BorgWarner Esslingen GmbH

Patent Trials and Appeals Board

Jun 30, 2021

2021000163 (P.T.A.B. Jun. 30, 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.
15/146,758 05/04/2016 Bernd Bareis TWEL-20197-UA 9002
26822 7590 06/30/2021
Hackler Daghighian Martino & Novak
10900 Wilshire Blvd.
Suite 300
Los Angeles, CA 90024
EXAMINER
CARY, KELSEY E
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
06/30/2021 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):
jcf@hdmnlaw.com
marc@hdmnlaw.com
uspto@dockettrak.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BERND BAREIS and JOCHEN WENTZ

____________

Appeal 2021-000163
Application 15/146,758
Technology Center 3700
____________

Before STEFAN STAICOVICI, BENJAMIN D. M. WOOD, and
ANNETTE R. REIMERS, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Final Office Action (dated Oct. 21, 2019, hereinafter “Final
Act.”) rejecting claims 1–5, 7, 10, and 15–18.2 We have jurisdiction over
this appeal under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. BorgWarner Esslingen GmbH is identified as the real party
in interest in Appellant’s Appeal Brief (filed Apr. 14, 2020, hereinafter
“Appeal Br.”). Appeal Br. 3.
2 Claims 6, 8, 9, and 11–14 are objected to by the Examiner as being
dependent upon a rejected base claim and otherwise indicated as being
allowable if rewritten in independent form including all of the limitations of
Appeal 2021-000163
Application 15/146,758

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SUMMARY OF DECISION
We REVERSE.

INVENTION
Appellant’s invention relates to a hot gas valve. See Spec. para. 2.
Claims 1 and 10 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A hot gas exhaust recirculation valve comprising:
a housing containing a duct for conducting gases;
a drive chamber, which does not conduct gases;
a valve stem, which is mounted in the housing such that
said valve stem can be displaced in a longitudinal direction
thereof during valve-operation and which extends from the
drive chamber into the duct, wherein a first end of said valve
stem is situated in the drive chamber being coupleable
to a drive device;
a closing body fastened to a second end of said valve
stem and situated in the duct, said closing body being movable
by the valve stem along the longitudinal direction of the valve
stem during valve-operation and having a closed position, in
which the closing body separates an upstream section of the
duct from a downstream section of the duct;
wherein a sealing ring surrounds the valve stem and is
arranged between the duct and the drive chamber;
wherein the valve stem is supported within two bearing
bushings that are spaced apart from each other, between which
the sealing ring is arranged.

Appeal Br. 28 (Claims App.).

the base claim and any intervening claim. See Final Act. 9. Claims 6, 8, 9,
and 11–14 are not part of the instant appeal.
Appeal 2021-000163
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REJECTIONS

I. The Examiner rejects claims 1, 5, 15, and 17 under 35 U.S.C.
§ 103 as being unpatentable over Sano3 and Kung.4
II. The Examiner rejects claim 7 under 35 U.S.C. § 103 as being
unpatentable over Sano, Kung, and Nanba.5
III. The Examiner rejects claims 2–4, 10, 16, and 18 under 35
U.S.C. § 103 as being unpatentable over Sano, Kung, Takai,6
Hamkins,7 and National Bronze Michigan.8

ANALYSIS
Rejection I
The Examiner finds Sano discloses a hot gas exhaust reciprocating
valve including, inter alia, housing 3, valve stem 5 mounted to housing 3,
coupled to drive device 2 (actuator),9 and extending from drive chamber 41
(first accommodating chamber) into hot gas conducting duct 31–35 (inlet
port 31, passageways 32–34, outlet port 35), closing body 4 (valve head)
fastened to an end of valve stem 5 and having a closed position that
separates an upstream section 31 of duct 31–35 from downstream section 35,
and bearing bushing 36 (metal bearing). Final Act. 4 (citing Sano, paras. 31,

3 Sano et al., US 2014/0311464 Al, published Oct. 23, 2014.
4 Kung, US 2014/0261772 Al, published, Sept. 18, 2014.
5 Nanba, US 2007/0240690 Al, published Oct. 18, 2007.
6 Takai et al., US 2012/0193562 Al, published Aug. 2, 2012.
7 Hamkins et al., US 6,640,834 Bl, issued Nov. 4, 2003.
8 National Bronze Michigan,
https://web.archive.org/web/20130814182914/http://www.nationalbronze.co
m/aluminum-bronze.php (last visited June 21, 2021).
9 Parenthetical nomenclature refers to Sano.
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Application 15/146,758

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37, 41, 44). The Examiner further finds that “Sano fails to disclose wherein
a sealing ring surrounds the valve stem and is arranged between the duct and
the drive chamber” and “wherein the valve stem is supported within two
bearing bushings that are spaced apart from each other, between which the
sealing ring is arranged,” as recited by independent claim 1. Id. at 4–5.
Nonetheless, the Examiner finds Kung discloses a reciprocating valve
including, inter alia, valve stem 13 supported between two spaced apart
bearing bushings 17 with sealing ring 13 positioned therebetween and
surrounding valve stem 13 between duct 111, 112 and a drive chamber
located above top bearing bushing 17. Id. at 5 (citing Kung, para. 3, Fig. 1).
Thus, the Examiner concludes that it would have been obvious for a person
of ordinary skill in the art
to have modified Sano to provide wherein a sealing ring
surrounds the valve stem and is arranged between the duct and
the drive chamber; wherein the valve stem is supported within
two bearing bushings that are spaced apart from each other,
between which the sealing ring is arranged . . . [to] seal the gap
between the valve stem and the housing . . . as recognized by
Kung.

Id. (citing Kung, para. 3).
Pointing to Kung’s pressing block 18 that compresses seal ring 16 via
top bearing bushing 17, Appellant argues that “[t]he Examiner has failed to
explain why this pressing block [18] is no longer needed [in Sano] or how
the Kung teaching is applied [in Sano] without said pressing block [18] as it
was a necessary element of Kung’s seal arrangement.” Appeal Br. 17; see
also Kung, para. 3, Fig. 1.
The Examiner responds that Kung’s pressing block 18 is not required
in the combination of Sano and Kung because obviousness does not require
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Application 15/146,758

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that all of the features of the secondary reference be bodily incorporated into
the primary reference. Examiner’s Answer (dated Aug. 6, 2020, hereinafter
“Ans.”) 4 (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). According
to the Examiner, “one of ordinary skill in the art would understand that the
combination [of Sano and Kung] would provide sealing with or without the
pressure block.” Id.
As discussed supra, independent claim 1 calls for the provision of a
valve stem “supported within two bearing bushings that are spaced apart
from each other” and a sealing ring arranged in between the two spaced
apart bearing bushings. See Appeal Br. 28 (Claims App.). We appreciate
that Sano fails to disclose such a feature; however, Kung discloses valve
stem 13 supported within spaced apart bearing bushings 17 with sealing ring
16 arranged therebetween. See Kung, Fig. 1. Kung further discloses that
sealing ring 16 seals when pressing block 18 presses against sealing ring 16
via upper bearing bushing 17. See id. at para. 3, Fig. 1. Hence, even though
Kung’s pressing block 18 is necessary for Kung’s seal to function, in a first
instance, we agree with the Examiner that a combination of teachings does
not necessarily require that Kung’s pressing block 18 be bodily incorporated
into the structure of the Sano reference. See Ans. 4; see also Reply Brief
(filed Oct. 6, 2020, hereinafter “Reply Br.”) 3.
However, we fail to see how a skilled artisan would modify Sano to
include Kung’s arrangement of sealing ring 16 and bearing bushings 17 to
“seal the gap between the valve stem [of Sano] and the housing,” which the
Examiner asserts to have been obvious to a skilled artisan, without pressing
sealing ring 16 via upper bearing bushing 17. See Final Act. 5. In other
words, even though the combination of Sano and Kung does not specifically
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require Kung’s pressing block 18, nonetheless, the structure of Sano, as
modified by Kung, does require pressing sealing ring 16 via upper bearing
bushing 17 to “seal the gap between the valve stem [of Sano] and the
housing.” The Examiner does not adequately explain which structure in
Sano, as modified by Kung, presses sealing ring 16 via upper bearing
bushing 17. The Examiner also does not make findings regarding the further
modification of the structure of Sano, as modified by Kung, to incorporate a
structure to press sealing ring 16 via upper bearing bushing 17. The
Examiner’s mere statement that the structure in the Sano and Kung
combination “would provide sealing with or without the pressure block” (see
Ans. 4) requires speculation on the Examiner’s part, whereas patentability
determinations “should be based on evidence rather than on mere
speculation or conjecture.” Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286,
1290 (Fed. Cir. 2006).
Moreover, as the Examiner does not adequately explain in what
manner the pressing of sealing ring 16 via upper bearing bushing 17 is
achieved in the structure of Sano, as modified by Kung, the Examiner’s
conclusion of obviousness to “seal the gap between the valve stem [of Sano]
and the housing” lacks rational underpinning. In light of Kung’s specific
teaching of pressing sealing ring 16 via upper bearing bushing 17 to achieve
a seal, a skilled artisan would not have had a reasonable expectation of
success when modifying Sano to include Kung’s arrangement of sealing ring
16 and bearing bushings 17 to “seal the gap between the valve stem [of
Sano] and the housing.”
As such, for the foregoing reasons, the Examiner has not made the
initial factual findings required to demonstrate a prima facie case of
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obviousness of claim 1. See In re Warner, 379 F.2d 1011, 1017 (CCPA
1967) (the examiner has the initial duty of supplying the requisite factual
basis and may not, because of doubts that the invention is patentable, resort
to speculation, unfounded assumptions, or hindsight reconstruction to supply
deficiencies in the factual basis). Accordingly, we do not sustain the
rejection under 35 U.S.C. § 103 of independent claim 1, and its dependent
claims 5, 15, and 17, as unpatentable over Sano and Kung. See In re Fine,
837 F.2d 1071, 1076 (Fed. Cir. 1988) (If an independent claim is
nonobvious under 35 U.S.C. § 103, then any claim dependent therefrom is
nonobvious).

Rejection II
The Examiner’s use of the disclosure of Nanba does not remedy the
deficiency of the Sano and Kung combination discussed supra. See Final
Act. 6. Therefore, for the same reasons discussed above, we do not sustain
the rejection under 35 U.S.C. § 103 of claim 7 as unpatentable over Sano,
Kung, and Nanba.

Rejection III
Claims 2–4
The Examiner’s use of the disclosures of Takai, Hamkins, and
National Bronze Michigan does not remedy the deficiency of the Sano and
Kung combination discussed supra. See Final Act. 6–9. Therefore, as
claims 2–4 depend from independent claim 1, for the reasons discussed
above in Rejection I, we do not sustain the rejection under 35 U.S.C. § 103
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of claims 2–4 as unpatentable over Sano, Kung, Takai, Hamkins, and
National Bronze Michigan.

Claims 10, 16, and 18
Independent claim 10 recites the same limitation as independent claim
1, namely, “wherein the valve stem is supported within two bearing bushings
that are spaced apart from each other, between which the sealing ring is
arranged.” Appeal Br. 30 (Claims App.). To satisfy this limitation, the
Examiner combines the teachings of Sano and Kung in the same manner as
discussed supra in Rejection I. See Final Act. 6–9. Therefore, because of
the reasons discussed above in Rejection I, we find the combination of Sano
and Kung to be deficient, and, as the Examiner’s use of the disclosures of
Takai, Hamkins, and National Bronze Michigan does not remedy the
deficiency, we also do not sustain the obviousness rejection of independent
claim 10, and its dependent claims 16 and 18.

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Application 15/146,758

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CONCLUSION

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 5, 15, 17 103 Sano, Kung 1, 5, 15, 17
7 103 Sano, Kung, Nanba 7
2–4, 10, 16,
18
103 Sano, Kung, Takai,
Hamkins, National
Bronze Michigan
2–4, 10, 16,
18
Overall
Outcome
1–5, 7, 10,
15–18

REVERSED