Ex Parte Thompson et al

Patent Trial and Appeal Board

Jan 30, 2018

12572071 (P.T.A.B. Jan. 30, 2018)

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.
12/572,071 10/01/2009 Gene M. Thompson C33172US 3186
28805 7590 02/01/2018
AmnlH & SaiinHers T T P EXAMINER
4900 Woodway Dr., Suite 900
HOUSTON, TX 77056
DO, HAILEY KYUNG AE
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
02/01/2018 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):
docketing @ amold-iplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GENE M. THOMPSON and CATHERINE JONES
Appeal 2016-005608
Application 12/572,071
Technology Center 3700
Before LISA M. GUIJT, PAUL J. KORNICZKY, and
BRENT M. DOUGAL, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-005608
Application 12/572,071
STATEMENT OF THE CASE
Appellants Gene M. Thompson and Catherine Jones1 appeal under
35 U.S.C. § 134(a) from the Examiner’s decision, as set forth in the Non-
Final Office Action dated May 22, 2015 (“Non-Final Act.”), rejecting claims
17, 19, 20, 22, 23, and 25—37.2 We have jurisdiction under 35 U.S.C. § 6(b).
A hearing took place on December 5, 2017.
We AFFIRM and enter NEW GROUNDS OF REJECTION.
THE CLAIMED SUBJECT MATTER
The claims relate to “high-speed compressors, and more particularly,
to control of gas flow in high-speed compressors utilizing a poppet valve
assembly.” Spec. 12. Claims 17 and 25 are the independent claims on
appeal. Claim 17, reproduced below with disputed limitations italicized for
emphasis, is illustrative of the claimed subject matter:
17. A compressor system, the compressor system comprising:
a high-speed gas compressor operable at speeds of at least
600 rpm, said high-speed compressor further comprising a high­
speed poppet valve assembly, wherein the high-speed poppet
valve assembly comprises:
a high-speed cage plate, said high-speed cage plate
including a plurality of counter bores disposed therein wherein
each counter bore has an open end and a bottom in the high-speed
cage plate;
a plurality of high-speed poppet elements, each high-speed
poppet element including a guide stem having an outer stem
diameter and a head, wherein the head has a maximum diameter
that is both less than approximately .9 inches and larger than the
1 Appellants identify Compressor Engineering Corporation as the real
party in interest. Appeal Brief, dated October 21, 2015 (“Br.”), at 3.
2 Claim 18 is cancelled, and claims 1—16, 21, and 24 are withdrawn
from consideration. Non-Final Act. 2; Br. 1.
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outer stem diameter, and wherein the guide-stem is disposed
proximate to a cage plate wall of one of said counter bores in a
guide relationship with said counter bore;
a coil spring disposed in a hollow portion of the guide-
stem having bias characteristics suitable for a high-speed poppet-
head operation;
a high-speed seat plate overlying said high-speed cage,
said high-speed seat plate including a plurality of through bores
axially aligned with the plurality of counter bores of the high­
speed cage, wherein each of the plurality of through bores is
sized to have a smaller diameter than the maximum diameter of
the head; and
a lift spacer disposed in at least one of said plurality of
counter bores wherein said lift spacer limits axial movement and
controls lift of said guide stem to an amount less than the length
of said cage plate and an amount suitable for high-speed poppet-
head operation.
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Kowan US 2,094,951 Oct. 5, 1937
Watson US 2,624,587 Jan. 6, 1953
Deminski US 4,228,820 Oct. 21, 1980
Bunn US 4,398,559 Aug. 16, 1983
King US 4,478,243 Oct. 23, 1984
Cerovich US 2002/0170603 A1 Nov. 21,2002
REJECTIONS
The Examiner made the following rejections:
1. Claims 17, 19, 20, and 23 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Bunn, Deminski, and engineering expediency as
evidenced by King.
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2. Claim 22 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bunn, Deminski, Kowan, and engineering expediency.
3. Claims 25—30, 33—35, and 37 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Bunn, Deminski, Cerovich, and
engineering expediency as evidenced by King.
4. Claims 31, 32, and 36 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bunn, Deminski, Cerovich, Watson, and
engineering expediency.
Appellants seek our review of these rejections.
DISCUSSION
We have considered the record before us, including Appellants’
Appeal Brief and the oral hearing on December 5, 2017. The 31-page
Appeal Brief references over 1,100 pages of exhibits, including three
declarations by Timothy C. Allison, Ph.D. and one affidavit by Justin K.
Russell as follows: 2013 Allison declaration (24 pages) (Ex. 10), 2014
Allison declaration (68 pages) (Ex. 15), 2015 Allison declaration (10 pages)
(Ex. 26), and 2014 Russel affidavit (5 pages) (Ex. 24).3
As an initial matter, Appellants’ arguments are principally directed to
the rejections of independent claims 17 and 25, and do not separately
3 In some cases, Appellants’ arguments make broad assertions without
reference to any exhibits, or reference exhibits and declarations containing
hundreds of pages. Appellants are required to identify with specificity
evidence supporting their arguments. This Board is not required to sift
through hundreds of pages of evidence to locate support for Appellants’
arguments and/or speculate as to the evidence, if any, upon which
Appellants rely. See SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d
1312, 1320 (Fed. Cir. 2006) (“Judges are not like pigs, hunting for truffles
buried in briefs.”).
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address all of the rejections of dependent claims 19, 20, 22, 23, and 26—37.
Thus, any dependent claim not separately argued will stand or fall with its
respective independent claim. See generally 37 C.F.R. § 41.37(c)(l)(iv).
We address Appellants’ arguments in two sections. In Section I, we
address Appellants’ arguments regarding the Examiner’s findings and
reasoning regarding Bunn, Deminski, and the other prior art of record. In
Section II, we address Appellants’ arguments regarding their objective
evidence of non-obviousness, and the Examiner’s findings regarding
Appellants’ objective evidence of non-obviousness.
Section I: The Rejections of Claims 17, 19, 20, 22, 23, and 25—37
Based on Bunn, Deminski, and Other Prior Art
With respect to Rejection 1, Appellants argue claims 17, 19, 20, and
23 as a group. See, e.g., Br. 12—13; see also id. at passim. We select
independent claim 17 as the representative claim, and claims 19, 20, and 23
stand or fall with claim 17. 37 C.ER. § 41.37(c)(l)(iv).
With respect to Rejection 2, Appellants do not separately address
dependent claim 22. Br. 13. According to Appellants, “[cjlaim 22 should be
allowed for the reasons mentioned previously with respect to Claim 17.” Id.
Claim 22 stands or falls with independent claim 17.
With respect to Rejection 3, Appellants do not separately address
claims 25—30, 33—35, and 37, but argue that “[cjlaim 25 and all the claims
that depend therefrom should be allowed for the reasons mentioned
previously with respect to Claim 17.” Br. 13—14. Thus, claims 25—30, 33—
35, and 37 stand or fall with claim 17.
With respect to Rejections 4 and 5, Appellants do not separately
address dependent claims 31 and 32, and state that “[cjlaim 36 depends from
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Claim 25 and should be allowed for the reasons mentioned previously with
respect to Claim 17.” Br. 14. Claims 31, 32, and 36 stand or fall with
independent claim 17.
The Examiner finds that Bunn discloses a high-speed poppet-valve
compressor as disclosed in claims 17 and 25 except for:
(1) poppet elements “composed of high performance engineering
thermoplastic” and a seat plate “composed of steel” as recited in claim 25,
(2) a “lift spacer” as recited in claims 17 and 25; and
(3) a poppet head having “a maximum diameter that is both less than
approximately 0.9 inches and larger than the outer stem diameter” as recited
in claim 17 and having “a diameter between approximately one half and
three quarters of an inch” as recited in claim 25 (jointly referred to as “the
claimed head size” or “the head size limitation”). Non-Final Act. 7—10
(claim 17), 11—14 (claim 25). The Examiner’s findings regarding these three
limitations are discussed below in Sections A—C.
Section 1(A): The “Thermoplastic” and “Steel”Limitations
Claim 25 recites poppet elements “composed of a high performance
engineering thermoplastic.” The Examiner finds that “using thermoplastics
to manufacture poppet elements because of their mechanical and chemical
resistance to high temperature, and using steel to make compressor valve
bodies for their long life and resistance to corrosion is well known in the
art.” Non-Final Act. 13. The Examiner also finds that, alternatively,
Cerovich teaches “a compressor system having high-speed poppet elements
(20, 30) composed of a high performance engineering thermoplastic
(‘PEEK’) and a seat plate (16, 18) composed of steel (more specifically
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‘stainless steel’).” Id. (citing Cerovich 125). Appellants do not contest the
Examiner’s findings regarding the “thermoplastic” and “steel” limitations.
Section 1(B): The “Lift Spacer” Limitations
Claim 17 recites “a lift spacer disposed in at least one of said plurality
of counter bores wherein said lift spacer limits axial movement and controls
lift of said guide stem to an amount less than the length of said cage plate
and an amount suitable for high-speed poppet-head operation.” Claim 25
recites “a plurality of lift spacer [sic] disposed in each of the said plurality of
counter bores.”4 * * 7
The Examiner finds that these “lift spacer” limitations are disclosed
by Deminski. Non-Final Act. 8—9, 12; Ans. 22. According to the Examiner,
Deminski discloses a high-speed poppet-valve compressor comprising a lift
spacer 20b (Fig. 1) disposed in at least one counter bore 10 that limits axial
movement and controls lift of guide stem 13 to an amount less than the
length of a cage plate 2, as recited in claims 17 and 25. Non-Final Act. 9,
12; Ans. 22. The Examiner determines that it would have been obvious to
employ Deminski’s lift spacer in Bunn’s poppet-valve assembly “so as to
effect the appropriate amount of valve lift required and/or desired for a
particular application.” Non-Final Act. 9, 12; Ans. 22.
Appellants do not contest this finding and reasoning for combining
Bunn and Deminski, as articulated by the Examiner. Instead, Appellants
argue that the combination of Bunn and Deminski “would change the
principal of operation of either or both references” because “Deminski
4 If there is further prosecution, the Examiner and Appellants should
consider whether this limitation means that at least one lift spacer is, or two
or more spacers are, disposed in each of the counter bores.
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teaches away from using a poppet head as described in Bunn.” Br. 12; see
also id. at 22. According to Appellants,
Deminski teaches a poppet that is head guided. However, Bunn
requires a guide stem 328 that is slidably received in the guide
bore 316. Deminski teaches away from stem guided poppets
when describing the stem guided poppet valves as having
“manufacturing and maintenance problems, arising from the fact
that the poppet head must he accurately positioned with respect
to its mating seating surface on the valve seat.”
Id. 12 (citations omitted), 22 (e.g., Bunn’s grooves “increase turbulence” and
“the grooved head of Bunn is not compatible with the head guided
Deminski”). Appellants also argue that “[cjombining the head-guided
poppet valve with a stem guided poppet valve changes the principle of
operation in a way that is prohibited.” Id. 13; see id. at 22 (Bunn’s grooves
“increase turbulence”). The Examiner, however, does not propose
substituting Deminski’s head-guided poppet for Bunn’s stem-guided poppet.
The Examiner’s uncontested rejection proposes using Deminski’s lift spacer
in Bunn’s counter bore. Because Appellants do not address the rejection as
articulated by the Examiner, they do not identify error in the Examiner’s
findings and reasoning regarding the “lift spacer” limitations.
C. The Head Diameter Limitations
Claims 17 and 25 recite a poppet head having “a maximum diameter
that is both less than approximately .9 inches and larger than the outer stem
diameter,” and “a diameter between approximately one half and three
quarters of an inch,” respectively (jointly referred to as “the claimed head
size” or “the head size limitations”).
The Examiner determines that it would have been obvious to modify
Bunn’s head diameter as recited in the head size limitations for “engineering
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expediency,” that is, to optimize the poppet head size/diameter in order to
reduce the weight of the moving valve member and inertia effect and to
minimize noise in the high-speed compressor. See Non-Final Act. 9—10, 13—
14, 18—19; Ans. 18. More specifically, the Examiner explains that it is
common knowledge that “although maximum port area may be desired,
there is a need to reduce the weight of a moving valve member to limit
inertia effect and minimize noise of operation for a high speed compressor.”
Non-Final Act. 18 (citing to King 1:30—35). The Examiner determines that
because “the inertia effect of the moving poppet elements and the noise
produced therefrom is determined by (but not limited to) the size of the
poppet heads, the number of poppets, and the characteristics of the fluid
being controlled” and “a change in size is generally recognized as being
within the level of ordinary skill in the art,” it would have been obvious “to
modify the poppet heads of Bunn to have a maximum diameter that is less
than approximately 0.75 inches in order to effect a desired flow while
limiting the inertia effect and noise produce[d] therefrom.” Id. 9 (citing In
re Rose, 220 F.2d 459 (CCPA 1955)); see also Ans. 23; Non-Final Act. 17—
18. The Examiner explains:
Making the maximum diameter of the poppet head a
predetermined size, such as “less than approximately 0.75
inches”, for a given operation, would have been obvious to one
having ordinary skill in the art at the time the invention was
made, since it has been held that discovering an optimum value
(less than 0.75 inches) of a result effective (inertia effect and
noise production) variable (maximum poppet head diameter)
involves only routine skill in the art.
Non-Final Act. 18 (citing In re Boesch, 617 F.2d 272 (CCPA 1980)).
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Legal Standard
“[WJhere the general conditions of a claim are disclosed in the prior
art, it is not inventive to discover the optimum or workable ranges by routine
experimentation.” In re Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed.
Cir. 2012) (quoting In reAller, 220 F.2d 454, 456 (CCPA 1955)). This rule
is limited to cases in which the optimized variable is a “result-effective
variable.” Applied Materials, 692 F.3d at 1295 (quoting In re Antonie, 559
F.2d 618, 620 (CCPA 1977)); see Boesch, 617 F.2d at 276 (“[DJiscovery of
an optimum value of a result effective variable ... is ordinarily within the
skill of the art.”).
“The outcome of optimizing a result-effective variable may still be
patentable if the claimed ranges are ‘critical’ and ‘produce a new and
unexpected result which is different in kind and not merely in degree from
the results of the prior art.’” Applied Materials, 692 F.3d at 1297 (quoting
Aller, 220 F.2d at 456); see Antonie, 559 F.2d at 620. Similarly, a prima
facie case of obviousness established by the overlap of prior art values with
the claimed range can be rebutted by evidence that the claimed range is
“critical” because it “achieves unexpected results.” In re Peterson, 315 F.3d
1325, 1330 (Fed. Cir. 2003) (quoting Geisler, 116 F.3d 1465, 1469-70 (Fed.
Cir. 1997)).
We address below whether: (1) the claimed head size is a result-
effective variable and (2) the claimed head size is critical and produces new
and unexpected results.
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C( 1): Result-Effective Variable
The first question is whether poppet head size (or more specifically,
head diameter) was known to affect inertia and noise production of moving
valve members (or other properties) and, thus, is a result-effective variable.
Applied Materials, 692 F.3d at 1297 (“A recognition in the prior art that a
property is affected by the variable is sufficient to find the variable result-
effective.”).
As an initial matter, Appellants do not directly address the Examiner’s
determination that head size is a result-effective variable that affects the
inertia effect and noise production of moving poppet valve. See, e.g., Br.
12—13; Non-Final Act. 18; Ans. 16, 18. Instead, Appellants argue that the
Examiner’s reliance on King to show that it was well known “to reduce
weight by reducing size” is erroneous because “King teaches against making
valve members smaller.” Br. 13. According to Appellants, “King
specifically teaches increasing the size of the port area while reducing the
weight of the valve member.” Id. 12—13 (citing King 1:30—35 (“Associated
and conflicting with the desirability to maximize port area for a given size
cylinder is the need to reduce the weight of the moving valve member so as
to limit the inertia effect thereof.”)). Appellants contend that King “does not
teach reducing the size of valve element; rather it teaches using lightweight
materials” and “because of the light-weight characteristics of the valve
member, valving action is faster and port size may be increased without
detrimental inertial effects.” Id. (citing King 2:9—12). Appellants contend
that “King teaches getting the largest port size while using lighter materials .
. . to compensate, thus bringing down the inertia of the valve.” Id. at 13.
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As a further initial matter, Appellants’ argument that Deminski must
teach or suggest the motivation to modify Bunn is unpersuasive and has
been rejected by the Supreme Court. According to the Supreme Court, an
express teaching or motivation in Deminski (or other prior art references) is
not required. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Instead, the Examiner need only articulate a reason to modify with some
rational underpinning to support the legal conclusion of obviousness. Id.
Here, the Examiner’s articulated reasoning has rational underpinning.
We agree with the Examiner that, although King does not explicitly
describe modifying the diameter of the valve member, modifying the size of
the port implicitly includes modifying the size, diameter, and/or surface area
of the valve member. Ans. 23. If the port is larger, then the head size must
be larger; if the port is smaller, the head size may be smaller.
King, for example, discloses:
The materials used and the relative geometry of the valve seat
and member are such as to reduce clearance or reexpansion
volume, provide quiet closure with good sealing, long life and
high speed operation, and still have the required flow areas at low
valve lifts, thereby providing improved flow characteristics and
efficiency.
King, Abstract (emphasis added).
Associated and conflicting with the desirability to maximize port
area for a given size cylinder is the need to reduce the weight of
the moving valve member so as to limit the inertia effect thereof.
Noise of operation should also be minimized. These aspects take
on increasing importance with high speed compressors.
King 1:30-35. Thus, King discloses that the material, weight, and geometry
of the valve member (i.e., port size relative to head diameter) is recognized
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as affecting parameters such as inertia, noise production, life, high speed
operation, flow characteristics, and/or efficiency.
Appellants do not address the Examiner’s finding that it well known
to
experiment[] with size or dimensions of the poppet head
diameter (in addition to other elements) to affect a desired flow
dynamics, low impact energy, small outside dimensions to allow
for low clearance volume, while maintaining high reliability,
long life and east of maintaining or servicing, and preventing
abnormal mechanical action including: slamming, fluttering,
resonance/pulsation and abnormal flow pattern.
Ans. 17 (citing Exs. 19 at 132, 133, 149, and 152; Ex. 22 at 172).
Addressing the motivation to reduce valve inertia effects, Appellants’
technical expert, Dr. Allison, agrees that the weight and dimensions of the
valve affect inertia effects. Ex. 26 at 3. His statement that other design
variables such as maximum lift, detailed poppet geometry, and spring
stiffness also affect inertia effects and there other ways to reduce inertia
effects does not detract from the fact that valve weight and dimensions are
relevant design variables. Id.
Addressing the motivation to reduce noise, Dr. Allison does not
contest that reducing the size of a moving valve member reduces noise, and
agrees that noise is a relevant consideration in some applications such as
refrigerator compressors in automotive or residential applications. Id. at 4.
His statement that noise is not a design factor in a noisy factory environment
is not persuasive (id.) because the claims are not limited to a factory
environment and it is not necessary for the prior art to serve the same
purpose as that disclosed in the Specification in order to support the
conclusion that the claimed subject matter would have been obvious. KSR,
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550 U.S. at 419 (“[I]n determining whether the subject matter of a patent
claim is obvious, neither the particular motivation nor the avowed purpose
of the patentee controls” in an obviousness analysis.).
Contrary to Appellants’ narrow characterization of King, we agree
with the Examiner that it is well known, as evidenced by King, other prior
art of record, and Dr. Allison’s declaration, that the size and geometry of the
poppet-valve (and specifically, head diameter) affects inertia and noise
operation, and, thus, is a result-effective variable.
Further, contrary to Appellants’ argument that King teaches against
adjusting the size of the valve member (and specifically, the head diameter)
(Br. 12—13), King’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 of otherwise discourage the solution
claimed.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
In sum, Appellants do not identity error in the Examiner’s finding that
head diameter is recognized in the prior art as a result-effective variable.
C(2): Optimization of Head Diameter
As discussed supra, Appellants do not address whether head size is a
result-effective variable, but argue that the outcome of optimizing the poppet
head diameter is still patentable because the claimed range is “critical” and
produces an “unexpected result.” Br. at passim-, see, e.g., id. at 11 (The
“evidence of non-obviousness specifically deals with the fact that the size
limitation has a criticality that was not foreseen or taught in the prior art.
Moreover, the evidence shows the design led to unexpected results and
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subsequent market success.”). Appellants’ arguments regarding criticality
and unexpected results are addressed below.
Criticality of the Claimed Head Size Range
Appellants argue that “the [head] size limitation has a criticality that
was not foreseen or taught in the prior art” (Br. 11; see id. at 14—15, 19), and
the Examiner does not address the criticality data presented by Appellants
(Br. 20; see id. at 15).
As an initial matter, the Examiner nominally considered but rejected
Appellants’evidence of criticality. Ans. 15—16, 20. In addressing
Appellants’ allegations regarding criticality (see, e.g., Br. 11, 14—15, 19—20),
the Examiner states that “King proves that experimentation of a poppet head
size is within the realm of routine engineering practices and supports]
obviousness of the claimed range.” Ans. 20. According to the Examiner,
Appellants’ Specification lacks the evidence to prove the criticality of the
claimed range. Non-Final Act. 18.
Appellants state that evidence of criticality of the claimed range may
be found, for example, in (1) Exhibits 3 (6 pages), 10 (75 pages), 14 (286
pages), and 23 (4 pages) (see, e.g., Br. 10); (2) Exhibits 1—17 in Appellants’
Request for Continuation, dated August 4, 2014 (about 500 pages (see, e.g.,
Br. 14)); and (3) Dr. Allison’s declaration in Exhibit 95 (see, e.g., Br. 14).
Appellants need to identify actual evidence of criticality; citations to
hundred-page exhibits are not helpful and does not establish that the claimed
range is critical. SmithKline, 439 F.3d at 1320. Based upon Appellants’
5 Exhibit 9 of the Appeal Brief is not Dr. Allison’s declaration. Three
Allison declarations containing hundreds of pages of exhibits are attached to
the Appeal Brief. See, e.g., Exs. 10, 15, 26.
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counsel’s representation (Tr. 20-21, 29), we understand that Appellants rely
on evidence of criticality found in Exhibit 23.6
Appellants’ position regarding the criticality of the claimed head size
range is unclear. As best understood, Appellants contend that the claimed
head size range is critical for at least four different reasons, which are
addressed below.
First, Appellants argue that the claimed head size range is critical
because the average normalized effective free lift area (EFLA) for a poppet
head size between 0.400” and 0.850” produces the maximum EFLA for the
given valve lifts. See, e.g., Br. 10 (citing Ex. 23, Fig. 3); Br. 15
(“considerable proprietary data was provided to the USPTO to show that the
claimed invention exhibits a previously unknown increase in effective flow
area at a narrow range of poppet head diameters”). However, Appellants’
experimental data comparing EFLA at different head sizes appears to be
routine experimental testing to optimize the head size which is well within
the capabilities of one skilled in the art. Appellants do not present any
evidence that such optimization is beyond the capabilities of one of ordinary
skill in the art. According to Dr. Allison, for example, it is known that there
6 Appellants also argue that “the criticality of a claimed range must be
compared to a prior art range” and “[n]o prior art range has been disclosed
or cited against the patent.” Br. 14—15. However, from Dr. Allison’s
declaration, we understand that the prior art discloses head diameters
ranging from about 0.45 inch to greater than 1.0 inch. See, e.g., Ex. 15 at 8
(stating US Publication 2002/0170603 (Cerovich) discloses a chamber
diameter of 0.75 inch, and head diameter greater than 1.0 inch (see, e.g.,
Cerovich || 35—36 (chamber diameter is 0.75 inch))); at 12 (stating US
Patent 4,815,493 (Miller) discloses a head diameter of 0.45 inch (see Miller
4:47)); at 11 (stating eMax valve has a body diameter of 0.75 inch, and head
diameter of 1.18 inch); at 7 (stating US Patent 4,607,660 (Bennitt) discloses
chamber diameter of 0.984 inch, and head diameter greater than 1.0 inch).
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is a “reliability vs. efficiency tradeoff for high speed valve operation.” Ex.
26 at 3. Increasing poppet-valve size increases life/reliability; decreasing
poppet-valve size increases efficiency. Id. Dr. Allison also states that
“resizing valve types for various compressors and applications” is a typical
problem encountered by artisans in the art. Id. at 2, § 1.0. Appellants’
argument is not persuasive.
Second, Appellants contend that the claimed head size range is critical
because the claimed high-speed poppet-valve compressor with the claimed
head size range is more efficient and has longer life than Appellants’ poppet-
valve called the “eMax.” See, e.g., Br. 9, 19. However, according to
Appellants’ counsel, Appellants’ eMax valve was an experimental product
tested at one of Appellants’ customers. Tr. 31. The experimental “eMax
valve was designed specifically for normal [i.e., conventional low-speed]
poppet use, and when tried at high speed, failed.” Id. at 29:2—3. Appellants
present no evidence regarding the efficiency and life of the claimed
compressor compared to other prior art high-speed poppet-valve
compressors such as, for example, the commercially available Dresser Rand
Magnum Valves (Ex. 15 at Ex. C) and the high-speed poppet-valve
compressors disclosed in Bunn and Deminski. The Dresser Rand Magnum
valve, for example, has “an innovative design that sets new benchmarks for
reliability, long life, efficiency” and “can run more than 50% longer than
other valves” as proven “in thousands of hours of tests, many at high speed
and high temperatures.” Ex. 15 at Ex. C. Appellants’ argument is not
persuasive.
Third, Appellants contend that the claimed head size range is critical
because the claimed high-speed poppet-valve compressor with the claimed
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head size range is more efficient and has longer life than a conventional
plate-valve compressor used by one of Appellants’ customers. See, e.g., Br.
9, 19. Appellants’ argument is not persuasive because plate-valve
compressors are different than poppet-valve compressors, and the Dresser
Rand Magnum, Bunn and Deminski high-speed poppet-valve compressors
are closer prior art than a plate-valve compressor. See, e.g., Pfizer, Inc. v.
Apotex, Inc., 480 F.3d 1348, 1370 (Fed. Cir. 2007) (“[W]hen unexpected
results are used as evidence of nonobviousness, the results must be shown to
be unexpected compared with the closest prior art.” (quoting In re Baxter-
TravenolLabs., 952 F.2d 388, 392 (Fed. Cir. 1991))).
Fourth, Appellants contend that the claimed head size range is critical
because the discrete poppet head size range “allows the valve to perform
differently than other prior art devices” (Br. 22 (citing Ex. 26 at 3) (emphasis
added)) and the claimed range is critical “in the combination of increased
longevity in addition to an improvement in aerodynamic performance” (Br.
23 (citing Ex. 26 at 4)). However, as discussed above, the “other” prior art
referenced by Dr. Allison is Appellants’ eMax valve and the plate-valve
used by Appellants’ customer, not the closer high-speed poppet-valve prior
art disclosed, for example, by the Dresser Rand Magnum valve, Bunn, and
Deminski. In addition, “[unexpected results that are probative of
nonobviousness are those that are ‘different in kind and not merely in degree
from the results of the prior art.’” Galderma Laboratories, L.P. v. Tolmar,
Inc., 737 F.3d 731, 739 (Fed. Cir. 2013) (citation omitted). “Results which
differ by percentages are differences in degree rather than kind, where the
modification of the percentage is within the capabilities of one skilled in the
art at the time.” Id.; see In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005)
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(finding increased efficacy, measured by percentages, to be a difference of
degree and not of kind); In re Budde, 319 F.2d 242, 246 (CCPA 1963)
(finding no unexpected results where ranges of reaction time and
temperature constituted only a difference in degree rather than in kind);
Aller, 220 F.2d at 456—57 (finding no unexpected results where improved
yields over the prior art, measured by percentages, reflect a difference in
degree, not in kind). Here, Appellants’ performance results appear to differ
by percentages and, thus, are differences in degree rather than kind.
Appellants do not explain why the claimed device results in an operation
that is different in kind, rather than degree. Thus, Appellants’ argument is
not persuasive.
In sum, Appellants do not identity any error in the Examiner’s
determination that Appellants’ evidence does not prove the criticality of the
claimed head size range. Non-Final Act. 18.
Unexpected Results/Success Due to the Claimed Head Size Range
Appellants argue that claimed invention is not obvious because the
head size limitation led to unexpected results (and skepticism by others that
smaller head size would result in a commercially reliable product),7 and the
Examiner does not address the evidence of unexpected results presented by
Appellants. See, e.g., Br. 11, 20.
As an initial matter, at pages 15—18 of the Answer, the Examiner
nominally considered but rejected Appellants’ evidence of unexpected
results.
7 Because Appellants’ arguments regarding unexpected results and
skepticism by others are essentially identical, both issues are addressed
together.
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Appellants state that evidence of unexpected results may be found, for
example, in (1) Exhibits 16, 17, 19, 20, 21 {see, e.g., Br. 5, 9, 19), and (2)
one of Dr. Allison’s declarations {see, e.g., Br. 14 (citing Ex. 98)). As stated
earlier, Appellants need to identify evidence of unexpected results with
specificity and explain the significance of their evidence in relation to the
head size limitation and other claim limitations at issue. Broad citations to
the exhibits, without explanation, are not helpful. As best understood,
Appellants contend that the claimed head size range results in unexpected
results for at least the reasons addressed below.
First, at the December 5 hearing, Appellants argued that the claimed
head size range produces unexpected results because the prior art teaches to
use ports/bores and poppet heads having diameters generally greater than 1.0
inch instead of the smaller diameters recited in claims 17 and 25. In
Appellants’ counsel’s words, the prior art teaches to “go large” when using
poppet-valves, but Appellants inventors used smaller head sizes. Tr. 7. This
is a new argument that was not explicitly presented in the Appeal Brief.9
Because this argument could have been presented in the Appeal Brief to
rebut the rejections in the Non-Final Office Action, thus, affording the
Examiner an opportunity to consider and respond to it, the argument is
untimely. See 37 C.F.R. § 41.37(c)(l)(iv) (third sentence); In re Hyatt, 211
F.3d 1367, 1373 (Fed. Cir. 2000) (noting that an argument not first raised in
the brief to the Board is waived on appeal); Ex parte Borden, 93 USPQ2d
8 Exhibit 9 of the Appeal Brief is a response to an Office Action, dated
April 30, 2013, not Allison’s declaration. Three Allison declarations,
containing hundreds of pages of exhibits, are attached to the Appeal Brief
9 If this argument is buried in one of the many declarations or exhibits,
it is not readily apparent. SmithKline, 439 F.3d at 1320.
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1473, 1477 (BPAI 2010) (informative) (The Board is not required “to take
up a belated argument that has not been addressed by the Examiner, absent a
showing of good cause.”). Appellants offer no explanation for their
untimely argument.
Second, Appellants contend the claimed range produces unexpected
results because Appellants’ rMax valve performed better and had longer life
than Appellants’ experimental eMax poppet-valve and a competitor’s plate-
valve compressor. See, e.g., Br. 5 (citing Exs. 16, 17, 20, 21); Br. 9 (citing
Exs. 17, 19, 20, 21); Br. 19 (citing Ex. 17, 20, 21, 22). There are several
issues with Appellants’ argument.
The first issue with Appellants’ argument is that Appellants must
present evidence that the rMax valve is covered by the claims on appeal.
During the December 5 hearing, Appellants’ counsel stated that the “nexus”
evidence may be found on page 11 of the 2014 Allison declaration (Ex. 15).
Tr. 22. However, the Allison declaration merely states that “[o]ne
commercial example of the claimed invention is the ‘rMax’ system.” Ex. 15
at 11. This conclusory statement is insufficient to identify which, if any, of
the claims on appeal read on the rMax valve, and which claim limitations are
found in the rMax valve. We note, for example, that the head size
limitations in claims 17 and 25 are different.
The second issue with Appellants’ argument is that Appellants must
present evidence of a nexus between the unexpected results and the head
size limitation at issue here. Wyers v. Master Lock Co., 616 F.3d 1231, 1246
(Fed. Cir. 2010) (For “objective evidence of secondary considerations to be
accorded substantial weight, its proponent must establish a nexus between
the evidence and the merits of the claimed invention.” (emphasis, citation,
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and brackets in original omitted)); Ormco Corp. v. Align Tech., Inc., 463
F.3d 1299, 1311—12 (Fed. Cir. 2006) (“Evidence of commercial success, or
other secondary considerations, is only significant if there is a nexus
between the claimed invention and the commercial success [or other
secondary considerations].”). Thus, an applicant must establish a nexus
between the merits of the claimed invention and the proffered evidence of
secondary considerations. Ashland Oil, Inc. v. Delta Resins & Refractories,
Inc., 776 F.2d 281, 305 n.42 (Fed. Cir. 1985). Appellants do not address the
Examiner’s finding that “the ‘success’ of [Appellants’] invention [is
attributed] to ‘quite a few factors that contribute to its success, design,
material selection, etc.’” and “[t]here is no evidence that the success is
attributed to . . . the claimed poppet head diameter range as opposed to other
design or structural features which were not claimed or mentioned.” Ans. 16
(citing Ex. 20). Appellants do not persuasively explain why the alleged
unexpected results are attributable to the head size limitations as opposed to
other factors.10
The third issue with Appellants’ second argument is that Appellants’
eMax valve was a conventional low-speed poppet-valve which was tested at
high speed at one of Appellants’ customers. Tr. 31. A low-speed poppet-
valve and a conventional plate-valve are different from the claimed high­
speed poppet-valve. Appellants present no evidence regarding the
performance, efficiency, and life of the claimed device compared to closer
10 Appellants state that the Russell affidavit (Ex. 24) “prov[es] up the
nexus and relationships between [Appellants’ evidence in Exs. 3, 6, 7, 10—
13, 15—24] and the embodiment of the claim invention.” Br. 5 (citing Ex.
24). However, the Russell affidavit does not address any of the claim
limitations in claim 17 or 25.
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prior art such as the high-speed poppet-valve compressors disclosed in the
Dresser Rand Magnum valve (Ex. 15 at Ex. C) and the high-speed poppet-
valve compressors disclosed Bunn and Deminski. See, e.g., Pfizer, 480 F.3d
at 1370 (“[W]hen unexpected results are used as evidence of
nonobviousness, the results must be shown to be unexpected compared with
the closest prior art.” (quoting Baxter-Travenol, 952 F.2d at 392)).
Appellants’ allegations of unexpected results based on a comparison of a
high-speed poppet-valve compressor against a low-speed poppet-valve or a
plate-valve is not persuasive.
Third, Appellants contend the claimed head size produces unexpected
results because certain literature stated that poppet-valves were best suited
for low-speed operations and that high-speed poppet-valves are “unreliable.”
See, e.g., Br. 9, 19 (citing Ex. 19 at 145 (“poppet valves at speeds above
600-700 rpm have proven somewhat unreliable” and “poppet valves are
ideally suited to the low-speed, medium-pressure, low-ratio efficiency
service typical of gas transmission applications”)). The general statements
in Appellants’ literature is contradicted by other high-speed poppet-valves in
the Dresser Rand Magnum valve and the Bunn and Deminski references.
Contrary to general statements in Exhibit 19, for example, the Dresser Rand
Magnum valve brochure specifically states that the Magnum valve has “an
innovative design that sets new benchmarks for reliability, long life,
efficiency” and “can run more than 50% longer than other valves” as proven
“in thousands of hours of tests, many at high speed and high temperatures.”
Ex. 15 at Ex. C. Appellants’ argument is not persuasive.
Finally, Appellants contend that their experimental test results (e.g.,
Ex. 23) show unexpected results of the claimed poppet-valve design. Br. 14.
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However, as discussed by the Examiner (Ans. 20), Appellants’ experimental
data is routine experimental testing to optimize the head size which is well
within the capabilities of one skilled in the art. As stated by Dr. Allison, it is
known that there is a “reliability vs. efficiency tradeoff for high speed valve
operation” — increasing poppet-valve size apparently increases
life/reliability; decreasing poppet-valve size enhances efficiency. Ex. 26 at
3. Dr. Allison also states that “resizing valve types for various compressors
and applications” is a typical problem encountered by artisans in the art. Ex.
26 at 2, § 1.0. Appellants’ evidence shows that head size is routinely
modified and head size modifications affect product performance, but
Appellants do not persuasively explain why Appellants’ results are
“unexpected,” especially with respect to other high-speed poppet-valves
described in the prior art.
Thus, Appellants’ arguments do not identify error in the Examiner’s
findings and reasoning that the claimed head size does not provide
unexpected results.
Section II: Appellants ’Arguments Objective Evidence of Non-obviousness
Appellants argue:
Even if all the elements of the Independent Claims 17 and
25 are taught in the combination cited by the Examiner, the
claims should still be allowed in light of the objective evidence
of non-obviousness. The evidence submitted overcomes the
combination of Bunn in view of Deminski and in light of the
engineering expedient rationale. The totality of the claims and
the evidence submitted shows a high speed compressor valve
assembly that is more reliable, more efficient, and breaks with
conventional wisdom known to a person of ordinary skill in the
art.
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Br. 6. Appellants generally allege that evidence of unexpected results,
skepticism by others, failure by others, long-felt but unresolved need, and
commercial success show that the claimed invention is not obvious. See,
e.g., Br. 9-10, 11,14 (“Evidence of skepticism was provided in the form of
engineering texts and papers which taught against using the design of the
invention.”). Appellants’ arguments and evidence relating to unexpected
results and skepticism by others are addressed above.
Appellants’ arguments and evidence relating to teaching away, failure
by others, long-felt but unresolved need, and commercial success are
addressed below. As an initial matter, Appellants do not present a nexus
between these indicia of non-obviousness and the claims, and specifically
the head size limitations in claims 17 and 25. Wyers, 616 F.3d at 1246 (For
“objective evidence of secondary considerations to be accorded substantial
weight, its proponent must establish a nexus between the evidence and the
merits of the claimed invention.”). If such evidence is buried in the 1,100+
pages of exhibits, it is not readily apparent.11 SmithKline, 439 F.3d at 1320.
Teaching away and failure by others
Appellants argue that the claimed invention is not obvious because
certain industry literature teaches away from the claimed invention and
others failed to achieve the claimed invention, and the Examiner does not
11 Appellants state that the Russell affidavit (Ex. 24) “prov[es] up the
nexus and relationships between [Appellants’ evidence in Exs. 3, 6, 7, 10—
13, 15—24] and the embodiment of the claim invention.” Br. 5 (citing Ex.
24). However, the Russell affidavit does not address any of the claim
limitations in claim 17 and 25.
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address the evidence of unexpected results presented by Appellants. See,
e.g., Br. 9, 12, 18—20.
Appellants state that evidence of teaching away and failure by others
may be found, for example, in (1) Exhibit 6 at 1—19 and Exhibit 7 at 7 (Br.
17) ; Exhibits 16, 17, 18 at 51, 22 (see, e.g., Br. 5, 9, 18, 19); Exhibit 10 (Br.
18) ; and Exhibit 24:21—22 (Br. 10, 20); and Exhibit 22 at 171 (Br. 10). As
best understood, Appellants contend that the evidence teaches away from the
claimed invention and shows failure by others to achieve the claimed
invention for at least the reasons addressed below.
First, Appellants argue that evidence of teaching away and failure by
others is contained in exhibits showing that the rMax valve allegedly
performed better than Appellants’ experimental eMax valve and a
competitor’s plate-valve compressor. Br. 9 (citing Ex. 16 (“They/we have
only been trying to resolve this for 10 years.”); Ex. 18 at 51 (stating “[t]he
poppet valve has been applied primarily to low-ratio slow-to-medium-speed
gas transmission service”)); see also Br. 18 (citing Ex. 16); Br. 19 (citing Ex.
17 and 18). As discussed above, the eMax valve was a low-speed poppet-
valve used in an experimental high-speed application. Because other high­
speed poppet-valve compressors, such as the commercially available Dresser
Rand Magnum Valves (Ex. 15 at Ex. C) and the high-speed poppet-valve
compressors disclosed Bunn and Deminski, exist, Appellants have not
shown that there was failure by others, or a problem to be solved. Newell
Companies v. Kenney Mfg. Co., 864 F.2d 757, 768 (Fed. Cir. 1988) (“[OJnce
another supplied the key element, there was no long-felt need or, indeed, a
problem to be solved.”). In view of the existence of these other prior art
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high-speed poppet-valve compressors, Appellants’ allegations of teaching
away and failure by others is not persuasive.
Second, Appellants argue that evidence of teaching away and failure
by others is found in industry literature that alleges that poppet-valves are
limited to low-speed compressors up to 600 rpm. See, e.g., Br. 9 (citing Ex.
18 at 51 (stating “[t]he poppet valve has been applied primarily to low-ratio
slow-to-medium-speed gas transmission service.”); Ex. 19 at 145 (“Poppet
valves at speeds above 600-700 rpm have proven somewhat unreliable,”
“poppet valves require relatively large sealing surfaces because the poppets
are nonmetallic and because the seat is angled,” “poppets have to be
relatively large,” “poppet valves also work best at high lifts; values of .250"
or higher are common,” “[t]hus poppet valves are ideally suited to the low-
speed, medium-pressure, low-ratio efficiency service typical of gas
transmission applications”)); Br. 17 (arguing that “traditional, poppet-type
valves were considered appropriate for ‘low speed’ applications” (citing Ex.
6 at 1—19), and “indicating service speed typical up to 600 RPM” (citing Ex.
7 at 7)); Br. 18 (stating that “[t]he general consensus in the industry was that
poppet valves; were limited to low speed (<300 rpm) operation due to
endurance and/or inefficiency limitations” (citing Ex. 1112)).
After considering Appellants’ extensive evidence of teaching away
and failure by others, the general statements in Appellants’ evidence
demonstrates that poppet-valves are “typically” or “preferably” used in low-
speed applications. However, the evidence does not show that poppet-
valves cannot or should not be used in high-speed applications. Indeed,
high-speed poppet-valves are used in the commercially available Dresser
12 Exhibit 11 is not one of the Allison declarations.
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Rand Magnum valve and in the Bunn and Deminski references. In addition,
because Appellants’ evidence does not criticize, discredit, or discourage the
use of the head size limitations in claims 17 and 25, they do not teach away
from the claimed compressor or the head size limitations. DePuy Spine, Inc.
v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009)
(“A reference does not teach away, however, if it merely expresses a general
preference for an alternative invention but does not ‘criticize, discredit, or
otherwise discourage’ investigation into the invention claimed.” (quoting
Fulton, 391 F.3d at 1201)). Appellants’ argument is unpersuasive.
Third, Appellants argue that their customer’s willingness to pay more
for the rMax valve which is more expensive than traditional plate-valves
used by customers is evidence of failure by others. Br. 10 (citing Ex. 24:21—
22); Br. 20 (citing Ex. 24:21—22). Because Appellants compare the rMax
valve, which is allegedly covered by the claims on appeal, against a plate-
valve, but not other high-speed poppet-valve compressors, Appellants’
argument is not persuasive.
Fourth, Appellants argue that certain literature which discloses that
poppet diameter is “typically” one inch or greater teaches away from the
claimed invention, and specifically the head size limitation at issue here. Br.
10 (citing Ex. 22 at 171). Exhibit 22, however, does not criticize, discredit,
or discourage the use of the head size limitations in claims 17 and 25, and,
thus, does not teach away from the claimed invention. DePuy Spine, 567
F.3d at 1327 (“A reference does not teach away, however, if it merely
expresses a general preference for an alternative invention but does not
‘criticize, discredit, or otherwise discourage’ investigation into the invention
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claimed.” (quoting Fulton, 391 F.3d at 1201)). Appellants’ argument is
unpersuasive.
Long felt, but unresolved need
Appellants generally allege that there was long-felt but unsolved need
for a high-speed poppet-valve compressor. See, e.g., Br. 10, 11. However,
because other high-speed poppet-valve compressors, such as the
commercially available Dresser Rand Magnum Valves (Ex. 15 at Ex. C) and
the high-speed poppet-valve compressors disclosed Bunn and Deminski,
exist, there was no long-felt need. Newell, 864 F.2d at 768 (“[OJnce another
supplied the key element, there was no long-felt need or, indeed, a problem
to be solved.”). Appellants’ argument is not persuasive.
Summary
In summary, based upon the present record, Appellants do not
persuasively identify error in the Examiner’s determination that it would
have been obvious to modify Bunn’s head diameter as recited in the head
size limitations to optimize the poppet-head size/diameter in order to reduce
the weight of the moving valve member and inertia effect and to minimize
noise in the high-speed compressor. Similarly, Appellants do not identity
error in the Examiner’s findings and reasoning that Appellants’ evidence
does not establish that the claimed head size is “‘critical’ and ‘produce[s] a
new and unexpected result which is different in kind and not merely in
degree from the results of the prior art.’” Applied Materials, 692 F.3d at
1297. Appellants’ arguments regarding the objective evidence of non­
obviousness is not persuasive.
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NEW GROUND OF REJECTION
As discussed above, the Examiner’s rejections of claims 17, 19, 20,
22, 23, and 25—37 are affirmed. Because we have considered Appellants’
evidence on the record in greater detail than as addressed in the Non-Final
Office Action and Examiner’s Answer, and to ensure that Appellants are
provided a fair opportunity to respond, we designate our affirmance of the
obviousness rejections of claims 17, 19, 20, 22, 23, and 25—37 as NEW
GROUNDS OF REJECTION pursuant to 37C.F.R. § 41.50(b).
DECISION
For the above reasons, the Examiner’s rejections of claims 17, 19, 20,
22, 23, and 25—37 under 35 U.S.C. § 103 are AFFIRMED. We designate
our affirmance as NEW GROUNDS OF REJECTION pursuant to 37C.F.R.
§ 41.50(b).
37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims (emphasis added):
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record.
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Further guidance on responding to a new ground of rejection can be found in
the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv) (2015).
AFFIRMED; 37 C.F.R, $41.50(b)
31