ROBERT BOSCH GMBH

Patent Trials and Appeals Board

Jul 29, 2020

2020000083 (P.T.A.B. Jul. 29, 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.
14/762,003 07/20/2015 Wilhelm Reinhardt BOSC.P9433US/1000199811 4054
24972 7590 07/29/2020
NORTON ROSE FULBRIGHT US LLP
1301 Avenue of the Americas
NEW YORK, NY 10019-6022
EXAMINER
WERNER, ROBERT A
ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
07/29/2020 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):
nyipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WILHELM REINHARDT, VOLKER SCHEEF,
MICHAEL MAYER, ANDREAS REHWALD, JAN HERRMANN,
PHILIPP ROGLER, ANDREAS GLASER, HANS-GEORG HORST,
MARTIN RIEMER, MICHAEL KNORPP, and MICHAEL FISCHER
____________

Appeal 2020-000083
Application 14/762,0031
Technology Center 3700
____________

Before MICHAEL C. ASTORINO, BRUCE T. WIEDER, and
AMEE A. SHAH, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 12–18 and 21–37. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Robert
Bosch GmbH. (Appeal Br. 2.)
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Application 14/762,003

2
CLAIMED SUBJECT MATTER
Appellant states that the “invention relates to a connecting element for
fuel injection systems for connecting a fuel injector to a fuel-guiding
component, and a fuel injection system which includes such a connecting
element.” (Spec. 1, ll. 3–6.)2
Claim 12, 17, 21, 25, 27, and 28 are the independent claims on appeal.
Claim 12 is illustrative. It recites (emphasis added):
12. A connecting element of a fuel injection system for
connecting a fuel injector to a fuel-guiding component,
comprising:
a base body in which a receiving chamber for a fuel
connector of the fuel injector is provided, the base body being
formed as a one-piece part that includes a corrugated bellows;
wherein the fuel connector, which is at least partially
situated in the receiving chamber, is supported at least indirectly
on the base body;
wherein the fuel connector is elastically supported on the
base body at least in a radial direction; and
wherein the corrugated bellows completely surrounds the
fuel connector.

REJECTIONS
Claims 12–16, 18, 21–30, 32, and 34–37 are rejected under 35 U.S.C.
§ 103(a) as unpatentable in view of Fuerst (US 2008/0302336 A1, pub.
Dec. 11, 2008).
Claims 17, 31, and 33 are rejected under 35 U.S.C. § 103(a) as
unpatentable in view of Fuerst and Reiter (US 6,481,421 B1, iss.
Nov. 19, 2002).

2 We use the term “Spec.” to refer to the Substitute Specification filed
July 20, 2015.
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Application 14/762,003

3
ANALYSIS
Obviousness is a legal conclusion involving a determination of
underlying facts.
Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the obviousness
or nonobviousness of the subject matter is determined. Such
secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to give
light to the circumstances surrounding the origin of the subject
matter sought to be patented.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham v.
John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966)). “[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” Id. at 418
(brackets in original) (quoting In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006)).
With regard to the scope and content of the prior art, the Examiner
finds that Fuerst discloses “a base body (6/10/18) in which a receiving
chamber for a fuel connector (7) of the fuel injector is provided, the base
body includes a corrugated bellows (10).” (Final Action 2 (citing Fuerst,
Fig. 7).) The Examiner also finds:
Fuerst is silent regarding the base body being formed as a
one-piece part. It would have been obvious to one of ordinary
skill in the art at the time the invention was made for the base
body to be formed as a one-piece part, since it has been held that
use of a one piece construction instead of the structure disclosed
in the prior art would be merely a matter of obvious engineering
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Application 14/762,003

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choice (In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349
(CCPA 1965)).

(Id. at 3.)
Figure 7 of Fuerst is reproduced below.

Figure 7 “shows a[n] . . . exemplary embodiment of a fuel injection device.”
(Fuerst ¶ 17.) With regard to Figure 7, Fuerst discloses:
In the area of its inlet fitting 7, fuel injection valve 1 has a flange
46 that extends radially outward. Connecting element 18 is
realized in the form of a securing nut 38. On its end facing fitting
6, connecting element 18 has a segment containing an inner
threading to which an annular collar 47 is connected that has a
conical support surface 48. With this support surface 48, annular
collar 47 of connecting element 18, 38 is supported against
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Application 14/762,003

5
flange 46, which has for example a curved surface facing annular
collar 47. Securing nut 38 corresponds to an outer threading 39
on the periphery of fitting 6. With securing nut 38 that engages
on flange 46 of fuel injection valve 1, the penetration depth of
fuel injection valve 1 in fitting 6 can be adjusted. Hold-down
device 10 is clamped between annular collar 47 of securing nut
38 and shoulder 12 on fuel injection valve 1.

(Id. ¶ 42.) In sum, the Examiner finds that it would have been obvious to
combine Fuerst’s end facing fitting 6, hold down device 10,3 and connecting
element 18 into a one-piece part. (See id.; Final Action 2.)
Appellant argues that “it would not have been obvious to combine the
three separate, distinct components of Fuerst to form a one-piece part,” that
“Fuerst does not provide any teaching or motivation why a person of
ordinary skill in the art would combine these . . . components,” and that
Fuerst does not “disclose how a person of ordinary skill could accomplish
this combination. Instead, the Office Action cites In re Larson to support
the assertion that it would have been obvious to do so as a ‘matter of obvious
engineering choice.’ 340 F.2d 965.” (Appeal Br. 6 (quoting Final
Action 3).) Appellant further argues that “[t]he Office Action’s assertion
that it would have been obvious to combine three separate components . . . is
conclusory and unsupported by a reference.” (Id. at 7.)

3 Fuerst explains that “hold-down device 10 is shown only symbolically as a
spring; ideally, hold-down device 10 is fashioned as a clip element
according to FIG. 1 and according to the corresponding description relating
to FIG. 1.” (Fuerst ¶ 38.) With regard to Figure 1, Fuerst explains that
“[h]old-down device 10 is detached from sheets of spring steel or high-grade
steel, having a thickness of approximately 1.5 mm[,] for example by
stamping, erosion, or laser cutting, and is subsequently brought into the
desired shape by bending.” (Id. ¶ 32.)
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6
The Examiner answers that “one of ordinary skill in the art would find
it inherent that the elements are secured by some means. There are any
number of well-known means of fixing these elements together, regardless
of their material.” (Answer 14.) Additionally, the Examiner finds that
“[t]he modifications of fixing fitting 6, hold-down device 10, and connecting
[element] 18 together as a single unit would not destroy the functioning of
the individual elements or the invention as a whole.” (Id.)
Appellant replies that the “hold-down device has a wholly separate
function from the . . . fitting 6 and connecting element 18,” that Fuerst
provides “no disclosure why or how a person of ordinary skill in the art
would combine all three of these components[,] . . . and the Examiner has
failed to provide any motivation o[r] explanation” to make the one-piece
element. (Reply Br. 3–4.) Appellant concludes that “it would not have been
a matter of design choice to combine these components into a ‘formed one-
piece part,’ as suggest[ed] by the Examiner.” (Id. at 4.)
It has long been understood “that it ordinarily does not connote
invention to make in one piece what had previously been made in more than
one piece.” In re Hubbell, 164 F.2d 700, 787 (CCPA 1947). However,
“there are notable exceptions to this rule.” Id. An example of such an
exception may be where “references do not suggest, either separately or in
combination, appellant’s novel structure, nor the useful results obtained
therefrom.” Id. at 788; but see In re Larson, 340 F.2d 965, 968
(CCPA 1965) (“[W]e are inclined to agree . . . that the use of a one piece
construction instead of the structure disclosed in [the prior art] would be
merely a matter of obvious engineering choice.”).
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In this case, the Examiner does not point to any suggestion in Fuerst
to make the claimed one-piece structure. And except for stating that “[t]here
are any number of well-known means of fixing these elements together”
(Answer 14), the Examiner does not explain how one would make such a
part. The Examiner does not provide adequate evidence or sufficient
technical reasoning to support the determination that it would have been
“merely a matter of obvious engineering choice” (see Final Action 3) to
combine Fuerst’s end facing fitting, hold down device, and connecting
element in a one-piece part.
Therefore, we will reverse the rejection of independent claim 12.
Independent claims 21, 25, 27, and 28 recite similar language. For the same
reasons we will reverse the rejection of independent claims 21, 25, 27,
and 28, and dependent claims 13–16, 18, 22–24, 26, 29, 30, 32, and 34–37.
Reiter does not cure the above noted deficiency. Therefore, we will also
reverse the rejection of independent claim 17 and dependent claims 31
and 33.

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Application 14/762,003

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CONCLUSION
The Examiner’s rejections of claims 12–18 and 21–37 under
35 U.S.C. § 103(a) are reversed.
Specifically:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
12–16, 18,
21–30, 32,
34–37
103(a) Fuerst 12–16, 18,
21–30, 32,
34–37
17, 31, 33 103(a) Fuerst, Reiter 17, 31, 33
Overall Outcome 12–18, 21–
37

REVERSED