Ex Parte Alaze

Board of Patent Appeals and Interferences

May 15, 2003

09272772 (B.P.A.I. May. 15, 2003)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 30
UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte NORBERT ALAZE
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Appeal No. 2003-0400
Application No. 09/272,772
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HEARD: May 7, 2003
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Before ABRAMS, McQUADE, and NASE, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-14,
16-18 and 21-23, which are all of the claims pending in this application.
We REVERSE.
Appeal No. 2003-0400
Application No. 09/272,772
Page 2
1Our understanding of this German language reference was obtained from Schmidt et al. U.S.
Patent No. 6,079,796, filed Jun. 27, 2000, which was made of record by the examiner.
2Our understanding of this German language reference was obtained from a PTO translation, a
copy of which is enclosed.
BACKGROUND
The appellant's invention relates to a piston pump for a brake system. An
understanding of the invention can be derived from a reading of exemplary claim 1,
which appears in the appendix to the appellant's Brief.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Schmidt et al.1 (Schmidt) WO 97/43152 Nov. 20, 1997
Volz et al.2 (Volz)(Offenlegungsschrift) 4102364 Jul. 30, 1992
Claims 1-14, 16-18 and 21-23 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Schmidt in view of Volz.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejection, we make reference to the Answer
(Paper No. 23) for the examiner's complete reasoning in support of the rejection, and to
the Brief (Paper No. 22) and Reply Brief (Paper No. 25) for the appellant's arguments
thereagainst.
Appeal No. 2003-0400
Application No. 09/272,772
Page 3
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
The appellant’s invention is directed to a slip-controlled vehicle brake system
with a piston pump that acts upon first and second pressure chambers, one of which is
connected to a brake cylinder of a front brake of the vehicle and the other of which is
connected to a brake cylinder of a rear wheel of the vehicle. It is the examiner’s view
that all of the subject matter recited in independent claim 1 is disclosed by Schmidt,
except for the specific structure of the piston pump. The examiner takes the position
that it would have been obvious to modify the Schmidt system by replacing the two
pumps described and shown in the system with a single pump of the type disclosed by
Volz because “it would have reduced the cost of the brake system through reduction of
parts” and “would have reduced pressure pulsations” (Answer, page 4). The appellant
argues that no suggestion is provided by either reference to modify the Schmidt system
in the manner proposed by the examiner.
The test for obviousness is what the combined teachings of the prior art would
have suggested to one of ordinary skill in the art. See, for example, In re Keller, 642
F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). In establishing a prima facie case of
Appeal No. 2003-0400
Application No. 09/272,772
Page 4
obviousness, it is incumbent upon the examiner to provide a reason why one of
ordinary skill in the art would have been led to modify a prior art reference or to
combine reference teachings to arrive at the claimed invention. See Ex parte Clapp,
227 USPQ 972, 973 (Bd. Pat. App. & Int. 1985). To this end, the requisite motivation
must stem from some teaching, suggestion or inference in the prior art as a whole or
from the knowledge generally available to one of ordinary skill in the art and not from
the appellant's disclosure. See, for example, Uniroyal, Inc. v. Rudkin-Wiley Corp., 837
F.2d 1044, 1052, 5 USPQ2d 1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
Schmidt discloses a vehicle anti-lock braking arrangement which comprises two
systems like that shown in Figure 1, with each system connected between diagonally
oriented front and rear brakes (column 3, lines 1-9). The system shown in Figure 1
utilizes a pair of return feed pumps 28 and 30, with pump 28 operating in the braking
circuit to brake 16 of the right rear wheel and pump 30 on the braking circuit to brake 18
of the left front wheel (column 3, lines 14-21). Schmidt states that “[t]he two pumps of a
brake circuit may for instance be embodied like the pumps is [sic] disclosed in U.S.
Patent No. 4,875,741 . . . or by a stepped piston pump, known per se” (column 1, lines
41-46). The examiner interprets this statement to mean that the two pumps disclosed
in each brake circuit can, alternatively, by replaced by a single stepped piston pump
(Answer, sentence bridging pages 3 and 4), and then utilizes this conclusion as
Appeal No. 2003-0400
Application No. 09/272,772
Page 5
suggestion to one of ordinary skill in the art to replace the two pumps with a single
pump of the type disclosed by Volz. We do not agree with this analysis.
From our perspective, it is not clear from Schmidt that one of ordinary skill in the
art would have been instructed by the above-quoted language to replace the two
pumps, each connected to the braking circuit of diagonal front and rear brakes, with a
single stepped piston pump with one of its chambers connected to a front brake circuit
and the other to a diagonal rear brake circuit. In fact, we are of the opinion that Volz
supports the interpretation advanced by the appellant, that is, that each of the two
return feed pumps disclosed in the cited ‘741 patent be replaced by a stepped piston
pump. The stepped pump shown in Figure 5 of Volz, upon which the examiner has
relied, both of the pumping chambers (60 and 60a) are connected through one-way
valves (62) to pump to a single outlet (unnumbered). As is explained on pages 16 and
17 of the Volz translation, an advantage of a double-acting pump is that it results in a
“relatively small pulsation in the pressure [outlet] coupling, because the quantity of
pressurizing agent conveyed per working cycle is subdivided into two conveying
strokes” (translation, page 2). One of ordinary skill in the art thus would be taught by
Volz that each of the Schmidt pumps be replaced by a double-acting (stepped) pump,
in order to smooth the pulsations that result from a single-acting pump, rather than each
be used to replace two existing pumps.
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Application No. 09/272,772
Page 6
The mere fact that the prior art structure could be modified does not make such
a modification obvious unless the prior art suggests the desirability of doing so. See In
re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). For the above
reasons, we fail to perceive any teaching, suggestion or incentive in either reference
which would have led one of ordinary skill in the art to modify the Schmidt braking
system in the manner proposed by the examiner. It appears to us that suggestion for
doing so is found only in the hindsight afforded one who first viewed the appellants’
disclosure. This, of course, is not a proper basis for a rejection under Section 103. In
re Fritch, 972 F.2d 1260, 1264, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992). Thus,
applying the guidance of our reviewing court to the situation at hand leads us to
conclude that the teachings of the applied references fail to establish a prima facie case
of obviousness with regard to the subject matter recited in independent claim 1, and we
therefore will not sustain the rejection of claim 1 or, it follows, of claims 2-14, 16-18 and
21-23, which depend therefrom.
CONCLUSION
The rejection is not sustained.
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Application No. 09/272,772
Page 7
The decision of the examiner is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
NEA:pgg
RONALD E. GREIGG
GREIGG & GREIGG P.L.L.C.
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