882 F.3d 1107 (Fed. Cir. 2018), 2017-1434, In re Hodges

Docket Nº:2017-1434
Citation:882 F.3d 1107
Opinion Judge:O’Malley, Circuit Judge.
Party Name:IN RE: Kenneth Andrew HODGES, Appellant
Attorney:Steven R. Leblanc, Dority & Manning, P.A., Greenville, SC, argued for appellant. Meredith Hope Schoenfeld, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, argued for appellee Andrei Iancu. Also represented by Nathan K. Kelley, Thomas W. Krause, Philip J. Warrick.
Judge Panel:Before Lourie, O’Malley, and Wallach, Circuit Judges. Wallach, Circuit Judge, concurring-in-part and dissenting-in-part.
Case Date:February 12, 2018
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit

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882 F.3d 1107 (Fed. Cir. 2018)

IN RE: Kenneth Andrew HODGES, Appellant

No. 2017-1434

United States Court of Appeals, Federal Circuit

February 12, 2018

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[Copyrighted Material Omitted]

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Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. 12/906,222.

Steven R. Leblanc, Dority & Manning, P.A., Greenville, SC, argued for appellant.

Meredith Hope Schoenfeld, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, argued for appellee Andrei Iancu. Also represented by Nathan K. Kelley, Thomas W. Krause, Philip J. Warrick.

Before Lourie, O’Malley, and Wallach, Circuit Judges.


O’Malley, Circuit Judge.

Appellant Kenneth Andrew Hodges appeals from examination of U.S. Patent Application No. 12/906,222 (" ’222 application" ), in which the Patent Trial and Appeal Board (" Board" ) affirmed the examiner’s rejection of all claims as anticipated and/or obvious. See Ex Parte Kenneth Andrew Hodges, No. 2014-009710, 2016 WL 6441834 (P.T.A.B. Oct. 28, 2016). For the following reasons, we reverse the Board’s anticipation determinations, vacate its obviousness determinations, and remand for further proceedings.

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A. The ’222 Application

Entitled " System and Method for Operating a Drain Valve," the ’222 application is directed to a valve assembly for draining contaminants, condensation, and other fluids that adversely affect the efficiency and function of a pressurized system. As shown in Figure 1 below, the claimed assembly includes a single " valve body" 12, which defines an inlet seat 18 and an outlet seat 20 downstream thereto; two valves 14 and 16; and a sensor 40 for measuring fluid pressure between the valves:

(Image Omitted)

J.A. 48-52, 60. The ’222 application explains that the sensor generates a " signal" 42 reflective of the fluid pressure in the chamber between the valves and transmits the signal to an indicator 44, such as a pressure gauge. J.A. 51. The signal can then be compared to a predetermined limit to generate a control signal, which, in turn, can be used to control or adjust one or more of the two valves to drain fluid as appropriate. J.A. 51-52.

The ’222 application contains 20 claims,1 but the parties agree that the claims at issue on appeal stand or fall with independent claim 1, which recites:

A drain valve comprising: a. a valve body, wherein said valve body defines an inlet seat and a first outlet seat downstream of said inlet seat;

b. a first member, wherein said first member has a first position in sealing engagement with said first outlet seat and a second position separated from said first outlet seat;

c. a second member, wherein said second member has a first location in sealing engagement with said inlet seat; and

d. a sensor downstream of said inlet seat, wherein said sensor generates a signal reflective of a pressure downstream of said inlet seat.

J.A. 56 (emphases added).

B. The Patent Office’s Prior Art Rejections

Two prior art references are at issue on appeal: (1) U.S. Patent No. 5,531,241 to Rasmussen (" Rasmussen" ), and (2) U.S. Patent No. 3,262,464 to Frantz (" Frantz" ).

Rasmussen discloses " [a] condensate removal device" that senses pressure levels within the system and purges condensate in response to such levels. Rasmussen col.

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2, l. 41; see id. col. 2, ll. 42-54. In particular, a sensor within the device measures pressure changes corresponding to condensate levels in the reservoir. Id. col. 4, ll. 21-28. When the sensor measures a high condensate level, it provides a signal that causes a plunger to move away from a valve seat, thereby opening a drain path for the condensate. Id. col. 4, ll. 40-48, 49-52; see also id. fig.7 (depicting a pressurized system that includes, inter alia, drain valve 10, inlet port 17A, and an unlabeled valve above inlet port 17A).

Frantz discloses " valves for draining condensate from pressurized reservoirs." Frantz col. 1, ll. 11-12. One valve is automatic and the other is manual, see id. col. 2, ll. 16-19, and both are " [m]ounted at specified positions in the body," id. col. 2, l. 15. Although Frantz teaches that " it ordinarily will be preferred to actuate the automatic valve by fluid pressure," id. col. 2, ll. 42-44, it also discloses an " air-actuated automatic valve [that] must have [a] second element and seat to enable it to limit the duration of the draining," id. col. 2, ll. 49-51. 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." Id. col. 2, ll. 51-54.

The examiner found that: (1) Rasmussen anticipates claims 1-3, 5-8, and 15-20 of the ’222 application under 35 U.S.C. § 102(b), (2) Frantz anticipates claims 1, 2, 9, 10, 14-18, 20, and 21 under § 102(b), and (3) the two references collectively render all claims obvious under § 103.2 The Board affirmed the examiner’s rejections, and Hodges appealed the Board’s ruling with respect to claims 1-3, 5-8, and 21 only. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).


A. The Board’s Finding that Rasmussen Anticipates the Claims Is Unsupported by Substantial Evidence

As described above, the Board affirmed the examiner’s rejection of certain claims as anticipated by Rasmussen. A prior art reference anticipates a patent’s claim when the four corners of the document " describe every element of the claimed invention, either expressly or inherently, such that a person of ordinary skill in the art could practice the invention without undue experimentation." Spansion, Inc. v. Int’l Trade Comm’n, 629 F.3d 1331, 1356 (Fed. Cir. 2010) (internal quotation marks omitted). " Anticipation is a question of fact that we review for substantial evidence." Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1341 (Fed. Cir. 2016); see also

Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 449 (Fed. Cir. 2015) (noting that we review the Board’s " factual findings for substantial evidence and its legal conclusions de novo" ).

At issue on appeal is claim 1’s recitation of an " inlet seat" that is " define[d]" by a " valve body." The examiner found that Rasmussen inherently discloses such an inlet seat within an unlabeled valve depicted in Rasmussen’s Figure 7 above inlet port 17A. See Hodges, 2016 WL 6441834, at *2 (summarizing, and tacitly agreeing with, the examiner’s finding that Rasmussen

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discloses " an inlet seat (within the valve above condensate inlet port 17A)" ); see also J.A. 117 (examiner stating in his final rejection that Rasmussen’s unlabeled valve " would inherently include a member (second member) that seals against a seat (inlet seat)" ); J.A. 200 (examiner stating the same in a non-final rejection); J.A. 206 (examiner stating in a non-final obviousness rejection that Rasmussen discloses an " inlet seat (i.e., the seat inherent to the valve above [inlet port] 17A)" ). Hodges conceded this point during examination, and the Patent Office does not allege that the Board erred in this regard.3

Thus, as the Board noted, the propriety of the examiner’s rejection turns on whether Rasmussen’s unlabeled valve containing the inlet seat is " define[d]" by Rasmussen’s valve body— i.e., whether it " can properly be considered to be a part of Rasmussen’s drain valve body." Hodges, 2016 WL 6441834, at *2. The Board found that it could. In particular, the Board found that Rasmussen’s unlabeled valve is " connected to, and therefore allow[s] or prevent[s] flow into, inlet port 17A," and that the seat of the unlabeled valve would therefore " be ‘an internal part’ of and contained within the ‘outer casing’ of drain valve 10." Id. That finding is unsupported by substantial evidence.

As shown in the annotated version of Rasmussen’s Figure 7 included in Hodges’ opening brief, the unlabeled valve (shown in red above inlet port 17A) resides above the housing 11 that contains the other valve components (shown in yellow):

(Image Omitted)

Appellant’s Br. 22 (citing Rasmussen fig.7 (annotated) );

see also Appellee’s Br. 5 (annotating Rasmussen’s Figure 7 to point to the same valve); J.A. 118 (examiner’s rejection pointing to the same valve). As shown, the unlabeled valve— and, therefore,

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the inlet seat therein4 — is not " an internal part" of and " contained within" the outer casing of the drain valve. To the contrary, Figure 7 clearly shows that the valve is external to and outside Rasmussen’s casing. Accordingly, the only permissible factual finding that can be drawn from Rasmussen is that the inlet seat within the unlabeled valve is not " define[d]" by the " valve body," as required by the claims.5 See Owens Corning v. Fast Felt Corp., 873 F.3d 896, 903 (Fed. Cir. 2017) (reversing the Board’s obviousness determination that was contrary to the " one permissible factual finding" that could be drawn from the record).

As sole support for its contrary findings, the Board asserted that " the positioning of Rasmussen’s unlabeled valve is similar to the positioning of [the ’222 application’s] second member 16, which extends away from valve body 12, ostensibly to allow second member 16 to be controlled." Hodges, 2016 WL 6441834, at *2 (emphasis added). The Board neither supported its assertion of similarity, however, nor explained how the positioning of the unlabeled valve in Rasmussen’s Figure 7 would enable a skilled artisan to " practice the invention without undue experimentation." Spansion, 629 F.3d at 1356 (internal quotation marks omitted). And, even if Rasmussens unlabeled valve is ostensibly " similar to" the222 applications second member 16 in some respects, it is different in...

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