Ex Parte Hornby

Patent Trials and Appeals BoardAug 29, 2013

11802209 - (D) (P.T.A.B. Aug. 29, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/802,209 05/21/2007 Michael J. Hornby 200612618US01 9459 79912 7590 08/30/2013 Manelli Selter PLLC 2000 M Street. N.W. Suite 700 Washington, DC 20036 EXAMINER REIS, RYAN ALEXANDER ART UNIT PAPER NUMBER 3752 MAIL DATE DELIVERY MODE 08/30/2013 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 J. HORNBY ____________ Appeal 2011-008519 Application 11/802,209 Technology Center 3700 ____________ Before EDWARD A. BROWN, MICHAEL L. HOELTER and ANNETTE R. REIMERS, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-008519 Application 11/802,209 2 STATEMENT OF THE CASE Michael J. Hornby (Appellant) appeals under 35 U.S.C. § 134(a) from the Examiner’s decision to reject under 35 U.S.C. § 103(a): (1) claims 1, 3- 5, 7-9, 11-14 and 16-22 as unpatentable over Pielstick (US 1,919,904, iss. Jul. 25, 1933); and (2) claims 6 and 15 as unpatentable over Pielstick and Rudelt (US 7,168,241 B2, iss. Jan. 30, 2007). Claims 2 and 10 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION Appellant’s invention “relates to reducing and trapping diesel particulates of a diesel engine for vehicles.” Spec. para. [0003]; figs. 1, 2 and 4. Claims 1, 9 and 18 are independent. Claim 1 is illustrative of the subject matter on appeal and is reproduced below: 1. Structure for supplying fluid to an exhaust passage of a fuel system, the structure comprising: a unitary electrically operated valve constructed and arranged to receive a supply of fluid and to deliver the fluid to the exhaust passage, a water jacket separate from the valve and having an inlet and an outlet on a common axis, with the inlet in fluid communication with the outlet, the water jacket surrounding at least a portion of the valve disposed between the inlet and the outlet so as to provide direct water-cooling of the valve, and at least one O-ring seal, between the water jacket and the valve, constructed and arranged to prevent water from leaking past the valve, wherein the valve is a gasoline-type fuel Appeal 2011-008519 Application 11/802,209 3 injector having a solenoid coil and a non-precision orifice, integral with the fuel injector, as an outlet disposed to inject a generally linear stream of the fluid directly into the exhaust passage, and wherein the portion of the valve that is surrounded by the water jacket is integral with and generally adjacent to the coil. ANALYSIS Obviousness over Pielstick - Claims 1, 3-5, 7-9, 11-14 and 16-22 Each of independent claims 1, 9 and 18 includes the limitations of (1) the valve/fuel injector “having a solenoid coil;” (2) a water jacket surrounding at least a portion of the valve/fuel injector; and (3) the portion of the valve/fuel injector surrounded by the water jacket being “generally adjacent to the coil” App. Br., Clms. App’x. The Examiner finds that Pielstick “does not expressly disclose a solenoid coil . . . . However, electrically operated injection valves having solenoid coils are well known in the art for actuating the injection.” Ans. 4. The Examiner concludes “it would have been obvious to one having ordinary skill in the art at the time of applicant’s invention to have made the valve of Pielstick electrically operable using a solenoid coil in order to precisely time the injections.” Id. Appellant contends that even if such a solenoid coil was provided in the injector of Pielstick, it would not result in the claimed invention, since the claims require that the portion of the valve that is surrounded by the water jacket is integral with and adjacent to the coil. In Pielstick, the water cooling chamber (c) is adjacent to the nozzle since it is the object of Pielstick to cool the nozzle. App. Br. 7, citing Pielstick p. 1, ll. 11-14, 37-39. Appeal 2011-008519 Application 11/802,209 4 In response, the Examiner takes the position that [t]he water jacket of Pielstick is the entire element “g” and not just the portion “c” at the nozzle. In the modification of Pielstick adding a coil, the coil would be placed upstream of the nozzle in a conventional manner around needle valve “d[.]” Therefore, the coil would be within water jacket “g” thus allowing water to pass around the coil to cool it. Ans. 8. We disagree with the Examiner’s position for the following reasons. Pielstick discloses the nozzle carrying member b, which is preferably so shaped in its lower portion as to form a wall of the water cooling chamber c. The upper portion b' of the nozzle carrying member [b] guides and receives the movable needle d of the valve. p. 1, col. 2, ll. 51-56. [t]he nozzle carrying member b is connected to an outer valve body f through which the needle [d] extends, by means of a threaded engagement with a screw threaded case e. This case e is surrounded by a cooling casing g which provides therewith the channels gl and g2 forming ducts for the cooling water which flows through the chamber c around the nozzle carrying member. p. 1, col. 2, ll. 64-72. As discussed above, the claims require that the water jacket “surrounds” (encloses) at least a portion of the valve (fuel injector). Based on Pielstick’s disclosure, cooling casing (water jacket) g surrounds (encloses) case e, which houses outer valve body f and nozzle carrying member b, both of which house needle valve d. While we agree that the water jacket of Pielstick includes the entire element (cooling casing) “g,” channels gl and g2 (i.e., the ducts for the cooling water) of the cooling casing Appeal 2011-008519 Application 11/802,209 5 (water jacket) g do not “surround” (enclose) at least a portion of needle valve (fuel injector) d. See Pielstick, fig 2 (which depicts the open channels gl and g2 extending alongside but not surrounding a portion of needle valve d). The only part of the cooling casing (water jacket) g that could be considered to “surround” (enclose) at least a portion of needle valve (fuel injector) d is chamber c. See Pielstick, p.1, col. 2, ll. 51-53 and 70-72; fig. 1. Further, as discussed above, the claims also require the solenoid coil to be generally adjacent (next to) the portion of the valve/fuel injector surrounded by the water jacket. Applying the Examiner’s proposed construction of placing a solenoid coil upstream of the nozzle a around needle valve d (Ans. 8), in order for the resulting device to be compliant with the recited claim language, the coil would be placed around the portion of needle valve d that is within or just outside of the confines of chamber c, which is likely to render Pielstick’s device inoperable for its intended purpose. App. Br. 7. That is, Pielstick’s nozzle carrying member b guides and receives the needle valve d which seats against the nozzle a so that a tight seal is formed. See Pielstick, p. 1, col. 1, ll. 8-10, 14-17, 41-47; p. 1, col. 2, 54-56, 83-88. If Pielstick’s device were modified to position a solenoid coil around needle valve d, as proposed by the Examiner, there is no indication how Pielstick’s nozzle carrying member b would still be capable of guiding and receiving the needle valve d. Where the proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, the proposed modification would not have been obvious. See Tec Air, Inc. v. Denso Mfg. Michigan, Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999); In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). One of ordinary skill in the art would understand that modifying Appeal 2011-008519 Application 11/802,209 6 Pielstick’s device to position a solenoid coil around needle valve d would likely render nozzle carrying member b inoperable for guiding and receiving the needle valve d and therefore would not seek to modify Pielstick as suggested by the Examiner. The Examiner thus has not articulated sufficient reasoning with a rational underpinning to support the legal conclusion of obviousness. Accordingly, for the foregoing reasons, the Examiner’s rejection of independent claims 1, 9 and 18 and their respective dependent claims as unpatentable over Pielstick cannot be sustained. Obviousness over Pielstick and Rudelt - Claim 6 and 15 The Examiner’s rejection of claims 6 and 15 over Pielstick and Rudelt (see Ans. 6-7) is based on the same unsupported findings discussed supra with respect to the disclosure of Pielstick. For the same reasons discussed supra, we do not sustain the Examiner’s rejection of claims 6 and 15 as unpatentable over Pielstick and Rudelt. DECISION We REVERSE the decision of the Examiner as to claims 1, 3-9 and 11-22. REVERSED rvb