Michael Kleindl et al.

Patent Trials and Appeals Board

Jun 30, 2020

2019001286 (P.T.A.B. Jun. 30, 2020)

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.
14/410,078 12/20/2014 Michael Kleindl 2178-1133 1649
10800 7590 06/30/2020
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
EXAMINER
FREAY, CHARLES GRANT
ART UNIT PAPER NUMBER
3746
MAIL DATE DELIVERY MODE
06/30/2020 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 MICHAEL KLEINDL, TAMIM LATIF,
PETER ROPERTZ, and MATTHIAS MAESS
Appeal 2019-001286
Application 14/410,078
Technology Center 3700
Before BENJAMIN D. M. WOOD, WILLIAM A. CAPP, and
JEREMY M. PLENZLER, Administrative Patent Judges.
WOOD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s April 11, 2018 Final Action rejecting claims 1–8 and 11. See
Final Act. 1. Claim 12 has been canceled (id. at 2) and claim 9 has been
allowed (id. at 7).2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42.
Appellant identifies the real party in interest as Robert Bosch GmbH.
Appeal Br. 2.
2 Claim 10 has not expressly been rejected, canceled, or deemed allowed.
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CLAIMED SUBJECT MATTER
The claims are directed to a piston fuel pump. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A piston-type fuel pump for an internal combustion engine,
comprising:
a pump housing that includes an a [sic] cylindrical opening
along a longitudinal axis and defining a radial direction
transverse to the longitudinal axis;
a piston; and
a non-return outlet valve disposed within said opening that
includes:
a valve element; and
a guide element that is configured to guide movement of
the valve element along said longitudinal axis of said opening,
and that is at least indirectly pressed radially into the opening of
the pump housing, wherein the guide element defines a
longitudinal axis that is coaxial with said longitudinal axis of said
opening and includes;
a guide section configured to guide the valve element, the
guide section disposed outside the entire valve element in said
radial direction; and
a retention section separate from the guide section that is
at least indirectly pressed in said radial direction into the opening
of the pump housing.
REFERENCES
Name Reference Date
Parker US 2,348,567 May 9, 1944
Schroeder US 2011/0209687 A1 Sep. 1, 2011
JP ’4703 JP 63-89470 June 10, 1988
Masayasu4 JP 2000-065227 Mar. 3, 2000

3 All references to JP ’470 are to its English-language translation.
4 All references to Masayasu are to its English-language translation.
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REJECTIONS
Claims 1, 2, and 4–8 are rejected under 35 U.S.C. § 103 as
unpatentable over Masayasu and Schroeder.
Claim 3 is rejected under 35 U.S.C. § 103 as unpatentable over
Masayasu, Schroeder, and JP ’470.
Claim 11 is rejected under 35 U.S.C. § 103 as unpatentable over
Masayasu, Schroeder, and Parker.
OPINION
Claims 1, 2, and 4–8—Rejected As
Unpatentable over Masayasu and Schroeder
Appellant argues claims 1, 2, and 4–8 as a group. Appeal Br. 5–8.
We select claim 1 as representative, and decide the appeal of these claims on
the basis of claim 1 alone. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Masayasu teaches a fuel pump comprising a
pump housing and a non-return outlet valve, the non-return outlet valve
including the claimed valve element and guide element comprising a guide
section and a retention section, but does not teach that the fuel pump is a
piston-type fuel pump or that the retention section is at least indirectly
pressed in a radial direction into the opening of the pump housing. Final
Act. 4 (citing Masayasu, Figs. 3–5); Ans. 3–4 (citing Masayasu, Figs. 3, 5,
6). The Examiner further finds that Schroeder discloses a piston-type fuel
pump and the retention section of a check valve radially pressed into the
opening of the pump housing. Final Act. 4 (citing Schroeder ¶ 35, Fig. 1);
Ans. 5 (citing Schroeder ¶ 35, Figs. 1, 7). The Examiner determines that it
would have been obvious to one of ordinary skill in the art to use
Schroeder’s piston type pump as Masayasu’s generic fuel pump “as a well-
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known fuel pump capable of generating high pressures appropriate for fuel
injection.” Final Act. 5. The Examiner also determines that it would have
been obvious “to utilize press fit as a well-known method taught by
Schroeder . . . for fixing and mounting valves in fuel pump housings which
would reduce parts (such as the plate 86) and create a sealed mounting of the
valve.” Id.
We have thoroughly reviewed each of Appellant’s arguments for
patentability of claim 1, but are unpersuaded that the Examiner erred in
determining that claim 1 is unpatentable over Masayasu and Schroeder.
Accordingly, we will sustain the Examiner’s rejection for essentially those
reasons expressed in the Final Action and Answer, and we add the following
primarily for emphasis.
Appellant first argues that while “[i]t is correct that Schroeder
discloses a sleeve (104) that is press-fit into the pump housing (58), . . .
Schroeder does not disclose a press-fit retention section that is separate from
a guide section configured to guide a valve element.” Appeal Br. 5–6. This
argument is unpersuasive, however, because, as the Examiner notes,
Masayasu rather than Schroeder is relied on for teaching a guide element
comprising a guide section and a retention section separate from the guide
section. Final Act. 4; Ans. 3–4, 7.
Appellant also disputes the Examiner’s reason to combine Masayasu
and Schroeder, i.e., that one of ordinary skill in the art would have press-fit
Masayasu’s retention section 81f to avoid having to use plate 86. Appeal
Br. 6. According to Appellant:
Masayasu specifically contemplates using the plate (86) to pinch
the holder (81) and the valve seat (84) into the bore. . . . The use
of the plate allows the holder (81) and valve seat (84) to be
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readily removed and replaced as needed, particularly with the
projection (81e) available to grasp the holder (81). Masayasu
specifically contemplates that the nature of the valve can be
modified by “changing only the holder, the other components can
be reversed [so] a stop valve can be constructed.” . . . A press-
fit engagement between holder (81) and the bore in the housing
(85) makes removal difficult, if at all possible, and will
necessarily damage the wall of the bore when the holder is
removed.
Id. (citing Masayasu ¶ 24).
This argument is not persuasive of Examiner error. First, Appellant
appears to be misquoting the translation of Masayasu in the record. The
translation of paragraph 24 of Masayasu in the record states: “Since the
valve element guide part is formed in the holder holding a spring according
to the check valve concerning this invention, other parts can constitute a
check valve only from changing only a holder with the former and a same
part.” Masayasu ¶ 24.5 In any event, even if Masayasu teaches that using
plate 86 would permit easy modification of its valve into a “stop valve,” its
replacement by press-fitting the holder still would have resulted in reducing
the number of needed parts. As our reviewing court has stated, “a given
course of action often has simultaneous advantages and disadvantages, and
this does not necessarily obviate motivation to combine.” Medichem v.
Rolabo, 437 F.3d 1157, 1165 (Fed. Cir. 2006); see Winner Int'l Royalty

5 The translation of Masayasu in the record is a machine translation.
Masayasu (translation), third page. “A request by the applicant for the
examiner to obtain a human language translation should be granted if the
applicant provides evidence (e.g., a translation inconsistent with the machine
translation) showing the machine translation does not accurately represent
the document’s contents.” MPEP § 706.02 II. We have not found any
request by Appellant for the Examiner to obtain a human translation of
Masayasu.
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Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the
motivating benefit comes at the expense of another benefit, however, should
not nullify its use as a basis to modify the disclosure of one reference with
the teachings of another.”).
Appellant further argues that: (1) use of plate 86 “ensures that the
proper amount of ‘pinch’ is applied to the valve seat and holder,” whereas
“[a] press-fit is not so easily calibrated to ensure the proper amount of
‘pinch’”; and (2) using elastomeric seal ring 88 provides a better seal, and is
easier to manufacture, that a press-fit seal. Appeal Br. 7. These arguments
are based entirely on attorney argument rather than record evidence and are
therefore unpersuasive. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
Appellant also asserts that Masayasu teaches a different embodiment
that omits the “holder” but retains plate 86. Appeal Br. 7. Appellant thus
suggests that one of ordinary skill in the art would have realized that
although some parts could have been omitted, plate 86 was not one of those
parts. See id. But the rejection at issue is not based on anticipation but on
obviousness. Thus, it is not necessary for Masayasu to specifically teach the
possibility of omitting plate 86 to sustain this rejection. See In re Karlson,
311 F.2d 581, 584 (CCPA 1963) (explaining that omitting an element and its
function in a combination where the remaining elements perform the same
functions as before involves only routine skill in the art). Further, the fact
that Masayasu suggests the possibility of omitting some components does
not teach away from the possible omission of different components. A
prior-art reference that discloses alternatives does not, simply by preferring
some alternatives, “teach away” from the non-preferred alternatives. In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
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For the above reasons, we sustain the Examiner’s rejection of claim 1,
and its dependent claims 2 and 4–8, as unpatentable over Masayasu and
Schroeder.
Claim 3—Rejected as Unpatentable over Masayasu, Schroeder, and JP ’470
Claim 3 depends from claim 1 and further recites “a holding ring that
includes fuel passage openings, and that is pressed into the pump housing,
wherein the guide element is pressed into the holding ring.” The Examiner
acknowledges that the combination of Masayasu and Schroeder does not
teach the claimed holding ring, but finds that “JP ’470 discloses a check
valve having a holding ring 8 including plural passage openings 7 and the
guide 12 being pressed 11 into the holding ring.” Final Act. 6; see JP ’470,
Fig. The Examiner determines that it would have been obvious “to
substitute a holding ring and guide such as taught by JP ’470 for the
retention portion of the Masayasu . . . guide element in order to allow for the
axial exhaust of the pumped fluid.” Id.
Appellant disputes, inter alia, that prongs 11 are pressed into the
holding ring. Appellant asserts that “the prongs (11) appear to be bent
outward to retain the guide (9) on the ring (8).” Appeal Br. 8. Appellant
also disputes the Examiner’s rationale for combining JP ’470 with Masayasu
and Schroeder. Appellant contends that “there is no explanation as to why a
person of skill in the art would consider changing the radial output (4) of
Masayusa to be an axial output.” Id. at 9.
In the Answer the Examiner asserts that “the English language
translation of JP ’470 reference makes clear that the guide is pressed into the
holding ring.” Ans. 15. The Examiner relies on the following passage from
JP ’470:
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A pulp chamber 6 is formed in the interior of the pulp frame 1
and communicates with the pressure detection opening 3 and has
a closed mouth portion 5 at a rear end portion. In the rear end
opening portion 5, a lily A caught-up 8 having a cuff opening 7
is crimped and attached, and this capping 8 has a number of holes
10 for attaching a cog-shaped guide 9. By thrusting the small
diameter attaching portion 12 of the guide 9 having the crimped
portion 11 at the tip of the insertion hole and adding the
pretensioned crimp portion 11 of the small diameter attaching
portion 12 Ride the guide to cap 8.
Ans. 15 (quoting JP ’470, fifth page) (emphasis added by Examiner).
According to the Examiner, “[t]he statement that the crimp portions 11 are
‘pretensioned’ clearly teaches that these portions of the guide section 9 are
pressed radially into the holding ring 8 beforehand and by design. Not tabs
which are bent afterwards as argued by the Appellant.” Id. Appellant
responds, inter alia, that “guide (9) . . . is not ‘pressed into the holding ring’
as required by claim 3” because “guide (9) is thrust completely through the
hole so that the crimp portion (11) is outside the hole, as depicted in the
drawing of JP ’470.” Reply Br. 7.
We do not sustain this rejection. We agree with Appellant that
JP ’470’s Figure appears to show crimped portion 11 entirely outside of the
hole in ring 8 in which the small diameter attaching portion 12 of guide 9 is
disposed. Thus, crimped portion 11 cannot be radially press-fit inside the
hole. Instead, crimped portion 11 appears to be splayed outward to hold
portion 12 in place. The Examiner does not adequately explain how the
statement in JP ’470 that crimped portion 11 is “pretensioned” “clearly
teaches” that portion 12 of guide section 9 is radially press-fit into ring 8.
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Claim 11—Rejected as Unpatentable over Masayasu, Schroeder, and Parker
Appellant relies on dependency from claim 1 for the patentability of
claim 11. Because we sustained the Examiner’s rejection of claim 1 as
unpatentable over Masayasu and Schroeder, we likewise sustain the
Examiner’s rejection of claim 11 as unpatentable over Masayasu, Schroeder,
and Parker.
CONCLUSION
The Examiner’s rejections are affirmed-in-part, as follows:
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4–8 103 Masayasu, Schroeder 1, 2, 4–8
3 103 Masayasu, Schroeder,
JP ’470
3
11 103 Masayasu, Schroeder,
Parker
11
Overall
Outcome:
1, 2, 4–8,
11
3
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-IN-PART