Ex parte Romann et al.

Board of Patent Appeals and Interferences

Aug 31, 2001

08975469 (B.P.A.I. Aug. 31, 2001)

1 An oral hearing set for May 22, 2001 was waived by
appellants (Paper No. 42).
1
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for publication and is not binding precedent of the Board.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. 43
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte PETER ROMANN, FERDINAND REITER,
and RUDOLF BABITZKA
____________
Appeal No. 2001-0089
Application No. 08/975,469
____________
ON BRIEF1
____________
Before CALVERT, COHEN, and BAHR, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 7
through 9, and 16. Claim 10 through 15 stand withdrawn from
consideration by the examiner, in accordance with 37 CFR
Appeal No. 2001-0089
Application 08/975,469
2
1.142(b), as being based upon a non-elected invention. These
claims constitute all of the claims remaining in the
application.
Appellants’ invention pertains to a method of forming a
plastic sheath on an electromagnetic valve and an annular
plastic ring in a retaining groove in an inlet end of the
electromagnetic valve. A basic understanding of the invention
can be derived from a reading of exemplary claims 7 and 16,
copies of which appear in the APPENDIX to the revised brief
filed August 31, 1999 (Paper No. 36).
As evidence of obviousness, the examiner has applied the
document listed below:
Hensley 4,610,080 Sep. 9,
1986
The following rejection is before us for review.
Appeal No. 2001-0089
Application 08/975,469
2 We are informed by appellants (brief, page 1) of the
earlier decision in Appeal No. 97-0253 wherein “the claimed
subject matter was different.” That decision affirmed a
rejection under 35 U.S.C. § 112, first paragraph, and reversed
a rejection under 35 U.S.C. § 103 based upon the Hensley
patent, the same patent applied in the current appeal.
3 Claim 16 (line 2), as it appears in the Appendix to the
brief, lacks the recitation of --in a retaining groove-- after
“ring”, which recitation is found in the file copy of the
claim. Thus, the examiner’s indication (answer, page 2) that a
correct copy of the claims is contained in the Appendix is in
error.
3
Claims 7 through 9 stand rejected under 35 U.S.C. § 103
as being unpatentable over Hensley.
The full text of the examiner’s rejection and response to
the argument presented by appellants appears in the answer
(Paper No. 37), while the complete statement of appellants’
argument can be found in the brief2 (Paper No. 36).

OPINION
In reaching our conclusion on the obviousness issue
raised in this appeal, this panel of the board has carefully
considered appellants’ specification and claims,3 the applied
Appeal No. 2001-0089
Application 08/975,469
4 In our evaluation of the applied Hensley reference, we
have considered all of the disclosure of this document for
what it would have fairly taught one of ordinary skill in the
art. See In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510
(CCPA 1966). Additionally, this panel of the board has taken
into account not only the specific teachings, but also the
inferences which one skilled in the art would reasonably have
been expected to draw from the disclosure. See In re Preda,
401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
4
Hensley patent,4 the declaration of Waldemar Hans, and the
respective
viewpoints of appellants and the examiner. As a consequence
of our review, we make the determination which follows.
We cannot sustain the rejection of appellants’ claims
under 35 U.S.C. § 103.
Initially, we appreciate from a reading of the
specification, as originally filed, that an annular groove is
provided on the circumference of the inlet-side end of a fuel
inlet connecting piece whose radially extending side surfaces
are formed by a plastic sheath surrounding a part of the
valve, the groove base being formed by the circumference of
the fuel inlet connecting piece (pages 1 and 2). The original
Appeal No. 2001-0089
Application 08/975,469
5 The term “annular plastic ring”, which ring is formed in
the retaining groove as claimed, is nomenclature which does
not appear in the original specification. As indicated above,
the original specification sets forth that the “plastic sheath
18" engages into the retaining groove 46.
5
specification further sets forth (page 5) that the plastic
sheath 18 extends axially, originating from the fuel inlet
connecting piece 1, and forms radially extending side surfaces
of the annular groove 25 which is provided on the
circumference of the inlet-side end 44 of the fuel inlet
connecting piece 1. The groove base of the annular groove is
specified as being formed by the circumference of the fuel
inlet connecting piece 1. As recited in the original
specification (page 5), “[t]he plastic sheath 18 engages into
a retaining groove 46 at the inlet-side end 44 of the fuel
inlet connecting piece 1.”
Independent method claims 7 and 16 each respectively
require, inter alia, the step of forming an annular plastic
ring in a retaining groove5 in an inlet end of an
electromagnetic valve. We understand this step to require
Appeal No. 2001-0089
Application 08/975,469
6
that the annular plastic ring be fabricated in situ within the
retaining groove.
Turning now to the applied Hensley patent (Figures 1 and
3), we recognize the positioning of an unnumbered member in a
groove at the upper end of the pole piece 18. Additionally,
we find that the written specification of the patent does not
provide any description of this member at all.
The examiner’s view is that the claimed method would have
been obvious from the Hensley document. We disagree.
Simply stated, the proffered evidence clearly fails to
provide any suggestion whatsoever for the step of forming an
annular plastic ring in a retaining groove in an inlet end of
an electromagnetic valve, as now claimed. Since, as
indicated, the examiner has not provided adequate evidence
supporting the obviousness of the claimed invention, the
rejection must be reversed.
REMAND TO THE EXAMINER
Appeal No. 2001-0089
Application 08/975,469
7
We remand this application to the examiner as review the
following matter.
The examiner should consider whether the claimed subject
matter has descriptive support (35 U.S.C. § 112, first
paragraph) in the underlying disclosure. As pointed out
above, appellants’ original disclosure explicitly teaches that
plastic sheath 18 engages into the retaining groove 46. Thus,
the now claimed “annular plastic ring” obviously evolved from
the plastic sheath 18. However, the disclosure is silent as
to what method steps effected the metamorphosis from the
plastic sheath engaging the retaining groove to the plastic
sheath and spaced “annular plastic ring” arrangement depicted
in appellants’ Figure 1. It is also noted that, as disclosed,
the plastic sheath forms radially extending side surfaces of
an annular groove 25. The examiner should review the language
of each of claims 7 and 16, in particular, to ascertain if the
disclosure supports forming an annular plastic ring in a
retaining groove, forming a plastic sheath, and forming an
annular groove bordered between the plastic sheath and the
annular plastic ring. Further, the examiner should assess the
Appeal No. 2001-0089
Application 08/975,469
8
disclosure to ascertain whether it supports the forming of an
annular plastic ring “at a time different” from forming the
plastic sheath, a feature of method claim 16.

The decision of the examiner is reversed.
REVERSED AND REMANDED
Appeal No. 2001-0089
Application 08/975,469
9
IAN A CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )

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GREIGG & GREIGG
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