Carola Diebold et al.

Patent Trials and Appeals Board

Sep 16, 2019

14086904 - (D) (P.T.A.B. Sep. 16, 2019)

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.
14/086,904 11/21/2013 Carola Diebold 2179-0248 1963
10800 7590 09/16/2019
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
EXAMINER
TREMARCHE, CONNOR J.
ART UNIT PAPER NUMBER
3746
MAIL DATE DELIVERY MODE
09/16/2019 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 CAROLA DIEBOLD and ANDREAS APPERGER
____________

Appeal 2017-011794
Application 14/086,904
Technology Center 3700
____________

Before NINA L. MEDLOCK, BART A. GERSTENBLITH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3–6, 8–18, and 20–23. We have
jurisdiction under 35 U.S.C. § 6(b).
The invention relates to an adjusting device for a hydraulic axial
piston machine, in which “[t]he control piston is configured with a
differential face which is loaded by the system pressure and is formed by
two sections of the control piston with different diameters . . . .” Spec. 1, 4.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2012). Appellant identifies Robert Bosch GmbH as the
real party in interest. Appeal Br. 2.
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Claimed Subject Matter
Claims 1, 12, and 15 are the independent claims on appeal. Claim 1 is
illustrative and reproduced below:
1. An adjusting device for a hydraulic machine, comprising:
a control valve having a control piston configured to be
adjusted out of a basic position counter to the force of at least
one control spring;
an actuating piston delimiting an actuating space
configured to be connected to a control oil source or a control
oil drain via the control value, the control piston of the control
valve being configured with a differential face acted on directly
by a system pressure of the control oil source and being
arranged approximately coaxially with respect to the actuating
piston; and
a spring arrangement having at least one spring, the
spring arrangement being configured to load the control piston
in the opposite direction to the control spring, and to feed back
a position of the actuating piston to the control piston as a
feedback force,
wherein the action of the system pressure on the
differential face of the control piston generates a resultant
pressure force on the control piston in the same direction as the
load from the spring arrangement.
Appeal Br. 19 (Claims App’x).
Rejections2
I. Claims 22 and 23 are rejected under 35 U.S.C. § 112(b) as
indefinite for failing to particularly point out and distinctly claim the subject
matter regarded as the invention.

2 The Examiner initially rejected several claims under 35 U.S.C. §112(a)
(Final Act. 3 (mailed Nov. 1, 2016)), but withdrew the rejections in the
Answer (Ans. 18).
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II. Claims 1, 4–6, and 12–14 are rejected under 35 U.S.C. § 102(b) as
anticipated by Liesener (US 4,379,389, issued Apr. 12, 1983) (“Liesener”).
III. Claim 3 is rejected under 35 U.S.C. § 103(a) as patentable over
Liesener;
IV. Claims 8–11, 15–18, 20, and 21 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Liesener and Smith (US 6,684,636 B2, issued
Feb. 3, 2004) (“Smith”);
V. Claim 22 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Liesener and Lemmen et al. (US 6,725,658 B1, issued Apr. 27, 2004)
(“Lemmen”); and
VI. Claim 23 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Liesener, Smith, and Lemmen.
Summary of Decision
We AFFIRM–IN–PART.
ANALYSIS
Rejection I – Claims 22 and 23 under § 112(b)
The Examiner rejects claims 22 and 23 as being indefinite for failing
to particularly point out and distinctly claim the subject matter which the
inventor regards as the invention. Final Act. 3–4. In particular, the
Examiner finds the phrases “the second spring” (in claim 22) and “the other
spring” (in claim 23) indefinite because the claims are not clear as to which
spring they recite. Id. at 4. The Examiner explains that “[f]or examination
purposes[,] ‘the second spring’ will read as ‘a second spring’” and “‘the
other spring’ will read as ‘a second spring.’” Id.
Appellant expressly states that this rejection is not appealed. Appeal
Br. 11.
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Accordingly, we summarily affirm the rejection. In addressing the
obviousness rejections of claims 22 and 23 below, we adopt the Examiner’s
expressed understanding of “the second spring” (in claim 22) as “a second
spring” and “the other spring” (in claim 23) as “a second spring.” See Final
Act. 4 (discussing these terms).
Rejection II – Claims 1, 4–6, and 12–14 under § 102(b)
The Examiner finds that Liesener discloses each and every limitation
of claims 1, 4–6, and 12–14. Final Act. 4–9. In particular, the Examiner
finds that Liesener discloses a control piston “configured with a differential
face (Part 72) acted on directly by a system pressure of the control oil source
(Figure 3 shows [passage] 33 providing oil to [passage] 4[3] therefore a
pressure [PA] will act directly onto [land] 72 in an upward direction).” Id.
at 5. Additionally, the Examiner finds Liesener discloses “wherein the
action of the system pressure on the differential face of the control piston
generates a resultant pressure force on the control piston in the same
direction as the load from the spring arrangement.” Id. (citing Liesener,
6:60–64). The Examiner further finds Liesener “details an upward
movement of the spool; wherein 33 provides oil to 64 therefore a pressure
PA will act onto 72 in an upward direction which is the same direction as the
spring arrangement 63/63a per Column 5 Lines 45–56 with PA being created
from PD in Column 3 Lines 11–14.” Id. at 5–6.
Appellant, relying on a dictionary definition from Merriam-Webster,
asserts “‘differential’ in the context of this Application [means] . . . ‘relating

3 Based on the context above, and because Liesener does not use a reference
numeral 4, we understand the Examiner to have intended to refer to
passage 64.
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to quantitative differences (as of motion or pressure).’” Appeal Br. 12.
Appellant explains, in the context of the Specification, “differential face 48
results from the asymmetric configuration of the radial step 46 relative to a
remainder of the control piston 44.” Id. Thus, Appellant contends
“differential face is a surface configured such that ‘the action of the system
pressure on the differential face of the control piston generates a resultant
pressure force on the control piston.’” Id.
Appellant asserts “land 72 of Liesener is not and cannot be configured
to generate a resultant force due to the action of any pressure.” Id. at 13.
Appellant contends
[t]his is because the land 72 is not an element used to control
the motion position of the spool 71, but rather is a blocking
element that, due to the position of the spool 71, moves
between “a blocking position preventing communication of
passage 33 with passage 64” and a position “[t]o open
communication of passage 33 with passage 64.”
Id. Accordingly, Appellant argues Liesener’s land 72 “does not define a
differential face, and cannot be used to generate a resultant pressure force on
a control piston” and, therefore, does not anticipate claim 1. Id. at 14.
In the Answer, the Examiner states “[t]he broadest reasonable
interpretation [of ‘differential face’] allow[s] for a face where a pressure
differential is present.” Ans. 21. The Examiner points to Liesener’s land 72,
stating that “[t]he face of land 72 . . . will function as the claimed differential
face due to a pressure differential face being present on either side of
land 72.” Id. The Examiner identifies PA as a system pressure that “must
act on the face of land 72.” Id. at 20.
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Appellant responds that neither PA nor PD can create a resultant force
on Liesener’s control piston because the forces on either side of land 72
cancel each other out. Reply Br. 3.
Independent claims 1 and 12 are each directed to an adjusting device
for a hydraulic machine, comprising, inter alia, a “control piston . . . with a
differential face acted on directly by a system pressure of the control oil
source.” Appeal Br. 19, 21 (emphasis added). Appellant’s and the
Examiner’s definitions of “differential” are consistent, in that each requires a
quantitative difference in pressure. Compare Appeal Br. 12, with Ans. 21.
Thus, at a minimum, a “differential face” is a face (or surface) where a
pressure differential is present.4 Accordingly, we focus on whether the
Examiner has sufficiently established that Liesener’s land 72 is a face (or
surface) where a pressure differential is present.
The Examiner focuses entirely on Liesener’s pressure PA, identifying
it as the system pressure that acts on land 72. As discussed above, Appellant
contests that a pressure difference exists, and points to the lack of an explicit
disclosure in Liesener of a resultant force on land 72 as evidence in support
of this position. Appellant also points to Liesener’s description of the
operation of its device, particularly the use of land 72 to block passage
access rather than to create a resultant force to move spool 71. Based on the

4 We need not decide whether “differential face” should be construed more
narrowly as proposed by Appellant, see Appeal Br. 12 (construing
“differential face” as meaning “a surface configured such that ‘the action of
the system pressure on the differential face of the control piston generates a
resultant pressure force on the control piston”), because even under the
broader interpretation proposed by the Examiner, we find the Examiner’s
analysis deficient, as explained above.
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evidence before us, we find that the Examiner has not established
sufficiently that Liesener’s land 72 discloses or teaches the recited
differential face. In particular, missing from the Examiner’s findings is any
identification of a pressure difference in Liesener. Additionally, Liesener’s
description is more consistent with Appellant’s argument in that Liesener
does not disclose that PA creates a resultant force that acts upon land 72 and
Liesener’s operation does not rely upon PA to create a force to act upon
land 72 to move spool 71. Rather, Liesener discloses that the position of
spool 71 is based on pressure control signal PC and the opposed modulating
force of spring 63. Liesener, 5:6–17; see also id. at 5:57–65 (describing the
movement of spool 71).
Accordingly, on the present record before us, we find that the
Examiner has not shown that Liesener discloses the “differential face”
recited in independent claims 1 and 12, and claims 4–6, 13, and 14 based on
their dependency from claim 1 or 12. Thus, we do not sustain Rejection II.
Rejections III and V – Claims 3 and 22 under § 103(a)
Claims 3 and 22 depend from claim 1. Appeal Br. 19, 24. The
rejections of these dependent claims do not rely upon a secondary reference
as teaching the differential face recited in claim 1 and do not modify
Liesener’s disclosure to result in a differential face. Final Act. 9, 15–17.
Appellant’s arguments and the Examiner’s responses directed to these
claims rely entirely on the positions set forth above regarding claim 1. See
Appeal Br. 15 (claim 3), 17 (claim 22); Ans. 22 (claim 3), 23 (claim 22).
Accordingly, we do not sustain Rejections II and V for the same
reasons discussed above regarding claim 1.
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Rejections IV and VI – Claims 8–11, 15–18, 20, 21, and 23 under § 103(a)
Claims 8–11 depend from claim 1; claims 16–18, 20, 21, and 23
depend from independent claim 15. Appeal Br. (Claims App’x). Claim 15
is similar to claim 1 and is directed to an adjusting device for a hydraulic
machine, comprising a control piston “with a differential face acted on
directly by a system pressure of the control oil source.” Id. at 23. The
rejections of each of these claims do not rely upon a secondary reference as
teaching the differential face recited in the claims and do not modify
Liesener’s disclosure to result in a differential face. Final Act. 9–19.
Appellant’s arguments and the Examiner’s responses directed to these
claims rely on substantially the same positions set forth above regarding
claim 1. See, e.g., Appeal Br. 16 (discussing claim 15 and referring to
arguments directed to claim 1); Ans. 22 (referring to the Examiner’s
response to Appellant’s arguments directed to claim 1 while responding to
Appellant’s arguments regarding claim 15).
Accordingly, we do not sustain Rejections IV and VI for the same
reasons discussed above regarding claim 1.
CONCLUSION
In summary:
Claims Rejected Basis Affirmed Reversed
22, 23 § 112(b) 22, 23
1, 4–6, 12–14 § 102(b) Liesener 1, 4–6, 12–14
3 § 103 Liesener 3
8–11, 15–18, 20,
21
§ 103
Liesener, Smith 8–11, 15–18, 20, 21
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Claims Rejected Basis Affirmed Reversed
22 § 103 Liesener, Lemmen 22
23
§ 103
Liesener, Smith,
Lemmen
23
Overall Outcome 22, 23 1, 3–6, 8–18, 20, 21
DECISION
We summarily AFFIRM the rejection of claims 22 and 23 under
35 U.S.C. § 112(b).
We REVERSE the rejections of claims 1, 3–6, 8–18, and 20–23 under
35 U.S.C. §§ 102(b) and 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART