide any persuasive evidence or argument sufficient to show
that the proposed modification would have been more than a predictable use
of the prior art elements according to their established functions. “The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR, 550 U.S.
at 416. “If a person of ordinary skill can implement a predictable variation,
§103 likely bars its patentability.” Id. at 417.
Accordingly, we sustain the Examiner’s rejection of independent
claim 1 as unpatentable over Nanba and Gozdawa. We further sustain the
rejection of dependent claims 2—8, 16, and 17, which fall with claim 1.
Obviousness of Claims 9—12, 14, 18, and 19 over Crow, Nanba, and
Gozdawa
Appellants argue claims 9—12, 14, 18, and 19 together in contesting
the rejection of these claims as obvious over Crow, Nanba, and Gozdawa.
See Appeal Br. 4—6; Reply Br. 3—5. We select claim 9 as the representative
claim for this group, and the remaining claims stand or fall with claim 9.
See 37 C.F.R. § 41.37(c)(l)(iv).
While looking to Crow for disclosing substantially all the limitations
of claim 9,7 the Examiner acknowledges that Crowe lacks, inter alia, “a gap
disposed between one of the first bearing and the second bearing
communicating with the passage to generate a pressurized region between
the collar and at least one of the first and second bearings.” Final Act. 5.
However, the Examiner observes that Gozdawa “discloses a gap between
7 Citing Crowe, col. 1,1. 55 to col. 3,1. 13.
6
Appeal 2015-005472
Application 12/997,350
first and second bearing surfaces communicating with a passage to generate
a pressurized region between the collar and the bearing.” Id. (citing
Gozdawa, col. 4,1. 60 to col. 8,1. 32).
From the foregoing, the Examiner reasons that “because the shaft [of
Gozdawa] is not sealed and must be smaller than the housing to be able to
rotate, pressurized flow from the passage to the bearing region around the
collar is inherently present and would lead to the claimed result of the
invention according to the combination of references.” Id. at 6. We agree.
In addition to repeating arguments that we found not demonstrative of
error in the Examiner’s rejection of claim 1, as set forth supra, Appellants
contend that “Gozdawa discloses inlets 21 and 30 [that are] from a separate
high pressure source, and not from a passage through which the shaft
extends as is required by claim 9.” Appeal Br. 5 (appearing to cite
Gozdawa, col. 6,11. 45—50). However, the presence of additional structure
in Gozdawa, such as inlets 21 and 30, does not undermine the rejection
where claim 9 uses an open-ended transition “comprising.” See Exergen
Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1319 (Fed. Cir. 2009) (“The
claim uses the term ‘comprising,’ which is well understood in patent law to
mean ‘including but not limited to.’” (citing CIAS, Inc. v. Alliance Gaming
Corp., 504 F.3d 1356, 1360 (Fed. Cir. 2007)). Furthermore, we find the
Examiner’s use of a portion of Gozdawa’s teaching to be appropriate in that
all of the features of a secondary reference need not be bodily incorporated
into the primary reference. See In re Keller, 642 F.2d 413, 425 (CCPA
1981).
Appellants also contend that “Nanba fails to disclose any collar at all
and therefor no pressurized region between a collar and bearing is taught.”
7
Appeal 2015-005472
Application 12/997,350
Appeal Br. 5. However, we previously found this contention to be
unpersuasive of Examiner error in sustaining the rejection of claim 1, supra.
As the Examiner explains, “Nanba was relied upon solely for the teaching of
a seal on the valve flap.” Ans. 12.
Appellants continue by contending that “the enormous weight of the
disclosed valve in Crow teaches away from the formation of such a
pressurized region as the weight of the valve would require load bearing
contact with the bearing 42.” Appeal Br. 6. Appellants then conclude that
“[t]he structure and intended operation of Crow therefore teaches away from
the inclusion of any gap or pressure balance operation as is disclosed in
Gozdawa.” Id. at 6.
However, the Examiner reasons that “Crow does not discourage or
discredit or otherwise teach away from significantly downsizing the valve,
and actually discusses a wide range of sizes,” so that “while it may be true
that a large valve may have a significant weight, it is readily apparent that
the much smaller version would be significantly lighter.” Ans. 10. We
agree, noting that “[attorney arguments in a brief cannot take the place of
evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (citation
omitted); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)
(holding that lawyer arguments and conclusory statements which are
unsupported by factual evidence are entitled to little probative value).
Accordingly, we sustain the Examiner’s rejection of independent
claim 9 as unpatentable over Crow, Nanba and Gozdawa. We further
sustain the rejection of dependent claims 10-12, 14, 18, and 19, which fall
with claim 9.
8
Appeal 2015-005472
Application 12/997,350
DECISION
We AFFIRM the Examiner’s rejections.
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
9