12147777 (P.T.A.B. Jul. 11, 2014)

Ex Parte Stitz

Patent Trial and Appeal BoardJul 11, 2014

12147777 (P.T.A.B. Jul. 11, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/147,777 06/27/2008 Matthias Stitz 2179-0235 7518 10800 7590 07/14/2014 Maginot, Moore & Beck LLP One Indiana Square, Suite 2200 Indianapolis, IN 46204 EXAMINER TALPALATSKI, ALEXANDER ART UNIT PAPER NUMBER 2837 MAIL DATE DELIVERY MODE 07/14/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte MATTHIAS STITZ1 ________________ Appeal 2012-009422 Application 12/147,777 Technology Center 2800 ________________ Before MARK NAGUMO, KAREN M. HASTINGS, and GEORGE C. BEST, Administrative Patent Judges. NAGUMO, Administrative Patent Judge. DECISION ON APPEAL Matthias Stitz (“Stitz”) timely appeals under 35 U.S.C. § 134(a) from the Final Rejection2 of claims 1-12, 14, and 15, which are all of the pending claims. We have jurisdiction. 35 U.S.C. § 6. We reverse for the reasons argued by Stitz. 1 The real party in interest is listed as Robert Bosch GmbH. (Appeal Brief, filed 30 January 2012 (“Br.”), 1.) 2 Office action mailed 26 October 2011 (“Final Rejection”; cited as “FR”). Appeal 2012-009422 Application 12/147,777 2 OPINION A. Introduction3 The subject matter on appeal relates to an electromagnet assembly used to actuate the valve stems or pistons of hydraulic valves. The assembly is described as comprising a pole tube having a pole piece on the front face that is connected to a tube piece via a spacer ring made of a nonmagnetic material. (Spec. 1 [0003].) In the words of the inventor, [T]he transition area between the spacer ring and the tube piece is not configured as is normally done with a continuous slanted surface . . . , but rather, with two front face sections set at an angle to each other, so that the support between these two components may be improved in the axial and radial directions and the rigidity of the tube is correspondingly enhanced . . . . (Id. at 2 [0008].) The truncated conical shape of the transition area between the spacer ring and the tube piece is said to improve the pressure-tightness of the fitting, which is subject to high internal pressure and mechanical loads leading to cracks in the transition region from the spacer ring to the tube piece. (Id. at 1 [0003].) Claim 1 is representative of the dispositive issues and reads: A solid pole tube [1] comprising: a pole piece [2] including a control cone [22] including a conical surface [24] and a radial front face [26]; a tube piece [6] having 3 Application 12/147,777, Pole tube and actuation magnet having such a pole tube, filed 27 June 2008, claiming the benefit of an application filed in Germany on 27 June 2007. Appeal 2012-009422 Application 12/147,777 3 a front face defining a first surface section [32] and a second surface section [34]; and a solid non-magnetic spacer ring [4] joining the pole piece [2] along the control cone [22] and joining the tube piece [6] along the front face [32, 34], wherein the first surface section [32] and the second surface section [34] are disposed at an angle with respect to each other. (Claims App., Br. 11; some indentation, bracketed labels to elements shown in Figures 1 and 2, and emphasis added.) {Fig. 1 (left; section) and Fig. 2 (right; detail) are shown below} {section (left) and detail (right) of an adjustable actuation magnet} The Examiner maintains the following ground of rejection:4 Claims 1-12, 14, and 15 stand rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Gee5 and Kondo.6 4 Examiner’s Answer mailed 12 April 2012 (“Ans.”). 5 Paul Timothy Gee et al., Two stage concentric EGR valves, U.S. Patent 6,390,078 B1 (2002). 6 Yusuke Kondo and Shinji Nakamura, Electromagnet for solenoid valves and method of manufacturing same, U.S. Patent 5,050,840 (1991). Appeal 2012-009422 Application 12/147,777 4 B. Discussion Findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. As Stitz urges (Br. 4-5), the Examiner has not directed our attention to any credible evidence that the admittedly empty space, labeled 201 by the Examiner (annotated Gee Fig. 1 at FR 5 and Ans. 6), in the EGR valve described by Gee, would have been considered by a person having ordinary skill in the relevant arts as performing any of the functions or behaving in any way as an equivalent of magnetism isolating portion 10 disclosed by Kondo, or the solid nonmagnetic spacer ring required by the appealed claims. Empty space, in ordinary experience and in classical physics, is empty. While the substitution of equivalent structures is a classical instance of obviousness, a showing of equivalence must be supported by evidence. Here, there is none, as explained in detail by Stitz in the Brief and in the Reply.7 C. Order We reverse the rejection of claims 1-12, 14, and 15. REVERSED cdc 7 Reply Brief filed 4 June 2012.