Ex Parte Faye et al

Board of Patent Appeals and Interferences

Jul 9, 2010

10534108 (B.P.A.I. Jul. 9, 2010)

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.
10/534,108 04/12/2006 Ian Faye 10191/3673 5595
26646 7590 07/09/2010
KENYON & KENYON LLP
ONE BROADWAY
NEW YORK, NY 10004
EXAMINER
MCGRAW, TREVOR EDWIN
ART UNIT PAPER NUMBER
3752
MAIL DATE DELIVERY MODE
07/09/2010 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 ROBERT BOSCH GMBH
____________________

Appeal 2009-006001
Application 10/534,108
Technology Center 3700
____________________

Before SALLY GARDNER LANE, JAMESON LEE, and
SALLY C. MEDLEY, Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL1
A. STATEMENT OF THE CASE
This is a decision on appeal by the real party in interest, Robert Bosch
GmbH (“Robert Bosch”), under 35 U.S.C. § 134(a) from a final rejection of

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-006001
Application 10/534,108

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claims 19-26, 28, 29, and 36-39. We have jurisdiction under 35 U.S.C.
§ 6(b). We reverse.
References Relied on by the Examiner
Raskin US 2,933,259 Apr. 19, 1960
Kappel et al. (“Kappel”) US 6,311,950 B1 Nov. 6, 2001

The Rejections on Appeal
The Examiner rejected claims 19, 20, 22-26, 28, 29, 36, and 38 under
35 U.S.C. § 102(b) as anticipated by Raskin.
The Examiner rejected claims 19, 21, and 37 under 35 U.S.C. § 103(a)
as unpatentable over Raskin and Kappel.

The Invention
The invention relates to a dosing device for supplying liquid fuel into
a chamber. (Spec. 4:1-13.)
Claim 19 is reproduced below (Clams App’x. 1):
19. A dosing device for a liquid fuel comprising:

at least one metering device configured to meter fuel into a
metering conduit; and

a nozzle body, adjoining the metering conduit, having spray
discharge openings which provide direct fluid communication
between the metering conduit and a metering chamber,

wherein the nozzle body projects with a spherical portion at a
spray-discharge end into the metering chamber, and the spray
discharge openings are distributed over the spherical portion of the
nozzle body; and

Appeal 2009-006001
Application 10/534,108

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wherein the metering conduit has a number of points of reduced
wall thickness that decrease the thermal conductivity of the metering
conduit.
B. ISSUE
Has Robert Bosch shown that the Examiner was incorrect in finding
that Raskin discloses a metering conduit having points of reduced wall
thickness?
C. FINDINGS OF FACT
1. Raskin discloses a nozzle head for discharging fluid under
pressure. (Raskin 1:15-17.)
2. Raskin discloses that its nozzle head includes semi-spherical
members 19, 20 containing openings or bores 21, 22. (Id. at 4:13-17.)
3. Raskin describes an inner pipe 4 which is adapted to supply a
fluid under pressure to the semi-spherical members 19, 20. (Id. at 3:8-12.)
4. Raskin does not show or describe that the inner pipe includes
points of reduced wall thickness.
D. PRINCIPLES OF LAW
Anticipation is established only when a single prior art reference
discloses all elements of the claimed invention. In re Spada, 911 F.2d 705,
708 (Fed. Cir. 1990).
E. ANALYSIS
The Examiner rejected claims 19, 20, 22-26, 28, 29, 36, and 38 as
anticipated by Raskin and claims 19, 21, and 37 as unpatentable over Raskin
and Kappel. Claim 19 is an independent claim. Claim 19 calls for a
“metering conduit” that “has a number of points of reduced wall thickness
Appeal 2009-006001
Application 10/534,108

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that decrease the thermal conductivity of the metering conduit.” (Claims
App’x. 1.) The claim also calls for a “nozzle body” adjoining the metering
conduit and including spray discharge openings.
The Examiner pointed to a “nozzle body” in Raskin as including spray
discharge openings 21, 22. (Ans. 3:12-16.) Raskin discloses that openings
or bores 21, 22 are contained within semi-spherical members 19, 20.
(Raskin 4:13-17.) Thus, the Examiner found that members 19 and 20 form
the nozzle body of the claims. As set forth in the claims, the nozzle body
adjoins a metering conduit which includes “a number of points of reduced
wall thickness.” That the nozzle body and metering conduit are “adjoining”
means they are separate components that are arranged next to one another.
It is the metering conduit that must contain the points of reduced wall
thickness. The Examiner, however, pointed to member 19, i.e., the nozzle
body, as allegedly including points of reduced wall thickness. (Ans. 7-8.)
Even if Raskin’s nozzle body 19 includes points with reduced wall
thickness, that is insufficient to account for such points contained within the
separate metering conduit component.
The Examiner does not identify any particular element of Raskin as
constituting a metering conduit. Raskin describes an inner pipe 4 which is
adapted to supply a fluid under pressure to the semi-spherical members 19
and 20. (Raskin 3:8-12.) To the extent that inner pipe 4 may form a
metering conduit, the Examiner does not explain, and we do not see, where
that pipe includes the points of reduced wall thickness that are required by
the claims. Anticipation is established only when a single prior art reference
discloses all elements of the claimed invention. In re Spada, 911 F.2d at
708. We do not sustain the rejection of claim 19 as anticipated by Raskin.
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Application 10/534,108

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Claims 20, 22-26, 28, 29, 36, and 38 are ultimately dependent on, and
include all the limitations of, claim 19. We also do not sustain the rejection
of those dependent claims as anticipated by Raskin.
The Examiner rejected claims 19, 21, and 37 as unpatentable over
Raskin and Kappel. The Examiner’s reliance on Kappel does not make up
for the above-noted deficiencies of Raskin. The Examiner does not explain
how Kappel discloses a metering conduit that includes points of reduced
wall thickness. On this record, we do not sustain the rejection of claims 19,
21, and 37 as unpatentable over Raskin and Kappel.
F. CONCLUSION
Robert Bosch has shown that the Examiner was incorrect in finding
that Raskin discloses a metering conduit having points of reduced wall
thickness.
G. ORDER
The rejection of claims 19, 20, 22-26, 28, 29, 36, and 38 under 35
U.S.C. § 102(b) as anticipated by Raskin is reversed.
The rejection of claims 19, 21, and 37 under 35 U.S.C. § 103(a) as
unpatentable over Raskin and Kappel is reversed.

REVERSED

Appeal 2009-006001
Application 10/534,108

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