Andreas Stihl AG & Co. KG

Patent Trials and Appeals Board

May 7, 2020

15178916 - (D) (P.T.A.B. May. 7, 2020)

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.
15/178,916 06/10/2016 Jens Ramler A 95 466 3697
30008 7590 05/07/2020
GUDRUN E. HUCKETT DRAUDT
SCHUBERTSTR. 15A
WUPPERTAL, 42289
GERMANY
EXAMINER
MACKAY-SMITH, SETH WENTWORTH
ART UNIT PAPER NUMBER
3753
MAIL DATE DELIVERY MODE
05/07/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JENS RAMLER, FELIX MAYER,
HIROYUKI OKA, and HIDEKI WATANABE
Appeal 2019-006043
Application 15/178,916
Technology Center 3700
Before MICHAEL J. FITZPATRICK, ERIC C. JESCHKE, and
AMANDA F. WIEKER, Administrative Patent Judges.

WIEKER, Administrative Patent Judge.
DECISION ON APPEAL

Appeal 2019-006043
Application 15/178,916

2
STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1 and 3–17, which constitute all claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
The claims are directed to a solenoid valve with a preassembled valve
unit. Spec. 15. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A solenoid valve for a fuel system, the solenoid valve
comprising:
a housing comprising an inner shoulder;
an electric coil disposed in the housing;
a magnetic core disposed in the housing;
a valve base body comprising a valve seat;
a valve member;
a valve spring;
an armature plate;

1 In this Decision, we refer to the Specification dated June 10, 2016
(“Spec.”), the Non-Final Action dated December 3, 2018 (“Non-Final
Act.”), the Appeal Brief dated May 21, 2019 (“Appeal Br.”), the Examiner’s
Answer dated June 19, 2019 (“Ans.”), and the Reply Brief dated August 8,
2019 (“Reply Br.”).
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Andreas Stihl AG
& Co. KG. Appeal Br. 1.
Appeal 2019-006043
Application 15/178,916

3
wherein the valve member, the valve spring, the
armature plate, and the valve base body comprising
the valve seat are all connected captively to each
other outside of the housing to form an integral
preassembled valve unit;
wherein in the integral preassembled valve unit,
outside of the housing, the valve base body
comprising the valve seat is loosely and captively
secured with clearance between the valve member and
the armature plate;
wherein the solenoid valve is configured such that
the integral preassembled valve unit is insertable in an
insertion direction from outside of the housing into an
open end of the housing without disassembling the
integral preassembled valve unit;
wherein the integral preassembled valve unit is
secured in the housing and is supported, in the
insertion direction, only at the inner shoulder of the
housing;
wherein the valve spring, when the integral
preassembled valve unit is secured inside the housing,
contacts the inner shoulder of the housing; wherein
the armature plate forms, together with the magnetic
core, a magnetic circuit;
wherein the valve member is supported on the
armature plate;
wherein the valve seat comprises an outlet and the
valve member is configured to be switched to open
and close the outlet;
wherein, when the electric coil is supplied with
current, a magnetic field is generated in the magnetic
core and the armature plate is attracted by the
magnetic core into an operative valve position;
Appeal 2019-006043
Application 15/178,916

4
wherein the valve spring is configured to return the
armature plate from the operative valve position into a
rest position when the coil is currentless.
Appeal Br. 17–18 (Claims Appendix) (emphasis added).
REFERENCES
The Examiner relies upon the following prior art:
Name Reference Dates
Yamada et al.

US 4,678,160 Issued July 7, 1987
Filed July 13, 1986
Tanari US 2013/0112904 A1 Published May 9, 2013
Filed July 19, 2011
Ams et al. US 8,814,135 B2 Issued Aug. 26, 2014
Filed Aug. 26, 2010
REJECTION
The Examiner maintains that claims 1 and 3–17 are unpatentable
under 35 U.S.C. § 103 over Tanari, Ams, and Yamada. Non-Final Act. 3–8.
OPINION
The Examiner found that Tanari teaches valve 200 with “valve base
body (201) comprising a valve seat (207), a valve member (206), a valve
spring (212), and an armature plate (211), wherein the valve member (206),
the valve spring (212), [and] the armature plate (211) . . . are all connected
captively to each other.” Non-Final Act. 3–4. The Examiner further found
that Ams teaches “a housing (22, 30) with an inner shoulder . . . against
which the valve spring (36) and valve body (20) that carries the seat (17) are
inserted,” and that Yamada teaches “a valve stem (9) that attaches an
armature (4) to a valve member (12) that seats on a valve seat (13) on the
outlet of a valve body (8, 10), thus capturing the valve body between the
Appeal 2019-006043
Application 15/178,916

5
armature and valve member.” Id. at 5. The Examiner found that it would
have been obvious to a person of ordinary skill in the art to modify Tanari
“such that an inner shoulder provides a stop surface for the spring and valve
body as taught by Ams,” so as to reduce the number of parts, and also “to
include a valve member that is separated from the armature and return spring
by a body and seat and attached via a stem as taught by Yamada,” so as to
minimize heat transfer. Id. Finally, and of most pertinence to our review,
the Examiner found:
The device of Tanari in view of Ams and Yamada is read
as teaching elements that may be preassembled – as the
spring (212) of Tanari and valve body (20) abutting the housing
shoulder (as at 22) of Ams, where the armature (212) of Tanari
is attached as taught by Yamada via a stem (9) to a remote
valve element (12) to seat (at 13) on the opposite side of the
valve body (20) of Ams – and inserted as an assembly.
Id. at 6.
With respect to claims 1, 14, and 17—all pending independent
claims—Appellant argues, inter alia, that neither Tanari nor Ams discloses
the “integral preassembled valve unit,” as claimed. Appeal Br. 10–11
(claim 1), 14 (claims 14 and 17).
The Examiner responds that “forming an integral unit from previously
separable parts is not patentably distinct. Furthermore, these assembly
method steps only may be read as requiring the formation of a particular
type of structure.” Ans. 8 (citing MPEP § 2113 (product-by-process)). The
Examiner also states that the Non-Final Action “specifically discussed
preassembly as taught by the combination of art.” Id. (citing Non-Final
Act. 6); but see Ans. 9 (“Tanari is relied upon for this limitation, not Ams.”).
Appeal 2019-006043
Application 15/178,916

6
In the Reply Brief, Appellant argues that the MPEP does not support
the Examiner’s position that it would have been obvious to integrate parts
that must be “taken and combined from several different references where
there is no prior single unit disclosed.” Reply Br. 2 (citing MPEP
§ 2144.04(V)(B)). According to Appellant, the Examiner’s rejection
requires modifying Tanari’s basic configuration to accommodate features of
Yamada and Ams, but “neither Tanari nor Yamada nor Ams suggests an
integral preassembled valve unit as claimed.” Id. Appellant also argues that
the claimed valve unit provides “simple assembly . . . such that no
adjustment or adaptation of the pretension of the valve spring is required,”
and that these “technical effects and advantages are not apparent from the
cited prior art references.”3
Having reviewed the record, we determine that Appellant has the
better position. In the Non-Final Action, the Examiner states that the device
of Tanari, as modified by Ams and Yamada, “is read as teaching elements
that may be preassembled . . . and inserted as an assembly,” but fails to
identify any basis for this conclusion. Non-Final Act. 6. The Examiner does
not provide any evidence or reasoning in support, nor does the Examiner
address the “integral” claim language. Id. Moreover, even if the prior art
“may be” preassembled, as the Examiner asserts, id., the mere possibility
does not demonstrate obviousness of the claimed “integral preassembled
valve unit.”

3 We do not consider these Reply Brief arguments to be new or improper,
because they are responsive to reasoning presented for the first time in the
Examiner’s Answer. Compare Non-Final Act. 6, with Ans. 8.
Appeal 2019-006043
Application 15/178,916

7
Additionally, we determine that the Examiner’s reasoning provided in
the Answer is also inadequate. The Examiner states that “forming an
integral unit from previously separable parts is not patentably distinct.”
Ans. 8. Although the Examiner does not identify any support for this
position, we agree with Appellant that MPEP § 2144.04(V)(B) pertains to
this reasoning. See MPEP § 2144.04(V)(B) (discussing legal precedent, e.g.,
In re Larson, 340 F.2d 965 (CCPA 1965), for the proposition that it may be
obvious to make integral certain previously separable structures). Reliance
on legal precedent as a source of supporting rationale, however, is
appropriate only “if the facts in a prior legal decision are sufficiently similar
to those in an application.” Id. § 2144(III). Moreover, this “should not be
treated as [a] per se rule[], but rather must be explained and shown to apply
to the facts at hand.” Id. § 2144; see also In re Eli Lilly & Co., 902 F.2d
943, 947–48 (Fed. Cir. 1990) (explaining that a review of cited precedent
“shows the absence of detailed all-purpose criteria for applying the law of
obviousness to every factual situation. No one precedent or rationale can be
controlling in all possible areas of human creativity. . . . The obligation of
the decision-maker is to apply the law consistently to the evidence for each
new invention. All relevant facts must be considered, while recognizing that
it is inappropriate to ‘squeez[e] new factual situations into pre-established
pigeonholes.’”).
Here, the Examiner provides no reasoning to support the conclusion
that “forming an integral unit from previously separable parts is not
patentably distinct.” Ans. 8. The Examiner applies this statement as a per se
rule, without analysis. For example, the Examiner does not provide any
persuasive reasoning to show that a person of ordinary skill in the art would
Appeal 2019-006043
Application 15/178,916

8
have found it obvious to integrate and preassemble a valve unit when
Tanari’s device is modified to include “an inner shoulder [that] provides a
stop surface for the spring and valve body as taught by Ams” and “a valve
member that is separated from the armature and return spring by a body and
seat and attached via a stem as taught by Yamada,” or that the so-modified
valve unit would have been expected to operate successfully if made integral
and preassembled. Ans. 8; Non-Final Act. 5.
The Examiner’s citation to MPEP § 2113, which concerns product-by-
process limitations, is likewise insufficient. Ans. 8. Even if “preassembled”
is considered to define a method of production, the Examiner does not
demonstrate persuasively that the prior art suggests the product substantially
as claimed, i.e., an integral valve unit. As discussed above, the Examiner
provides no persuasive reasoning to support the conclusion that this would
have been obvious to a person of ordinary skill in the art. Non-Final Act. 6;
Ans. 8.
The “integral preassembled valve unit” is recited in each of
independent claims 1, 14, and 17, and likewise is incorporated in each of
dependent claims 3–13, 15, and 16. For the foregoing reasons, we do not
sustain the Examiner’s rejection.
CONCLUSION
The Examiner’s rejection is reversed.
Appeal 2019-006043
Application 15/178,916

9
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § References Affirmed Reversed
1, 3–17 103 Tamari, Ams,
Yamada
1, 3–17

REVERSED