Jan Hodgson et al.

Patent Trials and Appeals Board

Jul 30, 2019

13487557 - (D) (P.T.A.B. Jul. 30, 2019)

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2 Claims 3, 11, and 13–15 are withdrawn from consideration.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).
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Application 13/487,557

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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
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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.
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Application 13/487,557

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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
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Application 13/487,557

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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