IP Law Daily Anticipation rejection of application for drain valve assembly reversed over ‘strained’ construction
Monday, February 12, 2018

Anticipation rejection of application for drain valve assembly reversed over ‘strained’ construction

By Thomas Long, J.D.

The USPTO’s rejection, on anticipation grounds, of eight claims of an application for a patent disclosing a drain valve assembly was based on improper and "strained" construction of key claim terms and was not supported by substantial evidence, the U.S. Court of Appeals for the Federal Circuit has decided. The court reversed the Patent Trial and Appeal Board’s decision affirming the examiner’s anticipation findings. In addition, the Board rejection of the claims on obviousness grounds was not supported by factual findings or an explanation of how cited prior art could be modified to arrive at the invention disclosed by the application. Therefore, the obviousness determinations were vacated and remanded (In re Hodges, February 12, 2018, O’Malley, K.).

Application at issue. U.S. Patent Application No. 12/906,222 ("the ’222 application"), titled "System and Method for Operating a Drain Valve," was directed to a valve assembly for draining contaminants, condensation, and other fluids that adversely affect the efficiency and function of a pressurized system. The primary claim at issue was independent claim 1, which, among other things, comprised a drain valve with a valve body that that "defined" an inlet seat. Relevant to the appeal, claim 1 also disclosed a "sensor" downstream of the inlet seat, which generated a signal reflective of the downstream pressure.

Prior art references: Two prior art references were at issue on appeal: (1) U.S. Patent No. 5,531,241 ("Rasmussen") and (2) U.S. Patent No. 3,262,464 ("Frantz"). Rasmussen disclosed a "condensate removal device" that sensed pressure levels within the system and purged condensate in response to such levels. A sensor within the device measured pressure changes corresponding to condensate levels in the reservoir. When the sensor measured a high condensate level, it provided a signal that caused a plunger to move away from a valve seat, thereby opening a drain path for the condensate. Frantz disclosed "valves for draining condensate from pressurized reservoirs," one automatic and one manual. Both were mounted at specified positions in the body. Although Frantz taught that "it ordinarily will be preferred to actuate the automatic valve by fluid pressure," it also disclosed an "air-actuated automatic valve [that] must have [a] second element and seat to enable it to limit the duration of the draining." In the air-actuated version, the automatic valve "preferably is a differential piston with its larger or enlarged head fixed to or rigid with the stem."

Examiner’s rejections. The examiner found that: (1) Rasmussen anticipated claims 1–3, 5–8, and 15–20 of the ’222 application under 35 U.S.C. §102(b), (2) Frantz anticipated claims 1, 2, 9, 10, 14–18, 20, and 21 under Section 102(b), and (3) the two references collectively rendered all claims obvious under Section 103. The Board affirmed the examiner’s rejections, and the applicant appealed, but only with respect to claims 1–3, 5–8, and 21.

Anticipation by Rasmussen. The Federal Circuit held that the Board’s finding that Rasmussen anticipated the claims was unsupported by substantial evidence. The examiner found that an unlabeled valve in a figure in Rasmussen inherently disclosed an inlet seat; the issue was whether this inlet seat was "defined" by a valve body, or that it could be considered a part of the drain valve body shown in Rasmussen. The Board found that it could, but the Federal Circuit disagreed. According to the court, the unlabeled valve—and therefore the inlet seat therein—was not an internal part of and contained within the outer casing of the drain valve. The only permissible factual finding that could be drawn from Rasmussen was that the inlet seat within the unlabeled valve was not defined by the valve body, as required to meet the limitations of claim 1 of the ’222 application. Therefore, the court reversed the anticipation findings with respect to claims 1–3 and 5–8.

Anticipation by Frantz. The court also held that the Board’s finding that Frantz anticipated the claims was unsupported by substantial evidence. The Board agreed with the examiner that a piston stem and piston head described in Frantz collectively constituted the claimed "sensor" in the ’222 Application because they sensed pressure, in that they moved in response to the pressure applied to them. The Board also accepted the examiner’s construction of "signal" as "an act, event, or the like that causes or incites some action." Therefore, the examiner and Board reasoned, the movement of the piston stem and head could be a "signal." This conclusion was based on an erroneous construction of "signal," the court determined. The specification of the ’222 application stated that the sensor "generates a signal," which, in turn, can be transmitted to a pressure gauge to provide a visual indication of the drain’s operability. The specification’s language did not suggest that the signal itself can constitute "movement of" the pressure gauge’s needle in response to the sensed pressure. The Board’s interpretation of the term "signal" was "strained," in the court’s view, and was unreasonably broad. Under any reasonable construction, Frantz’s piston stem and head could not be characterized as a sensor that generated the signal disclosed by the application. The court therefore reversed the Board’s anticipation determination based on Frantz as to claims 1–2 and 21.

Obviousness. Finally, the court held that the Board did not provide an adequate evidentiary basis or explanation for its determination that the claims would have been obvious. According to the Board, the claims would have been obvious over Rasmussen in view of Frantz because the unlabeled valve depicted in Rasmussen could be made part of Rasmussen’s drain valve body such that the seat of the unlabeled valve would be an internal part of and contained within the outer casing of the drain valve. However, the Board did not explain how Rasmussen’s drain valve assembly could be modified in this way. Because the Board made insufficient factual findings to support its rationale for concluding that the claims were obvious in light of the prior art references, the court vacated the obviousness rejections with respect to claims 1-3, 5-8, and 21, and remanded for further proceedings.

Concurring and dissenting opinion. Circuit Judge Evan J. Wallach wrote separately, concurring in part and dissenting in part. Judge Wallach agreed with the majority’s decisions to reverse the anticipation determination with respect to Frantz and to vacate and remand the obviousness determination. However, in Judge Wallach’s opinion, the majority was incorrect to reverse the Board’s decision with respect to Rasmussen. According to Judge Wallach, the court’s reversal of Rasmussen constituted an improper de novo inquiry. Although the Board’s decision could be considered deficient for failure to provide sufficient explanation, the correct course would be to vacate and remand, not reverse, Judge Wallach wrote.

The case is No. 2017-1434.

Attorneys: Steven R. LeBlanc (Dority & Manning, P.A.) for Kenneth Andrew Hodges. Meredith Hope Schoenfeld, Office of the Solicitor, USPTO, for Andrei Iancu.

MainStory: TopStory Patent FedCirNews

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