Ex Parte Groh et alDownload PDFPatent Trial and Appeal BoardMar 19, 201813261762 (P.T.A.B. Mar. 19, 2018) Copy Citation 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 Copy with citationCopy as parenthetical citation