HOERBIGER KOMPRESSORTECHNIK HOLDING GMBH

Patent Trials and Appeals BoardJun 7, 2021

2020003769 (P.T.A.B. Jun. 7, 2021)

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. 14/482,532 09/10/2014 Bernhard SPIEGL 66374-330 4348 25269 7590 06/07/2021 DYKEMA GOSSETT PLLC 1301 K STREET, NW Suite 1100 West WASHINGTON, DC 20005 EXAMINER DANIELS, MATTHEW J ART UNIT PAPER NUMBER 1742 NOTIFICATION DATE DELIVERY MODE 06/07/2021 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): patents@dykema.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BERNHARD SPIEGL and MARIAN JANKO Appeal 2020-003769 Application 14/482,532 Technology Center 1700 Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and DONNA M. PRAISS, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 16–21. See Final Act. 2, 4. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Hoerbiger Kompressortechnik Holding GmbH. Appeal Br. 4. Appeal 2020-003769 Application 14/482,532 2 CLAIMED SUBJECT MATTER Claim 16, reproduced below, is illustrative of the claimed subject matter: 16. A sealing plate made of plastic containing reinforcing fibers, said sealing plate comprising a disc-shaped member having a plurality of concentric, circumferentially-spaced openings that divide the disc-shaped member into a plurality of radially-spaced rings and a plurality of radially-extending webs, the webs dividing the rings into a plurality of ring sections, wherein the sealing plate has a sealing side which is formed to cooperate with a valve plate, and wherein a respective weld line extends obliquely to a circumferential tangent of each respective ring section, each weld line being penetrated by reinforcing fibers. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Stagg US 2007/0104581 A1 May 10, 2007 Spiegl US 2008/0149196 A1 June 26, 2008 Lagler US 2012/0152379 A1 June 21, 2012 REJECTIONS Claims 16–20 are rejected under 35 U.S.C. § 103 as being unpatentable over Spiegl and Stagg. Final Act. 2. Claim 21 is rejected under 35 U.S.C. § 103 as being unpatentable over Spiegl, Stagg, and Lagler. Final Act. 4. Appeal 2020-003769 Application 14/482,532 3 OPINION Upon consideration of the evidence relied upon in this appeal and each of Appellant’s contentions as set forth in the Appeal Brief and the Reply Brief, we determine that Appellant has not identified reversible error in the Examiner’s rejections (See generally Ans.). In re Jung, 637 F.3d 1356, 1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of requiring Appellant(s) to identify the alleged error in the Examiner’s rejection). We sustain the rejection for the reasons expressed by the Examiner in the Final Office Action and the Answer. We add the following primarily for emphasis. Appellant argues that the Examiner has not established that the sealing/synchronizing plate 7 of Spiegl is “formed to cooperate with a valve plate” as recited in claim 16 (Appeal Br. 8–9; Reply Br. 2–3). Appellant also argues that Stagg does not teach or suggest that the weld line is “penetrated by reinforcement fibers” as recited in claim 16, and that such a result is not inherent (Appeal Br. 10–11; Reply Br. 3–4). Appellant contends that Spiegl and Stagg “appear to be in different fields of endeavor” such that the motivation to combine is “improper” (Appeal Br. 13). These arguments are not persuasive of reversible error in the Examiner’s rejection for reasons given by the Examiner (Ans. 4–5). Notably, it is well established that when there is a reason to conclude that the structure of the prior art is capable of performing the claimed function, the burden shifts to the applicant to show that the claimed function patentably distinguishes the claimed structure from the prior art structure. See, e.g., In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Appellant’s contention that the Examiner’s position is improper because no structural Appeal 2020-003769 Application 14/482,532 4 relationship of the plate 7 with a sealing plate is taught in Spiegl appears misdirected, since the Examiner’s position was premised on the plate of Spiegl being capable of cooperation with a valve plate (Ans. 3–4). Appellant has not provided any persuasive reasoning or credible evidence to refute the Examiner’s determination that Spiegl’s plate 7 as denominated by the Examiner would have been capable of cooperating with a valve plate (see generally Ans.). Attorney’s arguments in a brief cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).2 Likewise, Appellant has not provided any persuasive reasoning or credible evidence to refute the Examiner’s reasonable determination that the method taught in Stagg would have resulted in at least some reinforcing fibers penetrating the oblique weld/meld line (Ans. 5 (the Examiner aptly points out that Stagg teaches that failure typically occurs along a planar/straight meld line and the intermixing at the inventive oblique meld/weld line with improved strength of Stagg means that at least some reinforcing fibers will penetrate the oblique meld/weld line). Finally, Appellant’s argument that there is no reason to modify (i.e., manufacture) Spiegl’s plate 7 with Stagg’s method since these references appear to be in different fields of endeavor3 does not take into account the 2 Furthermore, Appellant has not directed us to any limiting definition of “cooperate with” or “valve plate”. Spiegl teaches that plate 7 is used in an annular valve and thus one could reasonably infer that it does indeed “cooperate with” a “valve plate” (e.g., any one of valve seat 3, valve guard 2, or separating plate 6). 3 We agree with the Examiner that both references pertain to fiber-reinforced molded parts (Final Act. 7), and furthermore that Stagg is pertinent to the problem faced by the inventor/Appellant (id.). Appeal 2020-003769 Application 14/482,532 5 applied prior art as a whole and the inferences one of ordinary skill in the art would have made therefrom. These arguments are not sufficient to overcome the Examiner’s position that one of ordinary skill, using no more than ordinary creativity, would have used the known feature (as exemplified in Stagg) of an oblique weld/meld line when injection molding a reinforced plastic plate to enhance the strength and durability of Spiegl’s reinforced plastic plate 7. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 416 (As the Supreme Court has noted, “[t]he combination of familiar elements [or steps] according to known methods is likely to be obvious when it does no more than yield predictable results.”). Appellant has not come forward with adequate evidence that the Examiner erred in characterizing the references or in concluding that the claimed combination of familiar elements for known purposes would have been obvious. Ball Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (Under the flexible inquiry set forth by the Supreme Court, the PTO must take account of the “inferences and creative steps,” or even routine steps, that an ordinary artisan would employ). Accordingly, the Examiner’s § 103 rejections are affirmed with respect to all of the claims on appeal. CONCLUSION The Examiner’s rejections are AFFIRMED. Appeal 2020-003769 Application 14/482,532 6 DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 16–20 103 Spiegl, Stagg 16–20 21 103 Spiegl, Stagg, Lagler 21 Overall Outcome 16–21 TIME PERIOD FOR RESPONSE 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)(1)(iv). AFFIRMED