Yang Bae. Park

Patent Trials and Appeals BoardDec 27, 2019

15355562 - (D) (P.T.A.B. Dec. 27, 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. 15/355,562 11/18/2016 Yang Bae Park 22150.0415U1 2355 23859 7590 12/27/2019 Ballard Spahr LLP SUITE 1000 999 PEACHTREE STREET ATLANTA, GA 30309-3915 EXAMINER CARY, KELSEY E ART UNIT PAPER NUMBER 3753 NOTIFICATION DATE DELIVERY MODE 12/27/2019 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): USpatentmail@ballardspahr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte YANG BAE PARK Appeal 2019-002801 Application 15/355,562 Technology Center 3700 ____________ Before JOHN C. KERINS, CHARLES N. GREENHUT, and MICHAEL J. FITZPATRICK, Administrative Patent Judges. FITZPATRICK, Administrative Patent Judge. DECISION ON APPEAL Appellant, Victaulic Company,1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 1–32, which constitute all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Appellant is the “applicant” under 37 C.F.R. § 1.42(b) and identifies itself as the sole real party in interest. Appeal Br. 1. Appeal 2019-002801 Application 15/355,562 2 STATEMENT OF THE CASE The Specification The Specification’s disclosure “relates to fluid control devices that are combinations of valves and mechanical couplings.” The Claims Claims 1–32 are rejected. Final Act. 1. Claim 1 is representative and reproduced below with emphasis added. 1. A valve for controlling flow through pipe elements, said valve comprising: a valve housing surrounding and defining a bore; a valve closing member mounted within said bore, said valve closing member being rotatable about an axis of rotation between an open position permitting flow through said bore and a closed position preventing flow through said bore; first and second lugs mounted in spaced relation to one another on said valve closing member, said lugs defining respective apertures aligned with said axis of rotation; first and second shafts extending in opposite directions along said axis of rotation, said first shaft being received within said aperture of said first lug, said second shaft being received within said aperture of said second lug; first and second bearings mounted on said valve housing diametrically opposite to one another, said first and second bearings respectively defining first and second passages through said valve housing, said first and second passages being aligned with said axis of rotation, said first bearing receiving said first shaft, said second bearing receiving said second shaft; wherein each said shaft has a diameter at a first end larger than a diameter at a second end, said first end of first shaft engaging and being retained within said valve housing by said first lug, said first end of said second shaft engaging and being retained within said valve housing by said second lug. Appeal 2019-002801 Application 15/355,562 3 Appeal Br. 18–19 (emphasis added). The Examiner’s Rejections The rejections before us are: 1. claims 1–5 and 31, under 35 U.S.C. § 102(a)(1), as anticipated by Urban2 (Final Act. 3); 2. claims 6–9, under 35 U.S.C. § 103, as unpatentable over Urban and Borcherdt3 (id. at 6); 3. claim 15, under 35 U.S.C. § 103, as unpatentable over Urban and Shimada4 (id. at 8); 4. claims 10–14, 16–21, 26–29, and 32, under 35 U.S.C. § 103, as unpatentable over Urban and McLennan5 (id.); 5. claims 22–25, under 35 U.S.C. § 103, as unpatentable over Urban, McLennan, and Borcherdt (id. at 14); and 6. claim 30, under 35 U.S.C. § 103, as unpatentable over Urban, McLennan, and Shimada (id. at 16). DISCUSSION Claim 1 recites “said first end of first shaft engaging and being retained within said valve housing by said first lug, said first end of said second shaft engaging and being retained within said valve housing by said second lug.” Appeal Br. 19. Independent claim 16 recites the same limitation. Id. at 23. The sole remaining independent claim, claim 31, is directed to a method that includes corresponding steps, reciting “retaining 2 US 3,528,448, issued Sept. 15, 1970 (“Urban”). 3 US 3,260,496, issued July 12, 1966 (“Borcherdt”). 4 US 2006/0000997 A1, published Jan. 5, 2006 (“Shimada”). 5 US 5,018,548, issued May 28, 1991 (“McLennan”). Appeal 2019-002801 Application 15/355,562 4 said first shaft within said housing using said first lug” and “retaining said second shaft within said housing using said second lug.” The Examiner relies exclusively on Urban as teaching these limitations. See Final Act. 4 (regarding claim 1), 5 (regarding claim 31), 11 (regarding claim 16). For example, with respect to claim 1, the Examiner finds that Urban teaches: “said first end (62) of first shaft (60) engaging and being retained within said valve housing (10) by said first lug (70), said first end (107) of said second shaft (105) engaging and being retained within said valve housing (10) by said second lug 115 (Col. 5, lines 15–19; lines 35–47; lines 69–75; Col. 6, lines 15–19; see Figure 2).” The structure identified by the Examiner is shown in Figure 2 of Urban, which is reproduced below. Appeal 2019-002801 Application 15/355,562 5 Figure 2 of Urban, reproduced above, shows a cross-sectional view of a slurry valve. Urban 2:56–59. Appellant argues that Urban’s “shafts 60 and 105 are retained within the valve housing by engagement with bearings 65 and 108, respectively, and not by engagement between the shafts and the lugs 70 and 30.” Appeal Br. 5–6. It is clear that the bearings, in fact, retain the shaft ends, and the Examiner concedes this. Final Act. 2. The Examiner states, “[h]owever, just because the shafts are retained by the bearings does not mean they cannot also be retained by the lugs.” Id. The Examiner finds that the asserted lugs 70 and 30 “engage an outer surface of the shafts, which provides redundant retaining of the shafts inside the housing.” Id. Appellant has the better argument, given the actual disclosure of Urban. The most relevant portions of Urban state as follows: The inner end 62 of the stem 60 is positioned within an opening 69 formed in the upper end 70 of the ball section 14. Both the inner end 62 and the opening 69 are axially slotted to receive keys 71 for preventing relative end of the pipeline rotational motion therebetween. . . . The inner end 107 of the pin 105 fits within a bore 114 formed in the lower end 115 of the ball section 14. The bore 114 and the inner end 107 of the pin 105 are similarly slotted to receive keys 116 for preventing relative rotational motion therebetween. Urban 5:35–39, 6:14–19. Notably, the only discussion by Urban of restricting movement between the ends and the openings (i.e., the asserted lugs) is in regards to preventing relative rotational movement, which—per the Specification—is clearly a feature separate from retention. Id.; Spec. 15 (“The tapered section 94 engages a tapered aperture 48a in lug 48 and thus requires no additional features to retain the shaft 44 to the valve closing member 40. This shaft configuration also reduces rotational friction and is Appeal 2019-002801 Application 15/355,562 6 self-compensating for wear.” (emphasis added)). In sum, Urban does not state that the ends are positioned within the openings (i.e., the asserted lugs) through an interference fit or in some other manner through which the openings cause the ends to be retained therein. Urban 5:35–39, 6:14–19. This deficiency is fatal to all of the rejections, which we accordingly reverse. SUMMARY Claims Rejected 35 U.S.C. Reference(s) Affirmed Reversed 1–5, 31 § 102(a)(1) Urban 1–5, 31 6–9 § 103 Urban, Borcherdt 6–9 15 § 103 Urban, Shimada 15 10–14, 16– 21, 26–29, 32 § 103 Urban, McLennan 10–14, 16– 21, 26–29, 32 22–25 § 103 Urban, McLennan, Borcherdt 22–25 30 § 103 Urban, McLennan, Shimada 30 Overall Outcome 1–32 REVERSED