Ex Parte Rankin et al

Patent Trial and Appeal Board

Nov 27, 2018

14193145 (P.T.A.B. Nov. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/193,145 02/28/2014
114172 7590 11/29/2018
Cantor Colburn LLP - Power Controls,
Sensing Systems
20 Church Street
22nd Floor
Hartford, CT 06103-3207
FIRST NAMED INVENTOR
Kevin M. Rankin
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
74321US02 7182
EXAMINER
TIETJEN, MARINA ANNETTE
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
11/29/2018 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):
usptopatentmail @cantorcolburn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN M. RANKIN and PETER M. BALLARD
Appeal2018-003079
Application 14/193,145
Technology Center 3700
Before STEFAN STAICOVICI, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Kevin M. Rankin and Peter M. Ballard ("Appellants") 1 appeal under
35 U.S.C. § 134(a) from the Examiner's decision in the Final Office Action
( dated Jan. 2 6, 201 7, hereinafter "Final Act.") rejecting claims 1, 3, 5-11,
21, and 23-30. 2 We have jurisdiction under 35 U.S.C. § 6(b).
1 Hamilton Sundstrand Corporation is the applicant and is identified as the
real party in interest in Appellants' Appeal Brief 2 (filed June 23, 2017,
hereinafter "Br.").
2 Claims 2, 4, 12-20, and 22 are canceled. Final Act. 2.
Appeal2018-003079
Application 14/193,145
SUMMARY OF DECISION
We AFFIRM-IN-PART and enter NEW GROUNDS of REJECTION
pursuant to our authority under 37 C.F.R. § 4I.50(b).
INVENTION
Appellants' invention relates to "coating arrangements for various
components of sliding actuator assemblies." Spec., para. 2.
Claims 1 and 21 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A coated pressure relief valve assembly comprising:
a pressure relief valve sleeve having a sleeve outer surface
and a sleeve inner surface;
a pressure relief valve spool having a spool outer surface,
wherein the sleeve and the spool are each formed of aluminum;
a hardened surface formed on the sleeve inner surface and
the spool outer surface; and
a coating disposed on the hardened surface of at least one
of the spool outer surface and the sleeve inner surface, the
coating comprising a diamond-like carbon coating.
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejects claims 1, 3, 5, 6, and 8-11 under 35
U.S.C. §§ I02(a)(l) and (a)(2) as anticipated by Bailey et al.
(US 2011/0042069 Al, pub. Feb. 24, 2011, hereinafter
"Bailey") or, in the alternative, under 35 U.S.C. § I03(a) as
unpatentable over Bailey and Lavery (US 5,906,219, iss. May
25, 1999).
2
Appeal2018-003079
Application 14/193,145
II. The Examiner rejects claims 21, 23, 24, and 26-30 under 35
U.S.C. §§ 102(a)(l) and (a)(2) as anticipated by Bailey or, in
the alternative, under 35 U.S.C. § 103 as unpatentable over
Bailey and Kimpel (US 7,510,013 B2, iss. Mar. 31, 2009).
III. The Examiner rejects claims 7 and 25 under 35 U.S.C. § 103(a)
as unpatentable over Bailey and Hiroyuki et al. (JP 2005-
061244 A, pub. Mar. 10, 2005, hereinafter "Hiroyuki"). 3
ANALYSIS
Rejection I
The Anticipation Rejection
The Examiner finds that Bailey discloses a coated valve assembly
including, inter alia, an aluminum sleeve and spool arrangement, as shown
in Bailey's Figure 10a, wherein the inner surface of the sleeve and the outer
surface of the spool have a hardened surface and a diamond-like coating.
See Final Act. 4 (citing Bailey, paras. 167, 168, 191, 232, 244, 245, 257).
Appellants argue that even though Bailey broadly relates to
"applications related to oil and gas drilling," Bailey does not disclose the
"particular type of sleeve-spool valve assembly" claimed, namely, "a
pressure relief valve (PRV) sleeve and pressure relief valve (PRV) spool."
Br. 9.
The Examiner responds that because the phrase "pressure relief' does
not connote a particular structure, the phrase "pressure relief' is "directed to
the intended use of the valve sleeve and spool." Examiner's Answer 8
3 The Examiner refers to JP 2005-061244 A by its publication number,
whereas Appellants refer to it as "Nissan." See Final Act. 8, Br. 8.
3
Appeal2018-003079
Application 14/193,145
(dated Oct. 19, 2017, hereinafter "Ans."). According to the Examiner,
because Bailey's valve structure "would be capable of providing 'pressure
relief' simply by opening a closed valve to relieve pressure upstream of the
valve," one of ordinary skill in the art would consider that "Bailey's valve
sleeve and valve spool ... [constitute] a pressure relief valve sleeve and a
pressure relief valve spool." Id.
We do not agree with the Examiner's position that the phrase
"pressure relief' in independent claim 1 is directed to an intended use of the
claimed valve. Rather, we construe the phrase "pressure relief' to limit the
claimed valve to a specific type of valve, namely, a "pressure relief valve,"
which "opens automatically when the pressure reaches a dangerous level."4
Although Bailey's disclosure refers to various types of valve devices,
such as, a "check valve, gate valve, globe valve, ball valve, needle valve,
and plug valve," Bailey does not disclose a "pressure relief valve," as
described supra. Bailey, para. 147. The Examiner's position that any of
Bailey's valve devices constitutes a "pressure relief valve" merely because it
can be "open[ ed] ... to relieve pressure upstream of the valve" does not take
into account the particularity of a "pressure relief valve" in that it must open
automatically to vent excess pressure. Stated differently, although we
appreciate that the valves of Bailey may provide pressure relief when
opened, that does not mean that they constitute a "pressure relief valve," as
called for by claim 1, as they do not automatically vent excess pressure.
4 See https://www.thefreedictionary.com/relief+valve (last visited November
16, 2018) (emphasis added); see also Lavery, col. 2, 11. 44--45 ("A pressure
relief valve vents excess pressure using a normally closed valve.").
4
Appeal2018-003079
Application 14/193,145
Accordingly, as Bailey does not disclose a "pressure relief valve," as
called for by independent claim 1, we do not sustain the anticipation
rejection of claims 1, 3, 5, 6, and 8-11 based upon Bailey.
The Obviousness Rejection
Appellants do not present arguments for the patentability of claims 3,
5, 6, and 8-11 apart from claim 1. Therefore, in accordance with 37 C.F.R.
§ 4I.37(c)(l)(iv), we select claim 1 as the representative claim to decide the
appeal of the rejection of these claims, with claims 3, 5, 6, and 8-11
standing or falling with claim 1.
The Examiner finds that Bailey discloses most of the limitations of
independent claim 1, but fails to disclose a "pressure relief valve." Final
Act. 4--5. The Examiner then finds that Lavery discloses "a pressure relief
valve having a spool (28) in a sleeve (12), as known to be used in oil and gas
applications." Id. at 6 (citing Lavery, col. 1, 11. 31-35)5. Thus, the Examiner
concludes that "[i]t would have been obvious to one having ordinary skill in
the art to modify the invention of Bailey, such that the valve was a pressure
relief valve, as taught by Lavery, to be known to be valves used in oil and
gas applications such as Baileys." Id.
Appellants argue that Bailey disparages using aluminum in the
Background section, and, therefore, Bailey teaches away from using
aluminum to form the sleeve and spool of its valve arrangement. Br. 9-10
(citing Bailey, para. 9). Appellants further assert that Bailey's disclosure of
5 This citation from Lavery does not support the Examiner's findings.
However, column 3, lines 21-36 supports a pressure relief valve having a
sleeve 12 and a spool 28.
5
Appeal2018-003079
Application 14/193,145
Al-base alloys in paragraph 232 pertains to "general components," and "is
not definitively disclosing that a sleeve and a spool are formed of
aluminum." Id. at 10. According to Appellants, Bailey's single vague
statement does not outweigh Bailey's "significant disparaging of
aluminum." Id.
We are not persuaded by Appellants' arguments because
Bailey does not "criticize, discredit or otherwise discourage"6 making the
sleeve and the spool of a valve device from aluminum in conjunction with
hardened and coated surfaces that reduce wear and friction. See Final Act.
4--5 (citing Bailey, paras. 167, 168,232, 244--259, 257). Paragraph 9 of
Bailey, which Appellants rely on, refers to a method of reducing friction
between a sliding sleeve and spool arrangement, of a valve device, by using
aluminum to make the sleeve and spool components. Bailey does not
mention any drawbacks from making the sleeve and spool of a valve device
from aluminum in conjunction with hardened and coated surfaces that
reduce wear and friction between contacting surfaces.
Hence, although Bailey discusses the drawbacks encountered in
making the sleeve and spool components from aluminum, Appellants'
argument ignores that Bailey discloses how to overcome these drawbacks,
namely, by providing hardened and coated surfaces to the sleeve and spool
surfaces that come into contact, and, thus, reducing wear and friction.
Moreover, Bailey specifically discloses that a "coated sleeved oil and gas
well production device may be fabricated from ... Al-base alloys." Bailey,
para. 232 ( emphasis added). Such disclosure would not have led a person of
ordinary skill away from the proposed modification; rather, such disclosure
6 See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
6
Appeal2018-003079
Application 14/193,145
would have been instructive. See W.L. Gore & Assoc., Inc. v. Garlock, Inc.,
721 F.2d 1540, 1550 (Fed. Cir. 1983) (A prior art reference must be
considered in its entirety, i.e., as a whole, including portions that would lead
away from the claimed invention). Accordingly, we do not agree with
Appellants that Bailey teaches away from making the coated sleeve and
spool of the pressure relief valve of Bailey, as modified by Lavery, from
aluminum.
Furthermore, the phrase "coated sleeve device" in Bailey's paragraph
189 does not refer to "general components," as Appellants allege, but refers
to particular components disclosed by Bailey such as, "[ c ]hokes, valves,
valve seats, seals, ball valves, inflow control devices, smart well valves, and
annular isolation." Id., para. 191. As the Examiner's rejection is based on
the combined teachings of Bailey and Lavery, a "pressure relief valve" is a
particular "coated sleeve device" that may be fabricated from Al-base alloys.
Hence, the Al-based alloy would apply to both the sleeve material and the
spool material of the pressure relief valve of Bailey, as modified by Lavery.
Lastly, although we appreciate that Bailey does not disclose a
"pressure relief valve," nonetheless, as noted above, Lavery discloses such a
feature. See Final Act. 5---6. Appellants do not persuasively show error in
the Examiner's findings or identify any flaw in the Examiner's reasoning in
combining the disclosures of Bailey and Lavery. See Br. 10.
In conclusion, for the foregoing reasons, we sustain the rejection of
claim 1 under 35 U.S.C. § 103 as unpatentable over Bailey and Lavery.
Claims 3, 5, 6, and 8-11 fall with claim 1.
7
Appeal2018-003079
Application 14/193,145
Rejection II
The Anticipation Rejection
The Examiner finds that Bailey discloses a coated valve assembly
including, inter alia, an aluminum sleeve and spool arrangement, as shown
in Bailey's Figure 10a, wherein the inner surface of the sleeve and the outer
surface of the spool have a hardened surface and a diamond-like coating.
See Final Act. 6-7 (citing Bailey, paras. 167, 168, 191,232,244,245,257).
The Examiner further finds that because the phrase "fuel control metering"
does not connote a particular structure, the phrase "fuel control metering" is
"considered intended use limitations of the valve." Id. at 8.
Appellants argue that even though Bailey broadly relates to
"applications related to oil and gas drilling," Bailey does not disclose the
"particular type of sleeve-spool valve assembly" claimed, namely, "a fuel
control metering valve sleeve and a fuel control metering valve spool." Br.
9.
We do not agree with the Examiner's position that the phrase "fuel
control metering" in independent claim 21 is directed to an intended use of
the claimed valve. Rather, we construe the phrase "fuel control metering" to
limit the claimed valve to a specific type of valve, namely, a "fuel control
metering valve," which is a valve that controls fuel flow by incrementally
shifting in a stepped manner between open and closed positions. 7
7 See Kimpel, col. 1, 11. 12-13, 16-18, Abstract; see also
http://www. solidswiki. com/index. php ?title= Metering_ Valves (last visited
November 16, 2018) (A metering valve "is a valve with infinite positioning
and variable control that is capable of regulating the flow of fluid. A needle
valve is a type of metering valve.").
8
Appeal2018-003079
Application 14/193,145
Although Bailey discloses that there are many type of valve devices,
such as, a "check valve, gate valve, globe valve, ball valve, needle valve,
and plug valve," Bailey does not explicitly disclose a "metering valve," as
described supra. Bailey, para. 147. The Examiner's position that any of
Bailey's valve devices constitutes a "metering valve" does not take into
account the particularity of a "metering valve" in that it incrementally shifts
in a stepped manner between open and closed positions.
Nonetheless, we note that Bailey discloses a "needle valve." Bailey,
para. 14 7. As an artisan must be presumed to know something about the art
apart from what the references disclose, a person of ordinary skill in the art
of valves would have readily understood that a needle valve is a type of
metering valve. See In re Jacoby, 309 F.2d 513,516 (CCPA 1962).
Accordingly, Bailey's "needle valve" device constitutes a fuel control
"metering valve" that includes a fuel control metering valve sleeve and a
fuel control metering valve spool. Therefore, for the foregoing reasons, we
sustain the anticipation rejection of claims 21, 23, 24, and 26-30 based upon
Bailey.
However, we denominate our affirmance as a NEW GROUND OF
REJECTION pursuant to 37 C.F.R. § 4I.50(b), because our analysis relies
upon facts and reasoning that the Examiner did not use.
The Obviousness Rejection
Appellants have not presented arguments for the patentability of
claims 23, 24, and 26-30 apart from claim 21. Therefore, in accordance
with 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv), we select claim 21 as the representative
9
Appeal2018-003079
Application 14/193,145
claim to decide the appeal of the rejection of these claims, with claims 23,
24, and 26-30 standing or falling with claim 1.
The Examiner finds that Bailey discloses most of the limitations of
independent claim 21, but fails to disclose a fuel control "metering valve."
Final Act. 6-8. The Examiner then finds that Kimpel discloses "a fuel
control metering valve having a spool (22) in a sleeve (20) as known to be
used in downhole tools used in oil and gas applications." Id. at 8 (citing
Kimpel, Background of the Invention). Thus, the Examiner concludes that
"[i]t would have been obvious to one having ordinary skill in the art to
modify the invention of Bailey, such that the valve was a fuel control
metering valve, as taught by Kimpel, to be known to be valves used in oil
and gas applications such as Baileys." Id.
Appellants once more argue that because Bailey disparages using
aluminum in the Background section, Bailey teaches away from using
aluminum to form the sleeve and spool of its valve arrangement. Br. 9-10
( citing Bailey, para. 9). Appellants further argue that Bailey does not
disclose a fuel control "metering valve." Id. at 11.
We are not persuaded by Appellants' arguments for the same reasons
discussed supra in Rejection I. Appellants do not persuasively show error in
the Examiner's findings or identify any flaw in the Examiner's reasoning in
combining the disclosures of Bailey and Kimpel.
Accordingly, we sustain the rejection of claims 21, 23, 24, and 26-30
under 35 U.S.C. § 103 as unpatentable over Bailey and Kimpel.
10
Appeal2018-003079
Application 14/193,145
Rejection III
In regards to the rejection of claim 7, the Examiner's reliance on the
disclosure of Hiroyuki does not remedy the deficiency of Bailey discussed
supra in the anticipation rejection based upon Bailey in Rejection I. See
Final Act. 8-9. Accordingly, we do not sustain the rejection of claim 7 over
the combined teachings of Bailey and Hiroyuki.
As to the rejection of claim 25, Appellants rely on the same arguments
discussed supra in the anticipation rejection based upon Bailey in Rejection
II. See Br. 11. Hence, for the same reasons, we sustain the rejection under
35 U.S.C. § 103(a) of claim 25 as unpatentable over Bailey and Hiroyuki.
However, as claim 25 depends from independent claim 21, we
denominate our affirmance as a NEW GROUND OF REJECTION pursuant
to 37 C.F.R. § 4I.50(b), because our analysis relies upon facts and reasoning
that the Examiner did not use.
NEW GROUND OF REJECTION
Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Bailey, Lavery, and Hiroyuki.
We adopt the Examiner's findings and reasoning with respect to the
combination of Bailey and Lavery. See Final Act. 4---6. 8 However, the
combined teachings of Bailey and Lavery do not disclose a hardened surface
having a surface roughness "of less than or equal to about 0.000004 inches,"
8 We do not adopt the Examiner's construction of the phrase "pressure
relief." See Final Act. 5.
11
Appeal2018-003079
Application 14/193,145
as called for by claim 7. Hiroyuki9 discloses a hardened surface of an
aluminum base material having a surface roughness of less than or equal to
about 0.000001 inches (0.03 microns). Hiroyuki, para. 12. As such, it
would have been obvious for a person of ordinary skill in the art to provide
Hiroyuki's surface roughness of less than or equal to about 0.000001 inches
to the hardened aluminum surface of Bailey, as modified by Lavery, in order
to prevent inducing a crack in a coating applied thereto. See id.
DECISION
The Examiner's decision to reject claims 1, 3, 5, 6, and 8-11 under 35
U.S.C. § 102 as anticipated by Bailey is reversed.
The Examiner's decision to reject claims 1, 3, 5, 6, and 8-11 under 35
U.S.C. § 103 as unpatentable over Bailey and Lavery is affirmed.
The Examiner's decision to reject claims 21, 23, 24, and 26-30 under
35 U.S.C. §§ 102 and 103 is affirmed.
The Examiner's decision to reject claim 7 under 35 U.S.C. § 103 as
unpatentable over Bailey and Hiroyuki is reversed.
The Examiner's decision to reject claim 25 under 35 U.S.C. § 103 as
unpatentable over Bailey and Hiroyuki is affirmed.
For the reasons discussed above, we denominate our affirmance of the
rejection of claims 21, 23, 24, and 26-30under 35 U.S.C. § 102 and the
rejection of claim 25 under 35 U.S.C. § 103 as new grounds of rejection
pursuant to 37 C.F.R. § 4I.50(b).
9 We derive our understanding of this reference from the English language
translation contained in the electronic record of this application. All
references to the text of this document are to portions of the translation.
12
Appeal2018-003079
Application 14/193,145
We enter a new ground of rejection of claim 7 under 35 U.S.C.
§ 103(a) as unpatentable over Bailey, Lavery, and Hiroyuki.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 4I.50(b). Section 4I.50(b) provides "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the [E]xaminer, in which event the prosecution will be
remanded to the [E]xaminer. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the [E]xaminer, overcomes the new ground of rejection
designated in the decision. Should the [E]xaminer reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
13
Appeal2018-003079
Application 14/193,145
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART; 37 C.F.R. § 4I.50(b)
14