Ex Parte Mahnkopf

Patent Trial and Appeal Board

Aug 28, 2017

13386427 (P.T.A.B. Aug. 28, 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.
2178-0135 5812
EXAMINER
NGUYEN, XU AN LAN T
ART UNIT PAPER NUMBER
3657
MAIL DATE DELIVERY MODE
13/386,427 03/24/2012
10800 7590 08/28/2017
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
Dirk Mahnkopf
08/28/2017 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 DIRK MAHNKOPF
Appeal 2016-001448
Application 13/3 86,4271
Technology Center 3600
Before HUNG H. BUI, SHARON FENICK, and PHILLIP A. BENNETT,
Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 13—16, 18, 20-25, and 30-35, which are all of the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellant’s Brief (“App. Br.”) identifies Robert Bosch GmbH as the real
party in interest.
Appeal 2016-001448
Application 13/386,427
CLAIMED SUBJECT MATTER
The claims are directed to a hydraulic brake system consisting of a
conventional brake system and a regenerative/recuperative brake system
arranged to cause volume displacements in a brake circuit or in a piston-
cylinder unit on a brake pedal. Spec. Abstract. A hydraulic accumulator is
used to compensate for a change in the pressure conditions in the hydraulic
part of the brake system owing to an additional braking action of the
regenerative/recuperative brake system. Id. The compensation allows the
braking actions of two brake systems to form an overall braking action
without the two systems causing changes in the position of the brake pedal
for a given driver input force. Id., see also Spec. 3,11. 11—17.
Claims 13, 20, and 30 are independent, and are reproduced below with
key limitations in italics:
13. A hydraulic accumulator device for use in a
hydraulic brake system of an overall brake system which
includes, (i) aside from the hydraulic brake system, at least one
further, nonhydraulic brake system, (ii) a master cylinder, (iii) at
least one wheel brake, and (iv) a brake force booster configured
to impart an assistance force for the hydraulic brake system, the
hydraulic accumulator device comprising:
a first piston-cylinder unit including a first piston defining
a first chamber and a second piston defining a second chamber,
the first and second chambers having different cross-sectional
areas; and
a first switching valve disposed in a first hydraulic
connection between an outlet of the master cylinder and the first
chamber,
wherein the hydraulic accumulator device is hydraulically
connected to the at least one wheel brake,
wherein the hydraulic accumulator device is configured to
either admit volume from the hydraulic brake system, hold
volume, or automatically discharge volume into said hydraulic
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Application 13/386,427
brake system as a function of an operating state of the further
brake system, and
wherein the hydraulic accumulator device is further
configured to admit volume through the first switching valve to
pre-charge the hydraulic accumulator device by operation of the
brake booster when no braking operation is being performed.
20. A method for operating a hydraulic brake system of
an overall brake system which, aside from the hydraulic brake
system, includes at least one further, non-hydraulic brake system,
wherein the hydraulic brake system has (i) a master cylinder, (ii)
at least one wheel brake, (iii) a hydraulic accumulator device
hydraulically connected to at least one outlet of the master
cylinder and to the at least one wheel brake and is configured to
(a) admit volume from the hydraulic brake system, (b) hold
volume, or (c) automatically discharge volume into said
hydraulic brake system as a function of the operating state of the
further brake system, (iv) a brake force booster configured to
boost the brake force imparted by the driver by an assistance
force, and (v) an actuating element for the overall brake system,
the method comprising:
operating the brake force booster to reduce the assistance
force in response to an increase in braking torque caused by the
further brake system, and to increase the assistance force in
response to a decrease in braking torque caused by the further
brake system such that the overall braking torque imparted by
the overall brake system is substantially constant; and
operating the hydraulic accumulator device such that a
change in the position of the actuating element caused by a
change in the assistance force imparted by the brake force
booster is at least partially compensated by one of admission of
volume from the hydraulic brake system and discharge of
volume into the hydraulic brake system.
30. A hydraulic accumulator device for use in a
hydraulic brake system of an overall brake system which
includes, (i) aside from the hydraulic brake system, at least one
further, non-hydraulic brake system, (ii) a master cylinder, (iii)
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Application 13/386,427
at least one wheel brake, and (iv) a brake force booster
configured to impart an assistance force for the hydraulic brake
system, the hydraulic accumulator device comprising:
a first piston-cylinder unit including a first piston defining
a first chamber and a second piston defining a second chamber,
the first and second chambers having different cross-sectional
areas; and
a first switching valve disposed in a first hydraulic
connection between an outlet of the master cylinder and the first
chamber,
wherein the hydraulic accumulator device is hydraulically
connected to the at least one wheel brake, and
wherein the hydraulic accumulator device is configured to
either admit volume from the hydraulic brake system, hold
volume, or automatically discharge volume into said hydraulic
brake system as a function of an operating state of the further
brake system.
App. Br. 27, 30, 33 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Warwick US 4,425,005 Jan. 10, 1984
Joyce US 2008/0246333 A1 Oct. 9,2008
Gilles US 2010/0244547 A1 Sept. 30,2010
REJECTIONS
(1) Claims 13—16 and 18 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Non-Final Act. 3.
(2) Claims 20, 21, 23, and 24 stand rejected under 35 U.S.C. §
102(a) as being anticipated by Joyce. Non-Final Act. 4.
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Application 13/386,427
(3) Claims 22 and 30-35 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Joyce. Non-Final Act. 6.
(4) Claims 13—16 and 18 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Joyce and Warwick. Non-Final Act. 8.
(5) Claim 25 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Joyce and Gilles. Non-Final Act. 11.
ISSUES
First Issue: Has the Examiner erred in finding the limitation “wherein
the hydraulic accumulator device is further configured to admit volume
through the first switching valve to pre-charge the hydraulic accumulator
device by operation of the brake booster when no braking operation is being
performed,” as recited in independent claim 13, lacks written description?
Second Issue: Has the Examiner erred in finding Joyce discloses
“operating the brake force booster to reduce the assistance force in response
to an increase in braking torque caused by the further brake system, and to
increase the assistance force in response to a decrease in braking torque
caused by the further brake system,” as recited in independent claim 20?
Third Issue: Has the Examiner erred in concluding it would have been
obvious to modify Joyce to including a “first switching valve disposed in a
first hydraulic connection between an outlet of the master cylinder and the
first chamber,” as recited in independent claims 13 and 30?
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Application 13/386,427
ANALYSIS
First Issue
The Examiner finds the last limitation recited in claim 13—“wherein
the hydraulic accumulator device is further configured to admit volume
through the first switching valve to pre-charge the hydraulic accumulator
device by operation of the brake booster when no braking operation is being
performed”—lacks support in the Specification. Non-Final Act. 3.
Appellant contends the limitation finds support in two teachings
provided in the Specification: (1) that “the accumulator is pre-charged in
driving situations in which the driver is not braking,” (quoting Spec. 7,11.
14—16); (2) that hydraulic connections are closed during the pre-charging
process “to prevent a braking action during a pre-charging of the hydraulic
accumulator,” (quoting Spec. 13,11. 24—27, also citing 18,11. 31—36). App.
Br. 7. According to Appellant:
[The] specification is clear that the accumulator is pre-charged in
driving situations in which the driver is not braking while the
valves to the brakes are shut off to prevent braking action during
the pre-charging. Since the driver is not braking and braking
action is prevented, one of ordinary skill in the art would clearly
recognize that the pre-charging operation is performed when no
braking operation is being performed.
App. Br. 7.
The Examiner finds the passages relied upon by Appellant insufficient
because they “do not discuss the same condition of the driver not braking.”
Ans. 6. The Examiner finds that the passage on page 13 is part of the
discussion of Figure 3, which according to the Specification “takes as a basis
the fact that the driver is already braking with a combination of conventional
and recuperative brake systems.” Ans. 6 (quoting Spec. 11,1. 27) (emphasis
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Application 13/386,427
omitted). Thus, the passage relied upon by Appellant for support of “pre­
charging . . . when no braking operation is being performed,” is actually
describing a braking operation, and is insufficient to provide the requisite
support.
We agree with Appellant. As noted above, first passage relied upon
by Appellant states “the accumulator is pre-charged in driving situations in
which the driver is not braking.” Spec. 7,11. 14—16. Thus, this portion of
the Specification supports pre-charging the accumulator when the car is
moving, but the driver is not braking. The Examiner determines that a
“driver . . . not braking” is not the same as “no braking operation is being
performed,” as evidenced by the Gilles prior art, which describes braking
operations performed when the driver does not actuate the brake pedal.
Non-Final Act. 11—12. The correct inquiry, however, is not what is taught
by Gilles, but rather is what a person of ordinary skill in the art would
understand from Appellant’s disclosure. We see no situation in Appellant’s
disclosure, nor does the Examiner identify any, in which braking operations
in Appellant’s system would be performed when the driver is not braking.
Moreover, we find the second passage relied upon by Appellant
resolves any perceived ambiguity in the first. This passage discloses “the
hydraulic connections to the wheel brakes are shut off by means of the valve
124 in order to prevent a braking action during a pre-charging of the
hydraulic accumulator.” Spec. 13,11. 24—27. The Examiner determines this
passage relates to Figure 3, which “takes as a basis the fact the driver is
already braking.” Ans. 6 (quoting Spec. 11,11. 27). The Examiner is
incorrect, and we agree with Appellant that the discussion of Figure 3 ends
one page earlier, on page 12 of the Specification. As such, this statement
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indicates that during pre-charging, braking operations are actively prevented.
Thus, taken together, these two passages demonstrate the inventor possessed
a hydraulic accumulator device that is pre-charged when no braking
operation is performed.
For these reasons, we do not sustain the rejection of claims 13—16 and
18 under 35U.S.C. § 112, first paragraph.
Second Issue
In rejecting independent claim 20 as anticipated by Joyce, the
Examiner finds paragraphs 23 and 24 of Joyce disclose the disputed
limitation of “operating the brake force booster to reduce the assistance force
in response to an increase in braking torque caused by the further brake
system, and to increase the assistance force in response to a decrease in
braking torque caused by the further brake system . . . .” Non-Final Act. 4—
5; Ans. 7 (citing Joyce Tflf 23—24). The Examiner does not point to any
specific disclosure in the cited paragraphs. Instead, the Examiner describes
the operation of Appellant’s invention, and states that “[wjith this
understanding in mind, one can see that Joyce’s system is performing in the
same manner as Appellant’s system.” Ans. 7.
Appellant argues Joyce does not disclose the disputed limitation
because Joyce provides no discussion of the manner in which the brake force
booster is operated. App. Br. 13. Appellant further argues that Joyce is
designed such that the braking force in the master cylinder remains relatively
invariant. Id. According to Appellant, “[t]he brake system of Joyce only
compensates for the regenerative brake system by operations of valves 50,
46, 74, and 78 and the springs in the combination device 14.” Id. (citing
Joyce 126).
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Application 13/386,427
We are persuaded by Appellant’s arguments. Anticipation is a test of
strict identity. Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1296
(Fed. Cir. 2002). That is, to meet the strict identity test for anticipation, all
elements must be disclosed in the same way as they are arranged or
combined in the claim. Therasense, Inc. v. Becton, Dickinson & Co., 593
F.3d 1325, 1332 (Fed. Cir. 2010). Here, Joyce provides little, if any,
discussion of the operations of its brake force booster. In fact, Joyce makes
only a single reference to a brake booster, disclosing that braking demand
may be determined by “measuring brake booster stroke with sensor 64 and
by measuring primary brake system pressure with pressure sensor 68.”
Joyce 126. This single passing reference to the brake booster is insufficient
to support anticipation. We also agree with Appellant that Joyce does not
change the amount of braking force generated by the conventional braking
system in response to changes in the torque generated by the regenerative
system. Rather, Joyce relies on valves and springs to modulate the braking
force in the conventional system only after that force has been generated by
the brake booster. Joyce 23—24. Joyce provides no indication the
operation of the brake booster plays any role in this modulation. As such,
Joyce does not disclose an operation identical to that recited in Appellant’s
claim 20.
For these reasons, we do not sustain the rejection of claim 20 and its
dependent claims 21—25 under 35 U.S.C. § 102(a).
Third Issue
Independent claims 13 and 30 each recite a “first switching valve
disposed in a first hydraulic connection between an outlet of the master
cylinder and the first chamber.” App. Br. 27, 33 (Claims Appendix). The
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Examiner rejects (1) claim 13 as obvious over Joyce and Warwick (Non-
Final Act. 8—9) and (2) claim 30 as obvious over Joyce (Non-Final Act. 7).
In rejecting these claims as obvious, the Examiner acknowledges Joyce does
not expressly disclose “a first switching valve disposed in a first hydraulic
connection between an outlet of the master cylinder and the first chamber.”
Non-Final Act. 7. Instead, the Examiner finds “Joyce shows the first orifice
in the passage 70 between the master cylinder and the accumulator; and
further teaches that valve 50 could be replaced by an orifice in paragraph
[0027].” Non-Final Act. 7. The Examiner further finds a person of ordinary
skill in the art would have understood that orifices and controllable valves
are interchangeable in brake systems and allow for accommodation of
different braking preferences and material costs. Id. For this reason, the
Examiner concludes a person of ordinary skill in the art would have found it
obvious to replace the orifice in Joyce with a controllable valve.2 Id.
Appellant contends the Examiner has not provided an adequate
rationale in support of the proposed modification of Joyce.3 App. Br. 18.
More specifically, Appellant argues “in the operating states of Joyce, the
connection between the master cylinder and the accumulator is never
closed.” App. Br. 18 (citing Joyce 126). Thus, according to Appellant, if a
valve were placed between the master cylinder and accumulator, the valve
would never be closed. Id. Because the valve would never actually be used
to disconnect the master cylinder from the signal chamber, Appellant
2 The Examiner makes a similar finding with respect to claim 13. Non-Final
Act. 10.
3 Appellant presents this argument in connection with dependent claim 22,
and later applies this argument claim 30. See App. Br. 18 (claim 22); 19
(indicating same argument applies to claim 30).
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contends the valve would be entirely superfluous. As such, Appellant avers
“one of ordinary skill in the art would not have been motivated to modify
Joyce to include a superfluous valve upstream of the first chamber of the
hydraulic accumulator device.” App. Br. 19.
We are persuaded by Appellant’s argument. While the orifice in
Joyce and the control valve can be interchangeable and used to
accommodate different braking preferences and material costs, the Examiner
must still provide a reason why the particular modification proposed in the
rejection would have been desirable or otherwise obvious to a person of
ordinary skill. Here, Appellant provides a specific explanation why the
control valve and orifice would not be interchangeable in the location
proposed by the Examiner—namely that the upstream valve would never
close and therefore would be superfluous—and the Examiner does not
provide identify or otherwise explain any reason why the valve in Joyce’s
system would close if the proposed modification were effected. As such,
Appellant’s argument stands unrebutted in the record, and we find it
sufficient to overcome the Examiner’s rationale for modifying Joyce.
Accordingly, we do not sustain the rejections of independent claims 13 and
30 and their respective dependent claims 14—16, 18, and 31—35 under 35
U.S.C. § 103(a).
DECISION
We reverse the Examiner’s rejections of claims 13—16, 18, 20-25, and
30-35.
REVERSED
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