Thorsten Bauer et al.

Patent Trials and Appeals Board

Sep 16, 2019

14131137 - (D) (P.T.A.B. Sep. 16, 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.
14/131,137 01/06/2014 Thorsten Bauer 022862-1862-US00 7410
34044 7590 09/16/2019
MICHAEL BEST & FRIEDRICH LLP (Bosch)
100 EAST WISCONSIN AVENUE
MILWAUKEE, WI 53202
EXAMINER
PAIK, SANG YEOP
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
09/16/2019 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 THORSTEN BAUER and JENS KOENIG

____________

Appeal 2018-006538
Application 14/131,1371
Technology Center 3700

____________

Before PHILIP J. HOFFMANN, BRUCE T. WIEDER, and
KENNETH G. SCHOPFER, 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 2–5, 8–10, and 13–19. 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.)
Appeal 2018-006538
Application 14/131,137

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CLAIMED SUBJECT MATTER
Appellant’s “invention relates to a method for generating a through-
hole in a wall of a workpiece and a device for carrying out such a method.”
(Spec. ¶ 1.2)
Claim 8 is the sole independent claim on appeal. It recites (emphasis
and some paragraphing added):
8. A method for generating at least one through-hole (3) in
a first wall (9) of a workpiece (2) bounding a hollow space (12)
of the workpiece (2), the workpiece having a rear wall (11)
bounding the hollow space (12), and the workpiece having an
exterior, said method comprising:
introducing a protective agent (13) into the hollow space
(12) of the workpiece (2),
the protective agent (13) being a paste; and
thereafter using a laser beam (7) directed onto the first
wall (9) from the exterior to form the through-hole (3),
wherein the protective agent (13) remains a paste
during laser forming of the through-hole (3),
the protective agent (13) being applied in the
hollow space (12) at least partially in an extension (10) of
the laser beam (7) guided through the through-hole (3) in
front of the rear wall (11) of the workpiece (2), and
wherein the protective agent (13) is formed on the
basis of a ceramic powder in an aqueous solution or in a
non-aqueous dispersion,
and wherein pieces of fiberglass are embedded in
the protective agent.

2 “Specification” and “Spec.” refer to the “Substitute Specification Clean
Copy” filed on January 6, 2014.
Appeal 2018-006538
Application 14/131,137

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REJECTIONS
Claims 2–5, 8–10, and 13–15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Perry (US 6,303,901 B1, iss. Oct. 16, 2001), Geerke
(US 7,011,850 B2, iss. Mar. 14, 2006), Brennan (US 4,386,257, iss.
May 31, 1983), Knowles (US 6,365,871 B1, iss. Apr. 2, 2002), Vermilion
(US 5,601,897, iss. Feb. 11, 1997), and Kessler (US 6,518,499 B1, iss.
Feb. 11, 2003).
Claims 16–19 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Perry, Geerke, Brennan, Knowles, Vermilion, Kessler, Barker
(US 5,876,116, iss. Mar. 2, 1999), and Sugimoto (US 2013/0192745 A1,
pub. Aug. 1, 2013).

ANALYSIS
The Examiner finds:
Perry shows the method claimed including a workpiece
having a cavity/sack that is introduced with a protective agent
such as vacuum grease which is deemed as a non-aqueous
solution being a paste, applying a laser beam (10) directed to a
first wall of a workpiece to form a through hole (14) wherein the
grease is deemed remaining a grease/paste (also see column 4,
lines 26-39)[.] But, Perry does not show the protective agent is
formed of a ceramic power [sic] in the aqueous or non-aqueous
solution with pieces of fiberglass embedded therein.

(Final Action 2.) The Examiner also finds:
Vermilion shows it is known to provide an insulating
barrier/layer having silica power [sic] or glass fiber (see
column 1, lines 22-24), and Kessler shows it is known to provide
an insulating article made of a material including a binder
including fiberglass, a glass fiber composite, or other chopped
fibers wherein such material is known to exhibit excellent energy
absorbance (see column 4, lines 26-38).
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Application 14/131,137

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(Id. at 3.)
Appellant argues that “one of ordinary skill in the art understands that
fiberglass is not equivalent to glass fiber. One of ordinary skill in the art
understands fiberglass is a composite material made of a plastic reinforced
by fine glass fibers.” (Appeal Br. 6.) The Examiner does not disagree.
However, the Examiner answers that “Kessler shows that it is known to use
fiberglass as well as glass fiber not only for providing a strong and
lightweight part but also that exhibits excellent energy absorbance
(column 4, lines 25-38).” (Answer 4–5.)
Appellant argues that “Kessler is a nonanalogous reference” (Appeal
Br. 8) and, thus, is “improperly used by the Examiner in the rejection” (id.
at 9).
The analogous-art test requires that the Board show that a
reference is either in the field of the applicant’s endeavor or is
reasonably pertinent to the problem with which the inventor was
concerned in order to rely on that reference as a basis for
rejection. In re Oetiker, 977 F.2d 1443, 1447 (Fed.Cir.1992).
References are selected as being reasonably pertinent to the
problem based on the judgment of a person having ordinary skill
in the art. Id. (“[I]t is necessary to consider ‘the reality of the
circumstances,’—in other words, common sense—in deciding in
which fields a person of ordinary skill would reasonably be
expected to look for a solution to the problem facing the
inventor.” (quoting In re Wood, 599 F.2d 1032, 1036 (C.C.P.A.
1979))).

In re Kahn, 441 F.3d 977, 986–87 (Fed. Cir. 2006). In short, “[t]he
pertinence of the reference as a source of solution to the inventor’s problem
must be recognizable with the foresight of a person of ordinary skill, not
with the hindsight of the inventor’s successful achievement.” Scientific
Plastic Prods., Inc. v. Biotage AB, 766 F.3d 1355, 1359 (Fed. Cir. 2014).
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“Whether a prior art reference is ‘analogous’ is a question of fact.”
Innovention Toys, LLC v. MGS Entertainment, Inc., 637 F.3d 1314, 1321
(Fed. Cir. 2011).
The “Background of the Invention” section of the Specification
discloses that Appellant’s “invention relates to a method for generating a
through-hole in a wall of a workpiece and a device for carrying out such a
method. The invention particularly relates to the field of manufacturing of
nozzle bores, in particular for fuel injection valves.” (Spec. ¶ 1.) Claim 8
recites “[a] method for generating at least one through-hole (3) in a first
wall (9) of a workpiece (2) bounding a hollow space (12) of the
workpiece (2)” and “using a laser beam (7) directed onto the first wall (9)
from the exterior to form the through-hole (3).”
In view of the above, we find that the inventors’ field of endeavor was
generating a through-hole in a workpiece using a laser beam.
Kessler is titled “Box Pad For Mounting Electrical Equipment.”
(Kessler, col. 1, ll. 1–2.) Kessler discloses an invention that “relates to a box
pad for mounting electrical equipment to provide a foundation to support the
weight of a transformer or to produce a vault area for electrical or other
connections.” (Id. at col. 1, ll. 6–9.) Kessler further discloses that “[t]he
base, wall and support section [of the box pad] may be made of a binder
filled with fiberglass, a glass fiber composite, a glass filled polymer, a
thermoplastic, glass fiber composite, or any lightweight material with a
specific gravity of less than 1.3.” (Id. at col. 4, ll. 26–29.) Kessler further
discloses that the described material “has densities that are lower than
traditional fiberglass laminates, and exhibits excellent energy absorbance
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Application 14/131,137

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and aging properties, as well as very good resistance to water, acid, oils, and
fuels.” (Id. at col. 4, ll. 36–38.)
In short, Kessler relates to a pad for mounting electrical equipment.
Thus, we agree with Appellant that Kessler is not in the field of
applicant’s endeavor. (See Appeal Br. 8–9.)
But this does not end our inquiry. We must also determine whether
Kessler was reasonably pertinent to the problem with which the inventors
were concerned based on the judgment of one of ordinary skill in the art.
See In re Kahn, 441 F.3d at 986–87.
The Specification discloses that “[t]he problem underlying [a] known
method is that after penetrating the wall of the workpiece, the laser beam
enters into the hollow space and strikes the opposite wall. In so doing, the
laser damages the wall opposite the bored hole.” (Spec. ¶ 2.) The
Specification further discloses that in the prior art, “to prevent the laser beam
from striking the wall opposite the injection orifice, a protective element in
the form of a sphere can, for example, be loosely inserted into the blind
hole.” (Id.) However, this “has the disadvantage that the protective
element, which is designed, for example, as a sphere, is gradually penetrated
ever deeper by the laser beam” and “is thereby increasingly damaged so that
said element has to be regularly replaced.” (Id. ¶ 3.)
In view of the above, we determine that the problem with which the
inventors were concerned was that of preventing a laser beam from striking
and/or damaging the wall opposite the hole bored by the laser beam, or more
generally, preventing a laser beam from striking and/or damaging a surface.
The Examiner specifically points out that Kessler discloses that its
material “exhibits excellent energy absorbance.” (Final Action 3; see also
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Answer 5.) However, it is unclear what energy absorbance is being referred
to in the relied on passage from Kessler, i.e., does it refer to absorbance of
mechanical energy (related to supporting a transformer), absorbance of
electrical energy (although one does not typically refer to “absorbance” of
electrical energy in this context), or absorbance of some other type of
energy? Regardless, Kessler does not refer to a laser or absorbance of
energy from a laser.
In view of the above, we determine that the Examiner has not
sufficiently explained why one of ordinary skill would reasonably have been
expected to look to Kessler for a solution to the problem of preventing a
laser beam from striking and/or damaging a surface. Therefore, absent
further explanation by the Examiner, we agree with Appellant that Kessler is
non-analogous art, and thus, does not qualify as prior art. See In re Klein,
647 F.3d 1343, 1352 (Fed. Cir. 2011).
Absent Kessler, the Examiner does not adequately explain why one of
ordinary skill in the art would have modified Perry to include a protective
agent “wherein pieces of fiberglass are embedded in the protective agent,” as
recited in claim 8.
Additionally, we note that when, as in this case, it is necessary “to
look to interrelated teachings of multiple patents,” we must “determine
whether there was an apparent reason to combine the known elements in the
fashion claimed by the patent at issue.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007). “‘[T]here must be some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness.’”
Id. (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
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Application 14/131,137

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Here, the Examiner finds that
the use of the fiberglass in place of or along with other glass
fiber/powdered material would provide the necessary function or
utility of the subject matter covered by the claims which is to
provide an insulation or protection which would include a
protection against the laser beam as Kessler shows the binder
with fiberglass provides an excellent energy absorbance
(column 4, lines 35-37) which is also the characteristic of
providing a laser beam protection in Perry that discloses its
protective agent to “absorb” photon or a laser radiation/pulse for
the protection of the workpiece against the laser (column 4,
lines 7-15; column 4, lines 26-33).

(Answer 5.)
Appellant, however, argues that
Kessler never mentions a laser beam and therefore cannot
possibly teach that it would be predictable for fiberglass to
exhibit excellent energy absorbance to insulate or shield a laser
beam, as asserted by the Examiner. One of ordinary skill in the
art would understand that just because a material is good at
absorbing vibrational energy that does not mean that same
material is good at absorbing energy from a laser.

(Appeal Br. 10 (emphasis omitted).)
As discussed above, it is unclear what type of energy absorbance is
being referred to in the relied on passage from Kessler. And the Examiner
points to no passage in Kessler that refers to a laser beam, or absorbance of
such energy. In short, the Examiner has not shown a sufficient rational
underpinning to modify Perry in view of Kessler as set forth in claim 8, i.e.,
to imbed pieces of fiberglass in the protective agent.

Appeal 2018-006538
Application 14/131,137

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DECISION
The Examiner’s rejection of claims 2–5, 8–10, and 13–19 under
35 U.S.C. § 103(a) is reversed.

In summary:
Claims
Rejected
Basis Affirmed Reversed
2–5, 8–10, and
13–15
§ 103(a) in view of
Perry, Geerke,
Brennan, Knowles,
Vermilion, and
Kessler
2–5, 8–10, and
13–15
16–19 § 103(a) in view of
Perry, Geerke,
Brennan, Knowles,
Vermilion, Kessler,
Barker, and
Sugimoto
16–19
Overall Outcome § 103(a) 2–5, 8–10, and
13–19

REVERSED