Ex Parte Telep et al

Patent Trial and Appeal BoardApr 11, 2016

12376991 (P.T.A.B. Apr. 11, 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. 12/376,991 04/01/2010 Robert J. Telep DKT06072A (BWI-00225-US2) 1889 68945 7590 04/11/2016 WARN, HOFFMANN, P.C. P.O. BOX 70098 ROCHESTER HILLS, MI 48307 EXAMINER VENKATESAN, UMASHANKAR ART UNIT PAPER NUMBER 3753 MAIL DATE DELIVERY MODE 04/11/2016 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 ROBERT J. TELEP and MARTIN P. BOGEN ____________ Appeal 2014-000864 Application 12/376,9911 Technology Center 3700 ____________ Before STEFAN STAICOVICI, LEE L. STEPINA, and FREDERICK C. LANEY, Administrative Patent Judges. LANEY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Robert J. Telep and Martin P. Bogen (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 1–7, 9– 18, 20, and 21, which constitute all the claims pending in this application.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM. 1 According to Appellants, the real party in interest is BorgWarner Incorporated. Br. 5 (filed July 1, 2013). 2 Claims 8, 19, and 22 have been canceled. Br. 5. Appeal 2014-000864 Application 12/376,991 2 INVENTION Appellants’ invention relates to an anti-sticking valve assembly. Spec. 1, l. 9. Claims 1, 11, and 20 are independent. Illustrative claim 1 reads as follows: 1. A valve assembly comprising: a body having an interior surface that defines a flow passage; a valve positioned in said body, wherein said valve is positioned at an angle with respect to said interior surface of said body when said valve is in a closed position in order to prevent said valve from sticking in said body; a contact surface of said valve that contacts said interior surface of said body when said valve is in said closed position; a gap surface of said valve that is spaced apart from said interior surface when said valve is in said closed position; and a gap defined by the distance between said gap surface and said interior surface when said valve is in said closed position, wherein the size of the gap varies as the valve and body expand and contract and the valve will rotate to alter the angle of the valve with respect to the body in order to compensate for thermal expansion and contraction between the valve and the interior surface of the body. REJECTIONS The following rejections are before us for review: I. The Examiner rejected claims 1, 6, 9–13, and 20 under 35 U.S.C. § 102(b) as being anticipated by Suzuki (US 4,860,706, iss. Aug. 29, 1989). Appeal 2014-000864 Application 12/376,991 3 II. The Examiner rejected claims 2, 3, 14, and 15 under 35 U.S.C. § 103(a) as unpatentable over Suzuki and Kouhei (JP 6-017946 (A), pub. Jan. 25, 1994). III. The Examiner rejected claims 4, 5, 16, and 17 under 35 U.S.C. § 103(a) as unpatentable over Suzuki and Alves (US 7,185,878 B2, iss. Mar. 6, 2007). IV. The Examiner rejected claims 7, 18, and 21 under 35 U.S.C. § 103(a) as unpatentable over Suzuki and Takahashi (US 7,406,823 B2, iss. Aug. 5, 2008). ANALYSIS Rejection I Appellants argue for patentability of claims 1, 6, 9–13, and 20 together as a group. Br. 10–13. We select claim 1 as representative of this group, and claims 6, 9–13, and 20 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv)(2015). In claim 1, Appellants recite features of the claimed valve assembly both structurally and functionally. Br. 20 (Claims App.). Structurally, Appellants describe the features associated with the body and valve of the valve assembly. Id. The body has an “interior surface that defines a flow passage.” Id. The valve has “a contact surface” for contacting the interior surface of the body in a closed position, “a gap surface” spaced apart from the interior surface of the body in the closed position, and is “positioned at an angle with respect to said interior surface of the body.” Id. The distance between the gap surface of the valve in the closed position and the interior surface defines a “gap” of the valve assembly. Id. Functionally, Appellants’ Appeal 2014-000864 Application 12/376,991 4 claimed valve assembly requires the size of the gap to vary as the valve and body expand and contract and the valve to rotate to alter the angle of the valve with respect to the body in order to compensate for thermal expansion and contraction between the valve and the interior surface of the body. Id. Appellants do not challenge the Examiner’s finding that Suzuki discloses each of the above structural requirements of claim 1. Appellants instead contend the anticipation rejection of claim 1 is improper because the Examiner failed to demonstrate sufficiently Suzuki’s valve assembly satisfies the functional requirements of claim 1. We do not agree because, given the apparent agreement that Suzuki discloses the same structure recited for claim 1, and the Examiner’s explanations detailed below, the burden shifted to Appellants to prove Suzuki’s valve assembly does not possess the functional limitations relied upon. Appellants have not done so. Although Appellants are “free to recite features of an apparatus either structurally or functionally,” choosing to use functional language comes with a risk. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Appellants may be required to prove the prior art does not possess the claimed functional characteristics when the Examiner provides a sound basis for believing the functional limitations may, in fact, be an inherent characteristic of the prior art. Id. (citing In re Swinehart, 439 F.2d 210, 213 (CCPA 1971)). The Examiner may establish a sound basis for such a belief by demonstrating the structural elements performing the functional limitations in the claimed apparatus are the same as those disclosed in the prior art. Id. (holding the Examiner was “justified” in concluding the functional limitations were inherently disclosed because the prior art structure was shown to be “the same general shape” as the claimed structure Appeal 2014-000864 Application 12/376,991 5 recited to perform the functional limitations). Moreover, a sound basis does not turn on absolute certainty; rather, a sound basis requires the Examiner “to make sufficient factual findings, such that it can reasonably infer that the prior art product and that of the patent at issue are the same.” Howmedica Osteonics Corp. v. Zimmer Inc., __ F.3d __, 2016 WL 760552, at *7 (Fed. Cir. Feb. 26, 2016). “Such a burden-shifting framework is fair because of ‘the PTO’s inability to manufacture products or to obtain and compare prior art products.’” Id. at *6. The Examiner established a sound basis for believing the valve assembly of Suzuki inherently includes the functional characteristics of claim 1. In addition to detailing how Suzuki discloses the same valve assembly structure recited in claim 1, which is unchallenged, the Examiner correctly explained why Suzuki’s valve assembly also inherently has the functional limitations of claim 1: Elements of any assembly will change their shape when they are subjected to a change in temperature. The rate of change will be different not only because of the difference in materials but also due to the difference in their shapes. Examiner submits that the components such as bearings are disassembled by heating the assembly; the outer surface, due to its shape, expands faster than the inner surface when subjected to heat. Similarly, a housing of the throttle valve with considerably more material will change shape differently than a thin butterfly valve element when subjected to a change in temperature. As the housing and valve element change in shape due to the variations in temperature, the gap will also get larger or smaller. As such SUZUKI et al. inherently disclose a valve in which gap varies when subjected to a change in temperature . . . . Further since the valve and body will expand and contract at different rates the contact position of the valve on the valve body will also change thereby changing the angle of the valve. Appeal 2014-000864 Application 12/376,991 6 Final Act. 2–4; Ans. 9–10. As such, the Examiner has shown a sound basis for believing the valve assemblies of Appellants’ claim 1 and Suzuki are the same, both structurally and functionally. Therefore, the Examiner is on solid footing to shift the burden to Appellants to prove Suzuki does not provide the functional limitations of claim 1. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“[W]hen the PTO shows sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.”). Appellants thus argue that there is difference between “thermal expansion” and “thermal deformation,” and therefore, the Examiner did not correctly apply or understand the subject matter. Br. 11–13. Although Appellants point to two articles from Wikipedia.org as support (see Br. 11), we do not find them supportive. Appellants provide no persuasive analysis or explanation regarding how any one of the alleged differences gleaned from those articles is relevant. Appellants fail to explain how the suggested differences are at all supportive of a finding that the valve assembly of Suzuki does not have the functional characteristics of the same apparent structure of claim 1. Notably, Appellants do not explain how the Suzuki and claimed valve assemblies would react differently when subjected to similar thermal conditions. Moreover, we agree with the Examiner that because Wikipedia specifically states that deformation is caused by a change in temperature (see Br. 28), as is thermal expansion, “the terms ‘thermal expansion’ and ‘thermal deformation’ are used interchangeably.” Ans. 9. Appellants also point to the fact that Suzuki describes the reason for having a gap near the throttle shaft is to account for thermal deformation and conclude that reason “is direct and explicit evidence that contradicts any Appeal 2014-000864 Application 12/376,991 7 inherent notion that the valve member will change its angle upon thermal deformation.” Br. 12–13. However, Appellants fail to explain how Suzuki’s stated reason for creating a valve assembly, which is structurally the same as the claimed invention (including a gap near the throttle shaft), leads to the conclusion there are functional differences in operation. Tellingly, Appellants do not suggest any technical reasons preventing the Suzuki valve assembly from operating in the same manner, under the same conditions, as the claimed valve assembly. In contrast, the Examiner explains that: When subjected to unequal thermal expansions of the valve and the cylindrical passage, the contact surface prevented from expanding by the interior surface of the cylindrical passage will force the valve to change the angle with respect to the interior passage. If the cylindrical passage expands faster than the valve the contact surface will move from initial closed position to a new position closed position of the expanded interior passage. If the valve expands faster than the cylindrical passage, since the contact surface would prevent the valve from expanding the valve will have to slide to a different angle with respect to the passage. Ans. 10. Appellants’ conclusory remarks are nothing more than unsupported attorney argument and cannot take the place of evidence in the record and/or a reasoned analysis based on evidence in the record. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). Therefore, we sustain the Examiner’s anticipation rejection of claim 1 and, as a result, we also sustain the Examiner’s anticipation rejection of claims 6, 9–13, and 20. Rejections II–IV Appellants collectively argue Rejections II–IV. Br. 14. In doing so, Appellants incorporates the arguments presented and discussed above, with Appeal 2014-000864 Application 12/376,991 8 respect to Rejection I. Id. at 16. We remain unpersuaded for the reasons discussed supra. Appellants further argue, “Suzuki teaches away from altering the angle of the throttle valve in the passageway because Suzuki teaches accounting for thermal deformation using a gap near the throttle shaft.” Id. at 17. However, Suzuki cannot “teach away” from the same apparatus it teaches. Moreover, the Examiner is not modifying the valve of Suzuki to change its angle upon thermal deformation, as Appellants argue. 3 See Br. 17. Rather, for the reasons discussed above (supra, Rejection I), a preponderance of the evidence supports the Examiner’s finding that altering the angle of the throttle valve in the passageway is an inherent characteristic of the valve assembly taught by Suzuki. See Final Act. 2–4; Ans. 9–10. Therefore, Appellants’ “teaching away” argument is not persuasive. Finally, Appellants argue that the Examiner’s reliance on Kouhei, Alves, and Takahashi does not cure the deficiencies discussed above regarding Suzuki for claim 1. Br. 17–18. Because we remain unpersuaded such deficiencies with Suzuki exist, we sustain the Examiner’s obviousness rejections of claims 2–5, 7, 14–18, and 21. SUMMARY We affirm the Examiner’s decision to reject claims 1–7, 9–18, 20, and 21. 3 The Examiner uses Kouhei to show a “valve that is round shaped” in an oval body (see Final Act. 7); Alves to show a valve having a protrusion (see id. at 7–8); and Takahashi to show a gap in a valve that decreases due to a temperature increase (see id. at 8). Appeal 2014-000864 Application 12/376,991 9 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED