Ex Parte Schnurr et al

Board of Patent Appeals and Interferences

Feb 24, 2010

10495820 (B.P.A.I. Feb. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT SCHNURR, ISAO INOUE, MICHAEL SCHLITZKUS,
ANDREAS WEH, MASAHIRO EDAMOTO, PAUL HANSON, and
DOUGLAS PATTERSON
____________

Appeal 2009-004584
Application 10/495,820
Technology Center 3600
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Decided: February 24, 2010
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Before: JENNIFER D. BAHR, STEVEN D.A. McCARTHY, and FRED A.
SILVERBERG, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-004584
Application 10/495,820

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STATEMENT OF THE CASE
Robert Schnurr, et al. (Appellants) appeal under 35 U.S.C. § 134
(2002) from the Examiner's decision rejecting claims 1 and 3-7. Claim 2 has
been canceled. We have jurisdiction over this appeal under 35 U.S.C. § 6
(2002).

The Invention
Appellants' claimed invention is directed to a housing block in an anti-
lock hydraulic vehicle brake system. Spec. 1:10-13.
Claim 1, reproduced below, is illustrative of the claimed invention.
1. A housing block in an anti-lock hydraulic
vehicle brake system, comprising: a plurality of
bores, conduits or holes intended for the function
of the anti-lock arrangement, wherein of these
function-specific bores, conduits or holes, at least
one bore (8), one conduit, or one hole is provided
with an annular bead arranged on a radially inner
circumferential surface, wherein the annular bead
has a first, front engagement face and a second,
rear engagement face arranged behind the first,
front engagement face in an insertion direction of a
clamping means of a machine tool into the at least
one bore, one conduit, or one hole, and
wherein the second, rear engagement face is
formed for clamping of the housing block in the
machine tool by spreading means (22) of a
spreader mandrel (16) in positive engagement from
behind.

The Rejections
The Examiner relies upon the following as evidence of
unpatentability:
Appeal 2009-004584
Application 10/495,820

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Lieser US 3,033,512 May 8, 1962
Rischen US 5,658,056 Aug. 19, 1997
Ketcham US 6,312,020 B1 Nov. 6, 2001

Appellants seek review of the Examiner's rejections under 35 U.S.C.
§ 103(a) of claims 1 and 4-71 as unpatentable over Ketcham and Rischen,
and of claim 3 as unpatentable over Ketcham, Rischen, and Lieser.

SUMMARY OF DECISION
We AFFIRM.

ISSUE
The Examiner rejected claims 1 and 4-7 as unpatentable over
Ketcham and Rischen. In relevant part, the Examiner found that Ketcham
describes a housing block in a vehicle brake system having a plurality of
bores, including a function-specific bore with an annular bead as recited in
claim 1. Ans. 3. Appellants argue that the particular bore identified by the
Examiner is not a function-specific bore but a connector bore. Appeal Br. 5.
Next, Appellants argue that since Ketcham does not disclose "machining of
the housing block," and consequently provides no suggestion regarding the
manner of possible clamping of the housing block during machining, an
artisan would not consider the Ketcham reference in addressing the stated
object of Appellants' invention. Id. Appellants do not separately argue

1 There appears to be a typographical error in the Appellants' argument VII
A on page 4 of the Appeal Brief, which lists claim 3 as rejected with claims
1 and 4-7. However, the Examiner rejected claim 3 in a separate rejection,
which Appellants address separately. Ans. 5-6; Appeal Br. 7.
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Application 10/495,820

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claims 4-7. Accordingly, they stand or fall with claim 1. 37 C.F.R. §
41.37(c)(1)(vii) (2009). Appellants separately argue claim 3, but rely on the
arguments presented for claim 1. Appeal Br. 7. Therefore, the dispositive
issue in this appeal is whether Ketcham describes the "function-specific"
bore of claim 1.

OPINION
Claim 1 requires a housing block with at least one "function-specific"
bore having an annular bead on the inside surface of the bore. Appellants
argue that the particular bore identified by the Examiner in Ketcham is not a
function-specific bore, but a connector bore. Appeal Br. 5. The plain
meaning of a "function specific" bore is a bore that is used to perform a
specific function. However, the plain meaning of a "function-specific" bore
would not exclude those bores whose specific function is to connect. We
find that Ketcham's bore 136 in caliper 132 has a rim 138 with a radially-
inward-extending annular abutment surface 140 that serves to hold the hose
connector housing 102 to caliper 132. Col. 3, l. 65 to col. 4, l. 15. Thus,
Ketcham's bore 136 provides the function of clamping a fluid conduit to a
vehicle's brake caliper. See also col. 3, ll. 4-17. Therefore, we find that
Ketcham's bore 136 is a "function specific" bore.
Claim 4, which depends from claim 1 and thus incorporates all of the
limitations thereof2, specifies that the "function-specific" bores are "blind"
bores or "through bores." We additionally find that Appellants'
Specification discloses that "[t]he function-specific bore, supplemented with
the clamping function, can be a blind bore or a through bore." Spec. 3:1-2.

2 35 U.S.C. § 112, fourth paragraph.
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Moreover, as described in the Specification, "a blind bore … serves solely as
a clamping bore." Spec. 5:10-12. Accordingly, we construe the terminology
"function-specific bores," consistent with Appellants' Specification and
dependent claim 4, as having sufficient breadth to encompass both blind
bores and through bores and as sufficiently broad to encompass bores which
serve, or facilitate, the function of clamping or connecting. Thus,
Appellants' argument that Ketcham's bore 136 is not a function-specific bore
because it only serves as a connector is not commensurate with the scope of
claim 1.
Appellants' argument that Ketcham teaches away from the claimed
invention is not persuasive because Ketcham's bore 136 describes the
claimed "function-specific" bore of claim 1, as discussed above. See Appeal
Br. 5. Appellants' argument that one of ordinary skill in the art would not
consider Ketcham if trying to find a solution to the object of the present
invention is not persuasive. See Appeal Br. 5. The particular problem
Appellants seek to overcome in their invention does not prevent a person of
ordinary skill in the art from arriving at the claimed invention while
addressing, for example, a different problem known in the art. See, e.g., In
re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006) (the motivation question arises
in the context of the general problem confronting the inventor rather than the
specific problem solved by the invention); KSR Int'l. Co. v. Teleflex Inc., 550
U.S. 398, 420 (2007) ("[u]nder the correct analysis, any need or problem
known in the field of endeavor at the time of invention and addressed by the
patent can provide a reason for combining the elements in the manner
claimed").
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Appellants argue that Ketcham does not disclose "machining of the
housing block … with regard to the manner of possible clamping of the
housing block during machining." Appeal Br. 5. However, claim 1 does not
have a "machining" step.3 It is well established that limitations not
appearing in the claims cannot be relied upon for patentability. See In re
Self, 671 F.2d 1344, 1348 (CCPA 1982).
To the extent that Appellants were discussing the "clamping means"
of claim 1, we note that claim 1 merely requires that the "annular bead" have
a "rear engagement face … in an insertion direction of a clamping means,"
which does not positively recite the "clamping means" but instead describes
an intended use of the annular bead. Statements of intended use in an
apparatus claim do not distinguish the claim over the prior art apparatus. In
re Sinex, 309 F.2d 488, 492 (CCPA 1962). As depicted in Figure 3,
Ketcham's bore 136 is provided with an annular bead with a front
engagement face (rim 138) and rear engagement face (abutment surface
140), and is capable of having structure inserted therein. Appellants have
not provided any evidence or technical reasoning to show that the particular
bore 136 identified by the Examiner would be incapable of performing the
inferentially-recited intended use, namely, having a clamping means inserted
therein.
Appellants argue that Rischen does not describe certain features of the
claims. Appeal Br. 6. However, the Examiner merely proposed to modify
Ketcham's bore 136 with the teachings of Rischen's anti-lock brake to the

3 Although Appellants have not directed any argument specifically to
method claim 7, we nonetheless note that claim 7 likewise does not require a
machining step.
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extent that the bore 136 in Ketcham's brake caliper 132 is not located within
an anti-lock hydraulic vehicle brake system. See Ans. 4. Thus, the
Examiner does not propose to modify Ketcham to include the cable,
mounting, or material of Rischen but rather to provide an anti-lock hydraulic
braking control function in Ketcham or, stated differently, to utilize
Ketcham's brake caliper 132 and connector housing in an anti-lock hydraulic
vehicle brake system.
Appellants finally argue that the modification proposed by the
Examiner would change the principle of operation of the prior art. Appeal
Br. 6. However, Appellants have not identified any particular principle that
would be changed, or how the Examiner's proposed combination would
change that principle. Furthermore, it is not apparent from the record before
us why the principle operation of Ketcham's bore 136 would be changed if it
were used in an anti-lock brake, as taught in Rischen.

CONCLUSIONS
Ketcham's bore 136 corresponds to the "function-specific" bore of
claim 1. As such, we are not persuaded that the Examiner erred in rejecting
claim 1 as unpatentable over the teachings of Ketcham and Rischen, and
sustain the rejection of claim 1. We likewise sustain the Examiner's
rejection of claims 4-7, which stand or fall with claim 1. Appellants'
arguments likewise fail to convincingly point out error in the Examiner's
rejection of dependent claim 3 as unpatentable over Ketcham, Rischen, and
Lieser.

Appeal 2009-004584
Application 10/495,820

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DECISION
The Examiner's decision is affirmed as to claims 1 and 3-7.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007).

AFFIRMED

hh

MICHAEL J. STRIKER
STRIKER STRIKER & STENBY
103 EAST NECK ROAD
HUNTINGTON, NY 11743