Ex Parte MillerDownload PDFPatent Trial and Appeal BoardDec 8, 201512305567 (P.T.A.B. Dec. 8, 2015) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/305,567 11130/2009 Frank Miller 26646 7590 12/10/2015 KENYON & KENYON LLP ONE BROADWAY NEW YORK, NY 10004 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. 1019115736 5681 EXAMINER GORMAN, DARREN W ART UNIT PAPER NUMBER 3752 NOTIFICATION DATE DELIVERY MODE 12/10/2015 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): uspto@kenyon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FRANK MILLER Appeal2013-010523 Application 12/305,567 Technology Center 3700 Before MURRIEL E CRAWFORD, HUBERT C. LORIN, and CYNTHIA L. MURPHY, Administrative Patent Judges. MURPHY, Administrative Patent Judge. DECISION ON APPEAL The Appellant 1 appeals under 35 U.S.C. § 134 from the Examiner's rejections of claims 12-25. We have jurisdiction over this appeal under 35 U.S.C. § 6(b ). We AFFIRM. 1 "The real party in interest in the present appeal is ROBERT BOSCH GmbH." (Appeal Br. 1.) Appeal2013-010523 Application 12/305,567 STATEMENT OF THE CASE The Appellant's invention relates generally to a "dosing device" for the delivery of fuel "without difficulty in especially high ambient temperatures." (Spec. 3, lines 2-27.) Illustrative Claim2 12. A dosing device for delivery of liquid fuels into one of a chemical reformer, a postcombustion device for generation of heat, an exhaust tract, and a particulate filter, comprising: a metering line; at least one metering device configured to meter fuel into the metering line; and a conditioning unit adjoining the metering line, configured to deliver the fuel into a metering chamber, wherein the conditioning unit is an elongated member having a purely mechanical valve at a downstream end, the conditioning unit having no electrical connections. Rejections I. The Examiner rejects claim 19 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. (Final Action 3.) II. The Examiner rejects claims 12-16, 18, 20-22, and 24 under 35 U.S.C. § 102(b) as anticipated by Krohn (US 5,947,091 issued Sept. 7, 1999). (Id. at 5.) III. The Examiner rejects claims 17, 23, and 25 under 35 U.S.C. § 103(a) as unpatentable over Krohn. (Id. at 7.) 2 This illustrative claim is quoted from the Claims Appendix ("Claims App.") accompanying the Appeal Brief. 2 Appeal2013-010523 Application 12/305,567 ANALYSIS Claims 12, 23, and 24 are the independent claims on appeal, with the rest of the claims on appeal (i.e., claims 13-22 and 25) depending therefrom. (Claims App.) The claims on appeal are directed to "[a] dosing device for delivery of liquid fuels," comprising "a metering line," "at least one metering device," and "a conditioning unit." (Id.) Rejection I Dependent claim 19 recites that the dosing device further comprises "a receptacle provided with cooling fins into which the conditioning unit is introduced." (Claims App.) The Examiner determines that the subject matter of claim 19 was not described in the Specification in such a way as to reasonably convey to one of ordinary skill in the art that the inventor had possession of this claimed subject matter at the time the application was filed. (See Final Action 3--4.) The Appellant argues that the Examiner errs in making this determination. (See Appeal Br. 3; Reply Br. 2-3.) As discussed below, the Appellant's position is not persuasive. The Appellant's arguments are premised, primarily, on a sentence in the original Specification and a recital in an original claim. (See Appeal Br. 3; Reply Br. 2.) The relevant sentence states that the conditioning unit "may additionally be placed inside a receptacle provided with cooling fins" (Spec. 8, lines 23-25) and the relevant claim recites a dosing device "wherein" the conditioning device "is introduced into a receptacle which is provided with cooling fins" (id. at 10, claim 8). However, this statement and this recital convey that the dosing device can be used in combination with a finned receptacle, which is different from the dosing device comprising a finned receptacle. 3 Appeal2013-010523 Application 12/305,567 As such, we agree with the Examiner that "[t]here is no discussion in the originally specification which supports the claimed dosing device 'further comprising: a receptacle provided with cooling fins into which the conditioning unit is introduced', and thus the requirements of35 U.S.C. § 112, first paragraph, are not satisfied with respect to claim 19." (Answer 2.) Thus, we sustain the Examiner's rejection of dependent claim 19 under 35 U.S.C. § 112, first paragraph. Rejection II As indicated above, independent claims 12 and 24 each require the dosing device to comprise a metering device, a metering line, and a conditioning unit. (Claims App.) The Examiner finds that Krohn discloses a dosing device comprising a metering device (injection valve 10), a metering line (bore 11 defined by casing 17), and a conditioning unit (outlet valve 30). (See Final Action 5; see also Krohn Fig. 1.) The Appellant argues that the Examiner's findings regarding the claimed metering line and the claimed conditioning unit are flawed. (See Appeal Br. 3-5; Reply Br. 3.) As discussed below, the Appellant's position is not persuasive. Regarding the claimed "metering line," the Appellant contends "one of ordinary skill in the art would not consider a bore to constitute a metering line." (Appeal Br. 4.) However, the Appellant does not sufficiently explain what structural features one of ordinary skill would deem necessary for something to be considered a "metering line." Also, as noted by the Examiner, Appellant's disclosed and depicted metering line is a "tubular fluid pathway located between the metering device and the conditioning unit." (Answer 3, see also Spec. Fig. 1.) Moreover, the Appellant does not 4 Appeal2013-010523 Application 12/305,567 point, with particularity, to claim limitations corresponding to features of the metering line that are allegedly absent in Krohn's bore 11. As such, we agree with the Examiner that Krohn' s bore 11 can be considered the claimed metering line. (See Answer 3.) Accordingly, we are not persuaded by the Appellant's argument that a metering line is absent in Krohn's dosing device, and therefore we are also not persuaded by the Appellant's arguments premised upon such an alleged absence. 3 With respect to the claimed "conditioning unit," the Appellant contends "it is the casing 17 together with heating elements 23, electric line 25 and valve 30" that "together constitute a conditioning unit." (Appeal Br. 4.) In other words, the Appellant contends that Krohn's outlet valve 30, alone, cannot constitute the claimed conditioning unit. However, as noted by the Examiner, none of these additional components "are necessarily required to be considered as constituting any part of valve 30 or the mechanical operations thereof." (Answer 4.) Moreover, the Appellant does not point, with particularity, to claim limitations corresponding to features of the conditioning unit that are allegedly absent in Krohn's outlet valve 30. As such, we agree with the Examiner that Krohn's outlet valve 30 alone can be considered the claimed conditioning unit. (See Answer 4.) Accordingly, we are not persuaded by the Appellant's argument that 3 Specifically, for example, we are not persuaded by the Appellant's arguments that because Krohn does not disclose a metering line, it also does not disclose: a metering line between the metering device and the conditioning unit (Appeal Br. 4), a metering line distinct from the metering device and the conditioning unit (id.), a metering line proceeding from an adapter (i.e., Krohn's mounting sleeve 18) (id. at 5), and/or a metering line having a specified shape (id.) and/or a metering line having a specified length (id. at 6). 5 Appeal2013-010523 Application 12/305,567 Krohn' s conditioning unit does not meet certain claim limitations as a consequence of components (i.e., casing 17, heating elements 23, electrical line 25) other than outlet valve 30.4 Thus, we sustain the Examiner's rejection of independent claims 12 and 24 under 35 U.S.C. § 102(b). As dependent claims 13-16, 18, and 20- 22, are not argued separately (see Appeal Br. 5), we also sustain the Examiner's rejections of these claims under 35 U.S.C. § 102(b). Rejection III Independent claim 23 includes many of the same limitations as independent claims 1 and 24 regarding the metering line and the Examiner makes similar findings. (See Final Action 8-9.) For the same reasons as discussed above, we are not persuaded by the Appellant's arguments that Krohn does not disclose a metering line; and we are not persuaded by the Appellant's arguments that because Krohn does not disclose a metering line, claimed features associated with the metering line cannot be disclosed thereby. (See Appeal Br. 6.) Likewise, we are not persuaded by the Appellant's arguments that, because Krohn does not disclose a metering line, claimed features associated with the metering line cannot be obvious therefore. (See Appeal Br. 6.) 5 4 Specifically, for example, we are not persuaded by the Appellant's argument that, because Krohn's conditioning unit has electrical connections for heating elements 23 and electrical line 25, and Krohn's conditioning unit does not meet a claim limitation requiring the conditioning unit to have no electrical connections. (See Appeal Br. 4.) 5 Specifically, for example, we are not persuaded by the Appellant's argument that Krohn "does not even refer to any metering line provided between its injection valve 10 and outlet valve 30," and therefore cannot 6 Appeal2013-010523 Application 12/305,567 Thus, we sustain the Examiner's rejection of independent claim 23 under 35 U.S.C. § 103(a). As dependent claims 17 and 25 are not argued separately or further (see Appeal Br. 5), we also sustain the Examiner's rejections of these claims under 35 U.S.C. § 103(a). DECISION We AFFIRM the Examiner's rejections of claims 12-25. 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. tkl show or suggest "any specified length of a metering line." (Appeal Br. 6.) The Appellant's arguments do not address, for example, why it would not have been obvious to modify the dimensions of Krohn's bore 11 so as to have "a length of 10 cm to 100 cm" as required by independent claim 23. 7 Copy with citationCopy as parenthetical citation