Ex Parte Leister et al

Patent Trial and Appeal Board

Jan 30, 2017

12959053 (P.T.A.B. Jan. 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.
12/959,053 12/02/2010 Jens Leister 022862-1369 4314
34044 7590 02/01/2017
MICHAEL BEST & FRIEDRICH LLP (Bosch)
100 EAST WISCONSIN AVENUE
MILWAUKEE, WI 53202
EXAMINER
KIM, CHRISTOPHER S
ART UNIT PAPER NUMBER
3752
NOTIFICATION DATE DELIVERY MODE
02/01/2017 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):
mkeipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JENS LEISTER, MARCO BEIER,
PIERRE MARIE ROCHAS, and OLIVER RAIN
Appeal 2015-003271
Application 12/959,053
Technology Center 3700
Before EDWARD A. BROWN, MICHAEL L. WOODS, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jens Leister et al. (“Appellants”) appeal under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 1, 2, 4, 7, 10, 12, 14—17, and
19-21.1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellants submit the real party in interest is Robert Bosch GmbH.
Appeal Br. 2.
Appeal 2015-003271
Application 12/959,053
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. An electromagnetic valve, comprising: a casing (1,2), an
electromagnet (24, 25) formed of a yoke (24) and an
electromagnetic coil (25) housed in an opening of the yoke, and
an armature (22) in one or more parts, the yoke (24) opening
towards the armature (22), characterized in that an abutment
disk (28) is provided between on one hand a transverse face of
the armature (22), said face of the armature (22) being turned
towards the yoke (24), and on the other hand a transverse face
of the yoke (24 ), the abutment disk (28) being made of a
magnetized or magnetizable material, and in that a bearing
surface of the abutment disk (28) is reduced by at least two
orifices (34, 35, 36), wherein at least one of the at least two
orifices (36) has a different size than the remaining
orifices (34, 35).
REJECTION
Claims 1, 2, 4, 7, 10, 12, 14—17, and 19-21 are rejected under 35
U.S.C. § 102(b) as anticipated by Oyama (US 6,380,832 B2, issued April
30, 2002).
DISCUSSION
Appellants appeal only the rejection of claims 14 and 17, each
depending from claim 1. Notice of Appeal (filed August 4, 2014); Appeal
Br. 11—12 (Claims App.). Appellants did not cancel the remaining rejected
claims, that is, claims 1, 2, 4, 7, 10, 12, 15, 16, and 19-21. Id. at 10-12.
The Examiner did not withdraw the rejection of these claims in the Answer.
Ans. 2—5. As Appellants do not address the rejection of claims 1, 2, 4, 7, 10,
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Appeal 2015-003271
Application 12/959,053
12, 15, 16, and 19—21 under 35 U.S.C. § 102(b), Appellants waived any
argument of error, and we summarily sustain the rejection of these claims.
See Appeal Br. 5—9; Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008)
(explaining that summary affirmance without consideration of the
substantive merits is appropriate where an appellant fails to contest a ground
of rejection); see also 37 C.F.R. § 41.31(c) (“An appeal, when taken, is
presumed to be taken from the rejection of all claims under rejection unless
cancelled by an amendment filed by the applicant and entered by the
Office.”); 37 C.F.R. § 41.39(a)(1) (“An examiner’s answer is deemed to
incorporate all of the grounds of rejection set forth in the Office action from
which the appeal is taken . . . unless the examiner’s answer expressly
indicates that a ground of rejection has been withdrawn.”).
Claim 14 recites “the bearing surface of the abutment disk (28) is
further reduced by a central drill hole (36).” Appeal Br. 11 (Claims App.).
The Examiner finds that Oyama discloses all the limitations of claims 1 and
14. Final Act. 3^4.
Appellants contend that Oyama discloses an abutment disc having a
single annular orifice in disk 23 and a through hole centrally located in the
disk. Appeal Br. 8 (citing Oyama Figs. 4A and 4B.) Appellants note that
claim 1 recites a bearing surface of the abutment disk “is reduced by at least
two orifices, wherein at least one of the at least two orifices has a different
size than the remaining orifices,” and claim 14 requires that the bearing
surface of the abutment disk is “further reduced by a central drill hole.” Id.
Appellants argue that Oyama does not anticipate claim 14 because its
abutment disk “does not have two orifices and a central drill hole.” Id.
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Appeal 2015-003271
Application 12/959,053
The Examiner responds that claim 14 “does not define three orifices
(two orifices and a central hole).” Ans. 4. The Examiner refers to
Appellants’ Figure 5b which discloses a plurality of orifices 34, all of the
same size, and a central drill hole 36 of a larger diameter than the orifices.
Id. The Examiner uses Figure 5B as the basis to conclude that claim 1
“treat[s] central drill hole 36 as one of the ‘at least two orifices’” recited in
claim 1. Id. The Examiner then construes claim 14 “as further limiting one
of the two orifices 34 and 36 being a central drill hole.” Id. Based on this
construction of claim 14, the Examiner finds that Oyama discloses “an
abutment disk 23 being reduced by at least two orifices (one annular orifice
adjacent recess 21 and another orifice adjacent hole 22). The orifice
adjacent hole 22 is a central drill hole.” Id. For the following reasons, we
do not sustain the rejection of claim 14.
Claim 1 recites that “a bearing surface of the abutment disk (28) is
reduced by at least two orifices.” Claim 14 recites that “the bearing surface .
. . is further reduced by a central drill hole.” The Examiner’s construction of
claim 14 ignores the italicized language that the central drill hole must
reduce the bearing surface further from the reduction in the bearing surface
due to the at least two orifices recited in claim 1. Oyama discloses two
orifices of different sizes in abutment disk 23. However, the Examiner has
not directed us to any disclosure in Oyama of an additional central drill hole
that further reduces the bearing surface. We, thus, do not sustain the
rejection of claim 14.
Claim 17 recites “the at least two orifices (34, 35, 36) are disposed
symmetrically on the abutment disk (28).” Appeal Br. 12 (Claims App.).
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Appeal 2015-003271
Application 12/959,053
The Examiner finds that Oyama discloses all the limitations of claims 1 and
17. Final Act. 3^4.
Appellants argue that claim 17 does not read on Oyama’s abutment
disc because the differing shapes of Oyama’s annular recess 21 and center
hole 22 and their distinct locations on the disk are not disposed
symmetrically on disk 23. Appeal Br. 9. The Examiner responds that
Oyama’s center hole 22 and annular recess 23 are symmetrical about the
center of the disk. Ans. 5.
Figure 4A of Oyama discloses center hole 22 and an annular recess 21
disposed concentrically around center hole 21. Oyama, Fig. 4A. We agree
with the Examiner that both of these orifices in Oyama’s abutment disk are
disposed symmetrically on the abutment disk about the center and, thus,
sustain the rejection of claim 17.
DECISION
The Examiner’s decision rejecting claims 1, 2, 4, 7, 10, 12, and 15—17
is affirmed.
The Examiner’s decision rejecting claim 14 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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