Ex Parte Dumont et alDownload PDFPatent Trials and Appeals BoardFeb 28, 201914384756 - (D) (P.T.A.B. Feb. 28, 2019) Copy Citation 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. 2 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. 3 Appeal2018-002693 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 4 Appeal2018-002693 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. 5 Appeal2018-002693 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 6 Appeal2018-002693 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 7 Appeal2018-002693 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 8 Appeal2018-002693 Application 14/384,756 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 9 Copy with citationCopy as parenthetical citation