Ex Parte Gibson et al

Board of Patent Appeals and Interferences

Mar 10, 2010

10214865 (B.P.A.I. Mar. 10, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte CATERPILLAR, INC.
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Appeal 2009-005550
Application 10/214,865
Technology Center 3700
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Decided: March 11, 2010
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Before RICHARD E. SCHAFER, JAMESON LEE, and
SALLY C. MEDLEY, Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
This is a decision on appeal by the real party in interest, Caterpillar,
Inc. (“Caterpillar”), under 35 U.S.C. § 134(a) from a final rejection of claims
8-19. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
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References Relied on by the Examiner
Honma et al. (“Honma”) 4,526,145 Jul. 2, 1985
Matsumura et al. (“Matsumura”) 4,573,442 Mar. 4, 1986
Kawachi et al. (“Kawachi”) 6,135,090 Oct. 24, 2000

The Rejections on Appeal
The Examiner rejected claims 8-13 and 15-19 under 35 U.S.C.
§ 103(a) as unpatentable over Kawachi and Honma.
The Examiner rejected claim 14 under 35 U.S.C. § 103(a) as
unpatentable over Kawachi, Honma, and Matsumura.

The Invention
The invention relates to a common rail fuel injection system
incorporating a sleeve metered variable delivery fluid pump. (Spec. 1:12-
16.)
Claim 8 is reproduced below (App. Br. 14 Claims App’x.):
A fuel injection system comprising:

a common rail;

a plurality of fuel injectors fluidly connected to said common
rail;

a source of fluid;

a sleeve metered pump with an outlet fluidly connected to said
common rail and an inlet fluidly connected to said source of fluid;
an inlet check valve fluidly positioned between said source of fluid
and a pump chamber of said sleeve metered pump;

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said sleeve metered pump including a solenoid assembly, at
least one plunger that defines a vent and is positioned to reciprocate a
stroke distance in a pump housing;

said solenoid assembly includes a coil disposed around said at
least one plunger and a metering sleeve slidably mounted on each said
at least one plunger; and

a camshaft operably coupled to said pump and being rotatable
with respect to said at least one plunger.

B. ISSUE
Has Caterpillar shown that the Examiner erred in determining that a
person of ordinary skill in the art would have had reason to substitute
Honma’s cut-off valve for Kawachi’s fuel-pressure control valve?
C. FINDINGS OF FACT
1. Kawachi discloses a fuel injection control system that includes
high pressure pump 8. (Kawachi 4:32-35.)

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2. Kawachi’s Figures 2-4 are reproduced below:

The figures above depict cross-sectional views of Kawachi’s pump
during its operation.

3. As shown in the figures reproduced above, Kawachi’s pump 8
includes cylinder 10, pressurized chamber 11, reciprocating pump plunger
12, cam 13, fuel passage 15, suction valve 16, discharge fuel passage 17,
discharge valve 18, a relief fuel passage 19, and fuel-pressure control valve
20. (Id. at 4:48-63.)
4. When cam 13 rotates, plunger 12 follows a reciprocating
motion within cylinder 10. (Id. at 5:10-15.)
5. As plunger 12 reciprocates, fuel is allowed to pass from fuel
passage 15 through suction valve 16 into pressurized chamber 11 and then
through discharge valve 18 where it is directed to common rail 30 (not
shown in the figures reproduced above). (Id. at 5:34-47.)
6. The pressure level of the fuel in pressurized chamber 11 is
representative of the pressure level of the fuel within common rail 30. (Id. at
6:50-59.)
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7. Kawachi’s Figure 5 is reproduced below:

The figure above depicts the operation of fuel-pressure control
valve 20.

8. As illustrated in Figure 5, in the event that the fuel pressure in
pressurized chamber 11 is beyond a predetermined maximum, pressure
control valve 20 opens to relieve pressure within the chamber. (Id.)
9. The purpose of fuel-pressure control valve 20 is to control and
regulate the pressure within pressurized chamber 11 and by extension the
pressure within common rail 30. (Id. at 6:38-49; 8:9-14.)
10. Honma discloses an apparatus for adjusting fuel injection
quantity in a fuel injection pump. (Honma 1: 6-12.)
11. In Honma, cut-off valve 68 operates to adjust the quantity of
fuel that is supplied directly to a fuel injector. (Id. at 3:36-39.)
12. The only component of Honma’s pump that is associated with
any pressure regulating function is a separate valve 42. (Id. at 3:4-6.)

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13. Honma’s Figure 1 is reproduced below:

The figure above depicts a cross-sectional view of Honma’s
fuel injection pump.

14. As shown in Figure 1, valve 42 is illustrated as a feature of
Honma’s pump that is removed from cut-off valve 68. (Id. at Fig. 1.)
D. PRINCIPLES OF LAW
To support an obviousness determination, the Examiner must
articulate a reason with rational underpinnings to support a motivation to
combine two reference’s teachings. In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006).
E. ANALYSIS
The Examiner rejected claims 8-13 and 15-19 as unpatentable over
Kawachi and Honma and claim 14 as unpatentable over Kawachi, Honma,
and Matsumura. Caterpillar argues dependent claims 9-13 and 16-19
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collectively with independent claims 8 and 15. Dependent claim 14 is
argued separately.
We focus on claims 8 and 15. Claim 8 is drawn to a fuel injection
system. Claim 15 is drawn to a method that corresponds to the system of
claim 8. Specifically, those claims associate a “common rail” with a “sleeve
metered pump” in a fuel injection system. The common rail operates to
deliver fuel to a plurality of fuel injectors connected to the common rail.
The pump supplies fuel to the common rail and includes a solenoid assembly
with a coil disposed around a plunger and a metering sleeve which is
slidably mounted on the plunger.
The Examiner found that the Kawachi discloses a fuel injection
system which uses a common rail. In particular, the Examiner characterizes
Kawachi’s teachings as follows (Ans. 3:15-16):
Kawachi teaches a common rail fuel system fed by a single
reciprocating pump. The pump includes an inlet check valve and a
magnetically controlled spill valve.

Evidently, the Examiner determined that Kawachi’s “magnetically
controlled spill valve” lacks some feature required by Caterpiller’s claims.
To make-up for the deficiency, the Examiner turned to Honma. The
Examiner characterizes Honma’s teachings as follows (Ans. 3:17-20):
Honma teaches a multiple cam pump whose output is varied
using a spill valve. The spill valve is on the bottom of the pump
piston and fuel is spilled from the pump via an internal spill passage
(Note the similarity between Appellant’s Figure 3 and Figure 14 of
Honma.).

Combining the teachings of Kawachi and Honma, the Examiner
concluded (Ans. 3:21-4:2):
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It would have been obvious to modify Kawachi by merely
replacing the spill valve (and spill passage) mechanism with the one
taught by Honma because this type of spill valve had been used for
decades on rotating and reciprocating pumps and on merely
reciprocating pumps (although the magnetic ring feature was only
found on the former).
[Emphasis in original]

The Examiner’s choice of terminology in describing the teachings of
Kawachi and Honma and how they are applied to Caterpillar’s claims is
confusing. Neither of those references nor Caterpillar’s claims uses the
terms “spill valve” or “spill passage.” Based on our review of the record,
the Examiner has evidently determined that Kawachi’s pump 8 is not a
“sleeve-metered pump” because the electromagnetically-controlled pressure
control valve 20 within that pump lacks the component of a metered sleeve.
To supply the missing feature, the Examiner appears to have pointed to
Honma’s disclosure of solenoid operated cut-off valve 68 as including a
metered sleeve. The Examiner then concluded that it would have been
obvious to substitute Honma’s cut-off valve 68 for Kawachi’s pressure
control valve 20 to arrive at Caterpillar’s claimed invention.
Caterpillar contends that there is no motivation to substitute Honma’s
cut-off valve 68 for Kawachi’s pressure control valve 20 because those two
valves, while both used in fuel injection systems, operate for different
purposes and perform distinct functions within their respective systems.
To support an obviousness determination, the Examiner must
articulate a reason with rational underpinnings to support a motivation to
combine two reference’s teachings. In re Kahn, 441 F.3d at 988. In this
case, the rationales offered by the Examiner to support his proposed
combination of Kawachi and Honma are: (1) that valves with a metering
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sleeve, such as in Honma, “have been used for decades” in fuel pumps (Ans.
4:1); (2) that the valves of Kawachi and Honma may be substituted for one
another because they “are performing the exact same function” (Ans. 7:12-
14); and (3) that Honma teaches that its valve “produces improved control
accuracy over prior art control sleeves…” (Ans. 8:3-6.)
None of those rationales is persuasive. As to the first rationale, that
one type of fuel pump, such Honma’s pump, includes one type of valve does
not alone provide adequate reason to implement that valve in another type of
fuel pump. That is, a motivation to combine the teachings of Honma with
Kawachi does not emerge simply because Honma shows that valves with a
metered sleeve are known to exist.
With respect to the Examiner’s second rationale, we do not agree with
the Examiner that the identified valves of Kawachi and Honma perform the
same function. Kawachi discloses a fuel injection control system that
includes high pressure pump 8. (Kawachi 4:32-35.)

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Kawachi’s Figures 2-4 are reproduced below:

The figures above depict cross-sectional views of Kawachi’s pump
during its operation.

As shown in the figures reproduced above, Kawachi’s pump 8
includes cylinder 10, pressurized chamber 11, reciprocating pump plunger
12, cam 13, fuel passage 15, suction valve 16, discharge fuel passage 17,
discharge valve 18, a relief fuel passage 19, and fuel-pressure control valve
20. (Id. at 4:48-63.) When cam 13 rotates, plunger 12 follows a
reciprocating motion within cylinder 10. (Id. at 5:10-15.) As plunger 12
reciprocates, fuel is allowed to pass from fuel passage 15 through suction
valve 16 into pressurized chamber 11 and then through discharge valve 18
where it is directed to common rail 30 (not shown in the figures reproduced
above). (Id. at 5:34-47.) The pressure level of the fuel in pressurized
chamber 11 is representative of the pressure level of the fuel within common
rail 30. (Id. at 6:50-59.)

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Kawachi’s Figure 5 is reproduced below:

The figure above depicts the operation of fuel-pressure control
valve 20.

As illustrated in the figure above, in the event that the fuel pressure in
pressurized chamber 11 is beyond a predetermined maximum, pressure
control valve 20 opens to relieve pressure within the chamber. (Id.) Thus,
the purpose of fuel-pressure control valve 20 is to control and regulate the
pressure within pressurized chamber 11 and by extension the pressure within
common rail 30. (Id. at 6:38-49; 8:9-14.)
On the other hand, Honma’s cut-off valve 68 is not disclosed as
functioning to relieve pressure within its fuel injector system. Instead, valve
68 is described as operating to adjust the quantity of fuel that is supplied
directly to a fuel injector. (Honma 3:36-39.) The only component of
Honma’s pump that is associated with any pressure regulating function is a
separate valve 42. (Id. at 3:4-6.)

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Honma’s Figure 1 is reproduced below:

The figure above depicts a cross-sectional view of Honma’s
fuel injection pump.

Little detail is provided as to the structure of valve 42, however, as
shown in the figure reproduced above, it is illustrated as a feature of
Honma’s pump that is removed from cut-off valve 68. (Id. at Fig. 1.) That a
separate valve component is necessary to perform a pressure regulating
function indicates that the cut-off valve does not perform such a function.
Accordingly, we reject the Examiner’s premise that Honma’s cut-off
valve 68 may be substituted for Kawachi’s pressure control valve 20 because
those two valves allegedly have the “exact same” function. As set forth
above, Kawachi’s valve operates to relieve fuel pressure when a
predetermined maximum pressure is reached whereas Honma’s valve
operates to adjust fuel quantity that is supplied directly to a fuel injector.
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Those two functions are independent and have not been shown to be the
same.
Finally, we also reject the Examiner’s third proposed rationale for
combining the teachings of Kawachi and Honma. Honma does disclose that
its cut-off valve 68 has the benefit of providing improved control accuracy
of fuel quantity supplied to a fuel injector. (Id. at 2:3-5.) However, the
Examiner does not explain why that benefit would be desirable or even
apply when the cut-off valve is substituted for a valve that must operate to
control fuel pressure, such as Kawachi’s fuel-pressure control valve 20.
On this record, the Examiner has not established a reasonable basis for
the conclusion that a person of ordinary skill in the art would have had
reason to substitute Honma’s cut-off valve for Kawachi pressure control
valve. For the foregoing reasons, we do not sustain the rejection of claims 8
and 15 as unpatentable over Kawachi and Honma. Claims 9-14 and 16-19
are ultimately dependent on, and include all the limitations of, one of claims
8 and 15. Accordingly, we also do not sustain the rejection of claims 9-13
and 16-19 over Kawachi and Honma or the rejection of claim 14 over
Kawachi, Honma, and Matsumura.
F. CONCLUSION
Caterpillar has shown that the Examiner erred in determining that a
person of ordinary skill in the art would have had reason to substitute
Honma’s cut-off valve for Kawachi’s fuel-pressure control valve.
G. ORDER
The rejection of claims 8-13 and 15-19 under 35 U.S.C. § 103(a) as
unpatentable over Kawachi and Honma is reversed.
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The rejection of claim 14 under 35 U.S.C. § 103(a) as unpatentable
over Kawachi, Honma, and Matsumura is reversed.

REVERSED

CATERPILLAR c/o LIELL, MCNEIL & HARPER
Intellectual Property Department
AH9510
100 N.E. Adams
Peoria IL 61629-9510