Robert Bosch GmbHDownload PDFPatent Trials and Appeals BoardDec 27, 20212021003243 (P.T.A.B. Dec. 27, 2021) Copy Citation 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. 16/063,400 06/18/2018 Christian LANGENBACH 022862-2899-US01 8702 34044 7590 12/27/2021 MICHAEL BEST & FRIEDRICH LLP (Bosch) 790 N WATER ST SUITE 2500 MILWAUKEE, WI 53202 EXAMINER BALLMAN, CHRISTOPHER D ART UNIT PAPER NUMBER 3753 NOTIFICATION DATE DELIVERY MODE 12/27/2021 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): mkeipdocket@michaelbest.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CHRISTIAN LANGENBACH and FRANCESCO LUCARELLI Appeal 2021-003243 Application 16/063,400 Technology Center 3700 ____________ Before JOHN C. KERINS, KEVIN F. TURNER, and BENJAMIN D. M. WOOD, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–19 and 22. Claim 21 is indicated as being allowed, and claim 20 is objected to. 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 Robert Bosch GmbH as the real party in interest. Appeal Br. 1. Appeal 2021-003243 Application 16/063,400 2 THE CLAIMED SUBJECT MATTER Appellant’s invention relates to a valve for a high-pressure pump of a fuel injection system. Claim 1 is illustrative, and is reproduced below: 1. A valve for a high-pressure pump (1) of a fuel injection system, the valve comprising a magnetic actuator (22), which has a magnet coil (6), a magnet armature (10) configured to perform a stroke motion, and a pole core (20), wherein the magnet armature (10) and the pole core (20) together delimit a working air gap (28), and the magnet armature (10) is configured to come into contact at least indirectly with the pole core (20), wherein the valve also comprises a valve element (14) which is configured to be moved between an open position and a closed position, and which is at least indirectly in mechanical contact with the magnet armature (10), characterized in that at least one of a separate magnet armature insert (8) arranged in the magnet armature (10) and a separate pole core insert (24) arranged in the pole core (20) is provided in a region of contact of the magnet armature (10) with the pole core (20), such that the magnet armature (10) comes into contact with the pole core (20) via the at least one of a separate magnet armature insert (8) arranged in the magnet armature (10) and a separate pole core insert (24) arranged in the pole core (20). THE REJECTION The Examiner rejects (i) claims 1–10, 12–19, and 222 under 35 U.S.C. § 103 as being unpatentable over Nanahara (US 2010/0213758 A1, published Aug. 26, 2010) in view of Lewis (US 7,322,373 B2, issued Jan. 29, 2008); and 2 The heading for this section of the Final Action erroneously identifies the rejected claims as “Claims 1–10 and 12–20.” Final Act. 3. The detailed grounds of rejection do not include findings and conclusions directed to Appeal 2021-003243 Application 16/063,400 3 (ii) claim 11 under 35 U.S.C. § 103 as being unpatentable over Nanahara in view of Lewis and Marechal (US 9,970,399 B2, issued May 15, 2018). ANALYSIS Claims 1–10, 12–19, and 22--§ 103--Nanahara/Lewis The Examiner finds that Nanahara discloses most of the limitations set forth in claim 1, but “is silent regarding at least one of a separate magnet armature insert (8) arranged in the magnet armature (10) and a separate pole core insert (24) arranged in the pole core (20),” being provided in a region of contact between the magnet armature and the pole core. Final Act. 3. The Examiner finds that Lewis discloses an upper seal seat 72 that is positioned between a biasing spring 92 and a valve body 16. Id. The Examiner concludes that it would have been obvious to modify Nanahara “by adding a seal seat 72, . . . between the first spring 122 and sleeve 120 and separately between the first spring and the first armature 116, of Nanahara, for the purpose of reducing wear caused by rubbing the interior of the first armature and the sleeve against the outside of the sleeve.” Id. at 3–4. The Examiner relies on Lewis’s disclosure that seal seat 72 is made of Teflon in support of claim 20, but do include findings and conclusions directed to claim 22. Id. at 8–9. Our restatement of the rejection is consistent with the status of the claims appearing on the Office Action Summary page of the Final Action, as well as the detailed grounds. Appeal 2021-003243 Application 16/063,400 4 the “reducing wear” rationale, averring that Teflon has a lower coefficient of friction than metals. Id. at 4. The Examiner further explains: Nanahara discloses the framework of a well-known electromagnetic valve. Nanahara discloses all of the claimed features set forth in claim 1 of the present invention with the exception of the magnet armature insert and pole core insert. The purpose of these inserts is to provide a surface to contact each other so as not to harm any other components of the valve. Lewis teaches adding an insert into a similarly situated and positioned valve body 16 of a valve for use in high pressure environments. The insert, as taught by Lewis, serves the same purpose as the inserts of the present invention, in that by modifying Nanahara to include the insert of Lewis within both the first armature and the sleeve, the components do not contact each other, therefore extending the expectancy of the components. By modifying Nanahara to include a Teflon component between the two components of Nanahara, the components will not wear out due to contact with each other, thus extending the expectancy of the valve components. and The Lewis reference suggests adding a Teflon sleeve to a moving component of a valve. Teflon provides sealing qualities as well as a dampening of contact between components. It would be obvious to one of ordinary skill in the art to modify Nanahara by adding a Teflon sleeve between components for the purpose of protecting the components from premature, undue wear. Ans. 11, 13. Appellant maintains that, although seal seat 72 of Lewis indeed looks like (i.e., shares a similar configuration to) Appellant’s disclosed inserts, the seal seat does not serve the same purpose as do the inserts of the present invention, as asserted by the Examiner. Specifically, Appellant argues that “[t]he Teflon sleeve, or upper seal seat 72 of Lewis, is not ‘added’ to the Appeal 2021-003243 Application 16/063,400 5 valve body 16 of the valve assembly. The upper seal seat 72 is a separate part of the valve assembly 10 that holds a seal 78 to provide for drip-tight shut off by the valve assembly 10.” Reply Br. 2. In the same vein, Appellant argues that it is a mischaracterization of Lewis to assert that seal seat 72 is added for the purpose of protecting the components from premature, undue wear, in that “[t]he seal seat 72 exists for sealing purposes.” Id. Appellant’s position is supported by a preponderance of the evidence, whereas the Examiner’s position is not. The Examiner’s originally stated reason to modify Nanahara, i.e., “for the purpose of reducing wear caused by rubbing the interior of the first armature and the sleeve against the outside of the sleeve,” is not clear, in that we cannot ascertain where an interior of the armature and an interior of the sleeve would rub against the outside of the sleeve. If instead the Examiner intended “outside of the first spring,” Nanahara does not evidence that any rubbing takes place between the interiors of the armature and sleeve, and the first spring. The articulated reason to modify is thus not supported by rational underpinnings. The additional discussion of Lewis in the Answer distorts the actual disclosure of Lewis, as pointed out by Appellant, highlighted by the assertion that, “[t]he insert, as taught by Lewis, serves the same purpose as the inserts of the present invention,” as though the proposed modification is nothing more than a use of a known technique to improve a similar device in the same way. Ans. 11. The Lewis “insert” does no such thing in the Lewis device. Instead, only after the proposed modification to Nanahara is effected, with nothing in the way of a reason to do so being apparent from the teachings in the art, would the inserts possibly serve the same purpose as Appeal 2021-003243 Application 16/063,400 6 the inserts of the present invention. The additional assertions in the Answer do not provide the necessary rational underpinnings to support a conclusion of obviousness. The rejection of claim 1, and of claims 2–19 which depend either directly or indirectly from claim 1, is not sustained. Claim 22 is an independent claim having similar limitations to claim 1, and the same erroneous rationale is employed in rejecting the claim. The rejection of claim 22 is not sustained. Claim 11--§ 103--Nanahara/Lewis/Marechal The Examiner does not rely on Marechal in any manner that remedies the deficiencies noted above with respect to the proposed modification of Nanahara in view of Lewis. The rejection of claim 11 is not sustained. CONCLUSION The rejections of claims 1–19 and 22 under 35 U.S.C. § 103 are reversed. Appeal 2021-003243 Application 16/063,400 7 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–10, 12– 19, 22 103 Nanahara, Lewis 1–10, 12– 19, 22 11 103 Nanahara, Lewis, Marechal 11 Overall Outcome 1–19, 22 REVERSED Copy with citationCopy as parenthetical citation