Ex Parte Heyer et al

Patent Trial and Appeal Board

Aug 21, 2018

13518001 (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/518,001 06/20/2013
10800 7590 08/21/2018
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
FIRST NAMED INVENTOR
Klaus Heyer
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.
2178-0266 1398
EXAMINER
CARY, KELSEY E
ART UNIT PAPER NUMBER
3753
MAIL DATE DELIVERY MODE
08/21/2018 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 PATENT TRIAL AND APPEAL BOARD
Ex parte KLAUS HEYER, FRANK KAESTNER,
ERICH LUDEWIG, MASSIMILIANO AMBROSI,
FAKHEREDINE KEYROUZ, RENE SCHEPP, and
NORBERT ALAZE
Appeal2017-000959
Application 13/518,001
Technology Center 3700
Before STEVEN D.A. McCARTHY, JEFFREY A. STEPHENS, and
NATHAN A. ENGELS, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134(a) from the
Examiner's Final Office Action ("Final Act.") rejecting claims 2-5 and 7-
15, which are all the claims pending in the application. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.
1 The real party in interest is identified as Robert Bosch GmbH. Br. 2.
Appeal2017-000959
Application 13/518,001
Claimed Subject Matter
Claims 2 and 7 are independent. These claims, reproduced below
with particular limitations emphasized, illustrate the claimed subject matter.
2. A solenoid valve device, comprising:
a valve receiving device;
a valve insert of a solenoid valve which is received in the
valve receiving device; and
a pressure mechanism configured to press the valve insert
against the valve receiving device,
wherein the pressure mechanism comprises a valve body
of the solenoid valve introduced into the valve insert under stress,
and
wherein the valve body is configured to press the valve
insert against the valve receiving device to produce a frictional
connection between the valve insert and the valve receiving
device.
7. A solenoid valve device, comprising:
a valve receiving device,
a valve insert of a solenoid valve which is received in the
valve receiving device,
an axial filter axially located between the valve receiving
device and the valve insert, the valve insert and the axial filter
being spaced at an axial distance from one another, and
a sealing element positioned between the axial filter and
the valve insert.
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Appeal2017-000959
Application 13/518,001
Rejections2
I. Claims 2-5, 8, and 10-14 stand rejected under pre-AIA 35
U.S.C. § I02(b) as anticipated by Tsujimura (US 2007/0051839 Al,
published Mar. 8, 2007). Final Act. 6-9.
II. Claims 7, 9, and 15 stand rejected under pre-AIA 35 U.S.C.
§ I02(b) as anticipated by Goossens (US 6,659,421 Bl, issued Dec. 9,
2003). Final Act. 9.
DISCUSSION
Rejection I
Appellants argue Tsujimura does not expressly or inherently disclose
a valve body that "is configured to press the valve insert against the valve
receiving device to produce a frictional connection between the valve insert
and the valve receiving device," as recited in independent claim 2. Br. 12-
14. Appellants acknowledge Tsujimura's disclosure that a valve body (seat
403) is press-fit into a valve insert (guide 401), and that the valve insert
(guide 401) is press-fit into a valve receiving device (housing 3a). Br. 12;
see Tsujimura paras. 36, 46. Appellants contend, however, that Tsujimura is
silent as to the valve body (seat 403) pressing the valve insert (guide 401)
radially outward into the housing.
The plain language of the above-recited limitation of claim 2 requires
that the valve body at least contribute to the frictional connection between
2 The Examiner's Answer withdraws all rejections based on Haynes (US
2005/0269538 Al, published Dec. 8, 2005). Ans. 6-7; see Final Act. 5-6,
10-11.
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Appeal2017-000959
Application 13/518,001
the valve insert and the valve receiving device. The Specification explains
how this may be accomplished:
The valve body 1.5 is pressed into the valve insert 1.3, which
presses the valve insert 1.3 together with the valve receiving
device 1.1. For example, the valve body 1.5 may be designed so
that the outside diameter of the valve body 1.5 is slightly greater
than the inside diameter of the valve insert 1.3 and the point at
which the valve body is to be pressed in, which may lead to a
slight expansion of the valve insert.
Spec. 5:34---6:4. 3 Accordingly, under the broadest reasonable interpretation
in light of the Specification, we interpret claim 2 to require the valve body to
cause at least some expansion of the outer dimension of the valve insert in
order to "produce a frictional connection between the valve insert and the
valve receiving device."
We agree with Appellants that the cited portions of Tsujimura do not
expressly disclose that the frictional fit between the valve body (seat 403)
and valve insert (guide 401) is in any way related to the frictional fit
between the valve insert (guide 401) and the valve receiving device (housing
3a). The Examiner does not assert otherwise, but states that Tsujimura's
"seat 403 is press-fitted into the guide 401, which would cause a slight
expansion or would cause the guide to be pressed 'radially outwardly into
the housing 3a' since Tsujimura discloses both the seat and the guide being
press-fit." Ans. 7. The Examiner, therefore, appears to be relying on
Tsujimura's inherent disclosure of the disputed limitations recited above.
"'Inherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
3 Citations are to the Specification filed June 21, 2012, including
amendments filed that same day and on June 4, 2015.
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Appeal2017-000959
Application 13/518,001
of circumstances is not sufficient.'" In re Oelrich, 666 F.2d 578, 581
(CCPA 1981) (quotingHansgirgv. Kemmer, 102 F.2d212, 214 (CCPA
1939)). Appellants contend "it cannot be said that the press fit of the seat
( 403) into the guide ( 401) necessarily presses the guide ( 401) radially
outwardly into the housing." Br. 13-14. Appellants correctly note
Tsuj imura' s guide 401 is formed from a magnetic material. Br. 13 ( citing
Tsujimura para. 35). Appellants contend "magnetic materials are formed of
metal, and given the relative thickness of the cylindrical wall of the guide
( 401 ), it is very unlikely the press fit of the seat ( 403) into the metal guide
( 401) could deform the guide ( 401) radially outwardly enough to press the
guide (401) into the housing (3a)." Id.
We note that Tsujimura's valve body (seat 403) is also made of metal.
Tsujimura para. 38. Nevertheless, whether it is likely or unlikely that
Tsujimura's seat 403 would cause expansion of guide 401, we agree with
Appellants that the Examiner has not explained why expansion will
necessarily occur. Depending on the specific materials and dimensions,
press-fitting seat 403 into the internal opening of guide 401 may cause
displacement only at the interface of these two materials and may not cause
the outside diameter of guide 401 to expand.
For the foregoing reasons, on this record, we do not sustain the
Examiner's rejection of claim 2 as anticipated by Tsujimura. For the same
reasons, we do not sustain the rejection of dependent claims 3-5, 8, and 10-
14, which were rejected on the same ground. We do not reach additional
arguments made in support of the dependent claims.
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Appeal2017-000959
Application 13/518,001
Rejection II
Appellants argue Goossens does not disclose "a sealing element
positioned between the axial filter and the valve insert," as recited in
independent claim 7. Br. 19-22.
The Examiner annotates Figure 5 of Goossens to show how the
above-recited limitation is met, and this annotated figure is reproduced
below.
Annotated Figure 5 from Goossens.
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Application 13/518,001
Ans. 3. The Examiner's Annotated Figure 5 from Goossens shows that the
top of valve seat member 9 extends higher than gaskets 17 such that a
straight line may be drawn from a portion of seat 9 through gaskets 17 and
plate filter 21 near the bottom of the figure. The Examiner finds that, in this
way, Goossens discloses that gasket 17 is "between" the top of the valve seat
member and the filter, noting that "the term between is broad." Ans. 8.
Appellants argue the Examiner's interpretation of claim 7 is
unreasonably broad. Appellants rely on the American Heritage Dictionary
of the English Language to define "between," when used as an adverb, to
mean "[i]n an intermediate space, position, or time." Br. 20. Thus,
Appellants assert, in the context of claim 7, the sealing element must be
positioned in an intermediate space or position relative to the axial filter and
the valve insert. Id. The Examiner does not offer any specific objection to
Appellants' use of a dictionary to define "between."
In considering claim 7 as a whole, we agree with Appellants'
interpretation of the disputed limitations as requiring the sealing element to
be positioned in the axial gap created by the separation of the valve insert
and axial filter. Claim 7 provides that "the valve insert and the axial filter
[are] spaced at an axial distance from one another," and then recites that the
sealing element is positioned between these two structures. The language of
the claim implies that the sealing element is positioned in the space created
by the separation of the valve insert and axial filter. This understanding is
reinforced by the Specification, which states:
The exemplary embodiment represented in figure 4 shows
a separation of an additional axial filter 4.2 from the valve insert
4.3 introduced into the valve receiving device 4.1. A sealing
element 4.15, which may be embodied as an elastomer sealing
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Application 13/518,001
element, for example, can therefore be introduced between the
axial filter 4.2 and the valve insert 4.3.
Spec. 8:29-35 (emphasis added). The Examiner's interpretation that claim 7
"only requires that a line can be drawn through the three elements listed,"
Ans. 8, does not fit with how one of ordinary skill in the art would have
understood these limitations in light of the Specification.
We agree with Appellants that Goossens does not disclose a sealing
element being positioned in the axial gap created by the separation of the
axial filter and valve insert. Accordingly, we do not sustain the Examiner's
decision rejecting claim 7 as anticipated by Goossens. For the same reasons,
we do not sustain the Examiner's decision rejecting dependent claims 9 and
15, which were rejected on the same basis.
DECISION
We reverse the Examiner's rejections of claims 2-5 and 7-15.
REVERSED
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