Ex Parte Zenker et al

Board of Patent Appeals and Interferences

Sep 30, 2003

09749840 (B.P.A.I. Sep. 30, 2003)

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written for publication and is not binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte SIEGFRIED ZENKER and CARSTEN CHRISTENSEN

____________
Appeal No. 2003-1702
Application No. 08/749,840
____________
ON BRIEF
____________
Before KIMLIN, GARRIS and KRATZ, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 9-17. Claims 18 and 19, which are all of the
other claims pending in this application, stand withdrawn from
further consideration by the examiner as drawn to a non-elected
invention.
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Application No. 08/749,840
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BACKGROUND
Appellants' invention relates to a hydraulic dual circuit
steering system. An understanding of the invention can be
derived from a reading of claim 9, the sole independent claim on
appeal, which is reproduced below.
9. Hydraulic dual circuit steering system
comprising
- a first circuit having a first control unit and
a first steering motor connected with the control unit
via working connections,
- a second circuit having a second control unit
and a second steering motor connected with the control
unit via working connections,
- a change-over valve, which in a first position
activates the first circuit and deactivates the second
circuit and in a second position activates the second
circuit and deactivates the first circuit,
and in which in the first position of the
changeover valve working connections of the second
circuit and in the second position of the changover
valve the working connections of the first circuit are
connected to a pressure source.
The sole prior art reference of record relied upon by the
examiner in rejecting the appealed claims is:
Bohner et al. (Bohner) 6,102,150 Aug. 15, 2000
(§ 102(e) date - Oct. 16, 1998)
Claims 9-17 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Bohner.
Appeal No. 2003-1702
Application No. 08/749,840
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We refer to the briefs and to the answer for an exposition
of the opposing viewpoints expressed by appellants and the
examiner concerning the issues before us in this appeal.
OPINION
We have reviewed the record, including all of the arguments
advanced by both the examiner and the appellants in support of
their respective positions. This review leads us to conclude
that the examiner’s rejection is not well founded. Accordingly,
we reverse the aforementioned rejection.
The examiner has the initial burden of establishing a prima
facie case of anticipation by pointing out where all of the claim
limitations are described in a single reference. See In re
Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990);
In re King, 801 F.2d 1324, 1327, 231 USPQ 136, 138-39 (Fed. Cir.
1986).
All of the claims on appeal require a change-over valve
that, in a first position, activates a first (hydraulic) circuit
having a first control unit and a first steering motor connected
with the control unit via working connections while deactivating
a second circuit. Also, the same change-over valve is required
by the claims on appeal to activate a second such circuit when in
a second position while deactivating the first circuit.
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Application No. 08/749,840
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Moreover, a pressure source is connected to the working
connections of the second circuit when the changeover valve is in
a first position and connected to the working connections of the
first circuit when the changeover valve is in the second
position.
In applying the hydraulic dual steering circuit system of
Bohner to the claimed subject matter, the examiner has noted that
Bohner provides dual circuits and takes the position that
appellant’s change-over valve would read on the combination of
valves 31 and 32 as illustrated in drawing figure 3 of Bohner.
Even if we could agree with the examiner’s viewpoint
concerning that application of Bohner’s system to appellants’
claimed subject matter, the examiner has not fairly addressed in
the final rejection and examiner’s answer where Bohner provides a
description of the additionally recited pressure source and
connection of that pressure source to the working connections of
whatever circuit is deactivated by the change-over valve as
required by appellants’ independent claim 9 and as argued as a
patentable distinction by appellants in the briefs.
To the extent the examiner may have been assumingthat
independent claim 9 merely requires a change over valve position
wherein pressure from a pressure source is vented to a tank or
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Application No. 08/749,840
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reservoir as implied in Paper No. 16 rather than connected for
pressurizing the working connections of the deactivated circuit,
we can not agree. In such a no pressure load operation or set up
for the deactivated circuit as may be conveyed in Bohner (column
5, lines 35-43), a source of pressure is not described as being
connected to the working connections of the deactivated circuit,
as required by appellants’ claim 9.
Consequently, the examiner has not discharged the initial
burden of establishing a prima facie case of anticipation as to
any of the claims on appeal. It follows that, on this record, we
will not sustain the rejection under 35 U.S.C. § 102(e).

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Application No. 08/749,840
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CONCLUSION
The decision of the examiner to reject claims 9-17 under
35 U.S.C. § 102(e) as being anticipated by Bohner is reversed.
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
BRADLEY R. GARRIS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PETER F. KRATZ )
Administrative Patent Judge )
PFK/sld
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Application No. 08/749,840
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