Ex parte Reiter

Board of Patent Appeals and Interferences

Sep 28, 2001

09077356 (B.P.A.I. Sep. 28, 2001)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte FERDINAND REITER
____________
Appeal No. 2001-0305
Application No. 09/077,356
____________
ON BRIEF
____________
Before ABRAMS, FRANKFORT and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 9-16. On page 2 of the answer (Paper No.
12), the examiner withdrew the rejection of claims 15 and 16,
indicating them to be allowable. Accordingly, this appeal
involves only claims 9-14. No other claims are pending in
this application.
Appeal No. 2001-0305 Page 2
Application No. 09/077,356
Our understanding of this reference is derived from the translation1
(continued...)
BACKGROUND
The appellant's invention relates to a valve needle for
an injection valve (specification, p. 1). Claim 9 is
illustrative of the invention and reads as follows.
9. A valve needle for use in an electromagnetically
operable injection valve of a fuel injection system
in an internal combustion engine, comprising:
an armature;
a metal valve closing element; and
a plastic connecting part having a first end
coupled to the armature and a second end coupled to
the metal valve closing element, wherein the plastic
connecting part includes an orifice that has a
bottom and runs in a direction of the armature from
a lower end face located at the second end of the
plastic connecting part, wherein the orifice has at
least two successive areas of different diameters,
and wherein a section of the metal valve closing
element engages the orifice of the plastic
connecting part in a form-fitting manner.
The examiner relied upon the following prior art
references of record in rejecting the appealed claims:
Ament 4,497,298 Feb. 5,
1985
Soviet Patent No. 596,746 (the Soviet patent) Feb. 16, 19781
Appeal No. 2001-0305 Page 3
Application No. 09/077,356
(...continued)1
submitted with appellant's brief as Appendix B.
Claims 9-14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ament in view of the Soviet patent.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejection, we make reference to the answer (Paper No. 12) for
the examiner's complete reasoning in support of the rejection
and to the brief (Paper No. 11) for the appellant's arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
Ament discloses a fuel injection valve comprising an
armature 82 and a needle valve 42 including a metal valve tip
90 (the valve closing element) and a compliant plastic shank
Appeal No. 2001-0305 Page 4
Application No. 09/077,356
portion 92 having a first end (fluted valve guide 93) and a
second end having an orifice (blind bore 95) suitably sized to
receive the pin 94 of the valve tip 90 by a press fit (col. 6,
lines 54-56). The examiner has determined that the only
difference between Ament's valve and the subject matter of
claim 9 is that Ament does not show the blind bore (orifice)
having at least 2 successive areas of different diameters and
appellant does not appear to challenge that determination. It
is the examiner's position that the Soviet patent would have
suggested providing the blind bore 95 and valve tip pin 94 of
Ament with grooves and shoulders (answer, p. 4).
The Soviet patent is directed to a non-detachable
interference fit coupling, produced under the influence of
temperature on the parts to be joined, for joining pipes or
rods using connecting pieces, locking parts and other
connecting parts (translation, p. 1). The coupling disclosed
in the Soviet document includes a female part 1 provided with
grooves 3 on the interior surface 2 thereof and a male part 4
provided with projections 6 on the exterior surface 5 thereof.
The process of joining the parts 1 and 4 is carried out by
heating the female part 1 to a preselected temperature to
Appeal No. 2001-0305 Page 5
Application No. 09/077,356
cause expansion thereof and introducing the male part 4 into
the hollow space of the female part 1 such that the grooves 3
are situated over the projections 6. After the temperature of
the parts 1 and 4 is equalized, the interior surface 2 of the
female part 1 presses firmly against the exterior surface 5 of
the male part 4 and the projections 6 enter into the grooves 3
(translation, p. 4).
The Soviet patent evidences that non-detachable
interference-fit couplings comprising male parts provided with
projections and female parts provided with grooves were well
known in the art at the time of appellant's invention. From
our perspective, it would have been obvious to one skilled in
the art at the time of appellants' invention to provide
annular projections on the exterior surface of the pin 94 of
Ament's valve tip 90 and corresponding grooves on the interior
surface of the blind bore 95 of Ament's shank portion 92 in
order to obtain the self-evident advantage of a positive
locking to provide a more secure attachment.
Appellant argues on pages 4 and 5 of the brief that the
Soviet patent is non-analogous art. We do not agree. The
test for non-analogous art is first whether the art is within
Appeal No. 2001-0305 Page 6
Application No. 09/077,356
the field of the inventor's endeavor and, if not, whether it
is reasonably pertinent to the problem with which the inventor
was involved. In re Wood, 599 F.2d 1032, 1036, 202 USPQ 171,
174 (CCPA 1979). A reference is reasonably pertinent if, even
though it may be in a different field of endeavor, it
logically would have commended itself to an inventor's
attention in considering his problem because of the matter
with which it deals. In re Clay, 966 F.2d 656, 659, 23 USPQ2d
1058, 1061 (Fed. Cir. 1992). As explained on page 2 of
appellant's specification, one of the problems with which
appellant was involved was providing a simple and secure
connection of the valve closing element and the connecting
part, such that the possibility of detachment during the axial
movement of the valve needle is completely ruled out.
Likewise, the Soviet patent is directed to a non-detachable
coupling of male and female parts which is simple to
manufacture (translation, p. 4) and, thus, would have
commended itself to an artisan faced with the problem
addressed by appellant. Thus, we conclude that the Soviet
patent is analogous art in the context of appellant's
invention.
Appeal No. 2001-0305 Page 7
Application No. 09/077,356
Appellant's only other argument against the examiner's
rejection is that the Soviet patent does not suggest that the
coupling described therein can be used to couple parts made
from different materials (brief, p. 5). We do not find this
argument persuasive of the nonobviousness of the modification
proposed by the examiner.
It is well settled that "[u]nder section 103, teachings
of references can be combined only if there is some suggestion
or incentive to do so." ACS Hospital Sys., Inc. v. Montefiore
Hospital, 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir.
1984). However, as stated in Motorola Inc. v. Interdigital
Tech. Corp., 121 F.3d 1461, 1472, 43 USPQ2d 1481, 1489 (Fed.
Cir. 1997):
there is no requirement that the prior art contain
an express suggestion to combine known elements to
achieve the claimed invention. Rather, the
suggestion to combine may come from the prior art,
as filtered through the knowledge of one skilled in
the art. See In re Jones, 958, F.2d 347, 351, 21
USPQ2d 1941, 1943-44 (Fed. Cir. 1992) ("there must
be some suggestion for [combining prior art
references], found either in the references
themselves or in the knowledge generally available
to one of ordinary skill in the art"); In re
Nilssen, 851 F.2d 1401, 1403, 7 USPQ2d 1500, 1502
(Fed. Cir. 1988) (rejecting applicant's argument
that the prior art must contain an express
Appeal No. 2001-0305 Page 8
Application No. 09/077,356
suggestion to combine); see also In re Oetiker, 977
F.2d 1443, 1449, 24 USPQ2d 1443, 1446-47 (Fed. Cir.
1992) (Neis, C.J., concurring) ("[W]e must look at
the obviousness issue through the eyes of one of
ordinary skill in the art and what one would be
presumed to know with that background.").
Like appellant, we find no express teaching in the Soviet
patent of a coupling having a female part made of one material
(e.g., plastic) and a male part made of a different material
(e.g., metal). However, while the disclosed process used to
form the coupling of the Soviet patent relies on the female
part being made of a material which expands upon heating, the
Soviet patent does not even hint that the male and female
parts used to form the coupling must be made of the same
material. Assuming, as we must, that the artisan had
knowledge of the coupling of the Soviet patent and its
benefits, we believe the artisan would have derived from such
knowledge that it is equally applicable to a coupling between
a metal valve tip pin and a plastic shank portion, such as in
the needle valve 42 of Ament, to achieve the benefits of a
simple and secure coupling. To conclude otherwise would be to
improperly assume that the artisan possesses less than
Appeal No. 2001-0305 Page 9
Application No. 09/077,356
ordinary skill. In re Sovish, 769 F.2d 738, 743, 226 USPQ
771, 774 (Fed. Cir. 1985).
For the foregoing reasons, we are satisfied that the
combined teachings of Ament and the Soviet patent are
sufficient to have suggested the subject matter of claim 9.
Therefore, we shall sustain the examiner's rejection of claim
9, as well as claims 10-14 which appellant has grouped
therewith (brief, p. 3).
CONCLUSION
To summarize, the decision of the examiner to reject
claims 9-14 under 35 U.S.C. § 103 is affirmed.
Appeal No. 2001-0305 Page 10
Application No. 09/077,356
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 2001-0305 Page 11
Application No. 09/077,356
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