Ex Parte Pilgram et al

Patent Trial and Appeal Board

Apr 28, 2016

12001253 (P.T.A.B. Apr. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/001,253 12/10/2007
7590
Richard L Mayer, Esq,
Kenyon & Kenyon
One Broadway
New York, NY 10004
04/29/2016
FIRST NAMED INVENTOR
Guido Pilgram
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
10191/2903A 2890
EXAMINER
KIM, CHRISTOPHER S
ART UNIT PAPER NUMBER
3752
MAIL DATE DELIVERY MODE
04/29/2016 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 GUIDO PILGRAM and JOERG HEYSE
Appeal2014-004738
Application 12/001,253 1
Technology Center 3700
Before JOHN C. KERINS, STEP AN ST AI CO VICI, and LEE L. STEPINA,
Administrative Patent Judges.
ST AI CO VICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Guido Pilgram and Joerg Heyse (Appellants) seek our review under
35 U.S.C. § 134 of the Examiner's decision rejecting claims 1, 3, and 82.
We have jurisdiction under 35 U.S.C. § 6(b).
According to Appellants, the real party in interest is Robert Bosch
GmbH. Appeal Br. 1 (filed November 25, 2013).
2 Claims 4--7 have been withdrawn from consideration. Non-Final Act.
1 (mailed May 24, 2013). Claims 2 and 9 have been canceled. Appellant's
Response 2-3 (filed May 10, 2010).
Appeal2014-004738
Application 12/001,253
We REVERSE.
survnvIARY OF DECISION
INVENTION
Appellants' invention relates to a fuel injector. Spec. 1, 1. 21.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. A fuel injector for a fuel-injection system of an internal
combustion engine, comprising:
a valve-seat member having a convexly rounded end face
forming a discharge-side part of the fuel injector;
a valve-seat surface situated at the valve-seat member;
a valve-closure member which, together with the valve-
seat surface, forms a sealing seat;
an energizable actuator;
a valve needle in operative connection with the actuator;
a restoring spring acting upon the valve needle in a
closing direction to actuate the valve-closure member; and
at least two spray-discharge orifices situated in the
convexly rounded end face of the valve-seat member;
wherein the orifices are at least partially surrounded by a
circular wall axially projecting from the convexly rounded end
face toward the closing direction.
THE REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 1, 3, and 8 under 35 U.S.C. § 102(b) as
being anticipated by Teiwes (US 6, 131,826, iss. Oct. 17, 2000).
II. The Examiner rejected claims 1, 3, and 8 on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1 and 2 of Pilgram (US 7,306,173 B2, iss. Dec. 11, 2007).
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Appeal2014-004738
Application 12/001,253
ANALYSIS
Rejection I
The Examiner finds that Teiwes discloses a fuel injector including,
inter alia, a "valve-seat member 14 having a convexly rounded end face (at
leader line for reference number 15 and 19); [and] a circular wall 25 situated
at the convexly rounded end face (at leader line for reference number 15 and
19)." Non-Final Act. 3. The Examiner take the position that "[t]he entire
three dimensional outer surface of valve seat member 14 is convexly
rounded," and that "[t]he circular wall 25 starts at bend section 24 of the
convexly rounded end face." Id. In the Answer, the Examiner points out
that "[c]laim 1 does not limit the entire circular wall to only project in the
closing direction starting from the convexly rounded end face," and "does
not preclude Teiwes' bend 24." Ans. 4. As such, the Examiner maintains
that "because circular wall 25 is attached to the convexly rounded end face
by bend 24," circular wall 25 projects from the convexly rounded end face
as recited. Id.
Appellants argue that "only a central portion of valve seat member 14
between, and not including, bend sections 24 may be considered to
constitute a convexly rounded end face." Appeal Br. 3. Appellants thus
assert that "the convex area of perforated disk 15 that includes spray holes
18 clearly does not include a circular wall axially projecting from the
convexly rounded end face." Id. (citing Teiwes, col. 3, 11. 1-9; Figs. 1, 3,
and 4). Appellants argue that moreover, "[ e ]ven if attachment section 25 (of
Teiwes) is considered to constitute a circular wall, the attachment section 25
does not axially project from the convexly rounded end face." Id.
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Appeal2014-004738
Application 12/001,253
Although we appreciate that the entirety of Teiwes's valve seat 14
could be considered convexly rounded, nonetheless, Teiwes' s circular wall
25 does not axially project from a convexly rounded end face, because wall
25 is a continuation of Teiwes's guide section 19. Specifically, Teiwes
states:
As can be seen in FIG. 1, flat, deformable workpiece 16 is bent,
in the embodiment at a 180° angle, in a bend section 24, so that,
in the direction of a circumferential end 26 of workpiece 16, a
radially outer attachment section 25 adjacent to bend section 24
extends parallel to the direction of flow of the medium passing
through fuel injection valve 1.
Teiwes, col. 3, 11. 25-30. As such, Teiwes's bend section 24 continues or
extends from workpiece 16 (see Reply Br. 3), and does not project from an
end face of workpiece 16.
An ordinary and customary meaning of the term "project" is "to jut
out; protrude." Merriam-Webster's Collegiate Dictionary (I Ith ed. 2005).
Such a definition is consistent with Appellants' Specification, which
describes in a first embodiment that end face 3 6 (of valve-seat member 5)
faces the combustion chamber, and is provided with a circular wall 37 that is
designed in such a way that it projects beyond each spray-discharge orifice 7
in the axial direction, in this way providing a shield for each spray-discharge
orifice 7 from the mixture flows circulating in the combustion chamber.
Spec. 4, 11. 11-15; Fig. 1. Hence, Appellants' Specification describes a wall
that protrudes from a face, namely, an end face of the valve seat member in
an axial direction. As such, although we appreciate the Examiner's position
that Teiwes's polyhedron guide section 19 is part of valve seat member 14
and that "[t]he entire three dimensional outer surface of valve seat member
14 is convexly rounded," we do not agree with the Examiner that "circular
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Appeal2014-004738
Application 12/001,253
wall 25 (including bend 24) axially project[s] from the convexly rounded
end face toward the closing direction," as called for by claim 1.
Therefore, for the foregoing reasons, we do not sustain the rejection
under 35 U.S.C. § 102(b) of claim 1, and of claims 3 and 8 depending from
claim 1, as anticipated by Teiwes.
Rejection II
The rejection of claims 1, 3 and 8 on the ground of obviousness-type
double patenting as unpatentable over claims 1 and 2 of Pilgram is not
contested by Appellants. See Appeal Br. 4. Instead, Appellants represent
that they "intend to submit a terminal disclaimer at the conclusion of this
appeal." Id. Accordingly, based on this representation, we do not reach the
merits of Rejection II.
SUMMARY
The decision of the Examiner to reject claims 1, 3, and 8 as
anticipated by Teiwes is reversed.
REVERSED
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