Ex Parte Goodwin et al

Patent Trial and Appeal Board

Apr 29, 2016

11884511 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111884,511 06/19/2008
22116 7590 05/03/2016
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
Orlando, FL 32817
FIRST NAMED INVENTOR
Peter Jarvis Goodwin
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.
2005P00543WOUS 4681
EXAMINER
KIM, CHRISTOPHER S
ART UNIT PAPER NUMBER
3752
NOTIFICATION DATE DELIVERY MODE
05/03/2016 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):
IPDadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER JARVIS GOODWIN, PETER SENIOR, and
NIGEL WILBRAHAM
Appeal2014-000501
Application 11/884,511
Technology Center 3700
Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
MARK A. GEIER, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Peter Jarvis Goodwin et al. (Appellants) appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision to reject claim 34 under 35 U.S.C.
§ 112, first paragraph, for lack of written description; claims 17 and 34
under 35 U.S.C. § 102(b) as anticipated by Robillard (US 5,615,833; iss.
Apr. 1, 1997); and claim 32 under 35 U.S.C. § 103(a) as unpatentable over
Robillard. Claims 1-16, 18-31, and 33 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
Appeal 2014-000501
Application 11/884,511
CLAIMED SUBJECT MATTER
The claimed subject matter "relates to a fuel injector." Spec. 1, 1. 4;
Figs. 1--4.
Claim 17, the sole independent claim, is representative of the claimed
subject matter and recites:
17. A fuel injector comprising:
a tip end with an end face;
a base end;
a nozzle arranged at an opening of a housing at the tip end,
the nozzle for injecting a fuel into a combustion chamber;
a fuel supply conduit with a first end and a second end, the
first end attached to a fuel supply end fitting arranged at the base
end and the second end attached to the nozzle, the fuel supply
conduit for conveying a fuel from the base end into the nozzle at
the tip end;
a thermal conductor extending along a first length of the
fuel supply conduit and a portion of the nozzle such that the
thermal conductor is recessed from the end face; and
the housing extending along at least the first length of the
fhel supply conduit and a second length of the nozzle of the tip
end, the housing at the tip end extends toward the opening
so that a shroud is formed over an end portion of the thermal
conductor and thereby forming the recess,
wherein the thermal conductor is thermally insulated from
the fuel supply conduit by a physical spacing between the
thermal conductor and the fuel supply conduit, the physical
spacing extending to the nozzle, and the thermal conductor is
thermally insulated from the housing by a physical spacing
between the thermal conductor and the housing, and
wherein at the tip end the thermal conductor is in direct
physical contact with the nozzle and at the base end the thermal
conductor is in physical contact with the housing such that the
thermal conductor conducts heat from the nozzle to the base end
of the injector to cool the nozzle.
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Appeal 2014-000501
Application 11/884,511
Written Description- Claim 34
ANALYSIS
Claim 34 recites "[t ]he fuel injector as claimed in claim 17, wherein
the fuel is a liquid fuel." The Examiner acknowledges that: "[t]he
'Background of the Invention' section of the specification discloses
problems arising out of liquid fuel" (Final Act. 2) but that "[ t ]he
specification fails to explicitly disclose that the currently disclosed device
uses liquid fuel or is intended to be used with liquid fuel" (Id. at 2-3).
Appellants contend that the Specification at paragraphs 3 and 4
implicitly discloses that the claimed fuel injector injects a liquid fuel, citing
several instances from the "Background" Section of the Specification, which
refer to a problem that arises from using a liquid fuel in an injector at
excessive temperatures. See Br. 4--5. Appellants assert that "[ o ]ne skilled in
the art would reasonably conclude that [Appellants'] fuel injector uses a
liquid fuel in its fuel injector in order to solve this specified problem." Id. at
5.
In order to satisfy the written description requirement, "the
specification must describe an invention understandable to [a] skilled artisan
and show that the inventor actually invented the invention claimed." Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
bane). "[T]he test for sufficiency is whether the disclosure of the application
relied upon reasonably conveys to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date." Id.
(citation omitted). Upon review of the "Background" section of the
Specification, we agree with Appellants that the Specification is directed to
problems associated with liquid fuels and would reasonably convey to one of
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Application 11/884,511
ordinary skill in the art that the claimed fuel injector uses a liquid fuel in
order to overcome the stated problems associated with liquid fuels.
Accordingly, we do not sustain the Examiner's rejection of claim 34
for lack of written description.
Anticipation - Claims 17 and 34
Independent claim 17 recites "a nozzle." The Examiner finds that
"plugging piece 21" of Robillard constitutes a nozzle. See Final Act. 3; see
also Ans. 7-8; Robillard, Fig. 2.
Appellants contend that "a nozzle is a device that is designed to
control the direction of a fluid flow as it exits or enters an enclosed
chamber." Br. 5; see also Spec. 3, 11. 8-12, Fig. 1. Appellants further
contend that Robillard's plugging piece 21 is not the equivalent of the
claimed nozzle, stating:
Robillard describes the plugging piece's structure in col. 2 lines
56-57, "A plugging piece 21 has the general shape of a cylinder
open at one end and closed at the other end by a drilled disk 22."
From this definition, however, Robillard's plugging piece is not
a nozzle and cannot be equated to [Appellants'] nozzle in
accordance with the above plain meaning of nozzle and in light
of [Appellants'] specification.
Br. 5--6; see also Spec. 3, 11. 8-12, Fig. 1.
"The Patent and Trademark Office ("PTO") determines the scope of
claims in patent applications not solely on the basis of the claim language,
but upon giving claims their broadest reasonable construction 'in light of the
specification as it would be interpreted by one of ordinary skill in the art."'
Phillips v. AWHCorp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en bane)
(quoting In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004)).
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Appeal 2014-000501
Application 11/884,511
At the outset, because plugging piece 21 of Robillard is capable of
discharging oxygen through tubes 26 and orifices 14 of external face 16 (see
Robillard, col. 3, 11. 24--26), and because fuel is discharged from the
plugging piece through orifices 15 of external face 16 (see Robillard, col. 3,
11. 17-21; Fig. 2), we agree with the Examiner that under the broadest
reasonable interpretation consistent with Appellants' Specification,
Robillard's plugging piece 21 constitutes a "nozzle." See Ans. 7-8; see also
Br. 5---6; Spec. 3, 11. 8-12.
Claim 1 7 also recites that this nozzle is "arranged at an opening of a
housing at the tip end." The Examiner finds that Robillard's nozzle 21 is
"arranged at an opening (space 11) of a housing 7, 8 of the tip end T." Final
Act. 3. However, a review of Robillard's Figure 2 shows that the tip end of
nozzle 21 is recessed within space 11 from the end of housing 7, 8 (housing
7, 8 and space 11 projecting/extending beyond the tip end of nozzle 21).
The Examiner does not explain how the tip end of nozzle 21, being recessed,
is also "at an opening of' housing 7, 8.
Appellants, on the other hand, assert: "In light of [Appellants']
specification, specifically FIG 1, and in accordance with what one skilled in
the art would understand: ... the opening in the housing would include a
place in the housing that opens to the outside of the component." Br. 5; see
also id. at 6-7. In other words, consistent with Appellants' Figure 1 and the
structure defined in claim 17, the radially inward extent and width of
Appellants' shroud 19 defines an opening to the outside of the injector, at
which the tip end of nozzle 7 is arranged.
In contrast, as disclosed in Robillard, the rightmost end of the
cylindrical part 23 of plugging piece 21 is welded to the leftmost end of the
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Application 11/884,511
rearwardly extending cylindrical projection 19 of item 13 (see Robillard, col.
2, 11. 58---60; Fig. 2), thereby recessing the tip end of plugging piece 21 from
the opening into space 11. Thus, plugging piece 21 of Robillard is not
arranged at an opening of the housing at the tip end that opens to the outside
of the injector as required by claim 17. As such, the Examiner fails to
establish by a preponderance of the evidence that Robillard's plugging piece
21 is arranged as recited in claim 17. Consequently, the Examiner fails to
establish a prima facie case that Robillard anticipates the fuel injector of
independent claim 1 7.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner's rejection of independent claim 17 and dependent claim 34 as
anticipated by Robillard.
Obviousness- Claim 32
The Examiner's proposed modification of Robillard does not remedy
the deficiency of Robillard discussed above. See Final Act. 4--5.
Accordingly, for similar reasons, we do not sustain the Examiner's rejection
of dependent claim 32 as unpatentable over Robillard.
DECISION
We REVERSE the decision of the Examiner to reject claims 17, 32,
and 34.
REVERSED
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