Ex Parte HoangDownload PDFPatent Trial and Appeal BoardSep 10, 201811658464 (P.T.A.B. Sep. 10, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 11/658,464 01/24/2007 24972 7590 09/12/2018 NORTON ROSE FULBRIGHT US LLP 1301 Avenue of the Americas NEW YORK, NY 10019-6022 FIRST NAMED INVENTOR Anh-Tuan Hoang 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. BOSC.P4616US/1000211443 6081 EXAMINER CERNOCH, STEVEN MICHAEL ART UNIT PAPER NUMBER 3752 NOTIFICATION DATE DELIVERY MODE 09/12/2018 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): nyipdocket@nortonrosefulbright.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANH-TUAN HOANG Appeal2018-000538 Application 11/658,464 Technology Center 3700 Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and PHILIP J. HOFFMANN, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant 1 appeals from the Examiner's rejection of claims 8, 11, 14, 15, 18, and 23. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. According to Appellant, the invention is directed to a "fuel injector for fuel-injection systems of internal combustion engines." Spec, Abstract. 1 According to Appellant, "[t]he real party in interest ... is ROBERT BOSCH GmbH." Appeal Br. 1. Appeal2018-000538 Application 11/658,464 Claim 8 is the sole independent claim on appeal. Below, we reproduce claim 8 as representative of the appealed claims. 8. A fuel injector for a fuel-injection system of an internal combustion engine for injection of a fuel, comprising a solenoid coil, an armature cooperating with the solenoid coil, a valve sleeve, and a support tube situated in the valve sleeve and used as inner pole for the solenoid coil, wherein the valve sleeve is made of a material having low magnetic permeability in order to guide a magnetic flux between a valve housing and the armature and also between the valve housing and the support tube, wherein the material is a powder composite material containing iron and non-magnetic components; wherein the saturation induction of the valve sleeve amounts to less than 1 Tesla; wherein the valve sleeve extends exclusively downstream of a height of the fuel injector at which a contact tag is mounted, wherein the valve sleeve is configured to seal the solenoid coil from the fuel without the aid of additional seals. REJECTIONS AND PRIOR ART The Examiner rejects claims 8, 11, 14, 15, 18, and 23 under 35 U.S.C. § 102(b) as anticipated by Nishitani et al. (GB 2 262 659 A, pub. June 23, 1993) ("Nishitani"). The Examiner rejects claims 8, 11, 14, 15, 18, and 23 under 35 U.S.C. § 103(a) as unpatentable over Nishitani. 2 Appeal2018-000538 Application 11/658,464 ANALYSIS Both of the Examiner's rejections of independent claim 8 (see, e.g., Non-Final Action 2-3) are based on a finding that Nishitani's fixed core/non-magnetic portion 11 (see, e.g., Nishitani 1, 11. 15-22; 1, 1. 25-2, 1. 1) discloses the claimed "valve sleeve [that] is configured to seal the solenoid coil from the fuel without the aid of additional seals" (Appeal Br., Claims App. (Claim 8)). Appellant argues that the Examiner's rejection is in error because although "[i]ndependent claim 8 recites ... the valve sleeve is configured to seal the solenoid coil from the fuel without the aid of additional seals[,] ... Nishitani discloses fixed cores[, including core 11, which] are sealed, at least in part, by metallic seals 16 and 1 7." Appeal Br. 2. In response, the Examiner finds that because Nishitani is "a British patent, ... while [Nishitani] might state [ that components 16 and 17 are] 'metallic seals,' they are [instead] merely welds. A weld is not a fluid seal and is never treated as such." Answer 2. Based on our review of the record, there is inadequate support for the Examiner's finding that Nishitani' s metallic seals 16 and 17 are welds, rather than seals-instead there is only the Examiner's statement to that effect. Thus, based on our review of the record, the Examiner fails to support adequately the finding that Nishitani' s fixed core 11 is not sealed by metallic seals 16 and 1 7, such that fixed core 11 seals without the aid of additional seals, as claimed. Therefore, based on the foregoing, we do not sustain either rejection of claim 8. We also do not sustain either rejection of claims 11, 14, 15, 18, and 23 that depend from claim 8. 3 Appeal2018-000538 Application 11/658,464 DECISION We REVERSE the Examiner anticipation and obviousness rejections of claims 8, 11, 14, 15, 18, and 23. REVERSED 4 Copy with citationCopy as parenthetical citation