Bayerische Motoren Werke Aktiengesellschaft

Patent Trials and Appeals BoardJul 28, 2020

15343492 - (D) (P.T.A.B. Jul. 28, 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. 15/343,492 11/04/2016 Roland SCHMIDT 080437.69356US 2748 23911 7590 07/28/2020 CROWELL & MORING LLP INTELLECTUAL PROPERTY GROUP P.O. BOX 14300 WASHINGTON, DC 20044-4300 EXAMINER NGUYEN, VIET P ART UNIT PAPER NUMBER 2832 NOTIFICATION DATE DELIVERY MODE 07/28/2020 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): edocket@crowell.com mloren@crowell.com tche@crowell.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ROLAND SCHMIDT and HUBERT SCHOLZ ____________ Appeal 2019-006552 Application 15/343,492 Technology Center 2800 ____________ Before N. WHITNEY WILSON, DEBRA L. DENNETT, and LILAN REN, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s August 2, 2018 decision rejecting claims 1–13 (“Non-Final Act.”). An oral hearing was held on July 22, 2020, a transcript of which will be made part of the record. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We affirm. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Bayerische Motoren Werke Aktiengesellschaft as the real party in interest (Appeal Br. 1). Appeal 2019-006552 Application 15/343,492 2 CLAIMED SUBJECT MATTER Appellant’s invention is directed to an active damper system for a motor vehicle (Abstract). It includes a damper unit with a cylinder, a piston which is guided in the cylinder, and a piston, which divides the cylinder into a first chamber and a second chamber (id.). The damper unit is said to be designed to be arranged between a body and a wheel of the vehicle (id.). The damper system has a pump for changing the pressure in the two chambers and for moving the piston, a first valve, a second valve, which is connected to the first valve in series, a third valve, and a fourth valve, which is connected to the third valve in series (id.). The first and second valve are connected in parallel to the third and fourth valve (id.). A fluid-conductive first line leads to the first chamber between the first valve and the second valve, and a fluid-conductive second line leads to the second chamber between the third valve and the fourth valve (id.). The first valve, the second valve, the third valve, and the fourth valve can be switched in order to selectively block and release the flow of fluid (id.). A control unit switches the four valves such that the pump rotates in the same direction when compressing and rebounding during an electromotor operation and a generator operation (id.). Further details of the claimed invention are described in claim 1, which is reproduced below from the Claims Appendix of the Appeal Brief: 1. An active damper system for a vehicle, comprising: a damper unit having a single cylinder, a piston which is guided in the single cylinder, and a piston rod which is connected to the piston, the piston dividing the single cylinder into a first chamber and a second chamber, and the damper unit having the single cylinder being configured to be arranged between a vehicle body and a wheel of the vehicle; Appeal 2019-006552 Application 15/343,492 3 a pump for changing pressures in the first and second chambers and for moving the piston; a first valve and a second valve which is connected in series with the first valve; a third valve and a fourth valve which is connected in series with the third valve, wherein the first and second valves are connected in parallel with the third and fourth valves; a fluid-conducting first line leading between the first valve and the second valve to the first chamber; a fluid-conducting second line leading between the third valve and the fourth valve to the second chamber, wherein a low pressure side of the pump is connected between the first valve and the fourth valve, a pressure side of the pump is connected between the second valve and the third valve, and the first valve, the second valve, the third valve and the fourth valve are switchable for selectively closing or opening a fluid flow; and a control unit for switching the first, second, third, and fourth valves such that, in electric motor operation and in generator operation, the pump rotates in the same direction, both during compression of the piston and during rebound of the piston guided in the single cylinder. REJECTIONS I. Claims 1–4, 8, and 10–13 are rejected under 35 U.S.C. § 103 as unpatentable over Six2 in view of McBride.3 2 Six, US 2013/0104534 A1, published May 2, 2013. 3 McBride et al., US 2012/0119513 A1, published May 17, 2012. Appeal 2019-006552 Application 15/343,492 4 II. Claims 5–7 are rejected under 35 U.S.C. § 103 as unpatentable over Six and McBride, and further in view of Green.4 III. Claim 9 is rejected under 35 U.S.C. § 103 as unpatentable over Six and McBride, and further in view of Lewus.5 DISCUSSION Appellant limits its arguments to the rejection of claim 1 over Six and McBride (Appeal Br. 3). Accordingly, our analysis will also focus on this rejection. The remaining claims will stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv). The Examiner finds (Non-Final Act. 3–4) that Six teaches each limitation of claim 1, except that “Six fails to disclose that, in electric motor operation and in generator operation, the pump rotates in the same direction, both during compression of the piston and during rebound of the piston” (Non-Final Act. 4). The Examiner further finds that McBride teaches a system with a pump and piston arrangement that meets this limitation (id.). According to the Examiner, it would have been obvious to incorporate this element into Six’s system so as to be able to generate electricity continuously, without interruption during piston reversal (id., citing McBride ¶ 19). Appellant argues that McBride is “deficient” because McBride’s system has three cylinders, as distinguished from the single cylinder recited in the claimed active damper system (Appeal Br. 4). Appellant further 4 Green et al., US 2005/0146098 A1, published July 7, 2005. 5 Lewus, US 3,921,746, issued November 25, 1975. Appeal 2019-006552 Application 15/343,492 5 argues that the check valves in the portion of McBride’s system relied on by the Examiner are not, contrary to the Examiner’s alleged position, operable independently of the other two pneumatic cylinders (Appeal Br. 5). This argument is not persuasive of reversible error. Nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). “[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.” In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983). The relevant inquiry is whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of those references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). “Combining the teachings of references does not involve an ability to combine their specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). In this instance, the Examiner finds that McBride teaches the limitation “in electric motor operation and in generator operation, the pump rotates in the same direction, both during compression of the piston and during rebound of the piston,” and provides an explanation of why a person of ordinary skill in the art would have combined that teaching with the Six system. That McBride teaches a multicylinder system is not indicative of reversible error in the rejection. Nor can McBride be fairly said to teach away from the claimed combination. While McBride’s system is indeed directed to three cylinder apparatus, the rejection does not rely on complete incorporation of that system with Six’s teachings. Instead, the Examiner has Appeal 2019-006552 Application 15/343,492 6 demonstrated why a person of skill in the art would have been motivated to incorporate a specific feature taught by McBride into the Six system.6 Accordingly, we affirm the rejection. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–4, 8, 10–13 103 Six, McBride 1–4, 8, 10–13 5–7 103 Six, McBride, Green 5–7 9 103 Six, McBride, Lewus 9 Overall Outcome 1–13 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). AFFIRMED 6 During the oral hearing, counsel for Appellant argued that McBride’s teachings could not properly be combined with the teachings of Six, because the valves in Six relied on in the rejection are state valves, while McBride’s valves are check valves. This argument was not raised in the Briefs and, therefore, will not be considered. 37 C.F.R. § 41.47(e). We do note, however, that claim 1 does not specify the use of a particular type of valve.