Eberspächer Exhaust Technology GmbH & Co. KG

Patent Trials and Appeals Board

Dec 14, 2021

2021004372 (P.T.A.B. Dec. 14, 2021)

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. 15/725,724 10/05/2017 Benjamin RÖHR 76012 9533 23872 7590 12/14/2021 MCGLEW & TUTTLE, PC P.O. BOX 9227 SCARBOROUGH STATION SCARBOROUGH, NY 10510-9227 EXAMINER INSLER, ELIZABETH ART UNIT PAPER NUMBER 1774 MAIL DATE DELIVERY MODE 12/14/2021 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 BENJAMIN RÖHR, ROLAND SCHWARZ, FRANK MÜLLER, JOACHIM MÜLLER, HERVE TCHAMGOUE, FRANK BERKEMER, MARTIN STRÄHLE, and PETER GORKE Appeal 2021-004372 Application 15/725,724 Technology Center 1700 Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and N. WHITNEY WILSON, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s August 21, 2020 decision to finally reject claims 1, 2, 5-9, 11- 15, and 17-232 (“Final Act.”). We have jurisdiction under 35 U.S.C. § 6(b). 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Eberspacher Exhaust Technology Gmbh & Co. Kg (Appeal Br. 1). 2 Claim 24, which depends from claim 23, is listed on page 1 of the Final Action as being rejected and is included in the Claims Appendix, but does not appear to be subject to any specific rejection (see, Final Act. 3-10; Ans. 3-9), and, therefore, does not appear to specifically be on appeal. However, to the extent that claim 24 was subject to an obviousness rejection similar to Appeal 2021-004372 Application 15/725,724 2 A video hearing was held on November 8, 2021, a transcript of which will be made part of the record. We reverse. CLAIMED SUBJECT MATTER Appellant’s disclosure is directed to a mixer assembly unit, which is typically used in the exhaust system of an internal combustion engine (Abstract). The mixer assembly unit includes a mixer body with an incoming flow side and an outgoing flow side and a carrier element enclosing the mixer body (id.). The mixer body includes a plurality of flow deflection elements and at least one holding area, while the carrier element includes at least one counter holding area, which is connected to the holding area in a specific manner. Claim 1, reproduced below from the Claims Appendix, is illustrative of the claimed subject matter: 1. A mixer assembly unit, for an exhaust system of an internal combustion engine of a vehicle, the mixer assembly unit comprising: a mixer body with an incoming flow side and with an outgoing flow side, the mixer body comprising a plurality of flow deflection elements and at least one holding area; and a carrier element with a carrier element body at least partially enclosing the mixer body radially on an outside in relation to a mixer longitudinal axis, the carrier element comprising at least one counter holding area in association with said at least one holding area, wherein said at least one counter holding area is connected in substance to the associated holding area, and wherein said at least one counter holding area overlaps the associated holding area at least partly radially on a side oriented in a direction of the outgoing flow side of the several other of the dependent claims, that rejection would be reversed for the reasons set forth below. Appeal 2021-004372 Application 15/725,724 3 mixer body, wherein the at least one counter holding area at least partly axially overlaps the associated holding area radially on an inside of the associated holding area. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Palmer et al. US 2013/0188444 A1 July 25, 2013 Gschwind US 2015/0315943 A1 November 5, 2015 Kobe et al. US 2016/0032809 A1 February 4, 2016 Fink et al. EP 2 474 721 A1 July 11, 2012 REJECTIONS 1. Claims 1, 2, 5, 7-9, 11-15, and 18-22 are rejected under 35 U.S.C. § 102(a)(1) as anticipated by Kobe. 2. Claims 6, 17, 22, and 23 are rejected under 35 U.S.C. § 103 as unpatentable over Kobe in view of Fink, Gschwind, and Palmer. OPINION Claim Construction. As a preliminary matter, we construe the claim terms “holding area” and “counter holding area,” particularly the meaning of the word “area” as used in those terms, because those limitations are central to resolving the prior art issues. It is well established that “the PTO must give claims their broadest reasonable construction consistent with the specification. . . .Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation.” In re ICON Health & Fitness, Inc., Appeal 2021-004372 Application 15/725,724 4 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted). “[T]he PTO applies to the verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the [Appellant’s] [S]pecification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). The Specification does not offer a specific definition of “holding area” or “counter holding area.” However, the Specification does indicate in at least several passages that the “holding area” and “counter holding area” refer to structural features of the mixer body and the carrier element, respectively (see, e.g., Spec. ¶ 6 (“there is a positive-locking connection in the area of at least one counter holding area and of the holding area interacting with it due to the radial overlap”); ¶ 11 (the “counter holding area may comprise an essentially U-shaped holding section with two U-legs and a connection area connecting these legs, wherein the U-legs and the connection area define a holding area mounting space, which is essentially open in the direction towards the incoming flow side of the mixer body”); ¶ 13 (“the positive-locking connection can be established in these holding areas and counter holding areas interacting with one another”); ¶ 33 (“each of the counter holding areas 46 comprises a strap-like holding section 50”)). Based on the above standards, and in light of the teachings of the Specification, we determine that a person of skill in the art would understand that the word “area” as used in the terms “holding area” and “counter holding area” means “structure,” such that those claim terms would be read as “holding structure” and “counter holding structure.” This construction Appeal 2021-004372 Application 15/725,724 5 clarifies that the “holding area” and the “counter holding area” are physical structures, which are related to other parts of the claimed structures as set forth in the claims. Rejections 1 and 2. Each of the independent claims recites that “the at least one counter holding area at least partly axially overlaps the associated holding area radially on an inside of the associated holding area” (claims 1 and 11) or “the at least one counter holding area at least partly axially overlaps the holding area radial inner side” (claim 21). That configuration is illustrated in the annotated versions of Appellant’s Figures 4 and 5 depicted below: Figure 4 is a longitudinal sectional view of the mixer assembly unit described in the Specification and Figure 5 is an enlarged view of the detail V in Figure 4. Appeal 2021-004372 Application 15/725,724 6 In the figures above, the radial direction is shown as being vertical, while the axial direction is horizontal. Counter holding area 46 (which, as shown in Figure 5, is made up of sections 54, 56, and 52) is shown to be in contact with holding area 68. As can also be seen in Figure 4, counter holding area 46 (in the form of section 54) is located in a position such that it “partly axially overlaps the associated holding area [68] radially on an inside of the associated holding area” (i.e. section 54 overlaps holding area 68 and is located above holding area 68). The Examiner finds that this limitation is taught by Kobe as shown in Kobe’s Fig. 5, where element 41 is said to correspond to the claimed counter holding area and element 40 is said to correspond to the claimed holding area (e.g. Ans. 10-11): Kobe’s FIG. 5 is an enlarged view of axial perspective of a mixer with a retainer of the mixing device However, as is apparent from Fig. 5 above and argued by Appellant (Appeal Br. 13-14; Reply Br. 4-5), element 41 is not located such that it axially overlaps element 40 radially on an inside (i.e. below, in Fig. 5) of Appeal 2021-004372 Application 15/725,724 7 element 40. That is, in Fig. 5, no portion of element 41 is found below element 40. Thus, Kobe does not disclose a system in which the counter holding area 41 axially overlaps holding area 40 radially on the inside of element 40. “A prior art reference anticipates a patent claim under 35 U.S.C. § 102(b) if it discloses every claim limitation.” In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012) (citing Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1336-37 (Fed. Cir. 2010)). In this instance, Appellant has demonstrated that the record does not support the Examiner’s finding that Kobe discloses a system with a structure in which “the at least one counter holding area at least partly axially overlaps the associated holding area radially on an inside of the associated holding area.” Accordingly, we reverse the anticipation rejection of independent claims 1, 11, and 21,3 as well as the claims which depend from them. Moreover, with respect to the obviousness rejection of claims 6, 17, 22, and 23, the Examiner does not rely on the secondary references to remedy the above-described deficiency in the disclosure of Kobe with respect to the independent claims. Therefore, we also reverse the obviousness rejection of claims 6, 17, 22, and 23 (and claim 24, to the extent that it was also subject to this obviousness rejection). CONCLUSION The Examiner’s rejections are reversed. 3 The specific language used in claim 21 - “wherein the at least one counter holding area at least partly axially overlaps the holding area radial inner side” is similar in scope to the language used in claims 1 and 11, and is not shown by Kobe for the reasons discussed above. Appeal 2021-004372 Application 15/725,724 8 More specifically, DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 5, 7-9, 11-15, 18-22 102(a)(1) Kobe 1, 2, 5, 7-9, 11-15, 18- 22 6, 17, 22, 23 103 Kobe, Fink, Gschwind, Palmer 6, 17, 22, 23 Overall Outcome 1, 2, 5-9, 11-15, 17- 23 REVERSED