Hanon Systems

Patent Trials and Appeals Board

Jan 13, 2022

2021002621 (P.T.A.B. Jan. 13, 2022)

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. 15/873,444 01/17/2018 Daniel Zens HS70006 4765 71433 7590 01/13/2022 McLean IP Global 3010 Lyndon B Johnson Freeway Suite 1200 Dallas, TX 75234 EXAMINER GARDNER, NICOLE ART UNIT PAPER NUMBER 3753 NOTIFICATION DATE DELIVERY MODE 01/13/2022 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): contact@mcleanip.com jason.pahng@gmail.com jason.pahng@mcleanip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DANIEL ZENS, TONI SPIES, MARC GRAAF, DOMINIK WIECHARD, MARKUS HERZOG, and CORINNE LE PELLEC Appeal 2021-002621 Application 15/873,444 Technology Center 3700 Before EDWARD A. BROWN, JEREMY M. PLENZLER, and LISA M. GUIJT, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 21 and 22. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Hanon Systems. Appeal Br. 2. Appeal 2021-002621 Application 15/873,444 2 CLAIMED SUBJECT MATTER Appellant’s invention relates to “a valve for a heat pump system in a motor vehicle.” Spec., page 1, “Field of Technology.” Claims 21 and 22 are the sole independent claims on appeal. Claim 21, reproduced below, is illustrative of the claimed subject matter, with the disputed claim limitation italicized for emphasis. 21. A valve for a heat pump system in a motor vehicle comprising: a rotary drive; a valve shaft; a valve block; a valve element received in the valve block; the valve element being actuatable by the valve shaft through the rotary drive; the valve block including an inlet, a first outlet and a second outlet, wherein the first outlet and the second outlet are positioned opposed to each other; the inlet of the valve block being positioned opposed to the rotary drive; the valve element including an L-shaped throughlet wherein the valve element does not include a substantially straight passage which pass[es] through a center of the valve element to allow passage from one end of the valve element to an opposing end of the valve element; the valve element including an expansion recess connected at an opening of the throughlet; the expansion recess extending away from the opening of the throughlet and in a plane defined as being perpendicular to the valve shaft; the expansion recess being in the form of a groove; the cross section of the groove of the expansion recess being substantially V-shaped or rectangularly U-shaped; a depth of the groove of the expansion recess being continuously decreased away from the opening of the throughlet; Appeal 2021-002621 Application 15/873,444 3 the expansion recess extending a quarter circle along the circumference of the valve element;2 wherein the cross section of the throughlet, the inlet, the first outlet, and the second outlet, are substantially the same; wherein the valve element can be rotated to be in a closed position where there is no longer a fluidic connection between any one of the inlet, the first outlet, and the second outlet to any one of the inlet, the first outlet, and the second outlet; and wherein the valve element can be rotated to be in an open position which allows one passage between the inlet and only one of the first and second outlets. THE REJECTION3 The prior art relied upon by the Examiner is: Name Reference Date Burris US 3,536,296 Oct. 27, 1970 Matousek US 3,735,956 May 29, 1973 Lockhart US 8,844,567 B2 Sept. 30, 2014 Claims 21 and 22 stand rejected under 35 U.S.C. § 103 as unpatentable over Matousek, Lockhart, and Burris. OPINION Regarding independent claims 21 and 22, the Examiner finds that Matousek discloses, inter alia, a valve including a valve element (i.e., ball member 28) received in the valve block (i.e., housing 10) and actuatable by 2 See also Appeal Br. 13-14 (independent claim 22: “the expansion recess extending a quarter circle along the circumference of the valve element”). 3 The Examiner’s rejection of claims 21 and 22 under 35 U.S.C. § 112(b) for failing to comply with the definiteness requirement has apparently been withdrawn, in view of Appellant’s entered amendment correcting the antecedent bases issues. See Amendment dated August 12, 2020; Adv. Act. 2; Appeal Br. 6. Appeal 2021-002621 Application 15/873,444 4 a valve shaft (i.e., actuating stem 30) through a rotary drive (i.e., handle member 74), wherein the valve element includes an L-shaped throughlet (i.e., “within [axial passage] 18”), as claimed. Final Act. 3-4 (citing Matousek, Fig. 1); see also id. at 6-7. The Examiner determines that Matousek fails to disclose an expansion recess, as claimed, and relies on Lockhart for teaching an expansion recess (i.e., port 72) connected at an opening of an L-shaped throughlet (“70 to the aperture near 72”). Id. at 4-5 (citing Lockhart, Fig. 4); see also id. at 7-8. The Examiner reasons that it would have been obvious to have modified Matousek’s ball valve to have an expansion recess, as taught in Lockhart, because such a combination is “according to known methods to yield predictable results,” namely, “[to] allow for [a] very fine adjustment of the size of the opening between the inlet and the outlet,” as taught by Lockhart. Id. at 5 (citing Lockhart 4:48-50). The Examiner relies on Burris for teaching a rotary valve having an expansion recess (i.e., groove 65), “where the expansion recess extends a quarter circle along the circumference of the valve element,” as claimed. Final Act. 5 (citing Burris, Fig. 2); see also id. at 8. The Examiner finds that Burris teaches the claimed quarter circle extension because Burris’ groove “extends at least over a quarter” of the circumference. Ans. 9; see also Adv. Act. 2. The Examiner reasons that it would have been obvious to have further modified Matousek’s valve, as modified by Lockhart to have an expansion recess, to incorporate Burris’ teachings for an expansion recess extending a quarter circle along the circumference of the valve element, because such a combination is “according to known methods to yield Appeal 2021-002621 Application 15/873,444 5 predictable results,” namely, “to provide a fluid pathway from [the] inlet of [the] outlet.” Id. at 6. Appellant submits that claims 21 and 22 require the expansion recess to extend a quarter of a circle along the circumference of the valve element, or “90 degrees,” and not at least a quarter of a circle, as interpreted by the Examiner. Appeal Br. 7-8; see also Reply Br. 2-3. In view of Appellant’s claim construction, Appellant argues that the Examiner’s finding that Burris discloses an expansion recess extending a quarter of a circle along the circumference of the valve element (and not more) is in error. Appeal Br. 7- 8 (citing Burris, Figs. 1, 2); see also Reply Br. 4-5. During patent examination, claims are to be given their broadest reasonable interpretation consistent with the specification, with claim language being read in light of the specification as it would be interpreted by one of ordinary skill in the art. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). “[T]he claims themselves provide substantial guidance as to the meaning of particular claim terms” (In re Cortright, 165 F.3d 1314, 1358 (Fed. Cir. 1999)), and “[w]hile we read claims in view of the specification, of which they are a part, we do not read limitations from the embodiments in the specification into the claims” (Hill- Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014)). Notably, the patent drafter is in the best position to resolve ambiguity in patent claims, and it is highly desirable that patent examiners demand that applicants do so in appropriate circumstances so that the patent can be amended during prosecution rather than attempting to resolve the ambiguity in litigation. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008). Thus, during patent prosecution when claims can be Appeal 2021-002621 Application 15/873,444 6 amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). We agree with the Examiner’s claim construction, in that the recitation in claims 21 and 22 of “the expansion recess extending a quarter circle along the circumference of the valve element” reads on prior art recesses extending a quarter circle along the circumference of the valve element, regardless of whether the recess further extends for more than a quarter circle along the circumference of the valve element.4 Thus, we find that the Examiner did not err by relying on Figures 1 and 2 of Burris for depicting groove 65 as extending along the circumference of the ball surface for a quarter of the circle that is the circumference, as claimed. Regarding Appellant’s argument that Burris “teaches away” from the claimed invention, because “Burris destroys Matousek,” we also disagree. Appeal Br. 9-10. First, the Examiner’s rejection does not involve bodily incorporating Burris’s groove into the surface of Matousek’s ball. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . .” In re Keller, 642 F.2d 413, 425 (CCPA 1981); In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012). Rather, the Examiner proposes modifying Matousek’s ball valve, in view of Lockhart’s teaching that a groove on the ball’s surface 4 Notably, the Specification does not appear to support a claim that requires the expansion recess to extend exactly a quarter circle along the circumference of the valve element, as written description support for the length of the expansion recess is limited in the Specification, as filed, to: “The expansion recess 9 extends . . . approximately over a quarter circle along the circumference of the sphere.” Spec. 4:22-23 (emphasis added). Appeal 2021-002621 Application 15/873,444 7 facilitates very fine adjustment of the size of the opening between valve passages, namely, Matousek’s inlet (i.e., passage 18) and either of the outlets at a single time (i.e., passages 20, 22). The Examiner further proposes modifying Matousek, in view of Lockhart, to thus design the groove to extend a quarter circle along the circumference of the valve element, as taught in Burris, such that the groove allows for such very fine adjustment without also connecting to the other of Matousek’s passage 20, 22, which a person of ordinary skill in the art would appreciate would defeat the purpose of Matousek’s two-way ball valve, and which goes against the application of Lockhart. Second, a reference does not teach away if it merely expresses a general preference for an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Here, Burris does not criticize, discredit, or discourage modifying the groove, but rather, encourages it: “[an] object of the invention is to provide grooves of any depth, configuration or number disposed around a rotatable ball surface so as to allow an adjustment of the flow of fluid by the rotation of said ball.” Burris 1:31. Moreover, we find that Lockhart and Burris provide evidence that, given the same general conditions of claims 21 and 22 (i.e., a ball valve), the length of a recess or groove extending from a port in the ball and along the circumference of the ball’s surface is recognized in the prior art as a variable that effects fluid metering or flow through the valve, such that it is not inventive for Appellant to claim such a recess extending a quarter circle or 90 degrees along the circumference of the ball’s surface. In other words, where the general conditions of a claim are disclosed in the prior art, it is not Appeal 2021-002621 Application 15/873,444 8 inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955). This rule is limited to cases in which the optimized variable is a “result-effective variable.” In re Antonie, 559 F.2d 618, 620 (CCPA 1977). Burris discloses that “[an] object of the invention is to provide grooves of any depth, configuration or number disposed around a rotatable ball surface so as to allow an adjustment of the flow of fluid by the rotation of said ball.” Burris 1:31-34. We discern that a “configuration” includes the length of the groove along the circumference of the ball surface. Additionally, Lockhart discloses, with reference to Figure 4, that the handle 74 may be rotated to control the size of the opening, or percentage of the ports 72, connecting the first side port tube 60 with the bore hole 24 of the body 22. For example, the handle 74 may be adjusted such that only a very small portion of the narrow slit at the end of each port 72 is aligned with the first side port tube 60. The handle 74 may also be adjusted to increase the percentage of the ports 72 aligned with the first side port tube 60 by a very small increment. The ports 72, including the narrow slit, facilitate very fine adjustment of the size of the opening between the ends 62, 64 of the first side port tube and the bore hole 24. Lockhart 4:40-45. Thus, Lockhart also discloses that it is known to size the narrow slit at the end of a port in the ball’s surface to control fluid flow through the ball valve. In sum, we find that reliance on the sizing of a groove on extending from a port and along the circumference of the surface of the ball of a ball valve is a result-effective variable. The Specification discloses that “[t]he expansion recess 9 extends substantially in the plane of which includes the axis of aperture 10 to which Appeal 2021-002621 Application 15/873,444 9 it is docked and approximately5 over a quarter circle along the circumference of the sphere.” Spec. 4:22-22. The Specification also discloses that when the expansion recess 9 extends less far along the circumference of the sphere, a completely closed position is possible thereby that the sphere, starting from the position shown in Fig. 2, is rotated toward the right until there is no longer a fluidic connection from the expansion recess 9 to the outlet 2 and aperture 10 has not yet come into fluidic connection with the outlet 4. Id. at 5:1-5. Thus, the sizing of the expansion recess to be a quarter circle along the circumference of the valve element is to allow the expansion recess to extend between two opposed outlets in the valve block, without coming into fluidic contact with them. We find that such sizing, on the record before us, is a workable range determinable by routine experimentation when such grooves are applied to a “3/2-way expansion valve” (see Spec. 1:27-2:2), as disclosed in Matousek, wherein the two passages 20, 22 are opposed by 180 degrees within the valve block, and a fully closed valve position is desirable. See, e.g., Matousek 3:22-26 (“Although the valve shown is a three-way valve, the invention could obviously be used on a standard two-way valves or any of the multiple port arrangements commonly provided.”), Fig. 1. Accordingly, we sustain the Examiner’s rejection of claims 21 and 22 under 35 U.S.C. § 103 as unpatentable over Matousek, Lockhart, and Burris. 5 The term “approximately” indicates that a length of exactly a quarter circle, as argued by Appellant, is not critical. See In re Scherl, 156 F.2d 72, 74-75 (CCPA 1946) (“Where the issue of criticality is involved, the applicant has the burden of establishing his position by a proper showing of the facts upon which he relies.”). Appeal 2021-002621 Application 15/873,444 10 CONCLUSION The Examiner’s rejection of claims 21 and 22 is affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 21, 22 103 Matousek, Lockhart, Burris 21, 22 TIME PERIOD FOR RESPONSE 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)(1)(iv). AFFIRMED