Ex Parte MAIER et alDownload PDFPatent Trial and Appeal BoardJun 26, 201713609694 (P.T.A.B. Jun. 26, 2017) Copy Citation 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). 2 Appeal 2016-003494 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. 3 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 4 Appeal 2016-003494 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. 5 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. 6 Copy with citationCopy as parenthetical citation