Ex Parte Haugaard

Board of Patent Appeals and Interferences

Nov 23, 2011

10570764 (B.P.A.I. Nov. 23, 2011)

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.
10/570,764 08/22/2006 Jens Laurvig Haugaard 50906 4917
1609 7590 11/23/2011
ROYLANCE, ABRAMS, BERDO & GOODMAN, L.L.P.
1300 19TH STREET, N.W.
SUITE 600
WASHINGTON,, DC 20036
EXAMINER
FOX, JOHN C
ART UNIT PAPER NUMBER
3753
MAIL DATE DELIVERY MODE
11/23/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JENS LAURVIG HAUGAARD
____________________

Appeal 2009-014821
Application 10/570,764
Technology Center 3700
____________________

Before: JOHN C. KERINS, KEN B. BARRETT, and
PHILLIP J. KAUFFMAN, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-014821
Application 10/570,764
2
STATEMENT OF CASE
Appellant seeks review of the rejection of claims 9-21 under
35 U.S.C. § 103(a) as unpatentable over Stumpmeier (US 4,080,983; issued
May 28, 1978). We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

THE INVENTION
Appellant’s claimed invention relates to “a construction-kit system
having at least one primary valve block with at least two groups of
connecting lines all of which are interconnected at one point by a connecting
line of one group as to conduct fluid.” Spec. 1. Independent claim 9,
reproduced below, is representative of the claimed subject matter (emphasis
added):
9. A modular hydraulic system, comprising:
at least one primary valve block;
at least first and second groups in the primary valve
block of connecting lines all connected in fluid communication
at one point by a connecting line of said first group;
at least two other connecting lines of said first group
being connected in fluid communication to a respective
connection line of said second group;
at least three first dummy components for receiving
definable valve components connected to the connecting lines of
said second group; and
at least two second dummy components connected
between a common connecting line of said second group and
another associated connecting line of said second group.

Appeal 2009-014821
Application 10/570,764
3
ISSUE
Has the Examiner established a prima facie case of obviousness
regarding independent claim 9?

ANALYSIS
The Examiner’s conclusion that the subject matter of claim 9 would
have been obvious over Stumpmeier is based on the generalization that the
modular hydraulic system of claim 9 “can be potentially created” from
Stumpmeier’s manifold 1 (at least one primary valve block), first group of
connecting lines (transverse bore 8), second group of connecting lines
(longitudinal channels A, B, F, P, and T), and distributor modules (dummy
components). Ans. 3-4, and 6.
The findings that underlie this conclusion are based on a potential to
create the claimed subject matter rather than identification of a particular
embodiment or a proposed modification of a specific embodiment that meets
the claim terms. For example, the Examiner’s finding that Stumpmeier’s
distributor modules correspond to the claimed dummy components does not
distinguish between first and second dummy components. Ans. 3-4.
Further, the finding does not identify the number of manifolds included in
the proposed combination, nor identify the quantity, configuration, or
position of the distributor modules within the intersections of transverse bore
8 (the first group of connecting lines) and the longitudinal channels (the
second group of connecting lines). This lack of specificity is particularly
troubling because, as the Examiner points out, “[t]here are innumerable
different circuits that can be created with the apparatus disclosed by
Stumpmeier.” Ans. 6.
Appeal 2009-014821
Application 10/570,764
4
“The Examiner has the initial burden to set forth the basis for any
rejection so as to put the patent applicant on notice of the reasons why the
applicant is not entitled to a patent on the claim scope that he seeks – the so-
called ‘prima facie case.’” Ex Parte Frye, 94 USPQ2d 1072, 1075 (BPAI
2010) (precedential) (citation omitted); see also, In re Jung, 637 F.3d 1356,
1362 (Fed. Cir. 2011) (provisions of 35 U.S.C. § 132 violated when rejection
is so uninformative that applicant is prevented from recognizing and seeking
to counter grounds for rejection).
Here, the Examiner does not set forth findings that: (1) Stumpmeier
discloses at least three first dummy components for receiving definable
valve components connected to the connecting lines of the second group, or
(2) Stumpmeier discloses at least two second dummy components connected
between a common connecting line of the second group and another
associated connecting line of the second group, as called for in claim 9. The
Examiner does not adequately articulate findings to support a conclusion
that a system with these features would have been obvious to a person of
ordinary skill in the art. We have no factual findings to review regarding
these limitations of claim 9, and thus, we are persuaded by Appellant that the
Examiner has not made a proper prima facie case of obviousness. See
Reply Br. 2.
As such, we are constrained to reverse the rejection of independent
claim 9 and its dependent claims 10-21.

CONCLUSION
The Examiner failed to establish a prima facie case of obviousness
regarding independent claim 9.

Appeal 2009-014821
Application 10/570,764
5
DECISION
We reverse the Examiner’s decision to reject claims 9-21.

REVERSED

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