Mark A. Hentschel et al.Download PDFPatent Trials and Appeals BoardSep 12, 201912984330 - (D) (P.T.A.B. Sep. 12, 2019) Copy Citation 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 Appeal 2018-000498 Application 12/984,330 2 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. Appeal 2018-000498 Application 12/984,330 3 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 Appeal 2018-000498 Application 12/984,330 4 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 Appeal 2018-000498 Application 12/984,330 5 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 Appeal 2018-000498 Application 12/984,330 6 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 Appeal 2018-000498 Application 12/984,330 7 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 Copy with citationCopy as parenthetical citation