Ex Parte Schuurman

Board of Patent Appeals and Interferences

Sep 17, 2002

09417439 (B.P.A.I. Sep. 17, 2002)

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publication and is not binding precedent of the Board.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. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte RAYMOND SCHUURMAN
_____________
Appeal No. 2002-0021
Application No. 09/417,439
______________
ON BRIEF
_______________
Before ABRAMS, FRANKFORT and McQUADE, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1
through 7, all of the claims pending in this application.
Appellant’s invention relates to an electromagnetically controlled seat valve
(claim 1) and to an automatic transmission for a motor vehicle including such a valve
(claim 7). As noted in the paragraph bridging pages 5 and 6 of the specification
“[a] particular advantage obtained by using the seat valve of
the present invention as described so far is that the ratio
Appeal No. 2002-0021
Application No. 09/417,439
1 Our understanding of the two German language documents applied by the
examiner is based on translations prepared for the USPTO. For appellant’s
convenience, a copy of each of the translations is attached to this decision.
2
between the flow-through pressurized medium volume at
high and low temperatures is significantly improved as
compared with the state of the art, as a result of the special
construction of the throttling device or means as proposed
by the present invention. To this end, the single orifice of a
larger size that had been customarily used up to now has
been replaced in accordance with the present invention with
a plurality of smaller-size throttling orifices that are spaced
from each other but are arranged parallel to one another as
far as the flow of the pressurized medium through them is
concerned. Individual throttling orifices with smaller sizes
have a higher throttling effect on the medium flowing through
them, and hence permit less of the medium to flow through
them, at relatively low temperatures than the afore-
mentioned larger-size single throttling orifice. On the other
hand, the flow-through volume needed for reliable operation
at higher temperatures can be assured by appropriately
choosing the number of the individual throttling orifices.”
Independent claims 1 and 7 are representative of the subject matter on appeal
and a copy of those claims may be found in the Appendix to appellant’s brief.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:1
Brehm et al. (Brehm) 44 31 457 C2 Feb. 20, 1997
(German Priority Document)
Appeal No. 2002-0021
Application No. 09/417,439
3
Bosch GmbH 93 21 431 U1 Mar. 5, 1998
Claims 1 through 7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brehm in view of Bosch GmbH. According to the examiner, Brehm
shows the claimed valve except for not having two parallel throttling bores, while Bosch
GmbH shows a similar valve with two parallel bores. The examiner concludes that it
would have been obvious to one of ordinary skill in the art to have used two parallel
throttling bores as taught in Bosch GmbH in the valve of Brehm “to similarly provide for
a desired throttling flow rate” (final rejection, page 2).
Rather than reiterate the examiner's full statement of the above-noted rejection
and the conflicting viewpoints advanced by the examiner and appellant regarding the
rejection, we make reference to the final rejection (Paper No. 8, mailed November 1,
2000) and the examiner's answer (Paper No. 13, mailed May 21, 2001) for the
examiner's reasoning in support of the rejection, and to appellant’s brief (Paper No. 12,
filed April 16, 2001) for appellant’s arguments thereagainst.
OPINION
Appeal No. 2002-0021
Application No. 09/417,439
4
In reaching our decision in this appeal, we have given careful consideration to
appellant’s specification and claims, to the applied prior art references, and to the
respective positions articulated by appellant and the examiner. As a consequence of
our review, we have made the determination that the examiner’s above-noted rejection
under 35 U.S.C. § 103 will not be sustained. Our reasons follow.
Like appellant, we are of the opinion that there is no reasonable teaching,
suggestion or incentive in the applied prior art references, or otherwise specified by the
examiner, which would have led one of ordinary skill in the art at the time of appellant’s
invention to modify the seat valve of Brehm in the particular manner urged by the
examiner. Brehm discloses an electromagnetically operated pressure valve similar to
the valve addressed by appellant. Indeed, appellant has noted on pages 2 and 3 of his
specification that Brehm is representative of the prior art over which the present
invention is an improvement. While Brehm appears to generally recognize a type of
temperature related flow problem similar to that discussed by appellant, that reference
provides a solution as shown in Figures 1 and 2 thereof, wherein a single throttling hole
(57) is provided in Figure 1 or wherein the throttling hole (57) of Figure 1 is replaced
with a throttling bore (57a) seen in Figure 2 having sections (57b) and (57c) of different
cross-sectional shapes and lengths.
Appeal No. 2002-0021
Application No. 09/417,439
5
By contrast, Bosch GmbH discloses an electromagnetically controlled pressure
valve of a different type and which includes throttling of the fluid medium from the
pressure source via holes (34) and control edge (45) of piston section (40) of control
piston (39). There is no discussion in Bosch GmbH concerning the particular
temperature related flow problem addressed by appellant, nor any discussion of how
the holes (34) serve to throttle pressure medium from the pressure source. The
emphasis in Bosch GmbH (see translation, pages 7-9) is on the throttling provided by
the narrowing ring space adjacent the first control edge (45) as the control piston (39)
moves to the right in Figure 1 due to increasing pressure in the ring space (46) acting
on piston section (41).
Like appellant, we consider that the modification of the valve of Brehm urged by
the examiner is merely a hindsight reconstruction based on the impermissible use of
appellant’s own disclosure and teachings as a blueprint for piecing together unrelated
elements of the relied upon prior art references. The examiner’s assertions (answer,
page 7) that it is “readily apparent to one of ordinary skill in the art that using two bores
in 4,431,457 [Brehm] as suggested by 9,231,431 [Bosch GmbH] would provide a
greater flow while maintaining the same pressure drop that the throttle 57 of 4,431,457
provides” is entirely speculative and without foundation in the applied prior art.
Appeal No. 2002-0021
Application No. 09/417,439
6
Absent the disclosure of the present application, it is our opinion that one of
ordinary skill in the art would not have been motivated to modify the valve of Brehm in
the particular manner urged by the examiner so as to arrive at the subject matter set
forth in appellant’s claims 1 through 7 on appeal. Thus, we will not sustain the
examiner’s rejection of claims 1 through 7 as being unpatentable over Brehm in view of
Bosch GmbH.
In accordance with the foregoing, the decision of the examiner rejecting claims 1
through 7 of the present application under 35 U.S.C. § 103(a) is reversed.
REVERSED
Appeal No. 2002-0021
Application No. 09/417,439
7
NEAL E. ABRAMS )
Administrative Patent Judge )
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
CEF:yrt
Michael J. Striker
STRIKER STRIKER & STENBY
103 East Neck Road
Huntington, N.Y. 11743