Ex Parte Kosiorek et al

Patent Trial and Appeal Board

Aug 24, 2017

11936535 (P.T.A.B. Aug. 24, 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.
11/936,535 11/07/2007 Roman F. Kosiorek 144417-0082 1011
35684 7590
BUTZEL LONG, P.C.
IP DEPARTMENT
41000 Woodward Avenue
Stoneridge West
Bloomfield Hills, MI 48304
EXAMINER
WILENSKY, MOSHE K
ART UNIT PAPER NUMBER
3726
NOTIFICATION DATE DELIVERY MODE
08/28/2017 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):
PATENT@BUTZEL.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROMAN F. KOSIOREK and TERRANCE G. CUNNINGHAM
Appeal 2016-003545
Application 11/936,535
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Roman F. Kosiorek and Terrance G. Cunningham (“Appellants”)1
appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting
claims 1 and 2. We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is Detroit
Diesel Remanufacturing LLC. Appeal Br. 3.
Appeal 2016-003545
Application 11/936,535
THE CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim, is reproduced below and is
representative of the claimed subject matter on appeal.
1. A method for refurbishing a fuel injector; said fuel injector
having a body, a solenoid controlled poppet valve located in a
valve bore guide in said body adapted to cooperatively engage a
valve seat surface in said body; said bore intersecting a fuel
passage at an angle to form a stress riser said method comprising:
removing said poppet valve from said valve bore guide;
machining said bore and valve seat to remove cavitation;
machining said fuel passage to increase a radius of the fuel
passage with an undercut at said stress riser;
radiusing the fuel passage at said stress riser and undercut
with abrasive flow technology;
nitriding said valve bore guide and radiused fuel passage
to a sufficient depth to restore hardness thereto; and
inserting a poppet valve guide seat sleeve into said valve
bore guide of a sufficient height to act as a valve seat.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Kipling US 4,227,292 Oct. 14, 1980
Perry US 5,807,163 Sept. 15, 1998
Wang US 5,960,760 Oct. 5, 1999
Straub US 6,339,877 B1 Jan. 22, 2002
REJECTIONS
I. Claims 1 and 2 stand rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement. Non-
Final Act. 3.
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II. Claims 1 and 2 stand rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the enablement requirement. Id. at 3—6.
III. Claims 1 and 2 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Straub, Kipling, Perry, Wang, and Appellants’
Admitted Prior Art2 (hereinafter “AAPA”). Id. at 7—9.
OPINION
Written Description Rejection and New Matter Objection
Claim 1 recites “machining said fuel passage to increase a radius of
the fuel passage.” Appeal Br. 52 (Claims App.). The Examiner finds that
this feature, added by amendment, was not described in the Specification in
such a way as to reasonably convey to one skilled in the art that Appellants
had possession of the claimed subject matter at the time of filing the
application. Non-Final Act. 3. According to the Examiner, “[t]he original
[Specification recite[s] machining the valve guide bore,” and “also
discusses undercutting the stress riser.” Id. However, the Examiner
explains that “there is no explicit teaching of machining the fuel passage to
increase its radius,” and, thus, “this feature is new matter.” Id.
The Examiner also objects under 35 U.S.C. § 132(a) to the
Specification amendments filed December 19, 2011, May 15, 2012, May 22,
2014, and December 19, 2014, on the ground that the amendments introduce
new matter into the disclosure. Non-Final Act. 2. In particular, the
Examiner objects to a portion of paragraph 27, indicating that particular
2 The Examiner refers to pages 4 and 5 of the Declaration of Roman
Kosiorek, filed December 19, 2014 (hereinafter “Declaration”), as
Appellants’ Admitted Prior Art. Non-Final Act. 7—8.
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Application 11/936,535
“features, advantages, and steps[3] were not described in the [Specification
as filed.” Id. The Examiner also objects to Figures 5A 5B (specifically, the
amendment of Figure 5 A to match Figure 5B) as showing the feature of “the
radiused fuel passage and the adjacent radiused fuel sleeve aperture having a
common radius,” which “was not shown or described in the [Specification
as filed.” Id. at 2—3.
Appellants argue that the claim limitation of “‘machining said fuel
passage to increase a radius of the fuel passage’ was expressly, implicitly,
and inherently disclosed in the application as filed.” Appeal Br. 22
(emphasis omitted). In particular, Appellants assert that “the undercut
performed at the stress riser creates an increased radius of the fuel passage.”
Id. at 23. In other words, “when the stress riser is undercut (machined), the
acute angles shown in Fig. 2 are removed, which inherently increases the
fuel passage radius.” Id. at 25. Appellants also assert that “Fig. 3B confirms
that the undercut increases the radius of the fuel passage.” Id. at 23.
“[T]he test for sufficiency [of the written description under 35 U.S.C.
§ 112, first paragraph,] 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.” Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). The
3 Paragraph 27 was added via the proposed Specification amendments, and
the objected-to portion of paragraph 27 recites that the sleeve insert 86 “is
oriented in the machined bore such that radiused aperture 94 is in mating
communication with radiused portion 83 of the fuel passage 78,” and that
“[i]t has been found that radiusing both the fuel sleeve aperture and the
passage portion 82 directly adjacent the machined poppet valve bore 46 . . .
controls] failures arising from the fuel flow through the stress riser.” Non-
Final Act. 2 (emphasis omitted).
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Application 11/936,535
original Specification describes “machining to create an undercut radiused
intersection of the fuel passage and bore” (Spec. 1 6), and that “the
intersection of the fuel passage and the poppet valve guide bore is first
undercut” {id. 120). The Specification also describes Figure 3B of the
drawings as depicting “the intersection of the machined bore and fuel
passage after undercutting and radiusing.” Id. ^ 11. Original Figure 3B
includes reference element 82 pointing generally to an area where fuel
passage 78 meets the valve guide bore, in which the area where the fuel
passage meets the valve guide bore appears larger as compared to this same
area in Figure 3 A. The original Specification further indicates that the stress
riser “formed by the intersection of the machined valve guide bore and the
fuel passage ... is radiused to a controlled radius 82.” Id. 119. In our view,
the content of the original Specification and drawings is sufficient disclosure
to reasonably convey to a person of ordinary skill in the art that, as of the
filing date, Appellants possessed the claimed subject matter of machining
the fuel passage to increase a radius of the fuel passage.
Accordingly, we do not sustain the Examiner’s rejection of claims 1
and 2 under 35U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement.
As to the objection to the Specification and drawings, ordinarily, an
objection is reviewahle by petition under 37 C.F.R. § 1.181 and a rejection is
appealable to the Patent Trial and Appeal Board. However, as explained in
the Petition Decision dated March 30, 2015, when the issue of new matter
presented is the subject of both an objection and a rejection, the issue is
appealable. Manual of Patent Examining Procedure (“MPEP”) § 2163.06;
see also id., § 608.04(c) (“where the alleged new matter is introduced into or
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affects the claims, thus necessitating their rejection on this ground, the
question becomes an appealable one, and should not be considered on
petition even though that new matter has been introduced into the
[Specification also”).
To the extent that the objection to the Specification and drawings
turns on the same new matter issue as the rejection of the claims under
35 U.S.C. § 112, first paragraph, our decision with respect to the rejection is
dispositive as to the corresponding objection. In addition, although, in our
view, the original Specification and drawings do not describe or illustrate
specifically how radiused aperture 94 aligns or mates with controlled radius
82 of the stress riser, this feature is not recited in the claims. We do not have
jurisdiction to review allegedly new matter that is confined to the
Specification and that has not been introduced into, or does not otherwise
affect, the claims. 35 U.S.C. §§ 6(b) and 134(a); In re Hengehold, 440 F.2d
1395, 1404 (CCPA1971).
Enablement Rejection
The Examiner rejected claims 1 and 2 under 35 U.S.C. §112, first
paragraph, as failing to comply with the enablement requirement. Non-Final
Act. 3—6. In particular, the Examiner determines that the steps recited in
claim 1 of “machining said fuel passage to increase a radius of the fuel
passage with an undercut at said stress riser [and] radiusing the fuel passage
at said stress riser and undercut with abrasive flow technology” are not
enabled by the original disclosure of the Specification. Id. at 3^4 (emphasis
omitted).
The test for enablement is whether Appellants’ disclosure is sufficient
for one of ordinary skill i n the art to make and use the invention wi thout
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undue experimentation. In re Wands, 858 F.2d 731, 737 (Fed Cir. 1988).
The Examiner identifies this test and the corresponding Wands factors.
Non-Final Act. 4. The Examiner addresses the factor relating to the amount
of direction provided by the inventor and explains that “[t]he [Specification
provides very little direction on such issues as to how the undercut should be
performed, what tools should be used, the difference in dimension from one
undercut to the nominal area around it, etc.” Id. at 5. The Examiner
addresses the factor relating to the existence of working examples and
explains that “[t]he [Specification also provides no working example of this
undercut,” and “[n]o figures showing step-by-step instructions of the
undercut or close-up before and after figures.” Id. According to the
Examiner, “[t]he absence of any discussion on these subjects [relating to the
undercut] means that the radiusing step also lacks enablement.” Id. at 6.
The Examiner addresses the factor relating to the level of one of ordinary
skill, finding that “[t]he person of ordinary skill would be a machinist of 3—5
years’ experience.” Id. at 5—6 (citing Declaration | 5).
Although the Examiner has identified certain information that is not
found in the Specification, the Examiner has failed to address adequately
why one of ordinary skill in the art would not be able to supply such missing
information without undue experimentation. As an initial matter, the
Examiner has mischaracterized the Declaration as suggesting that one of
ordinary skill in the art is a machinist having 3—5 years of experience. The
Examiner relies on the statement that machinists have 3—5 year
apprenticeships (Declaration | 5) and determines that “[t]he conclusion of
such an apprenticeship would ... be a logical moment to consider them a
person of ordinary skill” (Final Act. 6). When considering that during an
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apprenticeship, machinists “are constantly monitored by more experienced
machinists], and generally do not operate or setup machines solely on their
own” (Declaration | 5), we do not agree with the Examiner that a person of
ordinary skill would have only 3—5 years of experience, but rather would
reach an ordinary level of skill sometime after completion of such an
apprenticeship. Additionally, the Examiner has not addressed other Wands
factors, such as the quantity of experimentation necessary and the
predictability or unpredictability in the art, which would inform us as to the
amount of guidance, direction, or working examples necessary to enable a
person having ordinary skill in the art to perform the claimed machining and
radiusing steps without undue experimentation.
A lack of disclosure in the Specification is not necessarily dispositive
as to the issue of enablement. In particular, “the [Specification need not
disclose what is well known in the art.” Lindemann Maschinenfabrik
GMBHv. American Hoist and Derrick Co., 730 F.2d 1452, 1463 (Fed. Cir.
1984) (citing In re Myers, 410 F.2d 420 (CCPA 1969)). Here, the Examiner
did not articulate sufficient findings or analysis to show that, in the absence
of such description in the Specification, a person of ordinary skill in the art
would have been unable to make and use the claimed invention without
undue experimentation. See Wands, 858 F.2d at 737. “The key word is
‘undue,’ not ‘experimentation.’” Id. (quoting In re Angstadt, 537 F.2d 498,
504 (CCPA 1976)). That is, the Specification need only teach those aspects
of the invention that one skilled in the art could not figure out without undue
experimentation. See, e.g., Nat’l Recovery Techs., Inc. v. Magnetic
Separation Sys., Inc., 166 F.3d 1190, 1196 (Fed. Cir. 1999) (“The scope of
enablement... is that which is disclosed in the [Specification plus the
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scope of what would be known to one of ordinary skill in the art without
undue experimentation.”).
As such, the Examiner has not met the initial burden to establish a
reasonable basis to question the enablement provided for machining the fuel
passage to increase the radius with an undercut at the stress riser, and
radiusing the fuel passage at the stress riser with abrasive flow technology.
In re Wright, 999 F.2d 1557, 1561—62 (Fed. Cir. 1993) (when rejecting a
claim for lack of enablement, the USPTO bears the initial burden of setting
forth a reasonable explanation as to why the scope of the claim is not
adequately enabled by the description provided in the Specification).
Accordingly, we do not sustain the Examiner’s rejection of claims 1
and 2 under 35U.S.C. § 112, first paragraph, as failing to comply with the
enablement requirement.
Obviousness Rejection
Independent claim 1 recites, in relevant part, the steps of “machining
said fuel passage to increase a radius of the fuel passage with an undercut at
said stress riser; [and] radiusing the fuel passage at said stress riser and
undercut with abrasive flow technology.” Appeal Br. 52 (Claims App.).
The Examiner acknowledges that Straub and Kipling do not teach such
steps, but finds that “Perry teaches that it is common practice to machine
microholes into fuel injectors and then radius the microholes” with abrasive
flow technology. Non-Final Act. 8 (citing Perry, col. 1,11. 35—44, 64—67;
col. 3,11. 13—21). The Examiner determines that it would have been obvious
“to modify the repair method of Straub ... to radius a machined hole, as
taught by Perry, to eliminate stress risers and improve flow control.” Id.
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Additionally, the Examiner finds that “[s]uch a radiused hole would also be
undercut.” Id. (citing Declaration 4—5). The Examiner’s position is:
[T]he Declaration states that one of ordinary skill would
appreciate the limits of how much material could be practically
remove[d] by abrasive flow machining [(AFM)]. See
Declaration, pgs. 4—5. The Declaration states that for a class 8
diesel truck, which would be a vehicle the valve of Straub could
expect to be in, the AFM can only effect a pra[c]tical range of
radii between 0.4 to 0.6 mm. See Declaration, pg. 5. To create
a ,8mm radius, which would be required for a class 8 diesel truck,
one of ordinary skill would understand that an undercut would
also be required. See Declaration, pg. 5. As such, it would have
been obvious to create a radius with an undercut[.\
Id.
Appellants contend that
[t]he statements made in the Declaration were not admissions
that one of skill would know to first perform an undercut at the
stress riser based on the practical limitations of radiusing with
AFM, but rather they were statements made to illustrate how one
of skill in the art would know “how much” material to remove
via the two processes, already knowins that an undercut and
AFM are to be used to effect the increased radius of the fuel
vassase.
Appeal Br. 47-48. We agree that a sustainable ease of obviousness has not
been established.
In the Declaration, Mr. Kosiorek states that “I will. . . detail how one
of ordinary skill in the art would perform the undercut based on the
[Specification as filed, and then detail how one of ordinary skill in the art
would perform the abrasive flow machining based on the [Specification as
filed.” Declaration 2 (emphasis added); see also id. at 2—3 (explaining that,
“\u]pon reading paragraph [0020] as originally filed, I understand that to
reduce the stress at the critical stress riser, the intersection of the valve bore
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Application 11/936,535
and the fuel passage is to be machined in two ways: an undercut is
performed first, and then abrasive flow machining is used” (emphasis
added)). In this regard, we agree with Appellants that “the statements made
by Mr. Kosiorek in his Declaration assume that one has read the application
as originally filed and benefited from those teachings.” Appeal Br. 46.
Regarding the particular portions of the Declaration cited by the
Examiner (i.e., pages 4—5), Mr. Kosiorek states that “[t]he application does
not instruct ‘how much’ material is to be removed via undercutting and how
much material is to be removed via the AFM process,” but “[o]ne skilled in
the art would recognize that abrasive flow technology can only practically
remove so much material from the workpiece.” Declaration 4—5. However,
we agree with Appellants in that “it does not follow [necessarily] that one
would be led to perform an undercut simply because one of skill in the art
has knowledge of the practical limitations of AFM.” Reply Br. 9 (emphasis
added). Instead, “[t]he number of ways one of skill in the art could have
selected to reduce the stress riser (i.e., increase the fuel passage radius) is as
many as a creative machinist could think of.” Id. at 9—10.
As such, the Examiner’s finding that “one of ordinary skill would
understand [from the AAPA in the form of the Declaration] that an undercut
would also be required” (Non-Final Act. 8) is not supported by a
preponderance of the evidence. The Examiner’s conclusion of obviousness
is thus based on an erroneous finding as to the scope and content of the
AAPA.
For the foregoing reasons, we are persuaded that the Examiner erred
in concluding that the combination of Straub, Kipling, Perry, Wang, and
AAPA renders obvious the subject matter of independent claim 1.
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Accordingly, we do not sustain the rejection of independent claim 1, and its
dependent claim 2, under 35 U.S.C. § 103(a).
DECISION
The Examiner’s decision to reject claims 1 and 2 under 35 U.S.C.
§112, first paragraph, as failing to comply with the written description
requirement is reversed.
To the extent that the Examiner’s objection to the Specification and
drawings relates to allegedly new matter that is introduced into or affects the
claims (i.e., machining the fuel passage to increase a radius of the fuel
passage), the Examiner’s objection to the Specification under 35 U.S.C.
§ 132 is likewise reversed. We do not reach the Examiner’s objection to the
Specification under 35 U.S.C. § 132 with respect to objected-to language
that has not been introduced into, or does not otherwise affect, the claims.
The Examiner’s decision to reject claims 1 and 2 under 35 U.S.C.
§112, first paragraph, as failing to comply with the enablement requirement
is reversed.
The Examiner’s decision to reject claims 1 and 2 under 35 U.S.C.
§ 103(a) as unpatentable over Straub, Kipling, Perry, Wang, and AAPA is
reversed.
REVERSED
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