Ex Parte Karl et al

Patent Trial and Appeal Board

Jan 26, 2018

14129341 (P.T.A.B. Jan. 26, 2018)

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.
14/129,341 12/26/2013 Andreas Karl 2178-0658 8381
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
EXAMINER
CARY, KELSEY E
ART UNIT PAPER NUMBER
3753
MAIL DATE DELIVERY MODE
01/29/2018 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 ANDREAS KARL, REINHARD FINK, and DIRK FOERCH
Appeal 2017-000597
Application 14/129,341
Technology Center 3700
Before BRETT C. MARTIN, LISA M. GUIJT, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 seek our review under 35 U.S.C. § 134 of the Examiner’s
decision2 rejecting claims 1—3, 6—9, 12, 13, and 15—20. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM—IN—PART, and enter a NEW GROUND OF
REJECTION of claims 2, 3, 6—9, 12, and 13 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement, due
1 Robert Bosch GmbH is identified by Appellants as the real party in
interest. Appeal Br. 2.
2 Appeal is taken from the Final Office Action dated October 5, 2015.
Appeal 2017-000597
Application 14/129,341
to their dependency from claim 1, pursuant to our authority under 37 C.F.R.
§ 41.50(b).
CLAIMED SUBJECT MATTER
Claims 1 and 15 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A magnetic valve, comprising:
a valve component including an inner wall and an
outer wall, each of the inner wall and the outer wall
extending from a lower portion of the valve component to
an upper end portion of the valve component; and
a valve body surrounding a region of the valve
component in a hood-like manner and in a sealing manner
in at least one sealing region,
wherein a flow chamber is defined by the valve
body and the upper end portion,
wherein the valve component has an axial through-
channel defined by the inner wall of the valve component,
the through-channel passing through the lower end
portion3 and the upper end portion and opening into the
flow chamber to form an axial passage for a fluid,
wherein a minimum distance at any height of the
through-channel between the inner wall and the outer wall
orthogonal to an axis defined by the through-channel is
constant from the lower end portion to the upper end
portion,
3 The claim term “the lower end portion,” which is recited twice in claim 1,
lacks antecedent basis; notably, “a lower portion” is also recited in claim 1.
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Application 14/129,341
wherein a feature is formed in the upper end portion
of the valve component, the featured configured to reduce
rigidity of the valve component at the upper end portion
relative to the lower end portion, and
wherein the valve body has a through-opening that
is fluidically connected to the flow chamber, the through
opening being configured to be closed by a closing
element that is moveably arranged on a side of the valve
body which faces away from the flow chamber.
REJECTIONS
I. Claim 1 stands rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement.
II. Claims 1—3, 6—9, 12, 13, and 15—20 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Kawa (US 2006/0081803 Al,
published Apr. 20, 2006).
ANALYSIS
Rejection I
The Examiner rejects claim 1 under 35 U.S.C. § 112, first paragraph,
because “the limitation ‘wherein a minimum distance at any height of the
through-channel between the inner wall and the outer wall orthogonal to an
axis defined by the through-channel is constant from the lower end portion
to the upper end portion’ is new matter.” Final Act. 3.
Appellants argue that Figure 2 of the Specification provides sufficient
written description support for the disputed claim limitation. Appeal Br. 5—
7. Appellants provide an annotated Figure 2 of the Specification,
reproduced below.
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Appeal 2017-000597
Application 14/129,341
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Id. at 6. Appellants’ annotated Figure 2 of the Specification depicts a
schematic longitudinal section through a region of the magnetic valve. Spec.
7:35-37.
To satisfy the written description requirement, the specification must
describe the claimed invention in sufficient detail that one skilled in the art
can reasonably conclude that the inventor had possession of the claimed
subject matter as of the filing date. Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1562—63 (Fed. Cir. 1991). The Federal Circuit has held that drawings
alone may be sufficient to satisfy the written description requirement of 35
U.S.C. § 112. Id. at 1564. The issue of whether the written description
requirement has been satisfied is a question of fact. Wang Labs, Inc. v.
Toshiba Corp., 993 F.2d 858, 865 (Fed. Cir. 1993). Additionally, during
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Application 14/129,341
examination of a patent application, pending claims are given their broadest
reasonable construction consistent with the specification. In re Am. Acad, of
Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
As set forth supra, claim 1 requires “a valve component” to include
“an inner wall and an outer wall, each of the inner wall and the outer wall
extending from a lower portion4 5of the valve component to an upper end
portion of the valve component.” Claim 1 also requires “an axial through-
channel defined by the inner wall of the valve component, the through-
channel passing through the lower end portion and the upper end portion.”
The claim terms “inner wall,” “outer wall,” “lower portion,” “lower end
portion,” and “upper end portion” do not appear in the Specification. The
Specification also does not specify any structure for determining the upper
end portion, lower portion, or lower end portion of the valve component.
We determine that the claimed “inner wall” is the entirety of the
inside, cylindrical surfaces of valve component 26 (including, for example,
the inside, cylindrical surface that accommodates check valve 23).
Similarly, as correctly determined by the Examiner, we determine that the
claimed “outer wall” is the entirety of the outer, cylindrical surfaces of valve
component 26, which is depicted in Figure 2 of the Specification (including,
for example, the surfaces receiving valve body 10 and the surface having
threads for receiving an outer component). See Ans. 4 (referencing the
Examiner’s annotated Figure 2 of Kawa).
4 An ordinary meaning of the term “portion” is simply “a part of a whole.”
Webster’s Third New Int’l Dictionary 1768 (1993).
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Application 14/129,341
With reference to Figure 2 of the Specification and the disputed claim
limitation, the minimum distance between the inner and outer walls of valve
component 26 is only relevant “at any height of the through-channel,” and
therefore, we examine the distances between the inner and outer walls of
valve component 26 along the height of axial through-channel 29, wherein
the inner wall defines through-channel 29. We understand “orthogonal to”
to modify the distance, such that we examine a (horizontal) distance between
the inner and outer walls of valve component 26, which is orthogonal to the
(vertical) axis of through-channel 29. Thus, we accept Appellants’
identification of the minimum distances between the inner and outer walls of
valve component 26, as identified by Appellants in the Appellants’
annotated Figure 2 of the Specification supra.
However, claim 1 further requires a minimum of this distance at any
height of the through-channel to be “constant”5 from the lower end portion
to the upper end portion. Thus, we look to Figure 2 for a depiction of a
minimum distance between the inner and outer walls of valve assembly 26,
at any height of through-channel 29 (as identified by Appellants) to be
constant from the lower end portion to the upper end portion, as claimed.
We do not find factual support in the Specification that the lower portion of
valve component 26 (or lower end portion, as claimed) is as Appellants have
5 Although the Specification stipulates that the term “constant” includes
deviations due to manufacturing tolerances, an ordinary definition of the
claim term constant consistent with the Specification is “fixed and
invariable.” Webster’s Third New Int’l Dictionary 485 (1993).
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Application 14/129,341
identified it to be in Appellants’ annotated Figure 2 of the Specification,
such that a preponderance of evidence supports Appellants’ argument that
Figure 2 alone depicts the claimed constant dimension between the inner and
outer walls extending “from the lower end portion to the upper end portion,”
as claimed. The Specification is silent with respect to any constant
dimension relating to any distance between the inner and outer walls of the
valve component.
Moreover, the Specification consistently discloses that the dimension
which is constant is the cross-section of the through-channel, not the
minimum distance claimed. In support, we refer to the Specification as
follows: “provision is made, according to the invention, for the through-
channel to have a constant cross section” (Spec. 2:23—24 (under the caption
of the “Disclosure of the Invention”)); “[b]y virtue of the constant cross
section of the through-channel over the length thereof, flow behavior in the
through-channel is uniform” {id. at 2:31—33); “[b]y virtue of the constant
cross section of the through-channel, the region of the passage in which it
can have a different cross section is limited to the flow chamber” {id. at
2:36—3:2); “[t]he term ‘constant’ cross section of the through-channel should
also be taken to include cross-sectional dimensions which exhibit small
deviations from the constant cross-sectional dimension due, for example, to
manufacturing tolerances” {id. at 3:16—20); “owing to the constant cross
section of the through-channel over the length thereof, the sealing device is
formed at a radial distance therefrom” {id. at 4:9-12); “a through-channel 29
extending along the longitudinal axis 4 and having a cross section which
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Application 14/129,341
remains constant over its length” (id. at 10:30—32); “[t]his is attributable to
the constant cross section thereof along the entire axial length thereof’ (id. at
12:33—34 (referencing through-channel 29); see also id. at 6:22—25 (“[t]he
radial distance between the depression and the sealing region is preferably
constant over the entire circumference of the valve component so as to
achieve a constant sealing effect”.
Thus, Figure 2 of the Specification fails to describe the claimed
invention in sufficient detail that one skilled in the art can reasonably
conclude that the inventor had possession of the claimed subject matter as of
the filing date.
Accordingly, we sustain the Examiner’s rejection of claim 1 under 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement. Because claims 2, 3, 6—9, 12, and 13, which
depend from claim 1, necessarily include the claim limitation of claim 1 that
lacks written description support, we enter a new ground of rejection of
claims 2, 3, 6—9, 12, and 13 under 35 U.S.C. § 112, first paragraph, as also
failing to comply with the written description requirement.
Rejection II
Independent claim 1 and dependent claims 2, 3, 6—9, 12, and 13
Regarding independent claim 1, the Examiner finds that Kawa
discloses a valve component (i.e., valve connection element 40) including
inner and outer walls extending from a lower to an upper end portion of the
valve component, as claimed. Final Act. 5. The Examiner also finds that
Kawa discloses that valve connection element 40 has an axial through-
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Application 14/129,341
channel (i.e., through-bore 41) defined by the inner wall of valve connection
element 40 and passing through the lower and upper end portions of valve
connection element 40. Id. at 6. The Examiner further finds that Kawa
discloses a minimum distance, at any height of through-bore 41, between the
inner and outer walls, which is constant from the lower to upper end portions
of valve connection element 40. Id. The Examiner provides an annotated
Figure 1 of Kawa, reproduced below.
Annotated Figure 11mm Kmwa.
Final Act. 5. Figure 1 of Kawa is a longitudinal section through an
electromagnetically actuabtable valve, including annotations indicating inner
and outer walls of valve connection element 40. Kawa 1 8.
Appellants argue that Kawa does not disclose the claimed minimum
distance; rather, “through bore 41 tapers,” such that the minimum distance
identified by the Examiner “is not constant from the lower end portion to the
upper end portion,” as claimed. Appeal Br. 8—9.
The Examiner responds that “below the taper of the through bore, the
distance between the through bore is constant.” Ans. 10.
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Application 14/129,341
First, claim 1 does not require the distance of a through-channel or
through-bore to be constant; rather, as discussed supra, claim 1 requires a
minimum distance, at any height of the through-channel, between the inner
and outer walls of the valve component to be constant from the lower to the
upper end portions.
Notwithstanding, a preponderance of the evidence fails to support the
Examiner’s finding that a minimum distance between the inner and outer
walls of Kawa’s valve connection element 40, along Kawa’s through-bore
41, is constant between any portions of valve connection element 40,
because such a minimum distance occurs at the very upper end of valve
connection element 40 (where the Examiner has identified “the depression”
supra), as the inner wall tapers toward the outer wall. Because of such
tapering, the minimum distance is not constant, but changing (i.e.,
decreasing toward the top of through-bore 41), as correctly argued by
Appellants.
Accordingly, we do not sustain the Examiner’s rejection of claim 1
under 35 U.S.C. § 102(b) and claims 2, 3, 6—9, 12, and 13 depending
therefrom.
Independent claim 15 and dependent claims 16—20
Regarding independent claim 15, the Examiner finds, inter alia, that
Kawa discloses valve body 32 surrounding the upper end portion of Kawa’s
valve component (i.e., valve connection element 40) in a sealing manner in
at least one sealing region, as claimed. Final Act. 5. The Examiner also
finds that Kawa’s valve connection element 40, which has an axial through-
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Appeal 2017-000597
Application 14/129,341
channel (i.e., through-bore 41), includes a depression, as claimed (i.e., “dip
on the outer edge of 40”). Final Act. 8. The Examiner explains that “the
sealing region (where the inner wall meets the outer wall) is defined by the
entire angled surface the part of the axial depression closest to the outer wall
is spaced apart from the tip of the connecting element 40, where the sealing
region begins.” Ans. 11. The Examiner explains that “the upper end where
the depression is would deform under pressure from the fluid.” Id.
Appellants argue that the limitations of claim 15 are not disclosed by
Kawa’s “inner wall, which defines the through bore 41, meet[ing] the outer
wall at the top surface of the connecting element 40.” Appeal Br. 14.
Specifically, Appellants submit that
there is no spacing between the angle, which the Examiner
appears to be referring to as a ‘dip,’ and the through bore 41,
because the angle extends all the way to the through bore 41.
There is also no spacing between the angle and where the inner
wall meets the outer wall, because the angle extends across the
entire top of the connecting element 40 from the inner wall to the
outer wall. In other words, there can be no spacing between any
of the three features because the ‘dip’ is coincident with ‘where
the inner wall meets the outer wall,’ which includes the through
bore 41.”
Id.
We find the Examiner’s rejection somewhat unclear. Accepting,
however, that the angled (or tapered portion) of Kawa’s valve connecting
element 40 deforms under pressure to create the claimed sealing region
between the outer wall of valve connection element 40 and the inner wall of
valve body 32 (which is consistent with the Specification (see, e.g., Spec.
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Application 14/129,341
1:30-2:11)), we are persuaded by Appellants’ argument that there is no
radial spacing between such sealing region and the depression as identified
by the Examiner in the annotated Figure 2 of Kawa supra, as required by
claim 15. Rather, the angled tip of Kawa’s valve connection element 40
would appear to abut such sealing region and not be “spaced apart a second
radial distance,” as required by claim 15.
Accordingly, we do not sustain the Examiner’s rejection of claim 15
under 35 U.S.C. § 102(b) and claims 16—20 depending therefrom.
DECISION
The Examiner’s decision to reject claim 1 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement, is
AFFIRMED, and we also reject claims 2, 3, 6—9, 12, and 13 under 35 U.S.C.
§112, first paragraph, as failing to comply with the written description
requirement, designating the rejection as a NEW GROUND OF
REJECTION.
The Examiner’s rejection of claims 1—3, 6—9, 12, 13, and 15—20 under
35 U.S.C. § 102(b) is REVERSED.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
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Application 14/129,341
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART; 37 C.F.R, $ 41.50(b)
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