Ex Parte Welch et al

Patent Trial and Appeal Board

Aug 17, 2017

12888907 (P.T.A.B. Aug. 17, 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.
12/888,907 09/23/2010 David Ernest Welch 240986-1 5341
80944 7590 08/21/2017
Hoffman Warniok T T .P
EXAMINER
540 Broadway
4th Floor
HARRIS, WESLEY G
Albany, NY 12207 ART UNIT PAPER NUMBER
3748
NOTIFICATION DATE DELIVERY MODE
08/21/2017 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):
ptocommunications@hoffmanwarnick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID ERNEST WELCH, GUIDO FELICE FORTE, JR., and
EDWARD LEO KUDLACIK1
Appeal 2016-005334
Application 12/888,907
Technology Center 3700
Before DANIEL S. SONG, GEORGE R. HOSKINS and
ARTHUR M. PESLAK, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 the Examiner’s Final
Rejection of claims 1—5, 8—11, and 18—26 in the present application. We
have jurisdiction under 35 U.S.C. §§ 6(b) and 134.
We AFFIRM.
1 Collectively referred to as “Appellant” herein. The real party in interest is
General Electric Company (Appeal Brief (hereinafter “App. Br.”) 1).
Appeal 2016-005334
Application 12/888,907
The claimed invention is directed to a steam turbine valve having an
integral pressure chamber (Title; Abstract). Representative independent
claim 1 reads as follows (App. Br. 12, Claims App’x, emphasis added):
1. A valve system for supplying steam, comprising:
a valve body;
a pressure chamber substantially contained within a wall
of the valve body, the pressure chamber having an inlet for
receiving a pressurized fluid, wherein the pressure chamber
further includes an outlet for exhausting the pressurized fluid;
a valve head coupled to the valve body, the valve head
having a valve head exhaust, separate and distinct from the
outlet;
a leak-off conduit fluidly connected to the valve head
exhaust and the inlet, the leak-off conduit configured to provide
the pressurized fluid from the valve head to the pressure
chamber;
an exhaust conduit, separate and distinct from the leak-off
conduit, fluidly connected to the outlet, the exhaust conduit
having a drain,
wherein the leak-off conduit and the exhaust conduit each
include an isolation valve, and wherein the leak-off conduit is
fluidly connected to the exhaust conduit downstream of each of
the isolation valves.
REJECTIONS
1. The Examiner rejects claims 1, 5, 11, and 20-26 under
35 U.S.C. § 103(a) as obvious over Japanese Application No. 54-
012006, published Jan. 29, 1979 (hereinafter “Mokuzaki”2) in view of
2 Throughout the Final Office Action, the Examiner misidentifies the name
of the inventor of this Japanese application as “Mesaki.” We refer to the
2
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Application 12/888,907
U.S. Patent Application Publication No. 2007/0272687 Al, published
Nov. 29, 2007 (hereinafter “Clark”) and U.S. Patent No. 3,069,342,
issued Dec. 18, 1962 (hereinafter “Flatt”) (Final Office Action
(hereinafter “Final Act.”) 3).
2. The Examiner also rejects claims 8—10, 18, and 19 under
35 U.S.C. § 103(a) as obvious over Mokuzaki in view of Clark, Flatt,
and U.S. Patent No. 3,710,810, issued Jan. 16, 1973 (hereinafter
“Shiraki”) (Final Act. 7).
ANALYSIS
Only those arguments actually made by the Appellant have been
considered in this decision. Arguments that the Appellant could have made
but chose not to make have not been considered and are deemed to be
waived. See 37 C.F.R. § § 41.37(c)(l)(iv).
Rejection 1
Claims 1, 5, 11, and 20-26 stand rejected as obvious over the
combination of Mokuzaki, Clark, and Flatt (Final Act. 3). As to independent
claim 1, the Examiner presents an annotated version of Figure 3 of
Mokuzaki that shows a cross sectional view of a steam valve (Ans. 5; see
also Final Act. 5).* * 3 The Annotated Figure is reproduced below:
correct name “Mokuzaki” herein, and cite to the English machine translation
of record.
3 Hereinafter referred to as “Annotated Figure.” The figures in Answer 5
and Final Action 5 differ only in the addition of another arrow with
annotation element “H” in the figure of Answer 5.
3
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Application 12/888,907
Figure reproduced above shows the Annotated Figure, which shows a
steam valve, the annotations including added letters “A” through “H” and
corresponding arrows that point to various portions of the steam valve of
Mokuzaki (Ans. 5).
The Examiner finds that the annotated portions of Mokuzaki
correspond to the following recited limitations of claim 1:
C: pressure chamber;
A: inlet;
B: outlet;
D: valve head;
E: valve head exhaust;
F: leak-off conduit; and
G: isolation valve of exhaust conduit.
(Final Act. 4).
The Examiner concedes that Mokuzaki fails to disclose “an exhaust
conduit having a drain,” or that the “leak-off conduit is fluidly connected to
the exhaust conduit downstream of each of the isolation valves” as recited
by claim 1 (Final Act. 4). For the missing drain, the Examiner relies on Flatt
for disclosing “a steam trap (12) to remove condensate from the steam
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before it is returned to the condenser.” (Final Act. 4—5). To address the
missing fluidic connection between the leak-off conduit and the exhaust
conduit, the Examiner relies on Clark (Final Act. 4), which discloses a steam
valve assembly with a leak-off that “allows for the porting off of high
pressure/high temperature steam” by sending it to “a steam recovery unit.”
(Clark 1114, 24).
The Examiner concludes that
it would have been obvious to one of ordinary skill in the art at
the time of invention to modify [Mokuzaki] with Clark and
Flatt. Clark would add combining the leak-off steam leaving
the valve head (see [Annotated Figure], item F) and the
pressure chamber (52) in [Mokuzaki] and returning it to the
steam recovery unit where it could be recirculated in the steam
turbine system. [Mokuzaki] is silent on the use of the steam
leaving the valve and this would allow it to be reused instead of
the system requiring a constant source of water for steam. Flatt
would add a steam trap/drain to the flow conduit 52 in
[Mokuzaki], This would allow [Mokuzaki] to remove any
condensate in the line before it was returned to the steam
recovery unit.
(Final Act. 5).
We find no error in the Examiner’s fact finding, and agree with the
conclusion of obviousness. The Appellant directs its arguments toward
independent claim 1, which we address infra.
The Appellant asserts that the Examiner has failed to present a prima
facie case of obviousness because the combination of Mokuzaki, Clark, and
Flatt, fails to teach or suggest the recited “exhaust conduit having a drain”;
isolation valves for each of the leak-off conduit and the exhaust conduit; and
“leak-off conduit [that] is fluidly connected to the exhaust conduit
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downstream of each of the isolation valves.” (App. Br. 5; see also Reply Br.
2).
In response, the Examiner points out that Figure 3 of Mokuzaki
already discloses exhaust tube 52 that corresponds to the recited “exhaust
conduit,” and control valves 54 and G (only one enumerated by Mokuzaki)
that correspond to the recited “isolation valves.” (Ans. 2—3). Indeed,
Mokuzaki clearly discloses these recited limitations (Mokuzaki, pg. 6; Fig.
3, exhaust tube 52, control valve 54). As to the drain, the Examiner’s
finding is correct in that Flatt discloses “a steam trap” (Final Act. 5; Flatt,
col. 1,11. 46-48; Figs. 1—6), such steam traps being operable to drain
condensate.
As to the fluid connection between the leak-off conduit and the
exhaust conduit downstream of the isolation valves, the Examiner’s rejection
is based on incorporating the steam recovery unit as suggested by Clark, into
the steam valve unit and circuit disclosed in Mokuzaki (Final Act. 5). In
addition to the above-reproduced articulated reason for the combination, the
Examiner explains that it would have been obvious
to send the leak off steam passed through the leak off conduit
(see [Annotated Figure], item F) to a steam recovery unit and to
send the leak off steam passed through exhaust conduit (see
[Annotated Figure], item 52) to the steam recovery unit to
recapture the steam and reuse it in the system. This would
minimize the need to constantly resupply new amounts of
working fluid to the system to compensate for steam that would
be lost as leak off steam from the valve.
(Ans. 3).
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The Examiner further explains that “[t]he teaching in Clark [] to send
steam recovered from the valve system to a steam recovery unit” is applied
to Mokuzaki in the applied rejection (Ans. 4), and that
[w]ith both sources of leak off steam (from the leak off and
exhaust conduits) flowing to the steam recovery unit, they
would also be fluidly connected downstream of the isolation
valve (see [Annotated Figure], items 54 and G).
(Ans. 3).
The Appellant argues that “this combination of references relies upon
broad disclosures of two distinct features [so] that there would have been no
motivation to combine.” (App. Br. 6; see also Reply Br. 3). However, the
Examiner has articulated a reason, with rational underpinnings, for the
suggested combination, which is that the combination “would allow [steam]
to be reused instead of the system requiring a constant source of water for
steam” (Final Act. 5), and to “minimize the need to constantly resupply new
amounts of working fluid to the system to compensate for steam that would
be lost as leak off steam from the valve.” (Ans. 3). KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 418 (2007).
The Appellant also argues that prior art is “completely silent as to
Appellants’ claimed structure” (Reply Br. 3) and the Examiner engages in
conjecture by “not pointing] to where in the disclosures these features [i.e.,
leak-off conduit and exhaust conduit] are both returned to a steam recovery
unit.” (App. Br. 7; see also Reply Br. 4). However, as is apparent from the
Annotated Figure reproduced above, Mokuzaki is closely related to the
claimed invention/structure. Moreover, no explicit disclosure of the claimed
invention is required. KSR, 550 U.S. 418 (“the analysis need not seek out
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precise teachings directed to the specific subject matter of the challenged
claim”). As noted, the Examiner has articulated a reason with rational
underpinnings for providing a steam recovery unit in Mokuzaki.
The Appellant further argues that “the claim language also makes
clear that the exhaust conduit is, ‘separate and distinct from the leak-off
conduit,’ and that attempts to meld these two together in a broad s[t]eam
recovery unit allegedly taught by the combination of Clark and Flatt directly
contradicts the language of Appellants’ claims.” (Reply Br. 4). However, as
noted above, exhaust tube 52 of Mokuzaki corresponds to the recited
“exhaust conduit,” the exhaust tube having control valve G that corresponds
to the recited “isolation valve” in the exhaust conduit (Mokuzaki, Fig. 3). In
addition, as the Examiner further explains, “the leak off conduit is
considered to be conduit F, H, 50 and 60,” and Mokuzaki further discloses
control valve 54 (Ans. 3). Accordingly, the exhaust and leak-off conduits of
Mokuzaki are “separate and distinct.”4 This is consistent with Appellant’s
Figure 1, in which exhaust conduit 38 and leak-off conduit 36 are separate
and distinct, despite being joined into one conduit downstream of valves 42.
(Spec. 1116-17).
The Appellant also argues that there is no disclosure or suggestion “to
fluidly connect a leak-off conduit and exhaust conduit downstream of said
4 This separate and distinct provision of the conduits does not change just
because the conduits are subsequently fluidly connected prior to connection
to the steam recovery unit, or the conduits are directly connected to the
steam recovery unit so that the steam flows are fluidly connected within the
steam recovery unit. If the limitation “separate and distinct” of claim 1
means that the conduits must remain fully separated, claim 1 itself would be
internally inconsistent in reciting that these conduits are “fluidly connected.”
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isolation valves.” (App. Br. 6; see also Reply Br. 3). However, as the
Examiner explains, the connection between the leak-off conduit (F, H, 50
and 60 in the Annotated Figure) and exhaust conduit 52 at the provided
steam recovery unit “would be downstream of isolation valves 54 and G
since the steam travels through isolation valve 54 and G before the fluid
connection between the leak off and exhaust conduit at the steam recovery
unit.” (Ans. 3). The Examiner’s definition of the leak-off conduit in
Mokuzaki is consistent with Appellant’s Specification. (Spec. 116, Fig. 1).
In the above regard, we observe that claim 1 does not recite the
multiple flow paths provided by the leak-off conduit, specify in which flow
path the isolation valve is located, or specify a particular structural
connection between the conduits. Instead, claim 1 merely states that the
leak-off and exhaust conduits “each include an isolation valve,” and that
these conduits are “fluidly connected” downstream of the isolation valves.
In both the disclosed invention and the steam valve of Mokuzaki, the
pertinent steam flow originates from the valve head, and is conveyed via a
leak-off conduit that provides the steam to a pressure chamber, and then to
the exhaust conduit. By providing the steam from the leak-off conduit and
the exhaust conduit of Mokuzaki to a steam recovery unit as suggested by
Clark, such modified steam valve and circuit of Mokuzaki results in the
recited fluid connection downstream of the disclosed control valves.
The Appellant further argues that the Examiner uses his “own
conjecture and ideas regarding the disclosure and benefits thereof (reusing
steam), rather than any suggestion in the disclosures themselves.” (App. Br.
7; Reply Br. 4). However, as explained by the Examiner,
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The Clark reference already teaches sending steam exhausted
from the valve system to [] a steam recovery unit. While the
Clark secondary reference may not provide an explicit
explanation as to why the leak-off steam is recovered from the
valve and sent [to] the steam recovery unit, the purpose for this
process and structure is obvious in the name of the structure
“steam recovery unit”. That is, to recover steam and reuse it in
the [] steam power plant that the valve is used in. Therefore the
purpose for the structure of passing steam exhausted from the
valve to [the] steam recovery unit is to recover steam that can
be further used in the steam power plant that the valve is used
in.
(Ans. 4—5).
In the above regard, in considering the scope and content of the prior
art, “it is proper to take into account not only specific teachings of the
reference but also the inferences which one skilled in the art would
reasonably be expected to draw therefrom.” In re Preda, 401 F.2d 825, 826
(CCPA 1968): see also Hybritech v. Monoclonal Antibodies, Inc., 802 F.2d
1367, 1384 (Fed. Cir. 1986) (“a patent need not teach, and preferably omits,
what is well known in the art”).
Therefore, we agree with the Examiner that
It is implicit that a “steam recovery unit” serves the purpose of
recovering steam and therefore would have fairly suggested] to
a skilled artisan its use in recovering steam from those areas in
a system in which steam could be recovered. Applying this to
the []Mokuzaki main reference, it would be obvious to send any
steam exhausted from the valve assembly to a steam recovery
unit. This would allow steam that would normally be exhausted
to the exterior of the system to be recovered and reused in the
power plant. In this way the conduits would be fluidly
connected downstream of the isolation valves (in the steam
recovery unit) already taught in []Mokuzaki.
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(Ans. 4).
The Appellant also asserts that “Appellants’ FIG. 1 and its
accompanying description illustrate the benefits of connecting the leak-off
conduit and exhaust conduit downstream of isolation valves, e.g., the
enhanced control of fluid flow within the valve system.” (Reply Br. 3, 6).
According to the Appellant, “exhaust tube 52 and intake tube 50 in
Mokuzaki are serially connected, such that actuating the valve in exhaust
tube 52 necessarily affects the flow of fluid in intake tube 50,” which is not
the case in the invention disclosed in Figure 1 where “the leak-off conduit is
fluidly connected to the exhaust conduit downstream of the isolation
valves.” (Reply Br. 5). These arguments are also unpersuasive.
The Appellant does not identify, nor is it apparent, where the
Specification describes the operation of the valve and benefits of the
downstream fluid connection of the conduits, or how such arrangement
provides “enhanced control.” In fact, there appears to be very little
discussion in the Specification regarding the recited downstream fluid
connection claimed, the Specification merely stating
Exhaust conduit 38 and leakoff conduit 36 may each include
one or more isolation valves 42. In one embodiment, exhaust
conduit 38 and leak-off conduit 36 may be fluidly connected at
a location downstream of isolation valves 42.
(Spec. 117).
In that regard, claim 1 also lacks any functional language defining or
otherwise limiting the function of the claimed valve and arrangement as to
the conduits so as to provide “enhanced control,” or otherwise functionally
distinguish it from the operation of Mokuzaki.
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The Appellant finally argues that “attempting to modify Mokuzaki in
view of Clark, the Examiner is suggesting that the entire operation of
Mokuzaki be modified.” (Reply Br. 5). However, the Examiner does not
modify the operation of Mokuzaki, but merely adds a steam recovery unit
thereto so as to provide a steam recovery feature not present in Mokuzaki
because it does not address what it does with the steam that exits from its
steam valve at H, or the steam that passes through valve G.
Therefore, in view of the above considerations, we affirm the
Examiner’s rejection of independent claim 1. As to independent claims 11
and 20, the Appellant refers to the same unpersuasive arguments discussed
supra to assert patentability (App. Br. 8—9). In addition, as to dependent
claims 5 and 21—26, the Appellant relies on their dependency upon
independent claims for patentability (App. Br. 8—10). Therefore, we
likewise affirm the Examiner’s rejection of claims 5, 11, and 20—26.
Rejection 2
Claims 8—10, 18, and 19 stand rejected as obvious over the
combination of Mokuzaki, Clark, Flatt, and Shiraki (Final Act. 7). The
Appellant refers to the same unpersuasive elements discussed supra to assert
patentability, and relies on their dependency upon independent claims for
patentability (App. Br. 10). Therefore, we likewise affirm the Examiner’s
rejection of claims 8—10, 18, and 19.
CONCLUSION
The Examiner’s rejections are AFFIRMED.
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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
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