Ex Parte Baltes et al

Board of Patent Appeals and Interferences

Feb 8, 2012

10540011 (B.P.A.I. Feb. 8, 2012)

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.
10/540,011 06/22/2005 Herbert Baltes 48679 1631
1609 7590 02/09/2012
ROYLANCE, ABRAMS, BERDO & GOODMAN, L.L.P.
1300 19TH STREET, N.W.
SUITE 600
WASHINGTON,, DC 20036
EXAMINER
WALTERS, RYAN J
ART UNIT PAPER NUMBER
3726
MAIL DATE DELIVERY MODE
02/09/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte HERBERT BALTES and WALTER DORR
____________________

Appeal 2010-000663
Application 10/540,011
Technology Center 3700
____________________

Before STEVEN D.A. McCARTHY, STEFAN STAICOVICI, and
EDWARD A. BROWN, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-000663
Application 10/540,011

2
STATEMENT OF THE CASE
Herbert Baltes and Walter Dorr (Appellants) appeal under 35 U.S.C.
§ 134(a) from a rejection of claims 11-30. (App. Br. 2). Claims 1-10 were
cancelled. (Id.). We have jurisdiction over this appeal under 35 U.S.C.
§ 6(b). We REVERSE.

THE INVENTION
Independent claim 11, reproduced below with emphasis added, is
representative of the appealed claims:
11. A method for producing a piston
accumulator, comprising the steps of:
mounting a piston in an accumulator
housing for movement along a longitudinal axis of
the housing with the piston separating an interior
of the housing into two working chambers between
first and second longitudinal ends of the housing;
providing at least a first shoulder in the
interior of the housing adjacent to but spaced from
the first longitudinal end of the housing;
inserting a first cover component at least
partially within the housing through the first
longitudinal end when open until an inner surface
portion of the first cover component engages the
first shoulder preventing further insertion of the
first cover component;
deforming a first end portion of the housing
between the first shoulder and the first longitudinal
end at an acute angle relative to the longitudinal
axis against an axial outer circumferential contact
surface extending at a corresponding acute angle
relative to the longitudinal axis and about an axial
outer surface portion of the first cover component
to secure the first cover component in the housing
Appeal 2010-000663
Application 10/540,011

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with the first cover component sealing the first
longitudinal end of the housing closed; and
sealing the second longitudinal end of the
housing closed.

THE REJECTIONS
1. Claims 11, 12, 14-16, 24, and 25 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Hasegawa (US 5,311,910; iss. May 17, 1994).
2. Claims 17-22 and 26-30 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Hasegawa.
3. Claims 13 and 23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hasegawa and Masanobu (JP H 3-92679 A; pub. Apr. 17,
1991).

ANALYSIS
Rejection of claims 11, 12, 14-16, 24, and 25 as anticipated by Hasegawa
Regarding claim 11, the Examiner found that Hasegawa discloses
deforming a first end portion of a housing (i.e., outer case 1a) between a first
shoulder (i.e., tapered surface 1b) and a first longitudinal end of the housing,
at an acute angle relative to the longitudinal axis of the housing, against an
axial outer circumferential contact surface extending at a corresponding
acute angle relative to the longitudinal axis, and about an axial outer surface
portion of the first cover component (i.e., cap 5). (Ans. 3-4; see also
Hasegawa, col. 2, ll. 37-49, col. 3, ll. 40-46; FIG. 4B). The Examiner found
that "the acute angle portion on the forming tool 10 which deforms housing
1a" corresponds to the claimed "contact surface." (Ans. 4) (see the
Examiner's annotated version of Figure 4B of Hasegawa with the annotation
Appeal 2010-000663
Application 10/540,011

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"contact surface"). Therefore, the Examiner found that an outer surface of
Hasegawa's "forming tool" 10 corresponds to the claimed "axial outer
circumferential contact surface." According to the Examiner, "[t]he claim
language only positively recites that the axial outer surface portion is 'of the
cover component. '" (Id. at 8).
In contrast to the Examiner, Appellants contend that the claim
recitation "an axial outer circumferential contact surface . . . and . . . an axial
outer surface portion of the first cover component" recites that each of the
"axial outer circumferential contact surface" and the "axial outer surface
portion" is "of the first cover component." (App. Br. 5). The dispositive
issue in this appeal is whether Appellants' contention is correct.
The Patent and Trademark Office gives claims their broadest
reasonable interpretation consistent with the specification, reading the claim
language as it would be interpreted by one of ordinary skill in the art. See In
re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Appellants contend that the application "only discloses the contact surface
on the cover component." (App. Br. 5). We note Appellants' Specification
describes (Spec. 6, ll. 15-19; Fig. 2), with emphasis added:
the upper or outer side 40 of the cover component
20 is provided with a circumferential contact
surface 46 tapering toward the longitudinal axis
48 of the accumulator housing 10 in the outward
direction of the cover component. The inclination
of the respective contact surface 46 corresponds to
the inclination of the positioning bevel 44 of the
shaping tool 42.
Appellants' Specification also describes "the contact surface 46 of the cover
component." (Spec. 7, l. 15). Hence, the claim construction advocated by
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Application 10/540,011

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Appellants is consistent with the Specification and drawings, while the
Examiner's interpretation is not.
In addition, we note that claim 14, which depends from claim 11,
recites "the first cover component tapers in an outward direction along the
contact surface." This claim language substantially follows the description
in Appellants' Specification pertaining to the contact surface 46 noted above,
and also supports Appellants' claim construction for claim 11. For the
foregoing reasons, we adopt Appellants' claim construction.
Applying Appellants' claim construction to claim 11, we agree with
Appellants that the Examiner did not make a finding supported by a
preponderance of the evidence that Hasegawa discloses "deforming a first
end portion of the housing between the first shoulder and the first
longitudinal end at an acute angle relative to the longitudinal axis against an
axial outer circumferential contact surface [of the first cover component]
extending at a corresponding acute angle relative to the longitudinal axis."
(App. Br., Cl. App’x) (emphasis added). (App. Br. 6). Indeed, the
Examiner did not make any finding that Hasegawa discloses a "contact
surface" on the "first cover component" 5. Regardless, Appellants'
contention that Figures 1-4B of Hasegawa shows the "contact surface" on
the cover component being perpendicular to the longitudinal axis, not
oriented at an acute angle, is correct.1 (Id.). Hence, we do not sustain the
rejection of claim 11, and claims 12, 14-16, 24, and 25, which depend from
claim 11.

1 An ordinary meaning of "acute" is "being or forming an angle measuring
less than 90 degrees ." Merriam-Webster's Collegiate
Dictionary 13 (11th ed. 2003).
Appeal 2010-000663
Application 10/540,011

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Rejection of claims 17-22 and 26-30 as unpatentable over Hasegawa
The Examiner's application of Hasegawa for claims 17-22 and 26-30,
which depend directly or ultimately from claim 11, does not cure the
deficiencies of the Examiner's application of Hasegawa to claim 11, as
discussed supra. Accordingly, we do not sustain the rejection of claims 17-
22 and 26-30.

Rejection of claims 13 and 23 as unpatentable over Hasegawa and
Masanobu
The Examiner's application of Masanobu for claims 13 and 23, which
depend from claim 11, does not cure the deficiencies of the Examiner's
application of Hasegawa to claim 11. Accordingly, we do not sustain the
rejection of claims 13 and 23.

DECISION
Each of the Examiner's rejections is reversed.

REVERSED

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