Ex Parte Koelzer

Board of Patent Appeals and Interferences

Dec 14, 2009

10195983 (B.P.A.I. Dec. 14, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT L. KOELZER
____________

Appeal 2009-005518
Application 10/195,983
Technology Center 3600
____________

Decided: December 15, 2009
____________

Before WILLIAM F. PATE, III, MICHAEL W. O’NEILL, and
KEN B. BARRETT, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Robert L. Koelzer (Appellant) seeks our review under 35 U.S.C.
§ 134 of the second non-final rejection of claims 33-42. Appellant canceled
claims 1-32. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
Appeal 2009-005518
Application 10/195,983

2
Appellant’s counsel presented oral argument at the oral hearing conducted
on December 9, 2009.
The Invention
The claimed invention is to an electronic control system for a motor
vehicle braking system that comprehensively, electronically manages the
compressed air on a pneumatic brake system. Spec. 9, para. [0027].
Claim 33, reproduced below, is representative of the subject matter on
appeal.
33. An electronic control system for a motor vehicle brake
system comprising a charge system, a primary supply circuit, a
secondary supply circuit, a tractor parking/emergency supply
circuit and a trailer parking/emergency supply circuit, the
electronic control system comprising:
a housing having an input port in communication with
the charge system, a first exhaust port in communication with
the primary supply circuit, a second exhaust port in
communication with the secondary supply circuit, a third
exhaust port in communication with the tractor
parking/emergency supply circuit and a fourth exhaust port in
communication with the trailer parking/emergency supply
circuit;
a first solenoid disposed within said housing, said first
solenoid selectively allowing communication between the
charge system and the primary supply circuit via the input port
and the first exhaust port in response to first electrical signals;
a second solenoid disposed within said housing, said
second solenoid selectively allowing communication between
the charge system and the secondary supply circuit via the input
port and the second exhaust port in response to second electrical
signals;
a third solenoid disposed within said housing, said third
solenoid selectively allowing communication between the
charge system and the tractor parking/emergency supply circuit
via the input port and the third exhaust port in response to third
electrical signals;
Appeal 2009-005518
Application 10/195,983

3
a fourth solenoid disposed within said housing, said
fourth solenoid selectively allowing communication between
the charge system and the trailer parking/emergency supply
circuit via the input port and the fourth exhaust port in response
to fourth electrical signals;
an electronic control unit in communication with said
first solenoid, said second solenoid, said third solenoid and said
fourth solenoid;
a dash control assembly disposed on a dash of the motor
vehicle, said dash control assembly in electrical communication
with said electronic control unit via electrical cabling; and
wherein electrical control signals are generated by said
dash control assembly in response to an operator's manipulation
of said dash control assembly, are communicated to said
electronic control unit via the electrical cabling, and are used by
the electronic control unit to generate the third electrical signals
and the fourth electrical signals to control operation of said
third solenoid and said fourth solenoid.

The Rejections
The following Examiner’s rejections are before us for review:
Claims 33-37 and 39-42 stand rejected under 35 U.S.C. § 103(a) as
unpatentable given DE 198 35 638 (which Appellant notes, at App. Br. 5, is
the equivalent of US 6,540,308 B1, issued Apr. 1, 2003, to Hilberer)
(hereinafter referred to as Hilberer) in view of Cramer (US 5,061,015, issued
Oct. 29, 1991).
Claim 38 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable given Hilberer in view of Cramer and further in view of Green
(US 6,111,888, issued Aug. 29, 2000).

SUMMARY OF DECISION
We REVERSE.
Appeal 2009-005518
Application 10/195,983

4

OPINION
Analysis
We have carefully reviewed the rejections on appeal in light of the
arguments of Appellant and the Examiner. The Examiner’s proposal to
provide automatically regulated multi-circuit safety valve M of Hilberer with
a “manual control” for the reasoning of merely starting or stopping the
automatic regulation process of the valve M, see Ans. 6, is unsound for two
reasons.
First, in rejecting claims as unpatentable on the basis of obviousness,
the Examiner must provide “some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” KSR Int’l.
Co. v. Teleflex, Inc., 550 US. 398, 418 (2007). Moreover, rejections based
on 35 U.S.C. § 103 must rest on a factual basis. In making such a rejection,
the examiner has the initial duty of supplying the requisite factual basis and
may not, because of doubts that the invention is patentable, resort to
speculation, unfounded assumptions, or hindsight reconstruction to supply
deficiencies in the factual basis. See In re Warner, 379 F.2d 1011, 1017
(CCPA 1967).
As the Appellant contends, the Examiner articulates reasons that are
not rational in light of the record to support a conclusion of obviousness. A
substantial portion of Hilberer’s disclosure, see DE 198 35 638 translation at
p. 13, l. 2 to p. 15, l. 13; p. 17, l. 5 to p. 20, l. 5; and p. 24, l. 3 to p. 25, l. 19
and Hilberer ‘308 patent at col. 5, ll. 9-65; col. 6, l. 38 to col. 7, l. 42; and
col. 8, l. 66 to col. 9, l. 37, is directed to a mechanism to initiate the
functions of the electronic compressed air processing system. To add
Appeal 2009-005518
Application 10/195,983

5
another starting or stopping system as the Examiner reasons, leads to a
mechanism that is either unnecessary or undesirable in light of the purpose
of Hilberer, which is to have a multi-circuit safety valve that ensures safety
by automatically regulating proper levels of pneumatic charging for the four
disclosed circuits K1-K4 and automatically handling failures within the
pneumatic circuits K1-K4. See Hilberer, col. 5, l. 66 to col. 6, l. 38 and col.
7, l. 46 to col. 8, l. 40. Additionally, we find persuasive Appellant’s
contention that if a person of ordinary skill in the art would incorporate a
manual control to Hilberer, that manual control would not be controlling the
multi-circuit safety valve M, but rather the components downstream of the
valve M.
Second, as the Appellant persuasively argues, adding a “manual
control” as the Examiner posits would create a multi-circuit safety valve
unsatisfactory for the purposes the valve was intended to serve, viz.,
ensuring safety by automatically regulating pneumatic charge levels and
handling circuit failures. In relying on a combination of prior art references,
the examiner’s proposed modification cannot render a prior art reference
unsatisfactory for its intended purpose. In re Gordon, 733 F.2d 900, 902
(Fed. Cir. 1984). See also In re Ratti, 270 F.2d 810, 813 (CCPA 1959)
(“This suggested combination of references would require a substantial
reconstruction and redesign of the elements shown in [the primary reference]
as well as a change in the basic principles under which the [primary
reference] construction was designed to operate.” (Emphasis added)). See
Tec Air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999)
(Where the proposed modification would render the prior art invention being
modified unsatisfactory for its intended purpose, the proposed modification
Appeal 2009-005518
Application 10/195,983

6
would not have been obvious). Based on Hilberer’s disclosure of valve M,
to modify the valve to have a “manual control” as posited by the Examiner
goes against the disclosure of having a multi-circuit safety valve that ensures
automatic regulation of the pneumatic charging of the circuits and automatic
handling of failures within one of those circuits.
The Examiner does not use Green in any manner to cure the
deficiency noted above with the content of Hilberer and Cramer. As such,
we are constrained not to sustain the rejections.

CONCLUSION
We conclude that Appellant has demonstrated error in the Examiner’s
rejections of claims 33-42 because the Examiner’s articulated reasoning
lacks a rational underpinning based on the evidence of record when viewed
as a whole.

DECISION
The Examiner’s decision to reject claims 33-42 is reversed.

REVERSED

Appeal 2009-005518
Application 10/195,983

7
mls

ST. ONGE STEWARD JOHNSTON & REENS, LLC
986 BEDFORD STREET
STAMFORD, CT 06905-5619