In re Self

• Decision Date: 22 April 1982
• Docket Number: Appeal No. 81-542.
• Citation: 671 F.2d 1344
• Parties: In re Richard E. SELF.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

671 F.2d 1344

In re Richard E. SELF.

Appeal No. 81-542.

United States Court of Customs and Patent Appeals.

February 18, 1982.

Rehearing Denied April 22, 1982.

Roland T. Bryan, Stamford, Conn., for appellant.

Joseph F. Nakamura, Sol., John W. Dewhirst, Associate Sol., Washington, D. C., for Patent and Trademark Office.

Before MARKEY, Chief Judge, and RICH, BALDWIN, MILLER and NIES, Judges.

RICH, Judge.

This appeal is from the decision of the United States Patent and Trademark Office (PTO) Board of Appeals (board) sustaining final rejections of various claims, and making a new rejection under 37 CFR 1.196(b), in appellant's application serial No. 809,645, for reissue of U. S. Patent 3,514,074 for "High Energy Loss Fluid Control." We affirm.

Background

Two problems which have long vexed the industrial control valve art are severe noise and valve damage due to cavitation and erosion. These problems are most serious in "severe service" applications, such as in refineries, chemical plants, and nuclear power plants. The aerodynamic noise generated at such facilities is often so great that it constitutes not only an occupational health hazard but also a public nuisance. Cavitation and erosion can drastically shorten valve life. Cavitation is especially destructive. It occurs when a sudden decrease in pressure causes gas bubbles in a very rapidly flowing fluid, and then a sudden increase in pressure causes the bubbles to collapse. The resultant force can tear away the inside surfaces of a valve.

The invention is a fluid flow control device which reduces the velocity of fluids passing through it by forcing them through long, narrow channels which may have many abrupt turns. The velocity-reduction means specifically comprises a stack of abutting rings having grooves carved on their faces.^* When stacked, the rings form a thick-walled hollow cylinder whose walls are penetrated by many tortuous, narrow channels. This configuration is said to prevent erosion-producing cavitation in fluids traversing the cylinder wall, and decreases noise which might otherwise attain harmful levels. Evidence of record tends to indicate that appellant's flow control devices are a tremendous commercial success.

Appellant filed a patent application for his fluid control device on May 6, 1968, and on May 26, 1970, was issued U. S. Patent 3,514,074. This patent has since been challenged in at least three lawsuits. In Control Components, Inc. v. Valtek, Inc., No. 77-819 (S.D.Tex., filed May 26, 1977) (the Texas trial), a jury found patent claims 7, 14, and 17 unobvious, and claim 17 infringed. The findings concerning claim 17 were appealed and upheld. 609 F.2d 763 (5th Cir. 1980). The remaining two actions, according to appellant, are as yet unresolved.

On June 24, 1977, appellant filed the reissue application containing original patent claims 1 through 23 and new claims 45 through 65.

The References

U. S. Patent 1,243,134 to Binckley discloses a discharge valve which prevents high-pressure water released from behind a dam from pouring out too quickly and thus causing noise, vibration, and erosion by entrained sand and silt. Velocity reduction is achieved by a grid-like baffle comprised of stacked disks of spaced, concentric annuli H-shaped in cross-section. The stacked disks form a cylinder, and water flow through the baffle is generally parallel to the axis of this cylinder. A hydraulically-controlled piston or plug within the cylinder varies the length of the path water must travel through the baffle in proportion to water inlet pressure. The greater the inlet pressure, the more baffle the water must traverse, and the more its velocity is reduced. Thus, water outlet velocity is maintained constant despite variations in inlet pressure.

Schlegel's German patent application 1,008,977 discloses a valve and restrictor which reduce the pressure of high-pressure steam. The restrictor comprises stacked plates, each having concentric annular gapped ridges which extend into spaces between gapped ridges on adjacent plates. The steam flows generally outward while being deflected at right angles by each obstruction it encounters, thus reducing its velocity.

U. S. Patent 3,397,794 to Toth et al. (Toth) describes a filter which abruptly alters the velocity of fluid to be filtered, thus inertially separating out entrained solids. The filter is a plurality of stacked annular disks. Ridges on the surface of each disk project outwardly from the inner wall and inwardly from the outer wall of each disk to form a baffle. Fluid enters through an aperture in the outer wall, travels generally along an arc of the disk where the ridges cause several abrupt turns, and then exits through an aperture in the inner wall. There are a plurality of apertures in each wall.

The Rejections

The board sustained rejections of claims 45 and 48-52 under 35 U.S.C. § 251 as expanding the scope of the claims of a patent more than two years after it had issued. It also sustained rejections under 35 U.S.C. § 102 of claims 22, 45, and 46 as anticipated by Binckley, and claims 22, 23, and 65 as anticipated by Schlegel. In addition, the board entered, under 37 CFR 1.196(b), a new § 102 rejection of claims 1-11, 13, 20, 21, and 22 as anticipated by Toth.

OPINION

The § 251 Rejection

The board sustained the examiner's rejection of claims 45 and 48-52 under § 251, the fourth paragraph of which provides:

No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.

Here, the interval between the grant of the original patent and the application for reissue is nearly seven years, and so no claim broader in any respect than the original claims may now be allowed. In re Ruth, 47 CCPA 1014, 1016, 278 F.2d 729, 730, 126 USPQ 155, 156 (1960).

The board refused to allow the appealed claims because they call for "passageways" rather than "passageway grooves," the phrase used in the original claims. The board regarded the former phrase as manifestly broader than the latter. For example, tubes embedded in the faces of the annular disks would be "passageways" but not "passageway grooves."

Appellant challenges the board's position by contending that the interchangeable use of the two terms in the specification and claims of the original patent demonstrates that he considered them to be equivalent. He further contends that the jury's finding in the Texas trial, that a device having "passageways" but not "passageway grooves" infringed the original patent, shows the equivalence of these terms. Finally, he alleges that none of the new claims is impermissibly broad because none is broader than original patent claim 22.

None of these contentions overcomes the § 251 rejection. Original claim 22 is broad, and uses the term "passageways," but these passageways are in turn limited to those having "a substantial number of abrupt turns between the inlet and outlet portions thereof," a limitation not appearing in any of the appealed claims. Thus, the new claims are broader than claim 22 in this respect, and there is no claim in the original patent which is as broad as the new claims. Equally lacking in factual support is appellant's argument that the treatment of the two expressions in question as equivalent in the original specification and claims shows their equivalence. With respect to claim language, claim 1 refers to "passageway grooves" twice, and then refers to "said passageways." Axiomatic grammar and semantics dictate that "passageways," occurring as it does after "said," serves only to identify an antecedent reference, the scope or meaning of which it does not alter. In the specification, the terms are substituted for one another liberally, but this fact alone does not establish their equal breadth in the claims, which alone is material. For example, one may refer to an automobile as either a motor vehicle or car, and use the terms interchangeably; yet the former is manifestly far broader than the latter. Similarly, here, the unadorned observation that a component of the invention is referred to with one term, then the other, says nothing about the relative breadth of those terms. This is certainly true where, as here, the generally understood meaning of "passageway grooves" is narrower than that of "passageways."

Finally, the jury finding of infringement is too ambiguous to be probative. It is unclear whether the jury found that the device literally infringed appellant's claims, or infringed under the so-called doctrine of equivalents. In any event, appellant's proffer of evidence that a single device infringes both the original and new claims has little bearing on whether the new claims embrace any conceivable apparatus which would not have infringed the original patent, which is the test we apply under In re Ruth, supra.

The § 102 Rejection on Binckley

The board sustained rejections of claims 22, 45, and 46 as anticipated under § 102 by Binckley. These claims read:

22. In a high energy loss fluid control device having means defining a fluid flow passage, the improvement of means in said passage subdividing and confining fluid flow through the passage into a plurality of individual passageways, each having a long length to diameter ratio and a substantial number of abrupt turns between the inlet and outlet ends thereof creating a frictional drag and pressure drop on fluid flowing therethrough to dissipate potential energy of the fluid and control velocity of the fluid.

45. In a high energy loss flow control device for installation in a fluid transfer system where a potentially destructive or noise generating fluid pressure differential exists:

a rigid annular structure comprising members having abutting faces and enclosing therebetween a plurality of individual passageways in parallel flow at spaced positions, each passageway configurated along its length (1) to have at least

...