Matthias Mayr et al.

Patent Trials and Appeals Board

Mar 12, 2021

2020003922 (P.T.A.B. Mar. 12, 2021)

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.
13/321,797 02/11/2012 Matthias Mayr 2178-0138 3360
10800 7590 03/12/2021
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
EXAMINER
LETTMAN, BRYAN MATTHEW
ART UNIT PAPER NUMBER
3746
MAIL DATE DELIVERY MODE
03/12/2021 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 MAYR, MARC MICKE, REINER FELLMETH,
ALEXANDER BAREISS, and ANDREAS WEH

Appeal 2020-003922
Application 13/321,797
Technology Center 3700
____________

Before LINDA E. HORNER, CHARLES N. GREENHUT, and
MICHAEL L. HOELTER, Administrative Patent Judges.

HORNER, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 4, 5, 9‒13, and 15‒18, which are
all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
The Examiner rejected the claims on appeal as unpatentable over
various combinations of the prior art. Appellant argues that the Examiner
has not provided adequate reasoning to support a determination that a person

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Robert
Bosch GmbH. Appeal Br. 2.
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having ordinary skill in art would have been led to combine the prior art
teachings in the manner claimed. For the reasons explained below, we agree
with Appellant that the Examiner has failed to provide adequate reasoning to
support a determination of obviousness. Thus, we reverse.
PROCEDURAL HISTORY
This is the second appeal to the Board in this application. In an earlier
appeal, the Board reversed the Examiner’s anticipation and obviousness
rejections of then-pending claims 1, 2, and 14. Appeal 2015-007686 (PTAB
June 19, 2017). The Board reversed because the Examiner failed to give
patentable weight to the claim limitation “the first outer face is untreated and
is unmachined by a cutting process.” Id. at 2. The Board determined this
limitation is a “negative product-by-process limitation that makes clear that
the first outer face is not formed by treating and machining by a cutting
process.” Id. at 3. The Board found that the Examiner erred “in failing to
consider whether the structure imparted by the negative process limitation
results in a product that differs structural from the product disclosed in [the
prior art].” Id. As to the claimed structure, the Board found that an
“untreated face” is “not completely smooth and planar” when compared to a
“treated face.” Id.
After the Board’s decision, the Examiner reopened prosecution and
issued a new office action rejecting all of the pending claims based on prior
art references different from those relied on in the earlier appeal. Non-Final
Office Action, dated November 28, 2017. This further prosecution
culminated in the final office action that forms the basis of the present
appeal. Final Office Action, dated September 17, 2019 (“Final Act.”).
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CLAIMED SUBJECT MATTER
The claimed subject matter on appeal relates to a “pump housing for a
hydraulic unit in a motor vehicle.” Specification, filed November 21, 2011
(“Spec.”), 1:5. The Specification describes that in the prior art, such pump
housings had an outer face for mounting the associated motor, where the
outer face of the pump housing was machined to serve as a reference face
for use when machining the orifices for receiving hydraulic components in
the pump housing. Id. at 2:20‒28. The Specification describes that the
claimed invention dispenses with the need for machining a reference face.
Id. at 3:5‒7. In the invention, a blank of a pump housing is clamped in a
device such that the outer face of the blank is pressed against a stop and held
there during machining of the orifices. Id. at 3:7‒13. By dispensing with
need to machine a reference face, the pump housing blank can be made
smaller and lighter and the pump housing can be produced more cost-
effectively. Id. at 3:13‒15.
Claims 1 and 4 are illustrative of the subject matter on appeal and are
reproduced below.
1. A pump housing for a hydraulic unit in a motor vehicle,
comprising:
a body defining orifices configured to receive
components of an associated pump, the body including a first
outer face configured for mounting a motor,
wherein the first outer face is untreated such that the first
outer face is unmachined by a cutting process,
wherein the body is shaped as a parallelepiped, and the
untreated first outer face has a greater area than adjacent faces
of the body, and
wherein the body is formed of metal.
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4. A method for producing a pump housing for a hydraulic
unit in a motor vehicle, comprising:
placing an untreated pump housing, which has not been
machined by a cutting process, with an outer face against a stop
face, the untreated pump housing being formed of metal and
shaped as a parallelepiped in which the outer face has a greater
area than adjacent faces of the untreated pump housing;
machining orifices configured to receive components of
an associated pump on at least one of said outer face and one or
more side faces of a plurality of side faces of the pump housing;
and
machining, on said outer face, a motor orifice configured
to receive a portion of a motor, wherein the outer face is not
machined by a cutting process prior to the untreated pump
housing being placed against the stop face.
Appeal Br. 23‒24.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Cyphers US 5,059,099 Oct. 22, 1991
Gardiner US 5,337,651 Aug. 16, 1994
Levington US 5,360,324 Nov. 1, 1994
Popp US 2003/0050160 A1 Mar. 13, 2003
Bode US 6,932,333 B2 Aug. 23, 2005
Inoue US 2007/0071614 A1 Mar. 29, 2007
REJECTIONS
The following rejections are on appeal:
1. Claims 1, 2, 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Gardiner and Levington.
2. Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Gardiner, Levington, and Cyphers.
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3. Claims 4, 5, 9‒13, and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Gardiner, Inoue, Bode, and Popp.
4. Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Gardiner, Inoue, Bode, Popp, and Cyphers.
OPINION
Rejection of claims 1, 2, and 15 under 35 U.S.C. § 103(a) as unpatentable
over Gardiner and Levington
The Examiner finds that Gardiner teaches a pump housing comprising
a body (31) shaped as a parallelepiped and defining orifices (32, 36‒39)
configured to receive components (33‒35, 24‒27) of an associated pump
(30), where the body (31) includes a first outer face (the face that includes
openings for 32 and 33) configured for mounting a motor (driver for 33), as
recited in claim 1. Final Act. 2‒3 (citing Gardiner, Fig. 2). The Examiner
acknowledges that Gardiner is silent as to the material used to form the body
and whether any machining has been done to the body 31. Id. at 2.
The Examiner finds that Levington teaches a pump body formed of
metal that is cast, forged or stamped, having a first outer face that is
untreated and not machined by a cutting process. Id. The Examiner finds it
would have been obvious to one having ordinary skill in the art to use
Levington’s “un-machined metal construction” to form Gardiner’s pump
housing “to avoid or minimise [sic] high cost machining and assembly
operations.” Id. (citing Levington, 1:24‒29). Specifically, the Examiner
proposes to use the casting process taught by Levington to form Gardiner’s
pump housing. Ans. 13.
Appellant argues that “if one of ordinary skill in the art were going to
modify Gardiner to use casting to form the housing, they would not retain
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the parallelepiped shape of Gardiner since this would result in wasted
material.” Appeal Br. 8. In other words, Appellant argues that one of
ordinary skill would “cast the housing so as to conform to the shape of the
openings” to “reduce the material required for the housing” and the proposed
modification would not result in the claimed housing body “shaped as a
parallelepiped.” Id.
In response, the Examiner asserts that a hypothetical person having
ordinary skill in the art might retain the parallelepiped shape of Gardiner’s
pump housing body if there were a reason to do so:
Perhaps the block is inserted in a housing which is also
parallelepiped and therefore the parallelepiped shape of the block
is necessary to secure the pump block in the housing. Perhaps
the block is stacked against other similar blocks which are then
fastened together in a manner which is aided by the
parallelepiped shape of the blocks? Perhaps the added material
of the parallelepiped shape is necessary to maintain the integrity
of the structure when it is used to pump a high pressure fluid or
a fluid that is very cold? There are many reasons why
maintaining the parallelepiped shape of the pump block might be
necessary, while using the Levington casting process will still
provide the advantage of reducing the material removed, as cited
by appellant, for example in the formation of the orifices of the
block.
Ans. 13‒14.
We agree with Appellant that the Examiner’s “[s]peculation that a
parallelepiped shape may be advantageous in some possible situation does
not provide the requisite clear articulation of reasons why the claimed
invention would have been obvious to one of ordinary skill in the art.”
Reply 3 (emphasis omitted). The Examiner’s reasons why one having
ordinary skill in the art would retain the parallelepiped shape of Gardiner’s
pump housing body are not supported by adequate evidence in the record.
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The Examiner does not show that the parallelepiped shape of Gardiner’s
pump housing body is important for Gardiner’s pump configuration such
that one having ordinary skill in the art would have been led to cast the body
in a parallelepiped shape. Rather, the Examiner provides hypothetical
situations, removed from the pump system of Gardiner, when a
parallelepiped pump housing body might be useful.
These hypothetical situations also are not supported by any evidence
of record. By contrast, the art of record that describes a cast pump housing
body supports Appellant’s position that Gardiner’s pump housing body, as
modified by Levington’s method of casting the body, would no longer retain
the parallelepiped shape. See, e.g., Levington, Fig. 2; Inoue, Fig. 1;
Cyphers, Fig. 2 (each showing cast pump housing bodies, none of which are
cast in a parallelepiped shape).
Absent reasoning provided by the Examiner, supported by established
facts, to explain why one having ordinary skill in the art would have been
led to combine the teachings of Gardiner and Levington in the manner
claimed, we do not sustain the Examiner’s rejection of independent claim 1
and dependent claims 2 and 15 under 35 U.S.C. § 103(a).
Rejection of claim 16 under 35 U.S.C. § 103(a) as unpatentable over
Gardiner, Levington, and Cyphers
The Examiner relies on Cyphers for disclosure of the additional
limitation of dependent claim 16 of a pump housing body formed of an
aluminum metal. Final Act. 4‒5. The Examiner does not rely on Cyphers to
cure the deficiency in the underlying combination of Gardiner and
Levington presented for claim 1, from which claim 16 depends. Id. Thus,
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for the reasons discussed above as to the rejection of claim 1, we likewise do
not sustain the rejection of claim 16 under 35 U.S.C. § 103(a).
Rejection of claims 4, 5, 9‒13, and 17 under 35 U.S.C. § 103(a) as
unpatentable over Gardiner, Inoue, Bode, and Popp
The Examiner finds that Gardiner teaches a pump housing (31) having
an outer face (the face including openings 32 and 33), as recited in claim 4.
Final Act. 5 (citing Gardiner, Fig. 2). The Examiner acknowledges that
Gardiner is silent as to how the pump housing is made. Id. at 5. The
Examiner finds that Inoue teaches a method of forming a pump housing
from a casting that is substantially in the shape of the machined housing, and
wherein orifices are machined in the casting. Id. at 6. The Examiner finds
that it would have been obvious to one having ordinary skill in the art to
make Gardiner’s housing using the method of Inoue, but the Examiner
acknowledges that Inoue is silent as to how the housing is secured during
machining. Id. at 6‒7.
The Examiner finds that Bode teaches forcing an outer face of a
housing against a stop face using a ram. Id. at 7. The Examiner finds that it
would have been obvious to one having ordinary skill in the art to use the
ram and stop face taught by Bode to secure Gardiner’s housing, as modified
by the method of Inoue, during machining. Id. at 8. The Examiner finds,
however, that Inoue and Bode are silent as to whether the outer face of the
housing is machined by a cutting process prior to the untreated pump
housing being finish machined. Id.
The Examiner finds that Popp teaches “placing an untreated
workpiece for machining, wherein an outer face is not machined by a cutting
process prior to the untreated workpiece being placed for machining.” Id.
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(citing Bode, ¶ 7). The Examiner finds that it would have been obvious to
one having ordinary skill in the art to make Gardiner’s housing “with the
workpiece placement taught by Popp in order to provide ‘a streamlined work
flow and high productivity’ for the method by providing all the machining in
a single location.” Id.
Popp discloses “an automatic milling and drilling machine.” Popp
¶ 1. Popp’s machine includes a tool chuck, which can rotate about and move
along one axis, and a workpiece chuck, which can move about multiple axes,
both chucks being mounted on the same monoblock-style upper housing
part. Id. ¶ 7; Fig. 1. Popp discloses that the workpiece chuck, connected via
the cross slide to the upper housing part, makes the horizontal and vertical
movements necessary for machining the workpiece, and picks up an
unmachined workpiece bringing it into position for machining, and then
takes the machined workpiece back to the supply station. Id. Thus, Popp’s
machine eliminates the need for a separate workpiece feeding system or
grab. Id. Instead, Popp’s machine uses the same chuck to feed the
workpiece into, and remove the workpiece from, the machine and to hold the
workpiece during the machining operation. Id. Popp describes that “[t]he
result is a streamlined work flow and high productivity.” Id.
Appellant argues that the Examiner’s reasoning is deficient because
the alleged advantage of the proposed modification, i.e., the streamlined
workflow and high productivity, occurs as a result of the same chuck that
holds the workpiece during the machining operation is the only part that
touches it, except the tool that machines it. Appeal Br. 19‒20. Thus, the
advantage occurs because the chuck arrangement dispenses with a separate
workpiece feeding system. Id. at 20. The advantage does not occur because
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the workpiece has not been machined prior to the drilling process. Id. We
agree with Appellant that the streamlining advantage relied upon by the
Examiner as the reason to further modify Gardiner, as modified by Inoue
and Bode, is not a result of the alleged lack of machining the outer face of
the workpiece, but instead is a result of Popp’s conveying arrangement.
Reply 7.
Thus, the Examiner’s rejection of claim 4 is not supported by
adequate reasoning for the proposed modification. For this reason, we do
not sustain the Examiner’s rejection of independent claim 4 and dependent
claims 5, 9‒13, and 17 under 35 U.S.C. § 103(a).
Rejection of claim 18 under 35 U.S.C. § 103(a) as unpatentable over
Gardiner, Inoue, Bode, Popp, and Cyphers
The Examiner relies on Cyphers for disclosure of the additional
limitation of dependent claim 18 of a pump housing body formed of an
aluminum metal. Final Act. 8‒9. The Examiner does not rely on Cyphers to
cure the deficiency in the underlying combination of Gardiner, Inoue, Bode,
and Popp presented for claim 4, from which claim 18 depends. Id. Thus, for
the reasons discussed above as to the rejection of claim 4, we likewise do not
sustain the rejection of claim 18 under 35 U.S.C. § 103(a).
CONCLUSION
The decision of the Examiner rejecting claims 1, 2, 4, 5, 9‒13, and
15‒18 is reversed.
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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1, 2, 15 103(a) Gardiner,
Levington
1, 2, 15
16 103(a) Gardiner,
Levington,
Cyphers
16
4, 5, 9‒13,
17
103(a) Gardiner, Inoue,
Bode, Popp
4, 5, 9‒13,
17
18 103(a) Gardiner, Inoue,
Bode, Popp,
Cyphers
18
Overall
Outcome
1, 2, 4, 5, 9‒
13, 15‒18

REVERSED