Ex Parte POHLMANN et al

Patent Trials and Appeals Board

Apr 15, 2019

14397383 - (D) (P.T.A.B. Apr. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/397,383 10/27/2014
24972 7590 04/17/2019
NORTON ROSE FULBRIGHT US LLP
1301 Avenue of the Americas
NEW YORK, NY 10019-6022
FIRST NAMED INVENTOR
Jens POHLMANN
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.
BOSC.P8797US/1000199660 7284
EXAMINER
TRAN,LONGT
ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
04/17/2019 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 JENS POHLMANN, THILO BOLZ, RALPH ITTLINGER,
GOEKHAN GUENGOER, and THOMAS FROIHOFER
Appeal2018-001073
Application 14/397 ,383 1
Technology Center 3700
Before MICHAEL C. ASTORINO, BRUCE T. WIEDER, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 14--49. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Robert Bosch GmbH.
(Appeal Br. 1.)
Appeal2018-001073
Application 14/397,383
CLAIMED SUBJECT MATTER
Appellants' "invention relates to a system, especially a fuel injection
system, for the high-pressure injection in internal combustion engines,
having a fuel distributor and multiple fuel injectors." (Spec. 1, 11. 2--4. 2)
Claims 14, 28, and 42 are the independent claims on appeal. Claim 14
is illustrative. It recites:
14. A system, comprising:
a fuel distributor; and
a plurality of fuel injectors, each fuel injector being
situated on an associated cup of the fuel distributor, and at least
one of the fuel injectors being fastened to the associated cup by
a holding element, wherein:
the holding element has an at least substantially
straight first leg and an at least substantially straight
second leg,
the cup has at least one recess extending through a
wall of the cup,
the first leg and the second leg are at least partially
routed through the at least one recess, and
a connection sleeve of the fuel injector has a collar
that is braced on the first leg of the holding element and
on the second leg of the holding element such that the first
leg and the second leg are at least partially situated
between the collar and a respective inner side of the cup in
order to secure the fuel injector on the cup, wherein, with
respect to a joining direction of the holder and the cup, an
upper inner side of each leg adjoins the collar and an outer
side of each leg adjoins the inner side of the cup, wherein
the joining direction is perpendicular to a longitudinal axis
of the cup.
2 "Spec." and "Specification" refer to the Substitute Specification filed
October 27, 2014.
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Appeal2018-001073
Application 14/397,383
REJECTIONS
Claims 14--49 are rejected under 35 U.S.C. § 112, second paragraph,
as indefinite for failing to particularly point out and distinctly claim the
subject matter which the inventors regard as the invention.
Claims 14--19, 21-25, 27-33, 35-39, 41--44, and 46-49 are rejected
under 35 U.S.C. § 102(b) as anticipated by Glockler (US 4,307,693, iss.
Dec. 29, 1981). 3
Claims 20, 34, and 45 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Glockler.
Claims 26 and 40 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Glockler and Atkins (US 4,436,112, iss. Mar. 13, 1984).
ANALYSIS
The § 112. second paragraph. reiection
Claims 14--49 are rejected under§ 112, second paragraph, because
"[t]he term 'substantially straight' ... [is] a relative term which renders the
claim[ s] indefinite ... and one of ordinary skill in the art would not be
reasonably apprised of the scope of the invention." (Final Action 2-3.)
Appellants disagree and respond:
Appellants respectfully note that the phrase "substantially" is
definite because one of ordinary skill in the art would know what
was meant by "substantially straight." (See MPEP
2173.05(b)(III)(D)(citing Andrew Corp. v. Gabriel Electronics,
847 F.2d 819, 6 USPQ2d 2010 (Fed. Cir. 1988)).
3 In view of the specific rejections appearing in the Final Action at pages 3-
8, we treat the statement that "[c]laims 14 - 19, 20 - 25, and 27 - 49" are
rejected under§ 102(b) (Final Action 3) as a typographical error.
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Appeal2018-001073
Application 14/397,383
(Appeal Br. 4.) Appellants further argue that "[f]or example, Figure 2
discloses legs 5 and 6 which are substantially straight. (See MPEP
2173.05(b)(III)(D)(citingAndrew Corp. v. Gabriel Electronics, 847 F.2d
819, 6 USPQ2d 2010 (Fed. Cir. 1988))." (Reply Br. 1.) Appellants also
"note[] that the claims originally recited the term 'essentially,' which is also
the term used in the specification, but had amended the language in view of
the Examiner's rejection of this term to expedite prosecution." (Id.)
In relevant part, Andrew Corp., quoting Rosemount, Inc. v. Beckman
Instruments, Inc., 727 F.2d 1540, 1546-47 (Fed. Cir. 1984), informs us that
the court in Seattle Box Co., Inc. v. Industrial Crating & Packing, Inc., 731
F.2d 818,826 (Fed. Cir. 1984) "remarked that 'substantially equal' is a term
of degree, and that its acceptability depends on 'whether one of ordinary
skill in the art would understand what is claimed ... in light of the
specification', even if experimentation may be needed." Andrew Corp., 847
F.2d at 821 (citing W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540,
1557 (Fed. Cir. 1983)).
As Appellants note, the term "substantially straight" does not appear
in the Specification. (See Reply Br. 1; see also Spec. 1-9.) Rather, the
Specification discloses, without reference to a particular embodiment, that
"[t]o simplify the mounting of the holding element on the cup, the two at
least essentially straight legs of the holding element may also have different
lengths." (Spec. 5, 11. 5---6.) With regard to the embodiment shown in
Figure 2, the Specification uses the term "essentially straight" to describe the
legs shown. (See Spec. 8, 1. 28 -9, 1. 10.) Figures 4 and 5 show
embodiments with legs appearing as straight as those in Figure 2, although
the Specification does not specifically describe the straightness of these legs.
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Appeal2018-001073
Application 14/397,383
(See id. at 8, 11. 10-19.) With regard to the embodiment shown in Figure 7,
the Specification discloses that "legs 5, 6 moreover are provided with
fixation sections 25, 26, which are bent outward in relation to axis
(longitudinal axis) 10 of cup 2." (Spec. 8, 1. 31 - 9, 1. 2.) In other words, the
legs shown in Figure 7 are bent, i.e., not substantially straight.
In view of the disclosure in the Specification that the embodiment
shown in Figure 2 has essentially ( or substantially) straight legs, and the
disclosure that the embodiment shown in Figure 7 has bent legs, i.e., legs
that are not essentially straight, we determine that the Examiner has not
sufficiently explained why "one of ordinary skill in the art would not be
reasonably apprised of the scope of the invention." (See Final Action 2-3.)
The§§ 102(b) and 103(a) re;ections
Appellants argue:
Each of independent claims 14 and 42 recite the feature of
with respect to a joining direction of the holder and the cup, an
upper inner side of each leg adjoins the collar and an outer side
of each leg adjoins the inner side of the cup, wherein the joining
direction is perpendicular to a longitudinal axis of the cup.
Nowhere do the cited references disclose or suggest this feature.
(Appeal Br. 4.)
The Examiner, however, finds:
Figure 1 of Glockler [sic] et al. teaches the legs 12 and 13 [sic,
11] that are assumed by the Examiner to be an extension of
holder 10 that passes through the cup 2 in Figure 1. In addition,
the inner side of the legs sit against the collar portion ( defined as
a groove 16), and when protruding through the cup 2, the outer
side of the legs make contact with an inner side of the cup via the
recesses 13 and 14 (see Fig 2).
(Answer 13.)
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Appeal2018-001073
Application 14/397,383
Appellants do not argue that the Examiner's finding is incorrect.
Rather, Appellants reply that even if the Examiner's finding regarding
Glockler is correct, "then the claim limitation of 'the first leg and the second
leg are at least partially situated between the collar and a respective inner
side of the cup in order to secure the fuel injector on the cup' is not disclosed
or suggested by Glockler [sic]." (Reply Br. 2.) This, Appellants argue, is
because although
the first leg and the second leg contact ( or pass through) the inner
side of the cup near the arrow labeled "Outer side of each leg
adjoining the inner side of cup 2," and the first leg and the second
leg contact ( or pass around) the collar near the arrow labeled
"Upper inner side of each leg adjoining the collar 16" ... there
is no overlap between these two locations.
(Id.) Relatedly, Appellants argue that Glockler does not disclose or suggest
"the feature [recited in independent claim 28] of the wall is circumferentially
closed except for the recesses" because "the wall of cup 2 is open near
where annular groove 16 is located." (Id.)
The Examiner provides an annotated excerpt from Figure 1 of
Glockler. It is reproduced below.
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Appeal2018-001073
Application 14/397,383
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Figure 1 of Glockler shows an embodiment of a fuel injection installation.
In the annotated excerpt shown here, only a portion of one of the injection
valves and its mounting are shown.
Figure 2 of Glockler, reproduced below, shows a sectional view of a
portion of Figure 1.
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Appeal2018-001073
Application 14/397,383
16
II,-- · 1 . 12
13.J 2""-14
Figure 2 of Glockler shows a section taken along the line II-II of Figure 1.
Figure 1 of Glockler shows a sectional view of insertion nipple 2, that
is, a cut-away view. (See Glockler Fig. 1; see also MPEP § 608.02 (showing
graphic drawing symbols).) Figure 2 of Glockler shows that insertion
nipple 2 is shaped circumferentially.
Figure 2 of Glockler also shows that at least a part, i.e., an inner
portion, of each of arms 11 and 12 sits between groove 16 and an inner side
of insertion nipple 2. In other words, Glockler shows "the first leg and the
second leg are at least partially situated between the collar and a respective
inner side of the cup," as recited in claim 14. Therefore, we do not find
Appellants' argument that this limitation "is not disclosed or suggested by
Glockler [sic]" (see Reply Br. 2), to be persuasive of error. Independent
claim 42 contains similar language and is argued with independent claim 14.
It falls with claim 14. See 37 C.F.R. § 4I.37(c)(l)(iv). Dependent claims
15-27 and 43--49 are not separately argued and fall with claims 14 and 42,
respectively. See id.
With regard to independent claim 28, as noted above, Figure 1 of
Glockler shows insertion nipple 2 in section. Figure 2 of Glockler shows
that insertion nipple 2 is circumferentially shaped. Therefore, we do not find
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Appeal2018-001073
Application 14/397,383
Appellants' argument that Glockler does not disclose or suggest "the feature
of the wall is circumferentially closed except for the recesses," (Reply Br. 2
( emphasis omitted)) to be persuasive of error. Dependent claims 29--41 are
not separately argued and fall with claim 28.
DECISION
The Examiner's rejection of claims 14--49 under 35 U.S.C. § 112,
second paragraph, is reversed.
The Examiner's rejection of claims 14--19, 21-25, 27-33, 35-39, 41-
44, and 46-49 under 35 U.S.C. § 102(b) is affirmed.
The Examiner's rejections of claims 20, 26, 34, 40, and 45 under
35 U.S.C. § 103(a) are affirmed.
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
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