Ex Parte Reiter

Patent Trial and Appeal Board

Nov 17, 2016

11662621 (P.T.A.B. Nov. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/662,621 08/07/2007
26646 7590 11/21/2016
ANDREWS KURTH KENYON LLP
ONE BROADWAY
NEW YORK, NY 10004
FIRST NAMED INVENTOR
Ferdinand Reiter
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.
1019114730 8274
EXAMINER
CERNOCH, STEVEN MICHAEL
ART UNIT PAPER NUMBER
3752
NOTIFICATION DATE DELIVERY MODE
11/21/2016 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 FERDINAND REITER
Appeal2015-000622
Application 11/662,621
Technology Center 3700
Before PHILLIP J. KAUFFMAN, LYNNE H. BROWNE, and
HYUN J. JUNG, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the rejection of claims
18, 19, 22-25, and 28-34. 1 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter a new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
1 Appellant mistakenly lists claim 8 as appealed (Br. 1) and elsewhere
correctly identifies claim 18 (Br. 2).
Appeal2015-000622
Application 11/662,621
CLAIMED SUBJECT MATTER
The claims are directed to a fuel injector. Claim 18, reproduced
below, is illustrative of the claimed subject matter:
18. A fuel injector, comprising:
a valve housing;
a solenoid coil;
a restoring spring;
an armature, wherein the armature is acted upon by the
restoring spring, and wherein the armature cooperates with the
solenoid coil;
a valve needle, wherein valve needle and the armature
together form an axially displaceable valve part;
a sealing seat formed by a valve-closure member and a
valve-seat body, wherein the valve closure member is provided
on the valve needle; and
a disk made of an elastomeric material affixed between the
solenoid coil and the valve housing in a direction parallel to a
path of movement of the armature, the solenoid coil contacting a
first surface of the disk and the valve housing contacting a second
surface of the disk that is opposite the first surface,
a valve sleeve, wherein an inner radius of the disk is
smaller than a radius of the valve sleeve, wherein the valve sleeve
reaches through the solenoid coil on the inside,
wherein the inner radius of the disk is dimensioned to
provide sealing of the valve sleeve, the disk in the installed state
wrapping around the valve sleeve.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Casey
Cerny
Yokota
us 4,951,878
us 5,263,647
us 5,566,921
2
Aug. 28, 1990
Nov. 23, 1993
Oct. 22, 1996
Appeal2015-000622
Application 11/662,621
REJECTIONS
I. Claims 18 and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Casey and Cerny.
II. Claims 22-25 and 28-34 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Casey, Cerny, and Yokota.
DISCUSSION
New Ground of Rejection
Claims 18, 19, 22-25, and 28-34 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite.
Independent claim 18 requires "a disk made of an elastomeric material
affixed between the solenoid coil and the valve housing in a direction
parallel to a path of movement of the armature." Appeal Br. Claim App. 1
(emphasis added). It is unclear how a disk can be affixed (i.e. attached
physically2) in a direction. Even if we are to assume that this claim
limitation refers to outer surfaces of the disk being affixed, it is unclear how
those surfaces are affixed in a direction. 3 It is possible that the claim was
intended to require that the disk be affixed such that some feature of the disk
is oriented in a direction parallel to a path of movement of the armature.
2 An ordinary and customary definition of "affix" is "to attach physically."
Merriam-webster.com, http://www.merriam-webster.com/dictionary/affixed
(last accessed November 7, 2016).
3 We note that although the Abstract describes the rubber disk 25 as "affixed
underneath the solenoid," claim 1 requires "an elastomeric material [that] is
affixed between the solenoid coil (2) and a valve housing (4)," and claim 5
requires that "the disk (25) is affixed on a coil brace (3) of the solenoid coil
(2), the Specification does not describe the disk being affixed "in a
direction" or explain what is meant by this claim terminology. Abstract,
Spec. 8.
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Appeal2015-000622
Application 11/662,621
However, we do not speculate as to the meaning of claim terms. "If no
reasonably definite meaning can be ascribed to certain terms in the claim,
the subject matter does not become obvious-the claim becomes indefinite."
In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970).
Claims 19, 22-25, and 28-34 depend from claim 18 and likewise are
indefinite.
Re} ections I and II
Having determined that claims 18, 19, 22-25, and 28-34 are
indefinite, we cannot sustain the rejections of these claims under 35 U.S.C.
§ 103(a) because to do so would require speculation as to the scope of the
claims. In re Steele, 305 F.2d 859, 862---63 (CCPA 1962) (Holding that the
Board erred in affirming a rejection of indefinite claims under 35 U.S.C.
§ 103(a)).
DECISION
We enter a NEW GROTJND OF REJECTION of claims 18, 19, 22-
25, and 28-34 under 35 U.S.C. § 112, second paragraph.
The Examiner's rejections of claims 18, 19, 22-25, and 28-34 are
REVERSED.
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:
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:
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Appeal2015-000622
Application 11/662,621
(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.
REVERSED; 37 C.F.R. § 41.50(b)
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