Ex Parte Stauder et al

Patent Trial and Appeal BoardDec 7, 2016

13039759 (P.T.A.B. Dec. 7, 2016)

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. 13/039,759 03/03/2011 Frank A. Stauder 123-3013-U2;60137-625PUS1 1528 82074 7590 12/09/2016 Carlson, Gaskey & Olds/Masco Corporation 400 West Maple Road Suite 350 Birmingham, MI 48009 EXAMINER BARRY, DAPHNE MARIE ART UNIT PAPER NUMBER 3753 NOTIFICATION DATE DELIVERY MODE 12/09/2016 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 FRANK A. STAUDER, XAN VY DU, and ROBERT KROPINIEWICZ Appeal 2015-0018891’2 Application 13/039,759 Technology Center 3700 Before PHILIP J. HOFFMANN, JAMES L. WORTH, and CYNTHIA L. MURPHY, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1—12. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Claim 1 is the only independent claim. See Appeal Br., Claims App. We reproduce claim 1, below, as representative of the appealed claims. 1 Our decision references Appellants’ Appeal Brief (“Appeal Br.,” filed June 16, 2014) and Reply Brief (“Reply Br.,” filed Nov. 10, 2014), as well as the Examiner’s Answer (“Answer,” mailed Oct. 1, 2014). 2 According to Appellants, Masco Canada Limited is the real party in interest. Appeal Br. 1. Appeal 2015-001889 Application 13/039,759 1. A flush valve, said flush valve comprising: a valve body having an inlet and an outlet; a piston disposed in said valve body between said inlet and said outlet; and a seating surface disposed in said valve body for seating said piston, said seating surface tapering inward as it passes into said outlet. Id. REJECTIONS AND PRIOR ART The Examiner rejects claims 1,2, and 5—12 under 35 U.S.C. § 102(b) as anticipated by Martin (US 5,970,527, iss. Oct. 26, 1999). The Examiner rejects claims 3 and 4 under 35 U.S.C. § 103(a) as unpatentable over Martin. See Answer 2—6. ANALYSIS Independent claim 1 recites, among other features, seating surface disposed in said valve body for seating said piston, said seating surface tapering inward as it passes into said outlet.” Appeal Br., Claims App. (emphasis added). Appellants argue that the rejection is in error because Martin fails to disclose this feature. See Appeal Br. 2—3; see also Reply Br. 1—3. Based on our review of the record, for the reasons set forth below, we agree with Appellants. Thus, we do not sustain the rejection of claim 1. The Examiner finds that Martin’s valve assembly 16 and valve seating surface 108 teach the claimed valve body and seating surface, respectively. See, e.g., Answer 2. In response to Appellants’ argument that Martin’s valve seating surface 108 is not disposed in valve assembly 16 (see, e.g., Appeal 2 Appeal 2015-001889 Application 13/039,759 Br. 2—3), the Examiner cites Martin’s Figure 3 as well as column 3, lines 51— 58, and column 5, lines 5—7, as supporting the finding (see Answer 2, 7). We determine that Figure 3 does not show valve seating surface 108 disposed in valve assembly 16. Further, although a portion of the cited text in Martin describes that valve cylinder 100 is included in valve assembly 16, the text describes that “cylinder 100 terminates short of a conical valve seating surface 108”—i.e., the seating surface is not part of or disposed in the valve cylinder. Martin col. 5,11. 2-4 (emphasis added). This portion of Martin does not state that seating surface 108 is disposed in or a part of valve cylinder 100, or that seating surface 108 is otherwise disposed in valve assembly 16. Further, to the extent that the Examiner’s statements beginning with “[Appellant] could argue that Martin’s housing 14 is the valve body” (Answer 8) might otherwise be understood to be an alternate interpretation of the reference and reason for rejection, we are not willing to characterize this statement as an alternative interpretation of the reference or reason for rejection, inasmuch as Appellants do not, in fact, argue that Martin’s housing is the valve body. Thus, we determine that the Examiner does not support the finding with substantial evidence. Based on the foregoing, we do not sustain the rejection of claim 1. We also do not sustain the rejections of claims 2—12 that depend from claim 1, as the Examiner does not find that any other reference remedies the deficiency in the rejection of claim 1. 3 Appeal 2015-001889 Application 13/039,759 DECISION We REVERSE the Examiner’s anticipation and obviousness rejections of claims 1—12. REVERSED 4