Ex Parte Groh et al

Patent Trial and Appeal Board

Mar 19, 2018

13261762 (P.T.A.B. Mar. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/261,762 11/14/2013
513 7590 03/21/2018
WENDEROTH, LIND & PONACK, L.L.P.
1030 15th Street, N.W.,
Suite 400 East
Washington, DC 20005-1503
FIRST NAMED INVENTOR
Christian Groh
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.
61043 9019
EXAMINER
KRAFT,LOGANM
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
03/21/2018 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):
eoa@wenderoth.com
kmiller@wenderoth.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTIAN GROH and KAI REMUS
Appeal2017-005515
Application 13/261,762
Technology Center 3700
Before JOHN C. KERINS, EDWARD A. BROWN, and
LYNNE H. BROWNE, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Christian Groh and Kai Remus (Appellants) 1 appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision rejecting claims 23-31.2 We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 The real party in interest is identified as Hydac Electronic GmbH. Appeal
Br. 1.
2 Claims 32-34 are canceled. See Amendment filed September 8, 2016
(entered in the Advisory Action dated September 26, 2016). Claims 11-22
are allowed. Final Act. 1-2.
Appeal2017-005515
Application 13/261,762
CLAIMED SUBJECT MATTER
Claim 23, reproduced below, is the sole independent claim.
23. A pneumatic valve for providing a pressure-reducing
valve or a pressure relief valve to be connected to a
pneumatically operated device, comprising:
a valve housing with a guide, an actuating device and a
reset device therein and having first and second media
connections thereon; and
a piston valve element axially displaceable in said guide
and said valve housing under effects of said actuating device and
said reset device, said reset device exerting a spring force on said
piston valve element counter to a magnetic force applied to said
piston valve element by said actuating device, said piston valve
element establishing a media-conducting connection between
said first and second media connections upon activation of said
actuating device taking into account prevailing forces of applied
pressures multiplied by respective pressure active surfaces on
said piston valve element, the spring force, flow forces on said
piston valve element and the magnetic force;
said actuating device including an actuating magnet
having an armature guided in an armature housing, said armature
being longitudinally displaceable in said armature housing and
being controlled by an energizable solenoid device that moves
said piston valve element from a closed position to an open
position counter to the spring force, said reset device including a . .
compress10n spnng;
said guide of said valve piston element being airtight; and
said armature housing being maintained at an ambient
pressure and is pressure-tight relative to surroundings thereof.
Appeal Br. (Claims App. i).
2
Appeal2017-005515
Application 13/261,762
REJECTION3
Claims 23-31 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Muruyama (US 5,271,430, issued Dec. 21, 1993) and Ojima (US
6,874,751 B2, issued Apr. 5, 2005).
ANALYSIS
Claim 23 calls for "said armature housing being maintained at an
ambient pressure and [being] pressure-tight relative to surroundings
thereof." Appeal Br. (Claims App. i). The Examiner states that "no
structure is implied by th[ is] limitation" and that this limitation is inherent in
Muruyama. Final Act. 5-6. Particularly, the Examiner finds that Muruyama
discloses a pneumatic valve comprising an armature housing (electrical
actuator 20) maintained at an ambient pressure and which is pressure-tight to
surroundings thereof. Id. at 4-6 (citing Muruyama, Figs. 2, 5, Abstract).
The Examiner also finds that a seal is positioned on the second large
diameter portion 15 of the valve and "seals the armature housing from the
rest of the valve and is inherently pressure tight to prevent fluid from
entering the armature housing." Id. at 6.
Appellants assert that, in Muruyama, "[ s ]ince the pressurized fluid
flowing between the main [port] 11 and the drain port 12 is separated from
the electrical actuator by [seal l 5a] ... , no need or inherency exists for the
housing of electrical [actuator] 20 to be maintained at ambient pressure."
Appeal Br. 4 (emphasis added).
3 The rejections of claims 32-34 under 35 U.S.C. § 112, second paragraph
(Final Act. 3-4) and under 35 U.S.C. § 103(a) as unpatentable over
Muruyama and Ojima (id. at 4, 10-13) are moot.
3
Appeal2017-005515
Application 13/261,762
The Examiner responds that
[ s ]ince no reason exists for pressurizing armature housing 20 of
the electrical actuator, and doing so would only act to create
pressures on the actuating surfaces of the armature 20a inside the
housing which could create an undesired response, it would have
been apparent to one skilled in the art that the armature housing
20 is maintained at an ambient pressure.
Ans. 3-4 (emphasis added).
Appellants have the better position. To the extent the Examiner is
asserting that the disputed limitation, "said armature housing being
maintained at an ambient pressure and is pressure-tight relative to
surroundings thereof," does not impart any structural limitations (see Final
Act. 6), we do not agree. While this limitation does not specify expressly a
particular structure, the claim nonetheless requires the armature housing to
be maintained at an ambient pressure and pressure-tight to its surroundings.
Regarding this claim requirement, Appellants explain, with regard to
Muruyama, that "[t]he mere lack of a need for pressure does not necessarily
or inherently provide the ambient pressure and pressure-tight features since
the actuator 20 admittedly can also operate when pressurized and/or not
pressure-tight." Appeal Br. 5. "Inherency, however, may not be established
by probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient." MEHL/Biophile Int 'l
Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999). We are
persuaded that the Examiner has not established with evidence that
Muruyama discloses an armature housing that necessarily is maintained at
an ambient pressure and necessarily is pressure-tight relative to surroundings
thereof, as required by claim 23.
4
Appeal2017-005515
Application 13/261,762
The Examiner relies on Ojima to teach a solenoid valve that is driven
by an applied magnetic force. Final Act. 6. As such, the Examiner does not
rely on Ojima in any manner that cures the deficiency of Muruyama.
Therefore, we do not sustain the rejection of claim 23 and of dependent
claims 24-3 1.
DECISION
We reverse the rejection of claims 23-31.
REVERSED
5