Ex Parte Heyse

Patent Trial and Appeal Board

Oct 28, 2013

11665095 (P.T.A.B. Oct. 28, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/665,095 11/20/2008 Joerg Heyse 10191/4622 6346
26646 7590 10/28/2013
KENYON & KENYON LLP
ONE BROADWAY
NEW YORK, NY 10004
EXAMINER
JONAITIS, JUSTIN M
ART UNIT PAPER NUMBER
3752
MAIL DATE DELIVERY MODE
10/28/2013 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 JOERG HEYSE
____________________

Appeal 2011-013142
Application 11/665,095
Technology Center 3700
____________________

Before JENNIFER D. BAHR, JOHN C. KERINS, and
PHILLIP J. KAUFFMAN, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-013142
Application 11/665,095
2

STATEMENT OF THE CASE
Joerg Heyse (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 12–17 and 20-22. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

The Claimed Subject Matter
Claim 12, reproduced below, is illustrative of the claimed subject
matter.
12. A fuel injector for a fuel-injection system of an internal
combustion engine, comprising:
a valve-seat body having a fixed valve seat;
a valve-closure member that cooperates with the valve
seat and is axially displaceable along a longitudinal valve axis;
an orifice plate including at least one outlet opening and
situated downstream from the valve seat, wherein a flow-
exposed flow-through area above the at least one outlet opening
in an inflow cavity provided upstream from the orifice plate,
which is calculated as a product of a circumference of the outlet
opening in a region of its entry plane and a vertical clearance
above the outlet opening in the inflow cavity, is smaller than a
cross-sectional area of the outlet opening in its entry plane.

Evidence
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Wells
Peterson
US 5,449,114
US 6,789,754 B2
Sep. 12, 1995
Sep. 14, 2004

Appeal 2011-013142
Application 11/665,095
3
Rejections
Appellant requests our review of the following rejections:
I. Claims 12-17, and 20-22 under 35 U.S.C. § 112, second
paragraph, as being indefinite;
II. Claims 12-17, 21, and 22 under 35 U.S.C. § 103(a) as being
unpatentable over Peterson; and
III. Claim 20 under 35 U.S.C. § 103(a) as being unpatentable over
Peterson and Wells.

OPINION
Indefiniteness
Independent claim 12 claims a flow-exposed flow-through area in an
inflow cavity of a fuel injector for a fuel-injection system of an internal
combustion engine. The claim specifies that the flow-exposed flow-through
area is calculated as the product of the circumference of an outlet opening
and a vertical clearance above the outlet opening. The claim further
specifies that the flow-exposed flow-through area is smaller than a cross-
sectional area of the outlet opening in its entry plane. The issue on appeal
before us is whether the Examiner erred in concluding that claim 12, and the
claims dependent on claim 12, are indefinite because the “vertical clearance
above the outlet opening in the inflow cavity” is variable due to the angled
configuration of the valve seat area above the outlet opening in the inflow
cavity.
App
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Appeal 2011-013142
Application 11/665,095
5
The Examiner maintains at page 2 of the Final Office Action mailed
March 18, 2010:
[I]t's unclear how the flow-exposed flow-through area is
calculated as a product of a circumference of the outlet opening
in a region of its entry plane and a vertical clearance above the
outlet opening in the inflow cavity. Because the valve-seat
surface is angular the flow-exposed flow-through area is going
to end up being a truncated cone vs. a standard cone and
therefore the flow-through area cannot be calculated simply by
a product of circumference and vertical clearance.
In his subsequent Advisory Action mailed September 21, 2010, the
Examiner clarified that:
Because the Boundary surface is angular with respect to
the outlet opening, the flow-through area above the outlet
opening cannot simply be calculated as the product of the
circumference of the outlet opening and the vertical clearance
above the outlet opening as depending where the height is
variable dependent on where above the outlet opening it is
measured. Therefore the flow-exposed flow through area must
take into account the sloped boundary surface in order to be
properly calculated.
Appellant responds at page 3 of his Appeal Brief that:
As regards the calculation of the flow-through area in
situations where the vertical clearance is non-constant along the
circumference of the outlet opening, it would be plainly
apparent to one of ordinary skill in the art to simply use the
vertical clearance at a point along the circumference of the
outlet opening that corresponds to the average clearance, or to
calculate the product of the circumference and the non-constant
vertical clearance using basic calculus.

In any event, the present claims sufficiently set out and
circumscribe a particular subject matter with a reasonable
degree of clarity and precision, which is all that is required for
compliance with the definiteness requirement of 35 U.S.C.
§ 112.
Appeal 2011-013142
Application 11/665,095
6
“The purpose of the second paragraph of 35 USC 112 is to allow the
public to know exactly what the patent covers, so that those who would
approach the area circumscribed by the claims of a patent may more readily
and accurately determine the boundaries of protection involved and evaluate
the possibility of infringement and dominance.” Ex parte Brummer, 12
USPQ2d 1653, 1655 (BPAI 1989), citing In re Hammack, 427 F.2d 1378
(CCPA 1970). The metric set forth in claim 12 does not serve this purpose.
Because the Specification and drawings disclose an inflow cavity with a
non-constant vertical clearance above an outlet opening, there is no single
value that must be used in making the mandated calculation. In other words,
any number of vertical clearances above the outlet opening would satisfy the
claim language. Appellant’s contention that an average clearance or that
“basic calculus” can be used is not persuasive; the Specification does not
disclose using an average or basic calculus, or even how the average or
vertical clearance is to be calculated, through basic calculus or any other
means. Because a number of values can be used to satisfy the claim
language depending on the configuration of the inflow cavity, there is
uncertainty in the interpretation of claim 12, as well as the remaining claims
on appeal which depend on claim 12.
For the above reasons, we sustain the rejection of claims 12–17 and
20–22 under 35 U.S.C. § 112, second paragraph, as being indefinite.

Obviousness
Having determined that claims 12–17 and 20–22 are indefinite, we do
not sustain the rejections of these claims under 35 U.S.C. § 103(a), because
to do so would require speculation as to the scope of the claims. See In re
Steele, 305 F.2d 859, 862-63 (CCPA 1962) (holding that the Board erred in
Appeal 2011-013142
Application 11/665,095
7
affirming a rejection of indefinite claims under 35 U.S.C. § 103(a), because
the rejection was based on speculative assumptions as to the meaning of the
claims).

DECISION
The Examiner’s decision rejecting claims 12–17 and 20–22 under 35
U.S.C. § 112, second paragraph, is AFFIRMED.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

mls