Ex Parte Windbergs

Patent Trial and Appeal Board

Nov 21, 2018

14236521 (P.T.A.B. Nov. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/236,521 05/14/2014
24972 7590 11/26/2018
NORTON ROSE FULBRIGHT US LLP
1301 Avenue of the Americas
NEW YORK, NY 10019-6022
FIRST NAMED INVENTOR
Thor Windbergs
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
BOSC.P8297US/1000199672 9762
EXAMINER
MORALES, OMAR
ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
11/26/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
nyipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOR WINDBERGS
Appeal 2018-003478
Application 14/236,521
Technology Center 3700
Before WILLIAM A. CAPP, GEORGE R. HOSKINS, and
BRANDON J. WARNER, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 11-24. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Appellant identifies Robert Bosch GmbH as the real party in interest.
Appeal Br. 1.
Appeal 2018-003478
Application 14/236,521
THE INVENTION
Appellant's invention relates to fuel injectors for internal combustion
engines. Spec. 1. Claim 11, reproduced below, is illustrative of the subject
matter on appeal.
11. An injection device for an internal combustion engine,
compnsmg:
a first fuel injector for an injection of a first fuel having a
first fuel composition, the first fuel composition including an
ethanol component;
a separate second fuel injector for an injection of a second
fuel having a second fuel composition that differs from the first
fuel composition; and
a heating device for preheating exclusively the first fuel
having the first fuel composition, the first fuel being injected by
the first fuel injector, wherein the heating device includes a
heating unit integrated into a central fuel supply line for the first
fuel injector.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Borchers
Trapasso
Cooke
Ichihara
DE 102004040715 Al
US 2008/0060621 Al
US 2009/0114193 Al
US 2009/0248275 Al
The following rejections are before us for review:
Mar. 2, 2006
Mar. 13, 2008
May 7, 2009
Oct. 1, 2009
1. Claims 11-16, and 21-24 are rejected under 35 U.S.C. § I03(a) as
being unpatentable over Cooke, Trapasso, and Borchers.
2. Claims 17-20 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Cooke, Trapasso, Borchers, and Ichihara.
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Application 14/236,521
OPINION
Unpatentability of Claims 11-16 and 21-24
over Cooke, Trapasso, and Borchers
Claim 11-14, and 21-24
Appellant argues these claims as a group. Appeal Br. 3-5. We select
claim 11 as representative. See 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that Cooke discloses all of the elements of
claim 11 except for a heating device for ethanol that is integrated into a
central fuel supply line. Final Action 3--4. The Examiner relies on Trapasso
for preheating ethanol and Borchers for a heater that is integrated into a
central fuel supply line. Id. at 3. The Examiner concludes that it would
have been obvious to a person of ordinary skill in the art at the time of the
invention to preheat the first fuel, as taught by Trapasso, and to integrate a
heating device into a central fuel supply line, as taught by Borchers, to
achieve the claimed invention. Id. at 3--4. According to the Examiner, a
person of ordinary skill in the art would have done this to improve cold start
performance by preheating before entering the fuel injector. Id.
Appellant argues that Borchers' s heater is not "integrated into" a fuel
supply line, because it is "wrapped around the outer periphery of the supply
line." Appeal Br. 3. Appellant also argues that Borchers's heater relates to a
fuel supply line that leads to a carburetor, not a fuel injector. Id. Thus,
Borchers's heater, according to Appellant, is not "for" a first fuel injector as
claimed. Id. Appellant also contends that Borchers's heater adds too much
heat. Id. at 3-5 ('just below the boiling point"). Appellant emphasizes that
heating fuel to just below the boiling point addresses an "uneven particle
size problem" that bedevils carburetor-based systems. Id. at 4. Appellant
also argues that the Examiner's applied art fails to address heating an
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Application 14/236,521
"ethanol fuel." Id. Finally, Appellant criticizes the Examiner's rationale for
making the proposed combination, characterizing it as "conclusory." Id.
"At the very least, the Examiner should have presented sound technical and
scientific explanation explaining why the uneven particle size issue that
motivated Borchers to advance his heating solution is relevant to engines
that do not use carburetors." Id.
In response, the Examiner points out that Trapasso is relied on for
preheating ethanol. Ans. 3; see also Final Act. 3 (citing Trapasso, Abstract,
,r 1 ). The Examiner takes the position that Borchers teaches a heater that is
"integrated into" a fuel supply line in accordance with a dictionary meaning
of "integrate." Id. at 4. With respect to Appellant's carburetor versus fuel
injector argument, the Examiner points out that Borchers is merely relied on
for integrating a heater into a fuel supply line, but not necessarily for heating
the fuel to the same temperature as Borchers. Id.
Trapasso discloses a heated fuel injector for cold starting of ethanol-
fueled engines. Trapasso, Title, Abstract. This contradicts Appellant's
argument that the prior art fails to disclose heating an ethanol fuel.
We find unpersuasive Appellant's argument that Borchers's teaching
is only for carburetor-equipped engines and is limited to heating at higher
temperatures. It is well settled that a "reference may be read for all that it
teaches, including uses beyond its primary purpose." In re Mouttet, 686
F.3d 1322, 1331 (Fed. Cir. 2012), citing KSR Int 'l Co. v. Teleflex Inc., 550
U.S. 398, 418--421 (2007). Therefore, it is not necessary for the prior art to
serve the same purpose as that disclosed in Appellant's Specification in
order to support the conclusion that the claimed subject matter would have
been obvious. See In re Lintner, 458 F.2d 1013, 1016 (CCPA 1972). It is
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Application 14/236,521
common sense that familiar items may have obvious uses beyond their
primary purposes, and a person of ordinary skill often will be able to fit the
teachings of multiple patents together like pieces of a puzzle. KSR, 550 U.S.
at 420. Here, the prior art demonstrates how to heat fuel that resides in a
central fuel line, if such is desired. Trapasso already discloses the
temperature requirements for cold starting with an ethanol fuel. See, e.g.,
Trapasso ,r,r 26 and 28, Fig. 1. Appellants present neither evidence nor
persuasive technical reasoning as to why modifying the output of Borchers's
heater to the ethanol cold-start requirements of Trapasso requires more than
ordinary skill.
The dispute over the meaning of "integrated into" is a matter of claim
construction. During examination of a patent application, pending claims
are given their broadest reasonable construction consistent with the
specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004). Under the broadest reasonable interpretation standard, claim
terms are given their ordinary and customary meaning as would be
understood by one of ordinary skill in the art in the context of the entire
disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007). Construing claims broadly during prosecution is not unfair to the
applicant, because the applicant has the opportunity to amend the claims to
obtain more precise claim coverage. Am. Acad. of Sci., 367 F.3d at 1364.
"Therefore, we look to the specification to see if it provides a definition for
claim terms, but otherwise apply a broad interpretation." In re ICON Health
& Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
Appellant mentions a heating unit that is integrated into a central fuel
supply line only in the Summary section of the Specification. Substitute
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Application 14/236,521
Spec. 2:30-3:4. 2 Appellant does not direct us to a detailed description or
working example anywhere in the Specification regarding how such is
accomplished. See generally Appeal Br., Reply Br., Substitute Spec.
Appellant's Specification provides no operational definition of what it
means for one component to be "integrated into" another component, much
less a heater being integrated into a fuel line. Substitute Spec. 2:30-3:4; cf
id. at 5:26-27. Under the circumstances, the Examiner is at liberty to apply
a broad, but reasonable, construction of the term. We discern no error in the
Examiner construing "integrated into" as broad enough to encompass
wrapping a heating element around the periphery of a fuel line.
Borchers discloses a heating wire 11 that wraps around a central fuel
line. Borchers 2, Fig. 2. 3 The heater is in "physical contact" with the fuel
line. Id. We discern no error in the Examiner's finding that Borchers's
heater is "integrated into" a fuel line within the meaning of claim 11.
Finally, we disagree with Appellant's argument that the Examiner's
rationale for making the proposed combination is insufficient. Appeal Br. 4.
Specifically, Appellant's argument that the Examiner should have presented
a "technical and scientific explanation" regarding uneven particle size is not
persuasive. Id. Here, the Examiner finds that a person of ordinary skill in
the art would have combined the teachings of the applied references in the
manner proposed to improve the cold-start performance of a vehicle by
preheating ethanol before it enters the fuel injector. Final Action 3--4. This
is sufficient reasoning to support the rejection. Trapasso recognizes that
2 cf Id. at 5 :26-27 (indicating "electrical heat resistor 31 [is] integrated into
first fuel injector 12" of Figure 1, not the fuel supply line for injector 12).
3 Citations to Borchers are to the English language machine translation
furnished in the record.
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"[a] known problem with fueling internal combustion engines with alcohol
fuels" such as ethanol is that "starting under cold conditions [is] difficult or
impossible." Trapasso ,r,r 2-3. Furthermore, in the Background Information
section of the Specification, Appellant acknowledges that it was known that
"considerable startup difficulties" occur at cold-start temperatures with
ethanol fuels. Spec. 1. A reason to combine may be found explicitly or
implicitly in market forces; design incentives; "any need or problem known
in the field of endeavor at the time of invention and addressed by the
patent"; the "interrelated teachings of multiple patents"; and the background
knowledge, creativity, and common sense of the person of ordinary skill.
Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328-29 (Fed. Cir.
2009) (quoting KSR, 550 U.S. at 418-21). Preheating ethanol in the fuel line
prior to fuel injection is an obvious solution to a known problem.
We sustain the Examiner's unpatentability rejection of claims 11-14
and 21-24.
Claim 15
Claim 15 depends from claim 11 and adds the limitations:
the first and second fuel injectors are controllable
independently of each other, and
the first fuel injector and the second fuel injector are
dimensioned for different fuel flow rates.
Claims App.
Appellant argues that Cooke does not provide independent control of
the first and second fuel injectors as required by claim 15. Appeal Br. 5. In
response, the Examiner directs our attention to paragraphs 5 and 44 of
Cooke as purportedly disclosing independent control of the first and second
fuel injectors of a dual-fuel system. Final Act. 4; Ans. 5.
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Application 14/236,521
Cooke discloses a metering valve that can be used in a dual-flow fuel
injection system to control the flow of one fuel such that it follows the
controlled pressure of a different fuel. Cooke, Abstract. Cooke's valve
corrects a pressure imbalance between common rails 20 and 32. Id. ,r 34.
It can thus be seen that the metering valve 40 controls the petrol
and diesel pressures in two distinct injection sub-systems within
the dual-fuel fuel injection system 10 such that the diesel
pressure in the second system tracks the petrol pressure in the
first system as the metering valve seeks to maintain a pressure
balance between the two injection systems.
Id. ,r 35 (emphasis added). In our view, this balancing is best understood as
control of the first fuel injector being related to and dependent upon control
of the second fuel injector and vice versa. This is something less than
"independent" control as required by claim 15.
Thus, the Examiner's findings of fact are not supported by a
preponderance of the evidence such that we do not sustain the rejection of
claim 15.
Claim 16
Claim 16 depends from claim 11 and adds the limitation:
wherein the first fuel injector is dimensioned for a higher
fuel flow rate range than the second fuel injector.
Claims App.
The Examiner relies on paragraph 44 of Cooke as satisfying this
limitation. Final Action 4. Having reviewed paragraph 44, we agree with
Appellant's argument that the Examiner's finding of fact in this regard is not
supported by a preponderance of the evidence. Appeal Br. 5-6.
Consequently, we do not sustain the Examiner's rejection of claim 16.
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Application 14/236,521
Unpatentability of Claims 17-20
over Cooke, Trapasso, Borchers, and Ichihara.
Claims 17-20 depend, directly or indirectly, from claim 11. Claims
App. The Examiner relies on Ichihara to teach the limitations in these
dependent claims that are not taught by the applied art used in the rejection
of claim 11. Final Action 6-8. Appellant does not challenge the Examiner's
findings of fact related to the Ichihara reference. See generally Appeal Br.
Furthermore, Appellant does not argue for the separate patentability of
claims 1 7-20 apart from arguments presented with respect to claim 11,
which we have previously considered. Consequently, we sustain the
Examiner's rejection of claims 17-20. See 37 C.F.R. § 4I.37(c)(l)(iv)
(failure to separately argue claims).
DECISION
The decision of the Examiner to reject claims 11-14 and 17-24 is
affirmed.
The decision of the Examiner to reject claims 15 and 16 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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