Robert Bosch GmbH

Patent Trials and Appeals Board

Dec 27, 2021

2021003243 (P.T.A.B. Dec. 27, 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.
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

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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
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Application 16/063,400

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(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.
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Application 16/063,400

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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
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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
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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.

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Application 16/063,400

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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