Ex Parte Gless et al

Patent Trial and Appeal BoardAug 30, 2017

14005589 (P.T.A.B. Aug. 30, 2017)

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. 2178-0791 3781 EXAMINER GATEWOOD, DANIEL S ART UNIT PAPER NUMBER 1729 MAIL DATE DELIVERY MODE 14/005,589 11/27/2013 10800 7590 08/31/2017 Maginot, Moore & Beck LLP One Indiana Square, Suite 2200 Indianapolis, IN 46204 Michael Gless 08/31/2017 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL GLESS and ULRICH ZIMMMERMANN Appeal 2017-002248 Application 14/005,589 Technology Center 1700 Before MARKNAGUMO, JEFFREY B. ROBERTSON, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2017-002248 Application 14/005,589 STATEMENT OF THE CASE Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of pending claims 1—10. (Appeal Br. 4—19.) We have jurisdiction pursuant to 35 U.S.C. § 6(b). We REVERSE. The Specification states that the present invention relates to a pressure equalization element having a water-impermeable membrane, and specifically, a pressure relief valve acting in two directions or a combination of two pressure relief valves acting in opposite directions arranged upstream or downstream of the water-impermeable membrane. (Spec. p. 1,11. 8—12, p. 2,11. 8—14.) The Specification states that “[sjuitable pressure relief valves, e.g., duckbill valves, are likewise known to a person skilled in the art from the prior art.” (Spec. p. 2,11. 21—24.) Claim 1, reproduced below, is representative: 1. A pressure equalization element for a housing comprising: a water-impermeable membrane; and a pressure relief valve assembly configured to open in a first configuration to vent gas in a first direction through the pressure relief valve assembly, and to open in a second configuration to vent gas in a second direction through the pressure relief valve assembly, wherein the pressure relief valve assembly is arranged upstream or downstream of the membrane. (Appeal Br., Claims App’x, 21.) 1 According to the Appellants, the Real Party in Interest is Robert Bosch GmbH and Samsung SDI Co., Ltd. (Appeal Brief filed August 1, 2016, hereinafter “Appeal Br.” 2.) 2 Appeal 2017-002248 Application 14/005,589 The Examiner rejected claims 1—10 as follows: Claims 1—3 and 7 under 35 U.S.C. § 102(b) (pre-AIA) as anticipated by Imamura;2 Claim 4 under 35 U.S.C. § 103(a) (pre-AIA) as obvious over Imamura; Claims 5 and 6 under 35 U.S.C. § 103(a) (pre-AIA) as obvious over Imamura in view of Lee;3 Claim 8 under 35 U.S.C. § 103(a) (pre-AIA) as obvious over Imamura and Warthmann;4 Claim 9 under 35 U.S.C. § 103(a) (pre-AIA) as obvious over Imamura and Joswig;5 and Claim 10 under 35 U.S.C. § 103(a) (pre-AIA) as obvious over Joswig and Imamura. (Examiner’s Answer mailed September 19, 2016, hereinafter “Ans.” 2-9.) 2 WO 2009/001947 A1 published December 31, 2008, English Abstract. We have not been directed to a full English translation of record. 3 United States Patent Application Publication US 2009/0263693 A1 published October 22, 2009. 4 DE 10 2008 034 698 Al, published June 18, 2009. English Abstract. We have not been directed to a full English translation of record. 5 WO 2009/109323 Al published September 11, 2009, with United States Patent Application Publication US 2011/0244278 Al serving as an English translation. 3 Appeal 2017-002248 Application 14/005,589 ISSUE The dispositive issue on appeal is: Did the Examiner err in finding that Imamura discloses a pressure relief valve assembly that is configured to open in a second configuration to vent gas in a second direction as recited in the claims? PRINCIPLES OF LAW “Anticipation requires that every limitation of the claim in issue be disclosed, either expressly or under principles of inherency, in a single prior art reference.” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1255-56 (Fed. Cir. 1989). DISCUSSION We agree with Appellants that the Examiner erred in finding that Imamura discloses a pressure relief valve assembly configured to open in a second configuration to vent gas in a second direction. Figure 3 of Imamura as annotated in the Examiner’s Answer (Ans. 11) is reproduced below: 4 Appeal 2017-002248 Application 14/005,589 Figure 3 depicts a pressure regulating valve with gas flow passage (3), gas permeating member (4), ON/OFF member (5), seal (6),6 and gas-liquid separating film (7) shown in the “open” configuration with gas flow between seal (6) and gas permeating member (4). (See fmamura Abstract; Ans. 10.) The Examiner’s annotation shows gas flow through gas permeating member (4), which the Examiner finds to be the “second direction” for venting gas recited in the claims. (Ans. 11.) In this regard, the Examiner found that fmamura discloses a pressure regulating valve (ON/OFF member 5), which is “movable in two different directions by the rise and subsequent drop of the gas pressure in the container, thereby to open/close the pressure regulating valve.” (Ans. 3.) The Examiner stated further the claims do not specifically recite in which direction the gases are vented in relation to each other, and that in the OFF configuration, gas will vent through element (4) disclosed in fmamura due to the fact that element (4) is a porous network of silicon based compounds, which is gas permeable.7 (Ans. 10-11; citing fmamura, Fig. 3.) Appellants contend that fmamura does not disclose a pressure relief valve assembly configured to open in a second configuration to vent gas in a second direction, because ON/OFF member (5) has only two configurations, 6 The English Abstract of fmamura does not identify reference no. (6) as a seal. However, Appellants do not dispute the Examiner’s finding in this regard. As such, we accept the Examiner’s findings as correct for the purposes of this decision. 7 The English Abstract does not appear to disclose that gas permeating member (4) is a network of silicon based compounds the structural characteristics. However, Appellants do not appear to challenge the Examiner’s finding in this regard, and as such, we accept the Examiner’s findings as correct for the purposes of this decision. 5 Appeal 2017-002248 Application 14/005,589 open and closed, whereas the claims require two open configurations. (Appeal Br. 5—6.) Appellants argue that the claim language requires the pressure relief valve assembly be configured to undergo a change in state from closed to open, whereas the gas permeating member (4) of Imamura does not change state or condition. (Reply Brief filed November 21, 2016, 2-3.) Based on the evidence in this appeal, we agree with Appellants that the gas permeating member (4) of Imamura’s pressure relief valve assembly does not open when ON/OFF member (5) is in the OFF or the “closed” position with gas permeating member (4) abutting seal (6). Rather, the porous network of silicon based compounds that allegedly are the structural component of gas permeating member (4) do not close, but are “open” in both the ON and OFF configurations. Thus, moving the ON/OFF member (5) from the “open” to the “closed” position does not result in a “second configuration” that opens the gas permeating member (4). Accordingly, Imamura does not disclose “a pressure relief valve assembly configured ... to open in a second configuration to vent gas in a second direction” as recited in the claims. Therefore, we reverse the Examiner’s rejection of claims 1—3, and 7 as anticipated by Imamura. Rejections of Claims 4—6 and 8—10 The rejections of claims 4—6 and 8—10 rely on the same position with respect to Imamura and a pressure relief valve assembly that is configured to open in a second configuration to vent gas in a second direction. (Ans. 4—9.) The additional cited prior art does not remedy the deficiencies in Imamura 6 Appeal 2017-002248 Application 14/005,589 discussed above. Accordingly, we reverse the Examiner’s rejections of claims 4—6 and 8—10 for the same reasons discussed supra. CONCLUSION The Examiner erred in finding that Imamura discloses a pressure relief valve assembly that is configured to open in a second configuration to vent gas in a second direction. ORDER We reverse the Examiner’s decision rejecting claims 1—10. REVERSED 7