Ex Parte MAYR et al

Patent Trial and Appeal Board

Jun 29, 2018

13384328 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/384,328 03/23/2012
10800 7590 07/02/2018
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
FIRST NAMED INVENTOR
Matthias MA YR
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.
2178-0052 7127
EXAMINER
SOLAK, TIMOTHY P
ART UNIT PAPER NUMBER
3746
MAIL DATE DELIVERY MODE
07/02/2018 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 MATTHIAS MAYR, ALEXANDER BAREISS, and
ANDREASWEH
Appeal 2016-005403
Application 13/384,328
Technology Center 3700
Before LYNNE H. BROWNE, ANNETTE R. REIMERS, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2016-005403
Application 13/384,328
STATEMENT OF THE CASE 1,2
Matthias Mayr et al. (Appellants) appeal under 35 U.S.C. § I34(a)
from the Examiner's decision to reject under 35 U.S.C. § I02(b): (1) claim 1
as anticipated by Appellants' Admitted Prior Art (AAP A) 3; and (2) claims 1,
5, and 9-11 as anticipated by You (EP O 759 388 A2, published Feb. 26,
1997) and under 35 U.S.C. § I03(a): claims 2, 3, 6, and 7 as unpatentable
over You and Dinkel (US 2004/0046446 Al, published Mar. 11, 2004).
We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
CLAIMED SUBJECT MATTER
The claimed subject matter "relates to a pump housing of a motor
vehicle hydraulic unit." Spec. 1:7-8, Figs. 1, 5. Claims 1 and 5 are
independent.
1 The Examiner's objection(s) to the drawings are not appealable matters, but
rather are petitionable matters, and thus, are not within the jurisdiction of the
Board. See Final Office Action 2 (hereinafter "Final Act.") (dated Mar. 25,
2015); 37 C.F.R. § 1.181; In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002);
In re Mindick, 371 F.2d 892, 894 (CCPA 1967). Appellants submitted an
Amendment After Final Action proposing amendments to the claims, Figure
2 of the drawings, and the Specification. See Amendment After Final Action,
1-10 ( filed July 9, 2015). In the Advisory Action, the Examiner states that
"[f]or purposes of appeal, the proposed amendment(s)" "will not be entered."
Adv. Act. Summary Sheet PTOL-303 (dated Aug. 6, 2015). Accordingly,
Appellants' proposed amendments to the claims, Figure 2 of the drawings,
and the Specification are not before us for review.
2 The Examiner states that "[ c ]laim[ s] 4 and 8 are objected to as being
dependent upon a rejected base claim, but would be allowable if rewritten in
independent form including all of the limitations of the base claim and any
intervening claims." Final Act. 10.
3 Figure 3. See Final Act. 3--4.
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Application 13/384,328
recite:
Claims 1 and 5 are illustrative of the claimed subject matter and
1. A pump housing of a motor vehicle hydraulic unit
compnsmg:
at least one side face;
at least one main cylinder connection opening configured
to connect to a main cylinder;
at least one pump element opening configured to receive a
pump element; and
a connecting line which connects the at least one main
cylinder connection opening to the at least one pump element
openmg,
wherein the connecting line is configured as a pocket bore
leading into the pump housing, and the pocket bore starts from
the at least one side face, extends initially through the at least one
pump element opening, and subsequently extends into the at least
one main cylinder connection opening, and
wherein the connecting line includes a first portion
extending from the at least one side face to the at least one pump
element opening and a second portion extending from the at least
one pump element opening into the at least one main cylinder
connection opening, and the first portion and the second portion
are coaxial with respect to one another.
5. A method for producing a pump housing of a motor
vehicle hydraulic unit, comprising:
forming at least one side face,
forming at least one main cylinder connection opening
configured to connect to a main cylinder,
forming at least one pump element opening configured to
receive a pump element, and
forming a connecting line connecting the at least one main
cylinder connection opening to the at least one pump element
opening, wherein the connecting line is formed by boring from
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Application 13/384,328
the at least one side face, through the at least one pump element
openmg, and into the at least one main cylinder connection
openmg.
ANALYSIS
Anticipation by AAP A
Claim 1
Independent claim 1 is directed to a pump housing including a
connecting line having a first portion extending from at least one side
face to at least one pump element opening and a second portion extending
from at least one pump element opening into at least one main cylinder
connection opening, wherein "the first portion and the second portion are
coaxial with respect to one another." Appeal Br. 27, Claims App. 4 The
Examiner finds that Figure 3 of AAP A discloses a connecting line having
a first portion (portion extending from 36 and 76 in Figure 3)
extending from the at least one side face 22 to the at least one
pump element opening 7 6 and a second portion (portion
extending from bottom 76 through 84 and ending at top of 42)
extending from the at least one pump element opening into the at
least one main cylinder connection opening, and the first portion
and the second portion are coaxial (same bore) with respect to
one another.
Final Act. 4 (emphasis added); see also Ans. 13 (The Examiner's annotated
version of Figure 3 of AAP A). 5
Appellants contend that
the bores extending from the accumulator openings ( 40, 42) to
the respective valve openings (84, 86) are not the same bore as
the bores extending downwardly from the top surface (22)
4 Appeal Brief (hereinafter "Appeal Br.") (filed Sept. 24, 2015).
5 Examiner's Answer (hereinafter "Ans.") (dated Mar. 24, 2016).
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Application 13/384,328
through the valve opening (76, 78) and into the respective valve
openings (84, 86). Thus, the alleged first portion ( extending
from 36 to 76) cannot be coaxial with the alleged second portion
(extending from 76 to 84 and from 84 to 42).
Appeal Br. 7; see also id. (Appellants' annotated version of Figure 3 of the
subject application).
Appellants further contend that a skilled artisan would not consider
the two portions cited by the Examiner "(first portion 36 to 76; and second
portion 76 to 84 and 84 to 42) to be coaxial with one another, since the
second portion (76 to 84 and 84 to 42) is not even coaxial with itself, and
cannot be formed as part of the same pocket bore." Reply Br. 4. 6
As an initial matter, Appellants correctly note that "[c]laim 1 requires
that 'the connecting line is configured as g pocket bore' extending from
the side face, through the pump element opening, and into the main cylinder
connection opening." Reply Br. 2 ( emphasis added). Stated differently,
claim 1 requires the connecting line to be configured as g pocket bore,
wherein the pocket bore ( 1) starts from the at least one side face, extending
initially through the at least one pump element opening, (i.e., the pocket bore
has a first portion extending from the at least one side face to the at least one
pump element opening) and (2) subsequently extends into the at least one
main cylinder connection opening (i.e., the pocket bore has a second portion
extending from the at least one pump element opening into the at least one
main cylinder connection opening). See Appeal Br. 27, Claims App.
Given that claim 1 requires the connecting line be configured as g
single pocket bore, we disagree with the Examiner that claim 1 "do[ es] not
6 Reply Brief (hereinafter "Reply Br.") (filed May 4, 2016).
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Application 13/384,328
require the 'entire' first portion be coaxial with the 'entire' second portion or
similar language." See Ans. 13; see also Reply Br. 3 ("[T]he connecting line
must be formed entirely along the same axis. A single bore cannot be
drilled along two different axes.").
Regarding Figure 3 of AAP A, we agree with Appellants that "the
connection between the valve receptacle 76 though the valve receptacle 84
and ending at the top of the accumulator opening 42 consists of portions of
two different bores that are not coaxial with one another." See Appeal Br. 8
( emphasis added); see also Reply Br. 3 ("The Examiner's interpretation of
[Figure 3 of] AAP A fails to show a single bore that starts from the side face,
extends through the pump element opening, and into the main cylinder
connection opening.") (emphasis added); Figure 3 of the subject application.
We further agree with Appellants that "the part of the second portion [ cited
by the Examiner] between the valve openings (7 6, 84) is coaxial with the
first portion" cited by the Examiner (i.e., between wheel connection 36 and
valve opening 76). See Reply Br. 5, n. 5; see also Final Act. 4; Figure 3 of
the subject application. However, "the part of the second portion [ cited by
the Examiner that] extend[s] from the valve opening (84) to the accumulator
opening ( 42), is not coaxial with the first portion" cited by the Examiner;
thus, "the [entire] second portion [ cited by the Examiner] cannot therefore
be reasonably considered to be coaxial with the first portion [ cited by the
Examiner]." See Reply Br. 5, n. 5 ( emphasis added); see also Final Act. 4;
Figure 3 of the subject application.
For these reasons, we do not sustain the Examiner's rejection of
independent claim 1 as anticipated by Figure 3 of AAP A.
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Application 13/384,328
Claim 1
Anticipation by You
The Examiner finds that You discloses a connecting line that
includes a first portion ( 62/P7) extending from the at least one
side face to the at least one pump element opening 58 and a
second portion (P 1, see Figure 5) extending from the at least one
pump element opening into the at least one main cylinder
connection opening, and the first portion and the second portion
are coaxial (same bore) with respect to one another (see Figures
4 & 5).
Final Act. 5 ( emphasis added); see also You, Figs. 4, 5.
As an initial matter, Appellants correctly note that the connecting line
of claim 1 is "configured as a pocket bore starting from the side face,
extending through the pump element opening, and extending into the main
cylinder connection opening," wherein "[t]he first portion of the connecting
line/pocket bore extends from the side face to the pump element opening,
while the second portion extends from the pump element opening to the
main cylinder connection opening." See Reply Br. 8; see also id. at 9
("[T]he entire connecting line[/pocket bore] must be coaxial, including the
first portion extending from the side face to the pump element opening and
the second portion extending from the pump element opening into the main
cylinder connection opening."); Appeal Br. 27, Claims App.
Given that claim 1 requires a single pocket bore having coaxial first
and second portions, we disagree with the Examiner's interpretation that
"[t]he 'connecting line' [of claim 1] comprises three parts, the pocket bore,
the first portion and the second portion" and that "[t]here are no limitations
requiring the bore~ to be coaxial, only the first and second portions are
'coaxial with respect to one another'." Ans. 23 ( emphasis added).
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Appellants correctly note that Figure 4 of You illustrates that "the
central axis for the chamber of the damper 62 and the central axis of the
passage Pl are offset relative to one another." See Appeal Br. 15-16; see
also id. at 15 (Appellants' annotated version of Figures 4, 5 of You); Reply
Br. 9 ("[D]amper (62) is offset from the lines (Pl, P7) (see You FIG. 4.");
You, Figs. 4, 5. We agree with Appellants that accumulator bore 62 of You
is "not part of the same bore" and is "not coaxial with bores P7 or Pl." See
Appeal Br. 15-16; see also Reply Br. 8-9.
Appellants contend that in the Answer, the Examiner takes an
alternate position in that "the Examiner identifies the portion extending from
the check valve (72) to the pump (58) as the first portion, while the portion
from the damper (62) to the pump (58) is identified as the second portion."
Reply Br. 8-9 (citing Ans. 23); see also Ans. 23 (The Examiner's annotated
version of Figure 4 of You); You, Fig. 4. Here, we agree with Appellants
that the identified second portion (i.e., damper 62 to pump 58) "does not
extend from the pump element opening to the main cylinder connection
opening (MCP)," as required by claim 1. See Reply Br. 8-9 (citing Ans.
23); see also Ans. 23 (The Examiner's annotated version of Figure 4 of
You); You, Fig. 4.
For these reasons, the Examiner fails to establish by a preponderance
of the evidence that You anticipates the pump housing of claim 1.
Accordingly, we do not sustain the Examiner's rejection of independent
claim 1 as anticipated by You.
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Application 13/384,328
Claims 5 and 9--11
Independent claim 5 is directed to a method for producing a pump
housing including the step of forming a connecting line that connects at least
one main cylinder connection opening to at least one pump element opening,
"wherein the connecting line is formed by boring from the at least one side
face, through the at least one pump element opening, and into the at least
one main cylinder connection opening." Appeal Br. 28, Claims App.
The Examiner finds that You discloses "forming a connecting line
(P7)", wherein "the connecting line is formed by boring from the at least one
side face (bottom of Figure 4), through the at least one pump element
opening, and into the at least one main cylinder connection opening (see
Figures 4 & 5)." Final Act. 6.
Appellants correctly note that "[t ]he You reference is silent as to the
direction in which the bores are formed that connect the dampers (62, 64),
the pumps (58, 60), and the master cylinder connections (MCP, MCS)."
Appeal Br. 17. Appellants further correctly note that, as illustrated in Figure
4 of You, the bore for P7 is axially offset with respect to the bore opening of
damper chamber 62, which would prevent damper 62 and passage P7 from
being formed as part of the same bore. See Appeal Br. 17-18; Reply Br. 10,
n. 8. Additionally, the Examiner fails to provide sufficient evidence or
technical reasoning to establish that connecting line P7 is necessarily formed
by boring from the at least one side face, through the at least one pump
element opening, and into the at least one main cylinder connection opening.
See Final Act. 6; see also Ans. 25-27.
For these reasons, the Examiner fails to establish by a preponderance
of the evidence that You anticipates the pump housing method of claim 5.
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Accordingly, we do not sustain the Examiner's rejection of independent
claim 5 and its dependent claims 9-11 as anticipated by You.
Obviousness over You and Dinkel
Claims 2, 3, 6, and 7
The Examiner's rejection of claims 2, 3, 6, and 7 as unpatentable over
You and Dinkel is based on the same unsupported findings discussed above
with respect to independent claims 1 and 5. See Final Act. 7-10. The
Examiner does not rely on Dinkel to remedy the deficiencies of You.
Accordingly, for reasons similar to those discussed above for claims 1 and 5,
we do not sustain the Examiner's rejection of claims 2, 3, 6, and 7 as
unpatentable over You and Dinkel.
DECISION
We REVERSE the decision of the Examiner to reject claim 1 as
anticipated by Figure 3 of AAP A.
We REVERSE the decision of the Examiner to reject claims 1, 5, and
9-11 as anticipated by You.
We REVERSE the decision of the Examiner to reject claims 2, 3, 6,
and 7 as unpatentable over You and Dinkel.
REVERSED
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