Ex Parte MAIER et al

Patent Trial and Appeal Board

Jun 26, 2017

13609694 (P.T.A.B. Jun. 26, 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.
13/609,694 09/11/2012 Martin MAIER BOSC.P7528US/11603111 2961
24972 7590 06/28/2017
NORTON ROSE FULBRIGHT US LLP
1301 Avenue of the Americas
NEW YORK, NY 10019-6022
EXAMINER
SCHARPF, SUSAN E
ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
06/28/2017 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):
nyipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN MAIER, MARTIN GOEHNER,
MARKUS FEIGL, HELMUT SCHNEIDER,
NIKOLAUS HAUTMANN, DIETMAR UHLENBROCK, and
HOLGER UHRIG
Appeal 2016-003494
Application 13/609,694
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Martin Maier et al. (Appellants)1 appeal under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1, 2, and 6—12. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is Robert Bosch GmbH.
Appeal Br. 1.
Appeal 2016-003494
Application 13/609,694
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is the sole independent claim and is
representative of the claimed subject matter.
1. A fuel distributor, comprising:
a distributor pipe having a longitudinal axis;
a first holder; and
at least one second holder; wherein the first holder and
the second holder are situated at the distributor pipe axially set
apart from one another with respect to the longitudinal axis;
wherein at least one of the first and second holders is
configured to allow axial length compensation, and wherein at
least one of the first and second holders is flexurally soft and
configured to be displaced in at least an axial direction
corresponding to the longitudinal axis.
REJECTIONS
I. Claims 1, 6, and 7 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Merchant (US 7,469,680 B2, iss. Dec. 30, 2008).
II. Claim 2 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Merchant and Lutzer (US 6,854,769 B2, iss.
Feb. 15,2005).
III. Claim 8 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Merchant and Walsh (US 5,713,323, iss. Feb.
3, 1998).
IV. Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Merchant and Niskin (US 4,091,676, iss.
May 30, 1978).
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Application 13/609,694
V. Claims 11 and 12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Merchant and Bettinger (US 2004/0094955
Al, pub. May 20, 2004).
DISCUSSION
Independent claim 1 recites, in relevant part, “at least one of the first
and second holders is flexurally soft and configured to be displaced in at
least an axial direction corresponding to the longitudinal axis.” Appeal Br.
(Claims App. 1). Appellants argue that Merchant fails to disclose such a
limitation. See id. at 3—5; Reply Br. 1—3. In particular, Appellants assert
that Merchant’s “retention devices 52 lack any capacity for flexural softness
or displacement along the axis of manifold 34.” Appeal Br. 4. According to
Appellants, “no evidence exists that retention devices 52 are made of a
flexurally soft material or that they are capable of axial displacement.” Id.
For the reasons that follow, Appellants’ argument is persuasive of error in
the Examiner’s rejection.
The Examiner finds that Merchant discloses that “at least one of the
first and second holders is flexurally soft and configured to be displaced in at
least an axial direction corresponding to the longitudinal axis [of the
distributor pipe].” Final Act. 3 (citing Merchant, col. 4,11. 47—56). The
Examiner clarifies in the Answer that Merchant’s retention devices 52 (i.e.,
holders) “are narrower in the longitudinal direction (as shown in figure 1,
elements 52) than in the radial directions (as shown in figure 2, element
52).” Ans. 5. According to the Examiner, the “geometric shape [of
retention devices 52] is naturally flexurally soft in its smallest dimension
which aligns with the longitudinal axis of the fuel distributor.” Id. at 6.
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Appeal 2016-003494
Application 13/609,694
Appellants contend that “flexural softness is not a quality that
necessarily follows from geometric shape.” Appeal Br. 4. Although
flexural softness may not necessarily follow from geometric shape,
Appellants’ disclosure on pages 9 and 10 of the Specification appears to
suggest a relationship between the geometry of a holder and its flexural
softness. See Spec. 9,11. 15—16, 20—22, 28—31 (disclosing that sleeve 35 is
“comparatively flexible in an axial direction . . . and comparatively rigid in a
radial direction,” “has comparatively little material in [the] axial direction . .
., but a comparatively large amount of material in [the] radial direction,”
and “only provides a little material in [the] axial direction ... in order [to be]
relatively flexible in [the] axial direction”); id. at 10,1. 6 (referring to
“axially flexible or soft holders,” suggesting that Appellants may be using
“flexible” and “flexurally soft” somewhat interchangeably). However, even
assuming that a narrower dimension in the axial direction than in the radial
direction necessarily renders the holder (Merchant’s retention device 52)
“flexurally soft” as recited in claim 1, the Examiner’s finding in this regard
appears to be based upon a speculative assumption regarding the geometry
of the retention devices 52 based on Figures 1 and 2 of Merchant. As noted
by Appellants, Merchant’s “drawings are never characterized as being to
scale.” Reply Br. 2; see Hockerson-Halberstadt, Inc. v. Avia Group Inti,
Inc., 222 F.3d 951, 956 (Fed. Cir. 2000) (holding that where a patent was
devoid of any indication that the drawings were to scale, the drawings could
not be relied upon to construe whether the term “central longitudinal
groove” required that the width of the groove be less than the combined
width of the fins). In fact, Merchant describes Figure 1 as “a schematic and
diagrammatic illustration of an exemplary disclosed power system,” rather
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Application 13/609,694
than a depiction of structural details of retention devices 52. Merchant, col.
2,11. 13—14 (emphasis added). Further, there is no disclosure in “Merchant
that would lead one of ordinary skill in the art to understand that the material
of retention devices 52 is flexurally soft.” Appeal Br. 4. Thus, the
Examiner’s interpretation of retention devices 52 as being flexurally soft
lacks adequate evidentiary support.
Moreover, Merchant discloses that “retention devices 52 may serve to
prevent common manifold 34 from moving away from fuel tubes 50 in only
the axial direction of fuel tubes 50,” and “[fjuel tubes 50 may constrain
common manifold 34 in the remaining translational directions.” Merchant,
col. 4,11. 54—58. According to Merchant, “once female conical seating
surface 56 is engaged with male spherical sealing surface 58, common
manifold 34 may be prevented . . . from translational movement in either
axial direction of common manifold 34.” Id., 11. 59-64. In other words,
Merchant discloses that retention devices 52 prevent displacement of
common manifold 34 in an axial direction corresponding to the axis of fuel
tubes 50, and fuel tubes 50 prevent displacement of common manifold 34 in
an axial direction corresponding to the axis of common manifold 34. We
discern no disclosure in Merchant as to retention devices 52 being capable of
displacement in the axial direction of common manifold 34. Thus, the
Examiner’s finding that Merchant discloses at least one holder that is
“flexurally soft and configured to be displaced in at least an axial direction
corresponding to the longitudinal axis [of the distributor pipe]” is not
supported by a preponderance of the evidence.
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Appeal 2016-003494
Application 13/609,694
Accordingly, for at least the above reasons, we do not sustain the
rejection of independent claim 1, or of claims 6 and 7 depending therefrom,
under 35 U.S.C. § 102(b) as anticipated by Merchant.
In the rejections of claims 2 and 8—12, which depend from claim 1,
under 35 U.S.C. § 103(a), the Examiner does not rely on Lutzer, Walsh,
Niskin, or Bettinger for any teaching, or articulate any additional findings or
reasoning, that would remedy the aforementioned deficiency in the
disclosure of Merchant.2 See Final Act. 3—5. Accordingly, we do not
sustain the rejections of claims 2 and 8—12 under 35 U.S.C. § 103(a).
DECISION
The Examiner’s decision rejecting claims 1, 2, and 6—12 is reversed.
REVERSED
2 Regarding the Examiner’s stated position, in the Response to Argument
section of the Answer, that Walsh’s “mounts also include biasing member
78, which is made of an ‘elastomeric material’ and would allow for
expansion and movement of the fuel distributor in the holder” (Ans. 6 (citing
Walsh, col. 4,1. 66—col. 5,1. 12)), this disclosure of Walsh does not
overcome the deficiency of Merchant. Namely, to the extent that Walsh’s
elastomeric biasing member 78 could allow Merchant’s distributor pipe
(common manifold 34) to expand and move in the holder (retention device
52), we fail to see how biasing member 78 would configure the holder itself
to be displaced in a direction corresponding to the axis of the distributor
pipe, as called for in claim 1.
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