RB Distribution, Inc.

Patent Trials and Appeals BoardOct 30, 2020

2020005999 (P.T.A.B. Oct. 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. 16/239,233 01/03/2019 Tam Van NGUYEN RBI-PT082 9595 3624 7590 10/30/2020 Volpe Koenig 30 SOUTH 17TH STREET, 18TH FLOOR PHILADELPHIA, PA 19103 EXAMINER MACKAY-SMITH, SETH WENTWORTH ART UNIT PAPER NUMBER 3753 NOTIFICATION DATE DELIVERY MODE 10/30/2020 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): eoffice@volpe-koenig.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TAM VAN NGUYEN Appeal 2020-005999 Application 16/239,233 Technology Center 3700 Before BRETT C. MARTIN, MICHAEL J. FITZPATRICK, and MICHAEL L. WOODS, Administrative Patent Judges. WOODS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the Examiner’s decision to reject claims 21 and 25–31.1 Appeal Br. 3. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies RB Distribution, Inc. as the real party in interest. Appeal Br. 3. Appeal 2020-005999 Application 16/239,233 2 CLAIMED SUBJECT MATTER The Specification describes a solenoid control valve that is allegedly “easier to assemble and less prone to leakage.” Spec. ¶ 6. Claim 21 is the sole independent claim. See Appeal Br. 14–15 (Claims App.). Below, we reproduce claims 21 and 25, with emphasis added to particular limitations addressed in our decision: 21. A hydraulic fluid solenoid comprising: a one-piece metallic valve body having: a closed end; an open end that includes a base portion; a central opening that extends between the closed end and the open end and communicates with a plurality of fluid ports; a movable armature has a first portion positioned in the central opening of the valve body and a second portion that extends beyond the base of the valve body; a bobbin has wire windings that define a central recess dimensioned to receive the second portion of the movable armature extending beyond the base; a bobbin surround supports the bobbin; a housing having a closed end and an open end that receives the bobbin surround and the valve body with the second portion of the movable armature extending beyond the base; a grommet with a central opening, the grommet is positioned on the bobbin surround within the housing and around the second portion of the movable armature completely surrounds the central recess in the bobbin; and, wherein the open end of the housing is crimped over the base of the valve body and the grommet stabilizes the bobbin surround within the housing. 25. The solenoid of claim 21, wherein the plurality of ports are covered by a respective filter. Appeal 2020-005999 Application 16/239,233 3 Appeal Br. 14 (Claims App.) (emphasis added). REFERENCE The prior art relied upon by the Examiner is Najmolhoda et al., U.S. 7,673,597 B2, issued March 9, 2010 (hereinafter “Najmolhoda”). REJECTIONS The following rejections are before us on appeal: Claims Rejected 35 U.S.C. § Reference(s)/Basis 21, 26–29 112(a) Written Description 25–29 112(b) Indefiniteness 21, 25–31 103 Najmolhoda Final Act. 5–11. OPINION I. Claims 21 and 26–29 Rejected for Lacking Written Description Support The Examiner rejects claims 21 and 26–29 under 35 U.S.C. § 112(a) for failing to comply with the written description requirement. Final Act. 5– 6. Claim 21 recites, “a grommet [that] completely surrounds the central recess in the bobbin.” Appeal Br. 14 (Claims App.) (emphasis added). The Examiner finds that there “is no support for an unbroken washer,” which we understand to be the claimed grommet that “completely surrounds the central recess.” See Final Act. 5. The Examiner asserts that “none of the figures, either alone or in combination, depict the grommet as a complete circle.” Id. at 3. In response, Appellant argues that the “Examiner’s characterization of the figures is wrong.” Appeal Br. 8. Appeal 2020-005999 Application 16/239,233 4 Appellant has the better position. Figures 2 and 3 of the Specification together depict an “unbroken” grommet. To illustrate, we reproduce Figures 2 and 3, below: Figure 2 (above-left) is a cross-sectional view of a solenoid valve. See Spec. ¶¶ 9, 10, 40. “Figure 3 [(above-right)] is an exploded view illustrating the spool valve and bobbin housing or can before assembly.” Id. ¶ 11. Together, these views depict grommet 74 that completely surrounds armature 50. If grommet 74 did not completely surround armature 50, Figure 3 would depict grommet 74 with dashed lines to illustrate the location Appeal 2020-005999 Application 16/239,233 5 of the discontinuity. We further note that the Specification describes “shelf 72 that receives grommet 74 and an internal O-ring 76.” Id. ¶ 43. By its name, an O-ring is circular and completely surrounds that which it is sealing, in this case, the mating surface between grommet 74 and bobbin housing 14. See id. at Figs. 2, 3. Figure 2 along with its associated description at paragraph 43 support a finding that grommet 74 sits in close mating relationship with O-ring 76 and within shelf 72, and we find that a skilled artisan would have understood that grommet 74 must also be circular, or otherwise unbroken, so that the O-ring can provide a proper seal. For this reason, we do not sustain the written description rejection of claim 21. The Examiner also rejects claims 26–29 for lacking written description support. See Final Act. 5–6. The Examiner does not reject these claims for being dependent from independent claim 21, as discussed above, but for an additional reason. See id. In particular, the Examiner points out that claim 25 recites a “filter” and claims 26 and 28 further recite an “exit port,” yet exit port is not described in the specification as having a filter. See id. at 6. Appellant does not specifically respond to the rejection of claims 26– 29. See generally Appeal Br.; see also generally Reply Br. Absent any argument, we summarily affirm the rejection of claims 26–29 for lacking written description support. For the foregoing reasons, we reverse the rejection of claim 21 but affirm the rejection of claims 26–29 under 35 U.S.C. § 112(a). Appeal 2020-005999 Application 16/239,233 6 II. Claims 25–29 Rejected as Indefinite The Examiner rejects claims 25–29 under 35 U.S.C. § 112(b) for being indefinite. Final Act. 6. In particular, the Examiner finds that the claim limitation, “the plurality of ports,” lacks antecedent basis. Id. In the Answer, the Examiner explains, “it is unclear if Appellant’s intent is to further limit the fluid ports recited in Claim 21.” Ans. 4. The Examiner further finds that claims 26–29 “are rejected as depending from an indefinite claim.” Final Act 7. We do not sustain the rejection. We understand the claimed “the plurality of ports” (recited in dependent 25) to have first been recited in independent claim 21 as “a plurality of fluid ports.” Appeal Br. 14 (Claims App.). The omission of the word “fluid” in dependent claim 25 does not render the claim indefinite. For the foregoing reasons, we do not sustain the indefiniteness rejection of claims 25–29. Appeal 2020-005999 Application 16/239,233 7 III. Claims 21 and 25–31 Rejected as Unpatentable over Najmolhoda In rejecting independent claim 21, the Examiner cites to Najmolhoda’s Figure 1 and finds that Najmolhoda discloses the claimed features with the exception of (1) a specific material for a valve body and (2) a washer that completely surrounds a central recess. Final Act. 8–10. We reproduce Najmolhoda’s Figure 1, below: Figure 1 “is a longitudinal sectional view of a hydraulic fluid supply passage of a hydraulic valve lifter activation/deactivation system . . . and an engine oil solenoid actuated fluid control valve.” Najmolhoda, 2:36–39. The Examiner finds that Figure 1 depicts a solenoid with a one-piece valve body (12a through 12f) having closed end (17, 21), open end (at 12f) that includes base portion (12f), central opening (26) that extends between the closed and open ends and communications with a plurality of fluid ports (EP, CP, SP), movable armature (52) with first portion (19) positioned in central opening (26) and second portion (53) that extends beyond base (12f). Final Act. 8. Appeal 2020-005999 Application 16/239,233 8 As to the claimed “bobbin surround,” the Examiner submits a partially-annotated version of Najmolhoda’s Figure 1, which we reproduce, below: The Examiner finds that the above-annotated figure depicts grommet (80) positioned on bobbin surround (A) within housing (64) and surrounding the central recess (at 52). See id. at 9, 10. The Examiner acknowledges that “Najmolhoda does not specifically teach a washer [“grommet” 80] that completely surrounds a central recess,” but reasons that “such a feature is merely an obvious variation of Najmolhoda.” Id. The Examiner explains, “Najmolhoda teaches ‘approximately’ 85%, which is read as including other percentages such as 100% [and] that a ‘washer’ is notoriously well known in the art to take an unbroken circular form, as admitted by Applicant.” Id. at 9–10. The Appeal 2020-005999 Application 16/239,233 9 Examiner further asserts that “Appellant has admitted that an unbroken washer is prior art.” Ans. 3 (citation omitted). In contesting the rejection, Appellant points out that Najmolhoda explicitly discloses that “washer 80 extends approximately 85% of the periphery of armature 52.” Reply Br. 5 (quoting Najmolhoda, 6:66–67). Appellant submits its own partially-annotated portion of Najmolhoda’s Figure 1, which we reproduce below: According to Appellant, the above figure depicts structure—denoted by the dashed-line rectangular box—that precludes Najmolhoda’s washer 80 from Appeal 2020-005999 Application 16/239,233 10 being modified to be unbroken, or otherwise completely surrounding armature 52. Id. Appellant’s argument is persuasive. Simply because unbroken washers exist in the prior art does not persuade us that a skilled artisan would have modified Najmolhoda’s washer 80 to “completely surround” armature 52. We do not find anything in Najmolhoda that teaches washer 80 as being anything but “about approximately 85% of the periphery of armature 52.” Najmolhoda, 6:64–67. We also agree with Appellant that Najmolhoda’s Figure 1 appears to disclose structure that would prevent washer 80 from being modified to “completely surround” armature 52. See Reply Br. 5. For these reasons, we do not sustain the Examiner’s rejection of independent claim 21 as unpatentable in view of Najmolhoda, or of dependent claims 25–31, which inherit the same rejection infirmity. See Final Act. 10–11. CONCLUSION The Examiner’s written description rejection of claim 21 is reversed. The Examiner’s written description rejection of claims 26–29 is affirmed. The Examiner’s indefiniteness rejection of claims 25–29 is reversed. The Examiner’s prior art rejection of claims 21 and 25–31 is reversed. Appeal 2020-005999 Application 16/239,233 11 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference/Basis Affirmed Reversed 21 112(a) Written Description 21 26–29 112(a) Written Description 26–29 25–29 112(b) Indefinite 25–29 21, 25– 31 103 Najmolhoda 21, 25–31 Overall Outcome 26–29 21, 25, 30, 31 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