Mark A. Hentschel et al.

Patent Trials and Appeals Board

Sep 12, 2019

12984330 - (D) (P.T.A.B. Sep. 12, 2019)

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.
12/984,330 01/04/2011 Mark A. Hentschel 508007 2102
53609 7590 09/12/2019
REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
EXAMINER
JELLETT, MATTHEW WILLIAM
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
09/12/2019 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):
RockMail@reinhartlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MARK A. HENTSCHEL,
JEROME C. KLOPP, and JESSE WARDEH
____________________

Appeal 2018-000498
Application 12/984,330
Technology Center 3700
____________________

Before JENNIFER D. BAHR, LINDA E. HORNER, and
PAUL J. KORNICZKY, Administrative Patent Judges.

KORNICZKY, Administrative Patent Judge.

DECISION ON APPEAL

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Application 12/984,330

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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision, as set forth in the Final Office Action, dated December
2, 2016 (“Final Act.”), rejecting claims 1–20 under pre-AIA 35 U.S.C.
§ 102(b) as anticipated by Hiraishi (US 6,076,550, issued June 20, 2000)
and/or, in the alternative, under pre-AIA 35 U.S.C. § 103(a) as obvious over
Hiraishi either alone or in combination with Cooper (US 5,941,502, issued
August 24, 1999). We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

THE CLAIMED SUBJECT MATTER
The claims generally relate “to solenoid operated valves, and more
particularly to apparatuses for connecting a solenoid coil assembly on a pilot
operated water valve.” Spec. ¶ 1. Claims 1 and 12 are the independent
claims on appeal. Claim 1, reproduced below with disputed limitations
italicized for emphasis, is illustrative of the claimed subject matter:
1. A coil capture weld ring to attach a solenoid coil assembly
to a valve body, comprising:
a body defining a plurality of locking tabs configured for
locking engagement with the solenoid coil assembly;
a weld skirt extending from the body and configured for
attachment to the valve body.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Robertshaw
Controls Company. Appeal Brief, dated March 31, 2017 (“Appeal Br.”), 2.
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DISCUSSION
In the anticipation rejection under 35 U.S.C. § 102(b) and the
obviousness rejection under 35 U.S.C. § 103 based on Hiraishi alone, the
Examiner finds that Hiraishi discloses all of the limitations of claims 1–20.
Final Act. 6–7; see Ans. 16–23. In particular, the Examiner states that
independent claim 1 requires that the “weld ring” and “weld skirt” be
capable of being welded, and does not recite that the ring and skirt are
actually welded. Ans. 16; Final Act. 7. Relying on MPEP § 2112, the
Examiner finds that Hiraishi’s main seat 81 inherently satisfies the
requirements of the recited “weld ring” and the bottom portion of seat 81
inherently satisfies the requirements of the recited “weld skirt” because seat
81 is made of “resin” and a “resin” is “capable of being welded.” Ans. 17–
18 (citing MPEP § 2112); Final Act. 3. For evidence supporting this
finding, the Examiner relies on Cooper’s disclosure that “thermoplastic
material” may be spin welded to the valve body. Ans. 17; Final Act. 3
(citing Cooper, 3:15–20 (“The enlarged diameter flange 54 of the armature
guide tube 50 is retained in the body by an annular retaining member or ring
56 which, in the presently preferred practice is formed of thermoplastic
material as is body 14; and, ring 56 is preferably secured to the body by
weldment such as by spin welding.”). The Examiner states that because
“Cooper’s synthetic polymer material is also known as a synthetic resin,”
Hiraishi’s resin material also may be spin welded. Ans. 17.
Appellant argues that the Examiner erroneously finds that Hiraishi
discloses the recited “weld ring” and “weld skirt” because “Cooper makes
no mention of ‘resin’ and instead discloses its body and ring 56 are
‘thermoplastic material’ (See e.g. Col 3 lines 15-20) and as such does not
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support the Examiner's assertion that [Hiraishi’s] resin may be welded.”
Reply Brief, dated October 17, 2017 (“Reply Br.”), 5.
Appellant’s argument is persuasive. “In relying upon the theory of
inherency, the examiner must provide a basis in fact and/or technical
reasoning to reasonably support the determination that the allegedly inherent
characteristic necessarily flows from the teachings of the applied prior art.”
Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990)
(emphasis in original). The fact that a certain result or characteristic may
occur or be present in the prior art is not sufficient to establish the inherency
of that result or characteristic. In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir.
1993).
Here, the Examiner does not define the terms “resin” or
“thermoplastic material,” or provide persuasive evidence that all resins may
be welded or that all resins are thermoplastic materials that may be spin
welded. “Resin” is a broad term that means
1a: any of various solid or semisolid amorphous fusible
flammable natural organic substances that are usually transparent
or translucent and yellowish to brown, are formed especially in
plant secretions, are soluble in organic solvents (such as ether)
but not in water, are electrical nonconductors, and are used
chiefly in varnishes, printing inks, plastics, and sizes and in
medicine
2a: any of a large class of synthetic products that have some of
the physical properties of natural resins but are different
chemically and are used chiefly in plastics
b: any of various products made from a natural resin or a natural
polymer
Resin Definition, Merriam-Webster.com, https://www.merriam-
webster.com/dictionary/resin (last visited August 23, 2019) (emphasis
added). The term “thermoplastic” means “capable of softening or fusing
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when heated and of hardening again when cooled // thermoplastic synthetic
resins.” Thermoplastic Definition, Merriam-Webster.com,
https://www.merriam-webster.com/dictionary/thermoplastic (emphasis
added). “Thermoplastic” also “denot[es] substances (especially synthetic
resins) that become plastic on heating and harden on cooling, and are able to
repeat these processes.” Thermoplastic Definition, Bing.com,
https://www.bing.com/search?q=thermoplastic+definition&qs=AS&pq=ther
moplastic+de&sc=8-
16&cvid=2CC5128EA3C54DA6B743C54368DCFC99&FORM=QBRE&sp
=1 (last visited August 23, 2109) (emphasis added). In light of these
definitions of “resin” and “thermoplastic” material, some synthetic resins
may be thermoplastic materials, but resin is a broad term that covers many
different materials, only some of which may be synthetic resins. The
Examiner, however, does not present evidence or technical reasoning that
Hiraishi’s resin is necessarily a synthetic resin or a thermoplastic material
that necessarily becomes plastic on heating and hardens on cooling. Thus,
the Examiner’s finding that Hiraishi’s resin seat 81 may be spin welded and
inherently satisfies the requirements of the recited “weld ring” and “weld
skirt” is erroneous.
For the reasons above, the rejections of claim 1 under 35 U.S.C.
§§ 102 and 103 are not sustained. Likewise, the rejections of claims 2–20,
which depend from claim 1, are not sustained.
In the obviousness rejection under 35 U.S.C. § 103 based on Hiraishi
and Cooper, the Examiner finds that the combined teachings of Hiraishi and
Cooper teach or suggest all of the limitations of claims 1–20. Final Act. 6–
7. The Examiner reasons that it would have been obvious to one of ordinary
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skill in the art to use Cooper’s spin welded connection in lieu of Hiraishi’s
press fit connection between the skirt and valve because using a weldment at
the junction between Hiraishi’s valve body and skirt (1) “provid[es] a secure
fluid tight connection between the skirt and valve body of Hiraishi,” and
(2) “increase[es] the accuracy of the weld and efficiency of the assembly of
the device during manufacturing.” Id. at 8.
Appellant argues that “[i]t was error for the Examiner to propose a
solution to a non[-]existent problem in Hiraishi to support the asserted
combination of references.” Reply Br. 8 (emphases omitted). We agree.
Hiraishi already discloses a water-tight connection and efficient assembly
during the manufacturing process. For example, Hiraishi states that its
solenoid valve is used for water supply control and, as such, it is understood
to be “fluid tight.” Hiraishi, 1:30–31. Further, Figures 18 and 19 disclose
O-rings for fluid-tight sealing.
Hiraishi further states that its main seat 81 is made of resin for
attaching the solenoid valve A to the valve main body 80 (Hiraishi, 21:43–
45), and “[t]herefore, solid fixing by screwing or by using a stopper ring or
the like is not necessary but, for example, attachment by fitting or pinning of
resin can be performed whereby the attaching operation is facilitated and
reduction in cost can be achieved” (id. at 21:63–67). Thus, Hiraishi
discloses that its solenoid valve and assembly process are advantageous for
their cost reduction and efficiency. We agree with Appellant that the
Examiner’s rationale to combine Hiraishi and Cooper fails to recognize
Hiraishi’s cost reduction solution with attachment by fitting or pinning of
resin and, instead, seeks to introduce a welding process by replacing an
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already fluid-tight attachment with a more expensive welding process.
Reply Br. 10.
For these reasons, the Examiner’s rationale for combining Hiraishi
and Cooper is not supported by a rational underpinning and the rejection of
claim 1 under § 103 is not sustained. Likewise, the rejection of claims 2–20,
which depend from claim 1, is not sustained.

CONCLUSION
In summary:
Claims Rejected Basis
(35 U.S.C. §)
Affirmed Reversed
1–20 §§ 102, 103 Hiraishi 1–20
1–20 § 103 Hiraishi, Cooper 1–20
Overall Outcome 1–20

The Examiner’s rejections of claims 1–20 are REVERSED.

REVERSED