Ex Parte Gebert et al

Patent Trial and Appeal Board

Sep 22, 2016

13145408 (P.T.A.B. Sep. 22, 2016)

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.
13/145,408 08/12/2011 Stefan Gebert 1784.3073.001 4973
23399 7590 09/23/2016
REISING ETHINGTON P.C.
P O BOX 4390
TROY, MI 48099-4390
EXAMINER
LOPEZ, FRANK D
ART UNIT PAPER NUMBER
3745
MAIL DATE DELIVERY MODE
09/23/2016 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 STEFAN GEBERT, EGID MACHT, PAUL MARKS,
ROBERT MUELLER, JUERGEN RYBA,
JOCHEN SCHNEIER, and WILFRIED WEIBELZAHL
____________________

Appeal 2014-009429
Application 13/145,408
Technology Center 3700
____________________

Before: STEFAN STAICOVICI, LEE L. STEPINA, and
FREDERICK C. LANEY, Administrative Patent Judges.

STEPINA, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2014-009429
Application 13/145,408

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s Final
rejection of claims 1–3, 7–10, 23, 30, 31, and 38.1,2 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
CLAIMED SUBJECT MATTER

The claims are directed to a device “for reducing pressure pulsations,
such as are used on a large scale in hydraulic clutch actuating means for
motor vehicles.” Spec. 1. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
A device for reducing pressure pulsations being
connectible between a pressure chamber of a slave cylinder and
a pressure chamber of a master cylinder of a hydraulic force
transmission system, for motor vehicles, and constantly open to
the pressure medium, said device comprising:
a channel having a helix section defining an opening at the
slave cylinder side and an opening at the master cylinder side,
and having a channel length equal to a multiple of the direct
spacing of the two openings,
a one-piece volume receiver which is comprised of a
material resiliently deformable under pressure,
characterized in that the channel and the volume receiver
are combined in a housing in such a way that the helix section,
and the volume receiver are arranged in the housing in a mutually
coaxial positional relationship with one substantially
surrounding the other wherein the volume receiver separates a

1 Claims 12–22, 24–29, 32–37, and 39 are withdrawn, and claims 4–6, and
11 are cancelled. See Amendment 2–7 (filed January 10, 2014) and
Advisory Act. 1 (indicating that the Amendment was entered) (mailed
January 17, 2014).
2 Newly added claim 40 is objected to by the Examiner. See Amendment 7
and Advisory Act. 1.
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Application 13/145,408

3
pressure medium section from an air chamber and is arranged in
a blind bore which forms a dead end so that the pressure medium
does not flow through the volume receiver; and
the helix section of the channel is formed at the outer
circumference of the insert member as a groove that radially
extends about a common wall with the blind bore, the groove
being covered radially outwardly by an inner circumferential
surface of the housing.
Appeal Br. 13.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Chatterjea
Wilber et al.
(“Wilber”)
Gebert

US 3,964,372
US 5,320,203

US 2006/0243552 A1
June 22, 1976
June 14, 1994

Nov. 2, 2006

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Application 13/145,408

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REJECTIONS3, 4

(I) Claim 10 is rejected under 35 U.S.C. § 112, second paragraph,
as indefinite.5
(II) 1–3, 7–10, 23, 30, 31, and 38 Claims 1–3, 5, 7–11, 23, 30, 31,
and 38 are rejected under 35 U.S.C. § 103 as unpatentable over Wilber,
Gebert, and Chatterjea.6

3 The Examiner states, “[c]laims 3, 9, 30 and 31 have 112 problems, based
on new claim 1 that includes the insert with certain features.” Advisory Act.
2. In the Answer (mailed June 23, 2014), the Examiner provides further
explanation and states, “[t]hese issues are formal matters. . . . These issues
can be dealt with, if these claims are found allowable over the prior art, after
the appeal.” Ans. 14. Although the Final Action (mailed October 24, 2013)
includes a rejection of claim 10 under 35 USC § 112, second paragraph, as
indefinite, the Final Action does not include a rejection of claims 3, 9, 30,
and 31 under 35 USC § 112. Additionally, the Advisory Action does not
provide sufficient explanation as to make clear what the noted “problems”
are, and the Answer does not designate a new ground of rejection or state
that claims 3, 9, 30, and 31 are rejected under any specific part of § 112. See
Advisory Act. 2, see also Ans. 2, 5 (stating, “The advisory action of January
17, 2014 alludes to 112 problems with claims 3, 9, 30 and 31), and 14
(discussing claims 1, 3, and 5 beneath a heading stating “112 Rejections”).
Accordingly, we understand the Examiner to have not yet formally rejected
claims 3, 9, 30, and 31 under 35 USC § 112, and, for the purpose of the
present Appeal, we do not address the question of whether claims 3, 9, 30,
and 31 are indefinite.
4 The Examiner withdrew a rejection of claims 1–3, 5, and 30 under 35
U.S.C. § 102(b) as anticipated by Krueger (US 2,372,587). Ans. 5,
Advisory Act 1; see also Final Act. 3.
5 Neither the Appeal Brief nor the Answer discusses this rejection. There is
no statement in the Answer or Advisory Action withdrawing the rejection.
See Advisory Act. 2; see also Ans. 5.
6 The Final Action listed claims 1–3, 5, 7–11, 23, 30, 31, and 38 under this
rejection (see Final Act. 3), but claims 5 and 11 were cancelled in the
Amendment filed on January 10, 2014.
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Application 13/145,408

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OPINION
Rejection (I)
Appellants make no arguments traversing the Examiner’s rejection of
claim 10 as indefinite. Accordingly, we summarily sustain this rejection.
Rejection (II)
The Examiner finds that Wilber discloses many of the features recited
in claim 1, but relies on Gebert to teach a resiliently deformable volume
receiver. Final Act. 4. The Examiner relies on Chatterjea to teach details
relating to the channel recited in claim 1. Id. at 5. In particular, the
Examiner finds that Chatterjea teaches:
a device comprising a channel having a straight section (52, fig
1) defining openings at first and second sides, formed by a
groove at the outer circumference of an insert member (48)
radially outwardly covered by an inner circumferential surface of
a housing (of 13); that the channel can be formed by a helix
section (152, fig 2) having a length equal to a multiple of a direct
spacing of the two openings.

Id. The Examiner reasons that:

Since Chatterjea teaches the equivalent of making grooves
between an insert and a housing either straight or helix; it would
have been obvious at the time the invention was made to one
having ordinary skill in the art to replace the channel of Wilber
et al with a helix section having a length equal to a multiple of a
direct spacing of the two openings, as taught by Chatterjea, since
one having ordinary skill in the art would have been able to carry
out such a substitution and the resulting combination would
predictably work in the same manner.

Id. (emphasis added).
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Appellants contend that the Examiner’s finding that Chatterjea teaches
the equivalence of making grooves between an insert and a housing straight
or helical is merely conclusory. Appeal Br. 4.
In response, the Examiner states:
Chatterjea specifically teaches that a channel (52, 152) between
an outer circumference of a wall of an insert (48) and an inner
wall of a housing (20) can be either a longitudinal groove (52, fig
1) or a helix channel (152, fig 3). One of ordinary skill in this art
would recognize that the reason for using this teaching is that
longitudinal channels and helix channels are equivalent, meaning
that both types of channels can be used to form a channel
between an insert and housing. Chatterjea doesn't identify a
“benefit[,]” per se, of one type of channel over the other, but
instead appears to suggest that both are equally able to form the
channels.

Ans. 9.
Reiterating the attack on the Examiner’s reasoning for incorporating
the teachings of Chatterjea into the Wilber device, Appellants contend that
Chatterjea does not present its grooves, linear or helical, for the function of
reducing pressure pulsations, but instead uses them in the control of
providing a linear pressure increase in a different type of device. Reply Br.
5. Appellants further contend that Chatterjea does not teach that helical
grooves are the equivalent to linear grooves. Id.
We are persuaded by Appellants’ arguments. Although the Examiner
correctly finds that Chatterjea replaces its longitudinal grooves 52 with
helical grooves (see Ans. 9; see also Chatterjea col. 7, ll. 4–52), we do not
agree that Chatterjea teaches that straight (longitudinal) grooves are the
equivalent of straight grooves or would have been obvious to use in all
hydraulic devices using straight grooves. Chatterjea is directed to a charging
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Application 13/145,408

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valve for engagement of a clutch, and Chatterjea uses the helical groove(s)
152 to provide a particular type of pressure rise in the signal to the clutch.
See Chatterjea col. 7, l. 4–col. 8, l. 10. In contrast, the helix channel of
Appellants’ claim 1 reduces pressure pulsations between master and slave
cylinders in a hydraulic transmission device. See Spec. 4–5. We thus agree
with Appellants that the Examiner has not explained sufficiently why a
person of ordinary skill in the art would have modified Wilber to include the
helical grooves of Chatterjea inasmuch as the purpose of the special shape of
groove in Chatterjea does not exist in Wilber. Further, even though a
straight groove was replaced with a helical groove to provide functional
benefits relevant to Chatterjea’s device, the Examiner does not explain how
a skilled artisan would translate that information to render obvious such a
replacement in the context of Appellants’ claimed device. Accordingly, we
do not sustain the Examiner’s rejection of claim 1 and claims 1, 3, 7–10, 23,
30, 31, and 38, depending therefrom as unpatentable over Wilber, Gebert,
and Chatterjea.

DECISION
(I) The Examiner’s rejection of claim 10 as indefinite is affirmed.
(II) The Examiner’s rejection of claims 1–3, 5, 7–11, 23, 30, 31,
and 38 as unpatentable over Wilber, Gebert, and Chatterjea is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART