Ex Parte Dumont et al

Patent Trials and Appeals Board

Feb 28, 2019

14384756 - (D) (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/384,756 09/12/2014
34044 7590 03/04/2019
MICHAEL BEST & FRIEDRICH LLP (Bosch)
100 EAST WISCONSIN A VENUE
MILWAUKEE, WI 53202
FIRST NAMED INVENTOR
Tony Dumont
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
022862-2124-usoo 3916
EXAMINER
JELLETT, MATTHEW WILLIAM
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
03/04/2019 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 TONY DUMONT, OLIVIER CHARVET, RAPHAEL COMBE,
DAVID LACROIX, SEBASTIEN BINSSE, and JEAN-ROCH JULIEN 1
Appeal2018-002693
Application 14/384,756
Technology Center 3700
Before JAMES P. CAL VE, ANNETTE R. REIMERS, and
SUSAN L. C. MITCHELL, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
1 Robert Bosch GmbH ("Appellant"), is the applicant as provided under
3 7 C.F .R. § 1.46 and is identified as the real party in interest. Appeal Brief 2
("Appeal Br."), filed Oct. 9, 2017.
Appeal2018-002693
Application 14/384,756
STATEMENT OF THE CASE2,3
Appellant appeals under 35 U.S.C. § I34(a) from the Examiner's
decision to reject claims 11, 16, 18-22, and 33-35 4 under 35 U.S.C. § I03(a)
as unpatentable over and Escandel (WO 2007/119007 Al, published Oct. 25,
2007)5 and Magel (US 2008/0099583 Al, published May 1, 2008). Claims
1-10, 12-15, 23, 29, and 30 have been canceled. We have jurisdiction under
35 U.S.C. § 6(b ).
We AFFIRM.
2 The Examiner states that "[c]laims 24--28 and 31-32 are allowed [and]
[ c ]laim 17 is objected to as being dependent upon a rejected base claim, but
would be allowable if included in the independent parent claim which would
include all of the limitations of the base claim and any intervening claims."
Final Office Action 9 ("Final Act."), dated Apr. 12, 201 7.
3 The Examiner has withdrawn the 35 U.S.C. § 112, second paragraph,
rejection of claim 16. See Advisory Action 2, dated June 27, 2017; see also
Final Act. 2-3.
4 The Examiner includes canceled claims 14, 15, 23, and 29, objected claim
17, and allowed claims 24--28, 31, and 32 in the heading of this rejection. See
Final Act. 3. We consider this a typographical error. The Examiner also does
not include claim 35 in the heading of this rejection but includes a discussion
of claim 3 5 in the body of this rejection. See Final Act. 3, 8-9. We consider
this a typographical error.
5 The Examiner indicates an English translation of Escandel was "previously
provided in the 892 mailed on 10/21/2016." See Examiner's Answer 9
("Ans."), dated Nov. 15, 2017. Any reference hereinafter to Escandel is to
the English translation.
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Appeal2018-002693
Application 14/384,756
CLAIMED SUBJECT MATTER
The claimed subject matter relates to "a pressure regulating valve for
regulating pressure in a high-pressure fuel accumulator for an internal
combustion engine." Spec. 1, 6 Fig. 1.
Claim 11, the sole independent claim on appeal, is representative of
the claimed subject matter and recites:
11. A pressure regulating valve for regulating pressure in a
high-pressure fuel accumulator for an internal combustion
engine, the pressure regulating valve comprising a valve piston
(5) held axially displaceably in a first bore (1) of a valve housing
(2) and acting on a valve closing member (3) in a direction of a
valve seat ( 4), said valve piston being connected, at an end facing
away from the valve seat ( 4), to an armature (6) of a magnetic
assembly (7) for actuating the pressure regulating valve, wherein
the armature ( 6) is held in an armature chamber (8) and the valve
closing member (3) is held in a valve chamber (9), wherein the
valve chamber (9) and the armature chamber (8) are
hydraulically connected via a second bore (11) and at least one
choke point (12), wherein the second bore (11) is formed in the
valve housing (2) and is spaced from the first bore (1 ), wherein
the at least one choke point (12) is formed in the second bore
(11 ), wherein the second bore (11) has therein a step that forms
the at least one choke point (12), and wherein the step is between
opposite ends of the second bore (11 ).
6 The Specification does not include paragraph or line numbering, so we refer
to the Specification by page number only.
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Application 14/384,756
ANALYSIS
Appellant does not offer arguments in favor of dependent claims 16,
18-22, and 33-35 separate from those presented for independent claim 11.
See Appeal Br. 5-8. We select claim 11 as the representative claim, and
claims 16, 18-22, and 33-35 stand or fall with claim 11. 37 C.F.R.
§ 4I.37(c)(l)(iv).
Independent claim 11 is directed to a pressure regulating valve having
at least one choke point formed in a second bore, wherein the second bore
includes a step that forms the at least one choke point, and wherein the step
is between opposite ends of the second bore. Appeal Br. 10, Claims App.
The Examiner finds Escandel discloses the pressure regulating valve of
claim 11, except Escandel does not explicitly disclose "at least one choke
point which is formed in the second bore, and wherein the second bore has
therein a step that forms the at least one choke point, and wherein the step is
between opposite ends of the second bore." See Final Act. 4--5. The
Examiner finds Magel discloses "a second bore having a step (transition
between 170 and 172 in the body wall portion 126 Fig 1 into and out of
chambers 158 and 168) that forms at least one choke point, with the step
between opposite ends of the second bore." Id. at 5.
The Examiner concludes it would have been obvious to modify bore
X/4002 ofEscandel to include the throttle feature of Mandel "[to] allow[]
for various tuning of the pressure entering into an exiting from the Armature
chamber 4008 of Escandel." Ans. 10; see also Final Act. 6 ("[I]t is noted as
a consequence of such a modification any adverse pressure fluctuation in the
line downstream of the armature chamber [ 4008] of Escandel will be
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Application 14/384,756
dampened/attenuated as is common in the art as taught by Magel."); Final
Act. 4, the Examiner's annotated version of Figure 1 of Escandel.
Appellant contends it would not have been obvious to modify the first
conduit X/4002 of Escandel as proposed by the Examiner, because
connecting conduit 170 of Magel and first conduit X/4002 ofEscandel are
not at all similar in function. Appeal Br. 8; see also id. at 6, Appellant's first
annotated version of Figure 1 of Escandel. According to Appellant, "Magel
teaches a throttle for the purpose of controlling the opening speed of the
valve, and Magel therefore puts the throttle in his connecting conduit 170";
thus, "[a] person skilled in the art, looking to apply the teachings of Magel to
Escandel, would put a throttle in Escandel's passage or conduit Y, which
serves the same purpose as Magel's conduit 170, and not in Escandel's
passage X/4002, which does not." Reply Br. 2; 7 see also id. ("The only
thing that is important about Escandel's passage X/4002 is that it does not
play a role in the movement of fluid from S 1 to S2 during valve opening.
Escandel's passage or conduit Y serves this purpose."); Appeal Br. 8.
Appellant concludes it is "only with the benefit of hindsight, and because the
Examiner is attempting to construct a rejection to meet [Appellant's] claim
limitations, that it would have occurred to anyone to modify the first conduit
X of Escandel in view of Magel." Appeal Br. 8; see also Reply Br. 2.
As an initial matter, Appellant does not identify record evidence
supporting the contention that "[t]he first conduit [X/4002] of Escandel has
nothing to do with the opening speed of the valve" and that "the second
conduit Y of Escandel controls the opening speed of the movable core 13
7 Reply Brief ("Reply Br."), filed Jan. 16, 2018.
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Application 14/384,756
and thereby the opening speed of the valve. The fluid in Escandel that is
moved due to the opening of the valve does not pass into the first conduit
[X/4002]." Appeal Br. 8 (emphasis omitted); see also id. at 6, Appellant's
first annotated version of Figure 1 of Escandel; Reply Br. 2; In re Pearson,
494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's argument in a brief cannot
take the place of evidence."). In fact, Appellant acknowledges that
"[ n ]either the first conduit X nor the second conduit Y are labeled or
described in Escandel." Appeal Br. 5 ( emphasis added). Moreover,
Appellant states the function of conduit X/4002 of pole piece 19 of Escandel
"is not actually described in Escandel, but appears to be similar to [ second]
bore 11 of [the subject] application." See Appellant's Remarks 8, filed Oct.
5, 2016.
In the Answer, the Examiner clarifies that in the proposed rejection
the entire conduit X/4002 of Escandel is not being replaced with the conduit
function of Magel; rather, the throttling feature of the conduit of Magel is
being utilized for the purpose of dampening pressure balancing bore X/4002
of Escandel. See Ans. 10. Citing to lines 11 through 13 of paragraph 1 of
Escandel, the Examiner notes that "Escandel experiences large pressure
changes as it operates. The pressure controlled by the valve is at least 1000
bar or atmospheres .... Thus, as alleged/asserted by the office, it is at least
more likely than not that the bore [X/4002] in Escandel is a pressure
balancing bore." Id. at 9.
The Examiner reasons that, depending on the speed at which the valve
operates, pressure balancing bore X/4002 as well as chamber 4008 "will
experience varying levels of pressure changes throughout the operation cycle
of the valve" and that providing the throttle feature of Magel in bore X/4002
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Application 14/384,756
of Escandel "allows for various tuning of the pressure entering into an
exiting from the Armature chamber 4008 ofEscandel." Ans. 10; see also
Final Act. 6 ("[I]t is noted as a consequence of such a modification any
adverse pressure fluctuation in the line downstream of the armature chamber
[ 4008] of Escandel will be dampened/ attenuated as is common in the art as
taught by Magel."). The Examiner's findings are reasonable and based on
rational underpinnings. Appellant does not provide persuasive evidence or
argument apprising us of Examiner error.
To the extent Appellant is arguing the references must be capable of
bodily incorporation in order to combine their teachings, the test for
obviousness is not whether the claimed invention is expressly suggested in
any one or all of the references, but 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. In re Keller, 642 F.2d 413, 425
(CCPA 1981). That Escandel and Magel may teach additional structure not
pertinent to the claimed subject matter at issue does not prevent the
Examiner from relying on each reference for specific teachings. Appellant
does not provide persuasive evidence or argument apprising us of error in
the Examiner's proposed reasoning for the combined teachings of Escandel
and Magel.
We also are not persuaded that the Examiner engages in impermissible
hindsight in combining the teachings of Escandel and Magel. The Examiner
cites specific teachings in the references themselves, not Appellant's
disclosure, in support of the Examiner's articulated reasoning for combining
the references as proposed in the rejection. See Final Act. 5-6; see also Ans.
9-10; In re Cree, Inc., 818 F.3d 694, 702 n.3 (Fed. Cir. 2016) (viewing an
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Application 14/384,756
argument regarding "impermissible hindsight" as "essentially a repackaging
of the argument that there was insufficient evidence of a motivation to
combine the references" and holding that this argument was addressed by
showing that a proper motivation to combine the references in fact existed).
Moreover, the Examiner's proposed modification to Escandel in view
of Magel (incorporating a throttle/dampening feature into conduit X/4002 of
Escandel) does not appear to be uniquely challenging, and Appellant has not
explained with any specificity why a person of ordinary skill in the art would
not have had an expectation of success in making the proposed modification.
Furthermore, Appellant does not provide any evidence or argument
sufficient to show that the proposed modification would have been beyond
the level of ordinary skill in the art. Neither does Appellant provide any
persuasive evidence or argument sufficient to show that the proposed
modification would have been more than a predictable use of prior art
elements according to their established functions. "The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results." KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398,416 (2007). "If a person of ordinary skill can implement
a predictable variation,§ 103 likely bars its patentability." Id. at 417.
Appellant contends "the movable core 13 (i.e., the armature) of
Escandel is not part of the valve housing. Therefore, if the second conduit Y
were modified to include the throttle element 172, the modified Escandel
still would not teach or suggest a second bore as required in claim 11."
Appeal Br. 8; see also id. at 6, Appellant's first annotated version of
Figure 1 of Escandel. However, in the Answer, the Examiner clarifies "the
office never put forth such an argument." Ans. 10. Stated differently, the
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Examiner never proposed modifying conduit Y of Escandel to include the
throttle feature of Magel; rather, the Examiner proposed modifying conduit
X/4002 of Escandel to include the throttle feature of Magel. See Final Act.
5---6; see also Ans. 9-10.
In summary, and based on the record presented, we are not persuaded
the Examiner erred in rejecting independent claim 11 as unpatentable over
Escandel and Magel. Accordingly, we sustain the Examiner's rejection of
claim 11. We further sustain the rejection of claims 16, 18-22, and 33-35,
which fall with claim 11.
DECISION
We AFFIRM the decision of the Examiner to reject claims 11, 16, 18-
22, and 33-35 as unpatentable over Escandel and Magel.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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