Paul Mason et al.Download PDFPatent Trials and Appeals BoardAug 30, 201914541620 - (D) (P.T.A.B. Aug. 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. 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.” Appeal 2019-001222 Application 14/541,620 2 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. Appeal 2019-001222 Application 14/541,620 3 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 Appeal 2019-001222 Application 14/541,620 4 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 Appeal 2019-001222 Application 14/541,620 5 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 Appeal 2019-001222 Application 14/541,620 6 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 Appeal 2019-001222 Application 14/541,620 7 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. Appeal 2019-001222 Application 14/541,620 8 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 Appeal 2019-001222 Application 14/541,620 9 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 Copy with citationCopy as parenthetical citation