Ex Parte Sumida et al

Board of Patent Appeals and Interferences

Apr 21, 2003

09258138 (B.P.A.I. Apr. 21, 2003)

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is not binding precedent of the Board.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. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte MAMORU SUMIDA, NORIHISA FUKUTOMI,
MASAYUKI AOTA and KEITA HOSOYAMA
_______________
Appeal No. 2002-0607
Application No. 09/258,138
_______________
HEARD: April 01, 2003
_______________
Before COHEN, STAAB, and NASE, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 1-6, all the claims currently pending in the
application.
Appeal No. 2002-0607
Application No. 09/258,138
1 Our understanding of this German language patent document is derived
in part from a translation thereof prepared by the Patent and Trademark
Office. A copy of that translation is attached to this decision.
2 In the “Grounds of Rejection” section on page 3 of the answer, we are
directed to the final rejection (Paper No. 7) for a statement of the grounds
of rejection. The final rejection (pages 2-3) in turn refers us to the first
office action (Paper No. 5) for the examiner’s rationale in rejecting the
claims. This practice of indirectly incorporating by reference more than one
prior office action in the answer does not comply with MPEP § 1208, which
provides that incorporation by reference may be made only to a single other
action, and that the examiner’s answer should not refer, either directly or
indirectly, to more than one prior office action. In the interest of judicial
economy, we shall, in this instance, proceed to decide the appeal on the
merits notwithstanding the examiner’s clear disregard for established Office
procedure in formulating the answer.
2
Appellants’ invention pertains to a fuel injection valve.
A copy of the appealed claims is appended to appellants’ main
brief.
The references relied upon by the examiner in the final
rejection are:
Stumpp et al. (Stumpp) 4,589,596 May 20, 1986
Itoh et al. (Itoh) 4,966,120 Oct. 30, 1990
Berton et al. (Berton) 5,129,658 Jul. 14, 1992
Belshaw et al. (Belshaw) 5,345,913 Sep. 13, 1994
Sumida et al. (Sumida) 5,630,400 May 20, 1997
Dietrich et al. (Dietrich)1 DE 3,340,445 May 15, 1985
The appealed claims stand finally rejected under 35 U.S.C.
§ 103(a) as follows:2
(1) claims 1 and 6, unpatentable over Sumida in view of
Dietrich;
Appeal No. 2002-0607
Application No. 09/258,138
3
(2) claim 2, unpatentable over Sumida in view of Dietrich,
and further in view of Stumpp;
(3) claim 3, unpatentable over Sumida in view of Dietrich,
and further in view of Belshaw;
(4) claim 4, unpatentable over Sumida in view of Dietrich,
and further in view of Itoh; and
(5) claim 5, unpatentable over Sumida in view of Dietrich,
and further in view of Berton.
Discussion
A review of the prosecution history of the present
application reveals the following:
! In the first office action (Paper No. 5), claim 1
was rejected by the examiner under 35 U.S.C.
§ 102(b) as being anticipated by Sumida. In
support of this position, the examiner stated
(page 2) that Sumida teaches “a compression
between the two [unspecified] housing parts and an
[unspecified] elastic ring is used to create
further compression.”
! In the final rejection (Paper No. 7), claim 1
(amended) was rejected by the examiner under 35
U.S.C. § 103(a) as being unpatentable over Sumida
in view of Dietrich. The examiner stated (page 2)
that Sumida “applies as per the last office
action,” and that Dietrich “teaches a housing part
and a valve body within the housing part with the
valve body having two diameters and a seal located
at the shoulder between the diameters and between
Appeal No. 2002-0607
Application No. 09/258,138
3 37 CFR § 1.193(b)(1) states that a supplemental examiner’s answer is
not permitted, unless the application is remanded by the Board for that
purpose. Given our disposition of the present appeal, the examiner’s
disregard for Office procedure in this respect is of no moment.
4
this shoulder and the cylinder head (16) (see
Figure 1).” No further explanation of how the
cited references are to be applied against claim 1
is set forth.
! In response to appellants’ request for
reconsideration (Paper No. 8), the examiner next
issued an advisory letter (Paper No. 9) which
included the following statement: “Dietrich
clearly shows a seal surrounding the tip of the
inner valve member. While this seal is not
labeled[,] the drawing shows it against the valve
tip and thus it will stop cylinder gases as
claimed.”
! In the answer (Paper No. 14), we are informed
(page 3) that “[t]he grounds for rejection of the
claims are found in the Final Rejection of June 9,
2000.” In the “Response to Argument” section of
the answer (page 4), the examiner further states,
among other things, that Sumida “clearly teaches
all of the limitations of claim 1 with the
possible exception of the means ‘for preventing
combustion gas in a cylinder from leaking to said
housing main body’” and that Dietrich is cited to
show a seal “located as claimed.”
! In the unauthorized supplemental examiner’s
answer3 (Paper No. 17), the examiner states (page
2) that claim 1 does not require the valve main
body to be a unitary body, that making the valve
body into a one piece structure would have been
obvious, and that in Sumida the sleeve (40) and
the elements (14) and (7) form a valve main body
having large and small diameter portions with a
shoulder therebetween.
Appeal No. 2002-0607
Application No. 09/258,138
5
The initial burden of establishing a basis for denying
patentability to a claimed invention rests upon the examiner. In
re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788
(Fed. Cir. 1984). If the examiner fails to establish a prima
facie case, the rejection is improper and will be overturned.
See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed.
Cir. 1988). As stated by Judge Plager in his concurring opinion
in Oetiker, 977 F.2d at 1449, 24 USPQ2d at 1447:
The process of patent examination is an
interactive one . . . . The examiner cannot sit mum,
leaving the applicant to shoot arrows into the dark
hoping to somehow hit a secret objection harbored by
the examiner. The ‘prima facie case’ notion, the
exact origin of which appears obscure . . . ,
seemingly was intended to leave no doubt among
examiners that they must state clearly and specifically
any objections (the prima facie case) to
patentability, and give the applicant fair opportunity
to meet those objections with evidence and argument.
To that extent the concept serves to level the playing
field and reduces the likelihood of administrative
arbitrariness.
In the present case, the examiner has made no explicit
findings regarding, among other things, (1) the scope and
contents of the applied prior art, (2) the differences between
Appeal No. 2002-0607
Application No. 09/258,138
6
the applied prior art and appealed claim 1, (3) precisely how the
primary reference to Sumida would have to be modified to make up
for any such differences, (4) why any proposed modification would
have been obvious to one of ordinary skill in the art, or (5) how
the proposed modification(s) would result in the claimed subject
matter as a whole. In addition, the examiner has not adequately
addressed appellants’ arguments throughout the main and reply
briefs regarding the alleged ambiguity of Dietrich with respect
to the construction of its fuel injector valve main body and the
element at the base of Dietrich’s valve main body purported by
the examiner to be a seal element. Nor has the examiner
adequately addressed appellants’ argument on pages 3-5 of the
main brief to the effect that the combined teachings of the
applied references would not render obvious a fuel injection
valve having both a seal held between a cylinder head and a
shoulder defined between large and small diameter portions of the
valve main body (as set forth in the penultimate paragraph of
claim 1) and a securing means for securing the outer side of the
large diameter portion of the valve main body to the housing main
Appeal No. 2002-0607
Application No. 09/258,138
7
body (as set forth in the last paragraph of claim 1). While we
might speculate as to precisely how the examiner intends to apply
the Sumida and Dietrich references against claim 1, such
speculation would not give appellants a fair opportunity to
response. It is therefore our conclusion that the examiner has
not met his initial burden of establishing a prima facie case of
obviousness of independent claim 1.
In light of the foregoing, we are constrained to reverse the
standing rejection of independent claim 1, as well as claim 6
that depends therefrom, as being unpatentable over Sumida in view
of Dietrich. We are also constrained to reverse the standing
rejections of dependent claims 2-5 under 35 U.S.C. § 103(a) since
it is not apparent how the tertiary references applied in the
rejections of these claims might cure the fundamental defects
noted above in the examiner’s prima facie case with respect to
base claim 1.
Remand
This case is remanded to the examiner for consideration of
following matters.
Appeal No. 2002-0607
Application No. 09/258,138
4 Anticipation, within the meaning of 35 U.S.C. § 102, “requires the
presence in a single prior art disclosure of all elements of a claimed
invention arranged as in the claim.” Connell v. Sears Roebuck & Co., 722 F.2d
1542, 1548, 220 USPQ 193, 198 (Fed. Cir. 1983); however, the law of
anticipation does not require that the reference teach what the appellants are
claiming, but only that the claims on appeal “read on” something disclosed in
the reference (see Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 722, 218 USPQ
781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984), (and overruled
in part on another issue) 775 F.2d 1107, 227 USPQ 577 (Fed. Cir. 1985)).
8
Sumida discloses (see Figure 3) a fuel injection valve
comprising a housing main body 14, a valve assembly within the
housing main body comprising a valve main body 9 having a large
diameter cylinder portion 8 and a small diameter cylinder portion
7, an annular seal 45, and a sleeve 40 press-fit onto the small
diameter cylinder portion of the valve main body. The seal 45 is
held between a shoulder portion 3 of a cylinder head 1 and an end
face 41 of the sleeve 40. In addition, the housing main body 14
is secured to the outer side of the large diameter cylinder
portion 8 of the valve main body 9 by means of coupling portion
16.
The examiner should determine whether claim 1 “reads on”
(and is thus anticipated by4) the above described construction of
Sumida. More particularly, the examiner should determine whether
(1) the end face 41 of sleeve 40 of Sumida comprises “a shoulder
Appeal No. 2002-0607
Application No. 09/258,138
9
portion defined between said large-diameter and said small
diameter cylinder portions,” such that the seal 45 of Sumida “is
held between a cylinder head and said shoulder portion when said
valve assembly is inserted into the insertion port of said
cylinder” as called for in claim 1, and whether (2), consistent
with any reading the claimed shoulder portion on Sumida’s end
face 41, the remaining limitations of claim 1 (e.g., the
“securing means” limitation set forth in the last paragraph) can
be read on Sumida’s fuel injector valve construction.
In the event the examiner determines that claim 1 does not
distinguish over Sumida, the examiner should take whatever action
is deemed appropriate with respect to claim 1, as well as claims
2-6 that depend therefrom.
Summary
The decision of the examiner finally rejecting the appealed
claims is reversed.
This case is remanded to the examiner for consideration of
the matter noted above.
Appeal No. 2002-0607
Application No. 09/258,138
10
This application, by virtue of its “special” status,
requires an immediate action. MPEP § 708.01(D)(8th Ed., Rev. 1,
Feb. 2003).
REVERSED AND REMANDED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
ljs/vsh
Appeal No. 2002-0607
Application No. 09/258,138
11
SUGHRUE, MION, ZINN,
MACPEAK AND SEAS
2100 PENNSYLVANIA AVENUE NW
WASHINGTON, DC 20037-3213