Ex Parte Gesk et al

Patent Trial and Appeal Board

May 17, 2016

11664633 (P.T.A.B. May. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/664,633 03/1112008 Markus Gesk
26646 7590 05/19/2016
KENYON & KENYON LLP
ONE BROADWAY
NEW YORK, NY 10004
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1019114623 1655
EXAMINER
KIM, CHRISTOPHER S
ART UNIT PAPER NUMBER
3752
NOTIFICATION DATE DELIVERY MODE
05/19/2016 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):
uspto@kenyon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARKUS GESK, GUENTER DANTES, and JOERG HEYSE
Appeal2014-002967
Application 11/664,633
Technology Center 3700
Before LINDA E. HORNER, LYNNE H. BROWNE, and
THOMAS F. SMEGAL, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Markus Gesk et al. (Appellants) 1 seek our review under 35 U.S.C.
§ 134 of the Examiner's decision rejecting claims 9-11, 13-18, and 20-33,
which are all of the pending claims. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 Appellants identify the real party in interest as Robert Bosch GmbH. Br. 1.
Appeal2014-002967
Application 11/664,633
CLAIMED SUBJECT MATTER
Appellants' claimed subject matter relates to a fuel injector. Claim 9
is the sole independent claim and is reproduced below.
9. A fuel injector for a fuel-injection system of an
internal combustion engine, having a longitudinal valve axis, the
fuel injector comprising:
a valve-seat body having a fixed valve seat;
a valve-closure member, which cooperates with the valve
seat and is axially displaceable along the longitudinal valve axis;
and
an orifice plate, which is situated downstream from the
valve seat and has at least one outlet opening,
wherein an inflow opening is defined between a diameter-
reduced exit opening of the valve-seat body and the at least one
outlet opening,
wherein a boundary surface of the valve-seat body lying
opposite the orifice plate is designed such that, starting at the exit
opening, a height of the inflow opening in a first section
decreases continuously up to the at least one outlet opening,
while a height of the inflow opening in a second, radially outward
section remains substantially constant, wherein a transition from
the first section to the second section is situated immediately in
front of the at least one outlet opening, directly at a boundary
edge of the at least one outlet opening, or above the at least one
outlet opening, and
wherein the valve-seat body has a stepped configuration
and a recess in a center region of the longitudinal valve axis in
which the orifice plate is inserted.
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Application 11/664,633
EVIDENCE
The Examiner relied upon the following evidence:
Hopf
Arioka
Xu
Hockenberger
Biers taker
Heyse
US 6,168,099 Bl
US 2002/006317 4 A 12
US 2003/0127540 Al 3
US 6,644,565 B2
US 7,048,202 B2
WO 02/095218 Al 4
REJECTIONS
Jan.2,2001
May 30, 2002
July 10, 2003
Nov. 11, 2003
May 23, 2006
Nov. 28, 2002
Appellants appeal from the Final Action, dated March 19, 2013,
which contained the following rejections:
1. Claims 9, 10, 13-18, and 20 under 35 U.S.C. § 102(b) as
anticipated by Arioka.
2. Claims 9, 10, 14-18, 20, and 22 under 35 U.S.C. § 103(a) as
unpatentable over Arioka and Xu.
2 US 2002/0063174 Al is the published application of U.S. Appl. No.
09/983,221. The Examiner also cited a patent to Arioka (US 6,758,420 B2,
issued July 6, 2004), which issued from the '221 application. Final Act. 3.
We cite to the Arioka published application in this Decision.
3 US 2003/0127540 Al is the published application of U.S. Appl. No.
10/043,367. The Examiner also cited a patent to Xu (US 6,817,545 B2,
issued November 16, 2004), which issued from the '367 application. Final
Act. 4. We cite to the Xu issued patent in this Decision.
4 WO 02/095218 Al is a PCT published application, published in German.
The Examiner also cited to the related published U.S. application (US
2004/0046063 Al, published March 11, 2004) and the related issued U.S.
patent (US 7,011,257 B2, issued March 14, 2006), which are published in
English. Final Act. 9.
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Application 11/664,633
3. Claim 11 under 35 U.S.C. § 103(a) as unpatentable over Arioka,
Xu, and Bierstaker.
4. Claims 13, 24-28, 31, and 33 under 35 U.S.C. § 103(a) as
unpatentable over Arioka, Xu, and Hockenberger.
5. Claim 21under35 U.S.C. § 103(a) as unpatentable over Arioka,
Xu, and Hopf.
6. Claims 13, 23, 25-28, 31, and 32 under 35 U.S.C. § 103(a) as
unpatentable over Arioka, Xu, and Heyse.
7. Claim 29 under 35 U.S.C. § 103(a) as unpatentable over Arioka,
Xu, Heyse, and Bierstaker.
8. Claim 29 under 35 U.S.C. § 103(a) as unpatentable over Arioka,
Xu, Hockenberger, and Bierstaker.
9. Claim 30 under 35 U.S.C. § 103(a) as unpatentable over Arioka,
Xu, Heyse, Hockenberger, and Hopf.
ANALYSIS
First Ground of Rejection
Appellants' argue the claims subject to the first ground of rejection as
a group. Br. 4. We select claim 9 as the representative claim for the group,
and claims 10, 13-18, and 20 stand or fall with claim 9. 37 C.F.R.
§ 41.37(c)(l)(iv).
Appellants contend the Examiner erred in finding that Arioka
anticipates claim 9 because Arioka does not disclose "the valve-seat body
has a stepped configuration and a recess in a center region of the
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Appeal2014-002967
Application 11/664,633
longitudinal valve axis in which the orifice plate is inserted." Br. 4 (quoting
claim 9). First, Appellants argue that Arioka's injector plate 10 is welded to
the front end face of valve seat member 3, and, thus, is not inserted into a
recess in valve seat member 3. Id. (citing Arioka, para. 28). This argument
does not demonstrate error in the Examiner's rejection because it does not
address the Examiner's articulated rejection, which relied on the
combination of Arioka's valve seat member 3 and cap 35 as the claimed
"valve-seat body." Final Act. 3; Ans. 11.
Second, Appellants argue that "no support is provided for [the]
assertion" that Arioka's valve seat member 3 and cap 35 constitute a
disclosure of the claimed "valve-seat body." Br. 4. Appellants contend that
the "valve-seat body" of Arioka "does not include a stepped configuration
and a recess in a center region of the longitudinal valve axis in which the
orifice plate is inserted." Id.
The Examiner explains in the Answer that the claims do not preclude
a two-piece valve-seat body and that Arioka's cap 35 has both a stepped
configuration and a recess in a center region of the longitudinal valve axis in
which the orifice plate is inserted. Ans. 12 (referencing annotated Figure 3
of Arioka). We agree with the Examiner that the claims do not require the
valve seat body to be formed from a single piece. Cap 35 of Arioka is
"fitted over a front end of the valve seat member 3." Arioka, para. 40. We
find the Examiner's interpretation of "valve-seat body," which reads on the
combined valve seat member 3 and cap 3 5 of Arioka, to be reasonable.
Appellants' have not persuaded us that the claims must be construed more
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Appeal2014-002967
Application 11/664,633
narrowly to exclude such a reading of the claim language. Further, we agree
with the Examiner's finding (Ans. 12) that Arioka's cap 35 has both the
claimed stepped configuration and the claimed recess in which the orifice
plate is inserted.
For these reasons, Appellants' have not demonstrated error in the
rejection of claim 9 under 35 U.S.C. § 102(b) as anticipated by Arioka. As
such, we sustain the first ground of rejection of claim 9, and claims 10, 13-
18, and 20 falling with claim 9.
Second Ground of Re} ection
Appellants' argue the claims subject to the second ground of rejection
as a group. Br. 5. We select claim 9 as the representative claim for the
group, and claims 10, 14-18, 20, and 22 stand or fall with claim 9.
37 C.F.R. § 41.37(c)(l)(iv).
In this alternative rejection, the Examiner found that only valve seat
member 3 of Arioka corresponds to the claimed "valve-seat body" and that
Arioka's valve-seat member 3 does not include a recess in a center region of
the longitudinal valve axis A in which the orifice plate 10 is inserted. Final
Act. 5 (noting that "[i]n Arioka, the orifice plate 10 is at a front end face of
valve seat body 3"); Ans. 12-13 (noting this rejection was made on the basis
that even if the claimed invention required a one-piece valve-seat body, it
would have been obvious to modify the valve-seat member 3 of Arioka in
the manner claimed in light of Xu). The Examiner found that Xu teaches a
valve seat body having both a stepped configuration and a recess into which
an orifice plate is inserted. Id. (citing Xu, Fig. 1 ). The Examiner found that
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Appeal2014-002967
Application 11/664,633
Xu teaches that orifice plate 24 can be welded either in a recess in the valve
seat body or to the bottom surface of the valve seat body without a recess.
Id. (citing Xu, col. 3, 11. 34-52 for the teaching that recess 34 is optional).
The Examiner determined that it would have been obvious to a person of
ordinary skill in the art at the time of the invention to modify the valve seat
member 3 of Arioka to include a recess in a center region of the longitudinal
valve axis into which the orifice plate 10 is inserted because use of a recess
as claimed was a known design alternative to welding the orifice plate to the
front end face of the valve seat body. Id. Appellants argue only that "the
Xu reference does not cure and is not asserted to cure the critical
deficiencies of the Arioka reference." Br. 5.
We agree with the Examiner that Arioka' s valve-seat member 3 lacks
"a recess in a center region of the longitudinal valve axis in which the orifice
"I • • • • "I.,.,~ ,.., /~"I • ... ".:::; ~ • • ... ... .... ., •• prnte 1s msenea. tir. / ~ lAaims App. J. ~ Lomrary to Appeuams assen10n,
as explained supra, the Examiner specifically relied on Xu to cure this
missing element of Arioka's valve seat member 3. We agree with the
Examiner's reading of Xu as evidence that inserting an orifice plate into a
recess formed in the front end face of the valve-seat body was a known
design alternative in the art at the time of Appellants' invention in lieu of
welding the orifice plate to the front end face of the valve seat body with a
5 Arioka' s valve-seat member 3 has a stepped configuration. Compare
Arioka's Fig. 4 (showing stepped configuration of valve seat member 3),
with Appellants' Fig. 2 (showing similar stepped configuration of valve-seat
body 16).
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Appeal2014-002967
Application 11/664,633
recess. We further agree, for the reasons explained supra and by the
Examiner, that it would have been obvious to modify the valve seat member
3 of Arioka to add such a recess, as called for in claim 9.
For these reasons, Appellants' have not demonstrated error in the
rejection of claim 9 under 35 U.S.C. § 103(a) as unpatentable over Arioka
and Xu. As such, we sustain the second ground of rejection of claim 9, and
claims 10, 14-18, 20, and 22 falling with claim 9.
Third through Ninth Grounds of Rejection
As to the remaining grounds of rejection of the dependent claims,
Appellants rely on the arguments presented for independent claim 9 and
argue that "none of the secondary references overcomes the deficiencies" of
Arioka and Arioka in combination with Xu. Br. 5. For the reasons set forth
above, Appellants have not demonstrated error in the rejection of claim 9.
Accordingly, we likewise sustain the remaining grounds of rejection.
DECISION
The decision of the Examiner to reject claims 9-11, 13-18, and 20-33
is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED
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