Ex Parte Baltes et al

Patent Trial and Appeal Board

Sep 19, 2017

13261842 (P.T.A.B. Sep. 19, 2017)

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.
13/261,842 04/10/2014 Herbert Baltes 61460 1746
513 7590 09/21/2017
WENDEROTH, LIND & PONACK, L.L.P.
1030 15th Street, N.W.,
Suite 400 East
Washington, DC 20005-1503
EXAMINER
MATHEW, FENN C
ART UNIT PAPER NUMBER
3781
NOTIFICATION DATE DELIVERY MODE
09/21/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ddalecki@wenderoth.com
eoa@ wenderoth. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HERBERT BALTES and PETER KLOFT
Appeal 2016-005613
Application 13/261,842
Technology Center 3700
Before LINDA E. HORNER, LISA M. GUIJT, and BRENT M. DOUGAL,
Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 seek our review under 35 U.S.C. § 134 of the Examiner’s
decision2 rejecting claims 5-9 under 35 U.S.C. § 102(b) as anticipated by
Stroganov (US 2010/0050622 Al; published Mar. 4, 2010). We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify the real party in interest as Hydac Technology GmbH.
Appeal Br. 1.
2 Appeal is taken from the Final Office Action dated May 11, 2015 (“Final
Act.”), as supplemented by the Advisory Action dated Aug. 11, 2015.
Appeal 2016-005613
Application 13/261,842
CLAIMED SUBJECT MATTER
Claim 5 is the sole independent claim on appeal. Claim 5, reproduced
below, is illustrative of the appealed claims.
Claim 5. A pressure accumulator, comprising:
at least one accumulator housing having at least one
connection for entry of a pressure medium to be stored in said
accumulator housing and having an inner surface; and
a filling material having cavities in said accumulator
housing to accommodate the pressure medium and filling
completely an interior of said accumulator housing, said filling
material contacting said inner surface of said accumulator
housing over a full area thereof, said filling material being
formed from a cellular material having different densities within
said accumulator housing created by one of repeated injection or
repeated foaming.
ANALYSIS
Regarding independent claim 5, the Examiner finds, inter alia, that
Stroganov’s accumulator housing (or more precisely, an interior of
Stroganov’s accumulator housing) is “the area between shell insert 10 (not
labeled in Figure 1) and buffer insert 8 (located above separator 6).” Ans.
3.3 The Examiner also finds that Stroganov’s filler 7 completely fills this
3 Appellants incorrectly argue that a new ground in the Examiner’s Answer
should not be considered by the Board. Reply Br. 2. The rules governing
appeals to the Board state that “[a]ny request to seek review of the primary
examiner’s failure to designate a rejection as a new ground of rejection in an
examiner’s answer must be by way of petition to the Director under § 1.181
of this title filed . . . before the filing of any reply brief.” 37 C.F.R.
§ 41.40(a). We deem Appellants, by their presentation of arguments in the
Reply Brief in rebuttal to the Answer, to have waived any argument that the
2
Appeal 2016-005613
Application 13/261,842
interior and also contacts an inner surface of the accumulator housing over a
full area, as claimed. Final Act. 2. The Examiner determines that because
membranes 11 are located within the interior, as defined by the Examiner,
and contact the inner surface, as defined by the Examiner, “the membranes
are considered part of the filling material.” Adv. Act. 2. The Examiner
further determines that “[tjhere are no limitations in claim 5 that preclude
the membranes from being part of the filling material (i.e., that the filling
material consists of cellular material).” Ans. 3.
Appellants correctly argue that Stroganov’s membranes 11 cannot
correspond to the claimed filling material, as determined by the Examiner,
because Stroganov’s membranes are not “formed from a cellular material,”
as required by claim 5. Appeal Br. 4; Reply Br. 3. As set forth supra, claim
5 requires the filling material to be “formed from a cellular material,” and
Stroganov discloses that membranes 11 are made of polymeric film. See
Stroganov ^ 43. Thus, a preponderance of evidence does not support the
Examiner’s finding that Stroganov’s filler 7 contacts the full area of an inner
surface4 of Stroganov’s housing, which is defined by the Examiner to
rejection must be designated a new ground. Id.
4 The terms “a” and “an” are indefinite articles to mean 711: least
one,” permitting the inclusion of additional elements not recited in the clai m.
See KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir.
2000). Thus, we construe “said accumulator housing . . . having an inner
surface” to mean that the claimed housing has at least one inner surface and
can have additional inner surfaces.
3
Appeal 2016-005613
Application 13/261,842
include an inner surface that is contacted by membranes 11 in place of filler
7.
Notwithstanding, Stroganov discloses that it is known to fill the entire
gas reservoir with filler material, without membranes 11 (membranes 11
being an improvement disclosed by Stroganov). See Stroganov ^ 8 (“A
disadvantage [of filling the gas reservoir with a filler is that] the filler loses
its ability to reshape and to fill the entire volume of the gas reservoir.”).
However, Stroganov’s shell 1, not gas reservoir 4, corresponds to the
claimed accumulator housing. Therefore, even in view of Stroganov’s
recognition of the prior art, Stroganov fails to disclose that it is known for a
filler to completely fill the interior5 of an accumulator housing, as claimed.
Stroganov only discloses that it is known for a filler to completely fill a
portion of the interior housing, which comprises the gas reservoir.
Accordingly, we do not sustain the Examiner’s rejection of claim 5,
and claims 6-9 as depending therefrom.
DECISION
The decision of the Examiner to reject claims 5-9 is reversed.
REVERSED
5 Contrary to the claim term “an inner surface,” but consistent with the
Specification, wherein the housing has one interior and one exterior ((see,
e.g., Spec. 6:1 (“The interior 117 of the accumulator housing 103”)), we
construe “an interior of said accumulator housing” to mean a single interior
(and not more than one interior)). Although a housing may have more than
one inner surface, a housing generally has one interior and one exterior,
unless otherwise specified.
4