Robert Bosch GmbH

Patent Trials and Appeals Board

Apr 8, 2020

15081000 - (D) (P.T.A.B. Apr. 8, 2020)

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.
15/081,000 03/25/2016 Matthias Mayr 2178-1513 3854
10800 7590 04/08/2020
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
EXAMINER
FOX, JOHN C
ART UNIT PAPER NUMBER
3753
MAIL DATE DELIVERY MODE
04/08/2020 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, DIETER PFLAUM,
and ANDREAS WEH

Appeal 2019-005770
Application 15/081,000
Technology Center 3700
____________

Before JOHN C. KERINS, BENJAMIN D. M. WOOD, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 2, 4, 6, 8, 9, 17, and 18.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 The term “Appellant” is used herein 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.
Appeal 2019-005770
Application 15/081,000

2

THE CLAIMED SUBJECT MATTER
Appellant’s invention relates to a hydraulic block for a hydraulic unit
of a brake controller. Claim 9 is illustrative, and is reproduced below:
9. A hydraulic block for a hydraulic unit of a brake
controller of a hydraulic vehicle brake system, comprising:

a hydraulic block body formed as a homogeneous single piece
structure;

a plurality of receptacles defined in the hydraulic block body
and configured for hydraulic components of the brake
controller; and

a plurality of lines defined in the hydraulic block body and
configured to at least one of (i) port the hydraulic components
and (ii) connect the hydraulic components,

wherein the hydraulic block is formed by casting, die casting,
sintering, or 3D printing,

wherein at least one line of the plurality of lines includes a
straight portion having a central axis that runs in an axial
direction of the straight portion of the at least one line, and

wherein linear extensions of the central axis of the straight
portion pass, in both directions along the axial direction,
through portions of the homogeneous single piece structure of
the hydraulic block body.

THE REJECTIONS
The Examiner rejects:
(i) claims 9, 2, 6, 8, and 17 under 35 U.S.C. § 102(a)(1) or (a)(2) as
being anticipated by Weh (US 2013/0306180 A1, published Nov. 21, 2013);
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Application 15/081,000

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(ii) claim 4 under 35 U.S.C. § 103 as being unpatentable over
Fischbach-Borazio (US 2011/0062776 A1, published Mar. 17, 2011) in view
of Weh; and
(iii) claim 18 under 35 U.S.C. § 103 as being unpatentable over
Fischbach-Borazio in view of Weh and Blackman (US 2005/0133102 A1,
published June 23, 2005).
Rejections of all claims on appeal under 35 U.S.C. §§ 112(a) and (b)
were withdrawn in the Answer. Ans. 3.

ANALYSIS
Claims 9, 2, 6, 8, and 17--Anticipation by Weh
The Examiner finds that Weh discloses a hydraulic block for a brake
system having lines and receptacles for components, and that the block may
be formed by casting. Final Act. 5. The last two limitations appearing in
claim 9 require at least one of the lines defined in the hydraulic block body
to have a straight portion with a central axis, with linear extensions of the
central axis passing, in both directions along the axial direction, through
portions of the homogeneous single piece structure of the hydraulic block
body. See Claim 9, infra. The Examiner, discussing the Weh disclosure,
finds that:
The three vertical lines above receptacle 13 have central axes
the extensions of which “pass, in both directions, through
portions of the homogenous single piece structure of the
hydraulic block body”. In other words, receptacle 13 is part of
the block body and the structure of the block body.
Final Act. 5–6 (emphasis added).
Appellant maintains that the Examiner improperly construes claim 9
by taking the position that receptacle 13 is part of the block body and the
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structure of the block body. Appellant provides (Appeal Br. 7) an annotated
version of a lower portion of the drawing figure in Weh, illustrating the
Examiner’s position regarding Weh’s purported disclosure of the limitations
in the above-quoted claim language, which we reproduce below:

Depicted above is an Appellant-annotated version of a lower portion of the
drawing figure in Weh, which is a perspective view of a hydraulic block,
illustrated in a transparent manner. Weh ¶ 14.
Appellant argues:
the receptacles (13) are void spaces in the block, as the structure
of the block body has been removed by milling and/or drilling
so as to form the receptacles (13). . . . Weh’s receptacles cannot
therefore be considered to be part of the homogenous single
piece structure of the hydraulic body, since the voids of the
receptacles are not “of uniform construction” as the metal block
body.
Appeal Br. 6–7 (citations omitted).
The Examiner counters that paragraph 13 of the Specification states
that “[t]he hydraulic block 1 comprises receptacles,” that “[t]he word
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‘structure’ does not appear anywhere in the original written description,” and
that there is “no disclosure that the claimed structure means only the solid
portions of the block and excludes the void portions.” Ans. 5. The
Examiner further avers that
Claim 9 requires a block body that has receptacles and lines,
which are voids.
In the Examiner’s opinion it is entirely reasonable to read the
block as including solid portions and void portions . . . In which
case the axis extensions of the Prior Art pass, in both directions,
“through portions of the homogeneous single piece structure of
the hydraulic block body.
Ans. 5–6.
Appellant cites to the above portions of the Answer, and argues that
the Examiner’s interpretation of claim 9 “conflates the distinction in the
claim between the hydraulic block and the hydraulic block body.” Reply Br.
2. Appellant points out that claim 9 recites “a hydraulic block” that
comprises “a hydraulic block body,” in addition to “a plurality of
receptacles” and “a plurality of lines.” Id. at 3, quoting claim 9.
It can be seen in reading the excerpts from the Examiner’s claim
interpretation quoted above, that no distinction is made between the claimed
hydraulic block, which includes the receptacles and lines, and the hydraulic
block body, which is a separately recited component of the hydraulic block.
Contrary to the Examiner’s position set forth above, claim 9 does not
“require[] a block body that has receptacles and lines.” Rather, claim 9
requires a block that has receptacles and lines, as well as a block body.
We additionally note that, if we were to read the claimed “block” and
“block body” as being one and the same element as does the Examiner, the
interpretation would render one of those terms superfluous. Our reviewing
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court has advised that such constructions are to be avoided. See Stumbo v.
Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing
claim constructions that render phrases in claims superfluous).
Thus, when properly construed, the recitations in claim 9 directed to a
block body are referring to the solid structure, and not receptacles or lines.
Accordingly, the Examiner’s findings directed to linear extensions of
straight portions of lines in Weh extending through receptacles, and not solid
structure, are not adequate to show anticipation of Claim 9 by Weh.
The rejection of claim 9, and of claims 2, 6, 8, and 17 depending
therefrom, as anticipated by Weh, is not sustained.

Claim 4--Unpatentability over Fischbach-Borazio and Weh
In applying Fischbach-Borazio as a principal reference, the Examiner
finds that “[t]he line between elements 3 and 7 meet[s] the language of claim
9, as does the line labeled 4f, in that the receptacles are part of the block
body and the structure of the block body.” Final Act. 6. As we determined
above, applying this claim construction is in error.
Accordingly, the rejection of claim 4 as being unpatentable over
Fischbach-Borazio and Weh is not sustained.

Claim 18--Unpatentability over Fischbach-Borazio, Weh, and Blackman
The Examiner does not rely on Blackman in any manner that would
cure the basic deficiency in Fischbach-Borazio noted above. The rejection
of claim 18 is therefore not sustained.

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Application 15/081,000

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DECISION
The rejection of claims 9, 2, 6, 8, and 17 as being anticipated by Weh
is reversed.
The rejection of claim 4 as being unpatentable over Fischbach-
Borazio and Weh is reversed.
The rejection of claim 18 as being unpatentable over Fischbach-
Borazio, Weh, and Blackman is reversed.

CONCLUSION

In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
2, 6, 8, 9, 17 102(a)(1),
(a)(2)
Weh 2, 6, 8, 9, 17
4 103 Fischbach-Borazio,
Weh
4
18 103 Fischbach-Borazio,
Weh, Blackman
18
Overall
Outcome

2, 4, 6, 8, 9,
17, 18

REVERSED