Jan Hodgson et al.Download PDFPatent Trials and Appeals BoardJul 30, 201913487557 - (D) (P.T.A.B. Jul. 30, 2019) 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. 13/487,557 06/04/2012 JAN HODGSON EM-85766 2747 24131 7590 07/30/2019 LERNER GREENBERG STEMER LLP P O BOX 2480 HOLLYWOOD, FL 33022-2480 EXAMINER LEE, BRANDON DONGPA ART UNIT PAPER NUMBER 3748 NOTIFICATION DATE DELIVERY MODE 07/30/2019 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): boxoa@patentusa.com docket@patentusa.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte JAN HODGSON and SVEN SCHEPERS1 ____________________ Appeal 2019-000617 Application 13/487,557 Technology Center 3700 ____________________ Before: JILL D. HILL, LEE L. STEPINA, and ARTHUR M. PESLAK, Administrative Patent Judges. STEPINA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Jan Hodgson and Sven Schepers (“Appellants”) appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1, 2, 7, 9, 12, and 16–18.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Appellants identify Emitec Gesellschaft fuer Emissionstechnologie mbH as the real party in interest. Br. 1. 2 Claims 3, 11, and 13–15 are withdrawn from consideration. Non-Final Act. 1. Appeal 2019-000617 Application 13/487,557 2 CLAIMED SUBJECT MATTER Appellants’ invention relates to a delivery device for delivering a reducing agent to an exhaust gas treatment device of an internal combustion engine. Spec. ¶ 2. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A delivery device for delivering a reducing agent from a reducing agent tank to an exhaust gas treatment device of an internal combustion engine, the delivery device comprising: a rigid metal reducing agent line having a rigid metal wall; a delivery pump which operates in a pulsed manner disposed in said reducing agent line, having a fixing and defining a delivery direction from the reducing agent tank to the exhaust gas treatment device; and at least one vibration compensating device being an inflow compensating device disposed upstream of said delivery pump in said delivery direction, said inflow compensating device including an O-ring seal in said rigid metal reducing agent line, said O-ring seal interrupting said rigid metal reducing agent line for reducing a transmission of structure borne noise via said rigid metal wall of said rigid metal reducing agent line. Br. 11. REJECTIONS I. Claims 1, 2, 7, 9, 12, and 16–18 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. II. Claims 1, 2, 7, 9, 12, and 16–18 are rejected under 35 U.S.C. § 112, second paragraph, as being incomplete for omitting essential elements. In addition to these two grounds of rejection, the Examiner objects to the drawings under 37 C.F.R. § l.83(a). Appeal 2019-000617 Application 13/487,557 3 ANALYSIS Rejection I, Written Description In rejecting the claims as failing to comply with the written description requirement, the Examiner finds that the Specification and drawings “fail to describe or show how the metal lines (5) are secured together with said O-ring seal in between.” Non-Final Act. 5; see also Ans. 2–4. Specifically, the Examiner notes that Figure 1 shows O-ring seal 17 between reducing agent lines 5 without any support structures securing the O-ring and lines 5 together. Id. Appellants argue that the Specification provides support for the claimed O-ring in the reducing line. Br. 5 (citing Spec. ¶¶ 18 and 27). “[T]he test for sufficiency [of written description] is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (emphasis added). Claim 1 recites, in part, an “inflow compensating device including an O-ring seal in said rigid metal reducing agent line, said O-ring seal interrupting said rigid metal reducing agent line.” Br. 11 (Claims App.). The Specification discloses that “[t]hrough the use of an O-ring seal in the reducing agent line, it is possible to achieve a fluid tight interruption in the reducing agent line, particularly in the case of a rigid metal reducing agent line.” Spec. ¶ 18. As such, the Specification reasonably conveys to those skilled in the art that the inventor had possession of an O-ring seal in a reducing line that interrupts the reducing line. Under the circumstances, because the claims do not recite a support Appeal 2019-000617 Application 13/487,557 4 structure for securing the O-ring and reducing lines together, a written description rejection for lacking disclosure of this feature is improper. We do not sustain the Examiner’s rejection of claims 1, 2, 7, 9, 12, and 16–18 as failing to comply with the written description requirement. Rejection II, Omitting Essential Elements The Examiner finds that “a securing structure for holding the claimed O-ring in place between the metal lines,” is an essential element that is omitted from the claims. Non-Final Act. 6 (citing MPEP § 2172.01). According to the Examiner, a “securing structure is critical/essential” because without one, the claimed device “would fall apart under the weight of the metal line and the transmission of structural borne noise (vibrations).” Id. Appellants argue that the Specification does not disclose that such a securing structure is critical. Br. 9. Appellants contend, moreover, that the limitation of an “O-ring seal interrupting said rigid metal reducing agent line for reducing a transmission of structure borne noise via said rigid metal wall of said rigid metal reducing agent line,” explicitly provides the required structural relationship in functional terms. Id. The Examiner acknowledges the Specification does not disclose that a securing structure is critical/essential, but then reiterates “the [S]pecification and claims of this application fail to disclose a securing structure capable of ‘reducing a transmission of structure born noise.’” Ans. 4. MPEP § 2172.01 states, in part, “a claim which fails to interrelate essential elements of the invention as defined by applicant(s) in the specification may be rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. Appeal 2019-000617 Application 13/487,557 5 112, second paragraph, for failure to point out and distinctly claim the invention.” (Emphasis added). As Appellants correctly argue and as the Examiner acknowledges (see Ans. 4), the Specification does not disclose that a securing structure for the O-ring is essential/critical. Thus, the Examiner’s conclusion that “a securing structure for holding the claimed O- ring in place between the metal lines,” is an essential element that is omitted from the claims is unsupported by the record, and, therefore, not in accordance with MPEP § 2172.01. We do not sustain the Examiner’s rejection of claims 1, 2, 7, 9, 12, and 16–18 as indefinite for omitting essential elements. Drawing Objection The Examiner’s drawing objection is based on the grounds that “[t]he drawings must show every feature of the invention specified in the claims.” Non-Final Act. 2–3. Therefore, according to the Examiner claim 1 must show how the two portions of the line remain structurally intact because any reasonable person would not expect an O-ring to remain in contact to a metal line without some sort of securing structure. Id. Ordinarily, an objection is reviewable by petition under 37 C.F.R. § 1.181, and a rejection is appealable to the Patent Trial and Appeal Board. When the issue of new matter presented is the subject of both an objection and a rejection, the issue is appealable. See Manual of Patent Examining Procedure § 608.04(c) (9th ed., Rev. 07.2015, Nov. 2015). In this case, Figure 1 of the subject application illustrates O-ring seal 17 between two portions of reducing agent line 5. See Spec. ¶¶ 18, 56, Fig. 1. The claims do not recite how the two portions of the line remain Appeal 2019-000617 Application 13/487,557 6 structurally intact, and the Specification does not indicate that this feature is essential. Thus, the Examiner’s objection, requiring that the drawings depict this unclaimed feature, appears to be based on the same errors leading to the above-noted rejections under 35 U.S.C. § 112 first and second paragraphs. To the extent that the objections to the drawings and Specification in the Non-Final Office Action turn on the same issue(s) as the rejections under 35 U.S.C. § 112 first and second paragraphs, our decision with respect to the rejections is dispositive as to the corresponding drawing objection. DECISION The Examiner’s decision rejecting claims 1, 2, 7, 9, 12, and 16–18 under 35 U.S.C. § 112, first and second paragraphs, is REVERSED. REVERSED Copy with citationCopy as parenthetical citation