Ex Parte Jocham

Board of Patent Appeals and Interferences

Nov 8, 2007

10470344 (B.P.A.I. Nov. 8, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte REINHOLD JOCHAM
____________

Appeal 2007-2055
Application 10/470,344
Technology Center 3600
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Decided: November 8, 2007
____________

Before MURRIEL E. CRAWFORD, LINDA E. HORNER, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 10-29. Claims 1-9 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b) (2002). We AFFIRM-IN-PART1.

1 Only those arguments actually made by Appellant have been considered in
this decision. Arguments which Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii) (2007).

Appeal 2007-2055
Application 10/470,344

2
THE INVENTION
The Appellant’s claimed invention is directed to a hydraulic assembly
for a slip-controlled brake system in a motor vehicle. Electromagnetically
actuated valves control the flow of fluid in the invention. A series of valves
are placed adjacent each other and use washers disposed next to one another,
essentially in a plane and connected to one another by bridge pieces
(Specification 1-2, Claim 10, Figs. 1-2). Claim 10, reproduced below, is
representative of the subject matter of appeal.
10. In a hydraulic assembly for slip-controlled brake systems of
motor vehicles, having a valve block (8) with receiving bores (6),
each for a hydraulic part (2) of electromagnetically actuated valves
(1), each of which contains magnetically active elements, such as an
armature (16) and a magnetic core (24) of a valve dome (10) that
contains the hydraulic part (2), and a respective electric part (4),
which is slid onto the valve dome (10) and has an electric coil (50)
encompassing this valve dome (10), a coil housing (52), and a washer
(54) that is contained at least indirectly in the coil housing (52), on the
side oriented toward the hydraulic part (2) which closes a magnet
circuit from the magnetic core (24) to the armature (16) via the coil
housing (52), the improvement wherein the washers (54) of at least
some of the valves (1) are interconnected to form a multi-washer
component (60), the washers (54) being disposed next to one another,
essentially in a plane, and connected to one another by means of
bridge pieces (58, 58a, 58b).

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Takei US 4,626,045 Dec. 02, 1986
Asou US 5,441,233 Aug. 15, 1995
Park DE 198 59 488 A1 Jul. 22, 1999
Reuter US 6,000,679 Dec. 14, 1999
Park US 6,186,603 B1 Feb. 13, 2001
Appeal 2007-2055
Application 10/470,344

3
The following rejections are before us for review:
1. Claims 10-18, 23-27, and 29 are rejected under 35 U.S.C. §
103(a) as unpatentable over Asou in view of Park (DE ‘488).
2. Claims 19-22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Asou in view of Park (DE ‘488), and further in view of
Takei.
3. Claim 28 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Asou in view of Park (DE ‘488), and further in view of Reuter.

THE ISSUES
The first issue is whether the Appellant has shown that the Examiner
erred in finding that Park discloses “washers,” and that the “washers” are
interconnected and disposed next to one another, essentially on a plane, and
connected by bridge pieces.
The second issue is whether the Appellant has shown that the
Examiner erred in failing to show “washers” contained at least indirectly in
the coil housing because one of ordinary skill in the art would have located
the “washers” between the valve block and solenoid unit of Asou.
The third issue is whether the Appellant has shown that there is no
reason that one of ordinary skill in the art would substitute Parks’ (DE ‘488)
non-magnetic flux conducting plate (50) for the magnetic plate (32a) of
Asou.
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FINDINGS OF FACT
We find the following enumerated findings of fact:
1. Asou teaches a hydraulic valve assembly (Fig. 1) with
electromagnetically activated valves (2) using a solenoid assembly (col. 2, ll.
24-27).
2. Asou shows a magnetic plate (32a) in the shape of a washer contained
at least indirectly in the coil housing (valve body 10) (col. 2, l. 28 and col. 3,
ll. 4-8, Fig. 1).
3. Asou’s washer (32a) does not having a portion protruding through
radial notches in the coil housing (Asou, passim).
4. Webster’s New World Dictionary, Third College Edition (1988),
defines “washer” as: 2) a flat disk or ring of metal, leather, rubber, etc., used
to make a seat for the head of a bolt for a nut or faucet valve, to lock a nut in
place, to provide a bearing surface, to act as sealer, etc.
5. Park (DE ‘488) shows a series of washers (Fig. 3, flat portion
surrounding hole 52) which are interconnected by a plate (Fig. 2, 50) and
enclosed in a coil housing (Fig. 2, 21, 30). As seen in Park (DE ‘488) at
Figs. 2-3, each of the washers acts as an individual member or washer for a
valve and together they act as a multi-washer component.
6. Park (DE ‘488) does not show that a portion of plate 50 protrudes
through radial notches in the housing (21, 30).
7. Takei teaches a pressing plate (Fig. 4, 20) with fastening holes (Fig. 4,
23).
8. Reuter teaches an electrical connecting grid (Fig. 1, 31) with funnels
(14) which act as “shoes” that allow the coil wire ends (18) or “pins” to be
received and soldered (Col. 3, ll. 45-50).
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Application 10/470,344

5
PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18,
(1966). See also KSR, 127 S.Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” id. at 1739, and discussed circumstances in which a patent might be
determined to be obvious. In particular, the Supreme Court emphasized that
“the principles laid down in Graham reaffirmed the ‘functional approach’ of
Hotchkiss, 11 How. 248.” KSR, 127 S.Ct. at 1739, (citing Graham, 383 U.S.
at 12 (emphasis added)), and reaffirmed principles based on its precedent
that “[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”
The Court also stated “[i]f a person of ordinary skill can implement a
predictable variation, § 103 likely bars its patentability.” Id. at 1740. The
operative question in this “functional approach” is thus “whether the
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improvement is more than the predictable use of prior art elements according
to their established functions.” Id.
The Court noted that “[t]o facilitate review, this analysis should be
made explicit.” Id. at 1741 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness”)). However, “the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id.

ANALYSIS
The Examiner in his reading of Asou found that it contained all of the
elements of claim 10 except for “a multi-washer component . . . , the
washers . . . being disposed next to one another, essentially in a plane, and
connected to one another by means of bridge pieces” (Final Office Action
2). The Examiner provides the Park (DE ‘488) reference to teach the use of
such a multi-washer component (Id.).
The Appellant first argues that Park (DE ‘488) fails to teach or
disclose “washers” (Br. 10). We disagree. In the Park (DE ‘488) reference
the flat portion surrounding hole 52 (see Fig. 3) clearly is a flat ring which
acts as a seat and bearing surface for the valve (7) meeting the definition for
a “washer” (See Findings of Fact 2 & 4).
The Appellant argues (Br. 10) that Park’s (DE ‘488) plate (50) may be
a “washer” but that it is not a “multi-washer component.” We find that Park
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(DE ‘488) teaches multiple individual washer sealing members (Fig. 3, flat
portion surrounding hole 52) which together serve as a “multi-washer
component” as required by claim 10 (Finding of Fact 5). As seen in Park
(DE ‘488) at Figs. 2-3, each of the washers acts as an individual member or
“washer” for a valve and together they act as a “multi-washer component”
(Finding of Fact 5).
The Appellant also argues that Asou and Park (DE ‘488) do not teach
or suggest a washer “contained at least indirectly in the coil housing” (Br.
11). We disagree. The magnetic plate (32a) of Asou is a flat ring which acts
as a seat and bearing surface meeting the definition of a “washer” (Findings
of Fact 2 & 4). Asou shows the washer (32a) contained in the coil housing
(10) (Finding of Fact 2). The Park (DE ‘488) reference also teaches
“washers” contained in the coil housing (21, 30) (Finding of Fact 5). In both
references the housings identified surround the coil at least indirectly and
thus may be referred to as “coil housings” (Findings of Fact 2, 5).
The Appellant also argues (Br. 11) that one of ordinary skill in the art
would have located the plate (50) of Park’s (DE ‘488) device between the
valve block (10) and solenoid unit (2) of Asou to obtain the heat conducting
advantages of the plate (50). As noted above, in both Asou and Park (DE
‘488) the respective “washers” (Asou-32a; Park-flat portions surrounding
holes 52) are contained at least indirectly in the “coil housings.” Even if one
of ordinary skill in the art located the washers between the valve block (10)
and solenoid unit (2), as suggested by the Appellant, this location would still
be “contained at least indirectly in the coil housing” as required by the
claims.
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The Appellant argues (Br. 12) that since Park’s (DE ‘488) washer
plate (50) has no magnetic flux properties, one of ordinary skill in the art
would not have substituted it for the magnetic plate (32a) of Asou. The
Examiner has relied on Park to show the predictable advantage of having a
series of washers which are interconnected, and not for showing the
magnetic properties of the washers. Whether or not the washers are
magnetic, Park’s device provides the advantage of having the washers
interconnected for quick assembly.
With regard to claim 11, the Appellant argues that neither Asou nor
Park (DE ‘488) show that “the bridge pieces . . . protrude through radial
notches . . . provided in [the] ends of the coil housings” (Reply Br. 2). We
concur with the Appellant and find the Examiner’s remarks in the Final
Rejection that “the radial notches can be considered the areas where the
washers (50) of Park protrude away” not persuasive.
Claims 12-22, and 24-27 depend directly or indirectly from claim 11.
Therefore, we will not sustain the rejection of these claims.
The Appellant argues that claim 28 is patentable because Reuter does
not show “at least some of the valves which are interconnected to form a
multi-washer component, the washers being disposed next to one another,
essentially in a plane, and connected to one another by means of bridge
pieces.” (Br. 13). The teachings of this cited limitation are shown by the
Asou and Park (DE ‘488) references as noted above, and not required to be
shown in the Reuter reference. As such, the Appellant has not persuaded us
of error in the Examiner’s rejection of claim 28.

Appeal 2007-2055
Application 10/470,344

9
CONCLUSIONS OF LAW
We conclude that Appellant has failed to show that the Examiner
erred in rejecting claims 10, 23, and 29 under 35 U.S.C. § 103(a) with Asou
and Park (DE ‘488), and claim 28 with Asou, Park (DE ‘488), and Reuter.
We find that the Appellant has shown that the Examiner erred in
rejecting claims 11-18, 24-27 under 35 U.S.C. § 103(a) with Asou and Park
(DE ‘488), and claims 19-22 with Asou, Park (DE ‘488), and Takei.

DECISON
The Examiner’s rejection of claims 10, 23 and 28-29 is sustained.
The Examiner’s rejection of claims 11-22, 24-27 is not sustained.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007).

AFFIRMED–IN-PART

hh

RONALD E. GREIGG
GREIGG & GREIGG P.L.L.C.
1423 POWHATAN STREET, UNIT ONE
ALEXANDRIA, VA 22314