Paul Mason et al.

Patent Trials and Appeals Board

Aug 30, 2019

14541620 - (D) (P.T.A.B. Aug. 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.
14/541,620 11/14/2014 Paul Mason 081276-9718-US01 7885
34044 7590 08/30/2019
MICHAEL BEST & FRIEDRICH LLP (Bosch)
100 EAST WISCONSIN AVENUE
MILWAUKEE, WI 53202
EXAMINER
CHAUDRY, ATIF H
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
08/30/2019 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):
mkeipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte PAUL MASON, DAVID TOUTANT,
and DANIEL E. SMITH JR.1
__________

Appeal 2019-001222
Application 14/541,620
Technology Center 3700
__________

Before DANIEL S. SONG, MICHAEL L. HOELTER, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is an Appeal, under 35 U.S.C. § 134(a), from the Examiner’s
final rejection of claims 11–15 and 20. Br. 1. Claims 16–19 “are objected
to.” Final Act. 7. We have jurisdiction under 35 U.S.C. § 6(b). For the
reasons explained below, we do not find error in the Examiner’s rejections
of these claims.

1 “The real parties in interest are Robert Bosch LLC . . . and Robert Bosch
GmbH.” Br. 3. We refer to the appealing party as “Appellant.”
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Accordingly, we AFFIRM the Examiner’s rejection of claims 11–15
and 20 under 35 U.S.C. § 103.
CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to plugs for blocking fluid ports.
Some aspects of the invention also relate to plugging a port within a
vehicular fuel supply module.” Spec. ¶ 2. Claim 11 is the sole independent
claim, is illustrative of the claims on appeal, and is reproduced below.
11. A fuel supply module comprising:
a fuel pump operable to pump fuel when energized;
a pressure vessel coupled to the fuel pump to receive fuel
from the fuel pump;
a cover coupled to the pressure vessel to enclose a
volume defined by the pressure vessel, wherein the cover
includes at least three fluid ports and a designated one of the at
least three fluid ports is plugged by an element positioned
within the designated port, and wherein the interface between
the element and the designated port is overmolded with
thermoplastic material.
REFERENCES
Takahashi et al. US 6,062,203 May 16, 2000
Goll et al. US 2006/0151378 A1 July 13, 2006
Nagata et al. US 2007/0065315 A1 Mar. 22, 2007
Mailand US 7,631,664 B1 Dec. 15, 2009
Allen et al. US 2011/0258834 A1 Oct. 27, 2011

THE REJECTIONS ON APPEAL
Claim 11–14 and 20 are rejected under 35 U.S.C. § 103 as
unpatentable over Takahashi, Mailand, and Allen.
Claims 11–15 and 20 are rejected under 35 U.S.C. § 103 as
unpatentable over Goll, Nagata or Takahashi, Mailand, and Allen.
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ANALYSIS
The rejection of claims 11–14 and 20
as unpatentable over Takahashi, Mailand, and Allen
Appellant presents arguments for claims 11, 13, 14, and 20 together
(see Br. 6–10) and for claim 12 separately (see Br. 10). We select claims 11
and 12 for review, with the remaining claims (i.e., claims 13, 14, and 20)
standing or falling with claim 11 (from which they each depend). See 37
C.F.R. § 41.37(c)(1)(iv).
Claim 11
Sole independent claim 11 recites an interface between an element
and a designated port that “is overmolded with thermoplastic material.” The
Examiner finds support in the cited art for the recited element, port, and
thermoplastic material, but “[r]egarding the term ‘overmolded,’” the
Examiner states, “the patentability of a product does not depend on its
method of production.” Final Act. 3. The Examiner references MPEP
§ 2113 stating, “[i]f the product in the product-by-process claim is the same
as or obvious from a product of the prior art, the claim is unpatentable even
though the prior product was made by a different process.” Final Act. 3–4.
“Appellant respectfully submits . . . that rejecting claim 11 as an
unpatentable product-by-process claim is improper.” Br. 6. Appellant
instead contends, “all the features of claim 11, including the feature about
the interface being overmolded, are accurately characterized as structural
limitations.” Br. 7. Based on this presumption regarding the limitation “is
overmolded,” Appellant contends, “the record is clear that the designated
port being overmolded with thermoplastic material has not been addressed
as a structural feature of claim 11.” Br. 7 (emphasis added). This last
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contention by Appellant is correct because, instead, “[t]he recitation
‘overmolded’ is considered by the Examiner as a process of placement of
thermoplastic material at the interface between the element and the
designated port.” Ans. 8 (emphasis added); see also id. at 9.
Regarding the Examiner’s findings, we have been instructed that “the
Patent Office bears a lesser burden of proof in making out a case of prima
facie obviousness for product-by-process claims because of their peculiar
nature than would be the case when a product is claimed in the more
conventional fashion.” MPEP § 2113(II) (quoting In re Fessmann, 489 F.2d
742, 744 (CCPA 1974)). Hence, upon such a showing, “the burden shifts to
[Appellant] to come forward with evidence establishing an unobvious
difference between the claimed product and the prior art product.” MPEP
§ 2113(II) (citing In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983)).
In the matter before us, we are of the opinion that the Examiner
satisfied the initial procedural burden of establishing a prima facie rejection
by adequately explaining the perceived shortcomings so that Appellant is
properly notified and able to respond. See In re Jung, 637 F.3d 1356, 1362
(Fed. Cir. 2011); see also Ans. 9 (“the claim does not recite any distinctive
structure implied by overmolding other than the thermoplastic material at the
interface”). Hence, it is the Appellant’s burden to “rebut the prima facie
case with evidence and/or argument.” Hyatt v. Dudas, 492 F.3d 1365, 1370
(Fed. Cir. 2007).
Disputing the Examiner’s findings and conclusions, Appellant
contends, “the Examiner makes no assertion whatsoever that an overmolded
interface is either taught or rendered obvious by the prior art.” Br. 7. This is
correct. The Examiner is not relying on the step of overmolding being
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disclosed in the cited art; instead, the Examiner has considered the limitation
“is overmolded” a “product-by-process” limitation as indicated above, and
which is in need of a rebuttal as also indicated above.
Appellant also states, “Appellant’s claim clearly includes an
overmold, whereas no overmold or similar feature is applied from the prior
art.” Br. 8. This is not a correct interpretation of Appellant’s claim
language. Our understanding of the claim in view of the Appellant’s
Specification is that it is the “thermoplastic material,” i.e., thermoplastic cap
110, which “is overmolded” between the element and the designated port.
Spec. ¶ 21; Fig. 7. In addition, the claim recites an interface that “is
overmolded” (i.e., verb), and does not recite an “overmold” (i.e., noun).
This distinction between usages also helps explain the Examiner’s
determination that this claim term designates a process and not a structure.
See supra.
Perhaps focusing more on the need at hand, Appellant states that the
“process of overmolding yields a distinct structural characteristic apparent in
the final product.” Br. 8. However, the Appellant does not identify what
this “distinct structural characteristic” is. Appellant instead contends that a
“product produced with the overmolded interface will absolutely be unique
from another product produced without overmolding the interface.” Br. 8.
Appellant thereafter asserts that “one of ordinary skill in the art can examine
the product and determine that it was made by overmolding (just as one of
ordinary skill could determine whether an interface is screwed, glued,
welded, or staked).” Br. 8. However, being so unique as to be able to
ascertain a method of manufacture does little to identify a unique structural
characteristic asserted by the Appellant, let alone that the prior art lacks such
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a unique structural characteristic. The Examiner further states, “the alleged
unique structural features are not recited in the claim.” Ans. 10.
Regarding Appellant’s contentions regarding the Examiner’s further
reliance on Mailand and Allen (see Br. 8), suffice it to say that Appellant
does not explain how the Examiner erred in relying on the specific teachings
identified in these two references, or their combination with the primary
reference to Takahashi (see Final Act. 2–3). Accordingly, and based on the
record presented, we are not persuaded the Examiner erred in rejecting
claims 11–14 and 20 as being unpatentable over Takahashi, Mailand, and
Allen (as set forth in the Examiner’s Final Office Action dated October 13,
2017).
Claim 12
Claim 12 depends from claim 11 and additionally recites “wherein the
element is press fit within the designated port.” The Examiner references
Mailand’s “element 17” (a ball) as being “press fit within the designated
port.” Final Act. 4. Appellant contends that due to Mailand’s arrangement,
“it is then impossible to press fit the ball 17 into the socket 20.” Br. 10.
The Examiner explains that claim 12 “does not require element (ball)
directly press fit within the designated port.” Ans. 10. Mailand clearly
illustrates ball 17 contained within socket 20, and further specifically teaches
a seal “formed by ball 17 forced into cup 36 of plug 10,” this plug 10 being
threaded into socket 20. Mailand 2:24–29; see also Figs. 1, 2. Thus,
Appellant’s contention regarding Mailand’s ball 17 not being press fit within
the socket is not persuasive of Examiner error. Appellant’s further
assertions of requiring “a complete re-design of Mailand” and “hindsight”
(Br. 10), without further analysis elaborating on such matters, is equally not
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persuasive of Examiner error. Accordingly, we sustain the Examiner’s
rejection of claim 12 as being unpatentable over Takahashi, Mailand, and
Allen.
The rejection of claims 11–15 and 20
as unpatentable over Goll, Nagata or Takahashi, Mailand, and Allen
Appellant presents arguments for claims 11, 13–15, and 20 together
(see Br. 11–15) and for claim 12 separately (see Br. 15). We select claims
11 and 12 for review, with the remaining claims (i.e., claims 13–15 and 20)
standing or falling with claim 11 (from which they each depend).
Claim 11
The Examiner’s rejection of claim 11 mirrors that expressed above for
the same claim, with the exception that Goll is redundantly relied upon (in
addition to Takahashi) for disclosing certain structure. Compare Final Act.
2–3 with Final Act. 5. However, the Examiner acknowledges that “Goll fails
to disclose a third redundant port with a plug” and relies on either Nagata or
Takahashi for such teachings. Final Act. 5. The Examiner’s further reliance
on Mailand and Allen is a mirror image of those above. Compare Final Act.
5–6 with Final Act. 3. Also, the Examiner separately addresses the
limitation “overmolded” in the same manner as above. Compare Final Act.
6 with Final Act. 3–4.
“Appellant notes that the Examiner has made the exact same
assessment of ‘overmolded’ (i.e., disregarded the presence of structural
meaning imparted) in constructing the rejection in view of Goll,
Nagata/Takahashi, Mailand, and Allen.” Br. 11. Appellant thus contends
that this rejection “is in error for at least some of the same reasons as
discussed above.” Br. 11. We do not repeat these arguments here (see Br.
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11–14), but suffice it to say, such arguments are not persuasive when
presented a second time. Appellant also states that “specific arguments
applied to the prior art citations” will also be addressed. Br. 11. We address
these “specific arguments,” provided they are not redundant of those above.
Addressing Goll, Appellant simply states, “the Examiner has already
acknowledged the failure of Goll in disclosing any port with a plug.” Br. 14.
This is not a persuasive observation in light of the Examiner’s reliance on
either Nagata or Takahashi for such teachings. See Final Act. 5. Addressing
Nagata, Appellant states that this reference “merely discloses at paragraph
[0047] that the end cover can be ‘formed with a redundant opening, the
redundant opening may be closed using a sealing plug.”’ Br. 14. From this
acknowledgement of “using a sealing plug,” Appellant contends that such
teaching “comes woefully short of teaching or suggesting the overmolded
interface set forth in Appellant’s claim 11.” Br. 14. As above, the Examiner
did not rely on the cited art for teaching an overmold; instead, “[t]he
recitation ‘overmolded’ is considered by the Examiner as a process of
placement of thermoplastic material at the interface between the element and
the designated port.” Ans. 10 (emphasis added); see also id. at 11.
Consequently for similar reasons already expressed, we are not
persuaded the Examiner erred in rejecting claims 11–15 and 20 as being
unpatentable over Goll, Nagata or Takahashi, Mailand, and Allen.
Claim 12
Appellant’s arguments regarding claim 12 under this combination of
references is the same as that argued above, i.e., “it is then impossible to
press fit the ball 17 into the socket 20.” Br. 15. Appellant’s contentions are
not persuasive for similar reasons. See Ans. 12 (“the claim does not require
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element (ball) directly press fit within the designated port”). We sustain the
Examiner’s rejection of claim 12 as being unpatentable over Goll, Nagata or
Takahashi, Mailand, and Allen.
DECISION
The Examiner’s rejection of claims 11–14 and 20 as unpatentable over
Takahashi, Mailand, and Allen is affirmed.
The Examiner’s rejection of claims 11–15 and 20 as unpatentable over
Goll, Nagata or Takahashi, Mailand, and Allen is 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