Ex Parte BaltesDownload PDFPatent Trial and Appeal BoardApr 16, 201310508661 (P.T.A.B. Apr. 16, 2013) 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. 10/508,661 09/22/2004 Herbert Baltes 47452 4128 1609 7590 04/17/2013 ROYLANCE, ABRAMS, BERDO & GOODMAN, L.L.P. 1300 19TH STREET, N.W. SUITE 600 WASHINGTON,, DC 20036 EXAMINER HOOK, JAMES F ART UNIT PAPER NUMBER 3754 MAIL DATE DELIVERY MODE 04/17/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte HERBERT BALTES ____________ Appeal 2011-002551 Application 10/508,661 Technology Center 3700 ____________ Before GAY ANN SPAHN, MICHAEL C. ASTORINO, and MICHELLE R. OSINSKI, Administrative Patent Judges. SPAHN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Herbert Baltes (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 11-23. Appellant cancelled claims 1-10 and 24-27. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2011-002551 Application 10/508,661 2 The Claimed Subject Matter The claimed subject matter relates to “a hydraulic accumulator, in particular a membrane accumulator specifically for damping pulsations in fluid circuits.” Spec. 1, ll. 2-3. Claim 11 (the sole independent claim on appeal), reproduced below, with emphasis added, is representative of the appealed subject matter. 11. A hydraulic accumulator, comprising: an accumulator housing having at least one inlet and one outlet for fluid to be damped, and having a gas chamber and a fluid chamber therein, said gas chamber within said housing storing an entire volume of gas for the hydraulic accumulator; a membrane separating element inside said accumulator housing separating said gas chamber and said fluid chamber; a mounting device inside said accumulator housing extending one of within said gas chamber and along a limit of said gas chamber depending on positioning of said separating element, said separating element being supported on said mounting device; a closing plate provided at a center of said separating element and movable between an open position allowing fluid to flow into and out of said fluid chamber through said inlet and outlet and a closed position preventing fluid flow into and out of said fluid chamber through said inlet and said outlet, said closing plate being rigidly connected to said separating element by a bolted connection; and a through opening in said mounting device for engagement of a part of said bolted connection. Appeal 2011-002551 Application 10/508,661 3 The Rejections The following Examiner’s rejections, under 35 U.S.C. § 103(a), are before us for review: I. claims 11, 15-18, 22, and 23 as unpatentable over Gebauer (US 4,312,382, issued Jan. 26, 1982) and Knauth (US 2,697,451, issued Dec. 21, 1954); II. claims 12-14 as unpatentable over Gebauer, Knauth, and Yoshida (US 5,524,671, issued Jun. 11, 1996); III. claim 19 as unpatentable over Gebauer, Knauth, and Hertell (US 3,474,830, issued Oct. 28, 1969); and IV. claims 20 and 21 as unpatentable over Gebauer, Knauth, and Baumanns (DE 26 23 950 A1, published Dec. 1, 1977). OPINION Rejection I – Obviousness based on Gebauer and Knauth The Examiner finds that Gebauer substantially discloses the subject matter of independent claim 11, but fails to disclose “forming the closing plate structure as a separate plate bolted to separating element.” Ans. 3. To cure the deficiency of Gebauer, the Examiner turns to Knauth’s disclosure of an accumulator including “a housing 1, at least an inlet and outlet formed by the plurality of openings in plate 16, a rubber membrane 7, a separating element [sic, mounting device] 12, and the membrane is provided with a closing plate 20 which is bolted to the membrane.” Ans. 4; see also Ans. 6- 9. The Examiner concludes that it would have been obvious to one of ordinary skill in the art “to modify the closing plate of Gebauer to be formed of a separate plate bolted to the membrane as suggested by Knauth where Appeal 2011-002551 Application 10/508,661 4 such would allow for replacement of the closing plate if such fails before the membrane does thereby saving money in replacement costs.” Id. Appellant argues that Gebauer “does not disclose a closing plate connected to either diaphragm by a bolted connection,” and Knauth’s “plate 12 does not constitute a mounting device since it does not support its membrane separating element, and certainly does not contain a through opening in a mounting device for engaging a part of a bolted connection securing the closing plate to the membrane separating element, as claimed.” App. Br. 5-6. More particularly, Appellant argues the Knauth does not “suggest[] or inherently provide[] that any bolted connection disclosed therein is engaged in a through opening in the mounting device, as claimed,” because Knauth’s fastener 22 “is only disclosed as being flush or coplanar with the top surface of plate 24” so that it “may possibly lie next to an opening in plate 12,” but nothing in Knauth “discloses the claimed engagement which requires the fastener to enter or be engaged with the opening,” and “[m]erely touching the mounting device is insufficient to meet th[e] claim 11 limitation.” App. Br. 6. Consequently, Appellant argues that since neither Gebauer nor Knauth “discloses a bolted connection engageable in a through opening in a mounting device, the subject matter of claim 11 is unobvious and patentable.” Id. The Examiner responds that Knauth’s membrane 7 and closing plate 20 are attached to each other by fastening element 22 to form a bolted connection which is illustrated as contacting the holes in perforated plate 16. Ans. 7. The Examiner explains that the bolted connection would inherently contact the holes in the perforated plate 12 in a manner similar to the illustrated bolted connection contacting the holes of perforated plate 16, and Appeal 2011-002551 Application 10/508,661 5 “contacting at least a portion of the opening within the mounting device member 12 . . . meet[s] the requirement of claim 11 that ‘engagement of a part of said bolted connection,’” because “only engagement of a part of the bolted connection is required.” Id. The Examiner further explains that Appellant’s argument that “‘the bolted connection to be in the claimed engagement with the through opening . . . must at least partially be in that through opening’ is not persuasive where the claim language in no way requires the bolted connection to be at least partially ‘in the through opening’.” Id. Rather, in the Examiner’s interpretation, “the claim only requires broadly that the bolted connection engage a part of the through opening, and . . . the head of the bolted connection as taught by Knauth would inherently contact at least the surface of the mounting device 12 at a hole location which is a form of engagement with a part of the opening.” Ans. 7-8. We cannot agree with the Examiner’s interpretation that “engagement of a part of said bolted connection” with the through opening of the mounting device is satisfied by mere contact with the surface of Knauth’s perforated plate 12. A person of ordinary skill in the art would understand that the claim language of “a through opening in said mounting device for engagement of a part of said bolted connection” requires that the bolted connection must be capable of engagement with the through opening in the mounting device. Thus, mere contact of Knauth’s fastening element 22 with the surface of the perforated plate 12 is not sufficient to satisfy the claim language. Rather, a person of ordinary skill in the art would understand, as explained by Appellant, that “for the bolted connection to be in the claimed engagement with the through opening, the bolted connection must at least Appeal 2011-002551 Application 10/508,661 6 partially be in that through opening.” App. Br. 6. The Examiner has not included a finding or an explanation how the combination of Gebauer and Knauth would result in the capability of the bolted connection engaging with the through opening in the mounting device. In other words, merely because Knauth’s fastening element 22 may make contact with the surface of perforated plate 12, as explained by the Examiner (Ans. 7), this does not support that the holes in perforated plate 12 are capable of engagement with a part of the fastening element 22. Accordingly, we do not sustain the Examiner’s rejection of independent claim 11, and claims 15-18, 22, and 23 dependent thereon, under 35 U.S.C. § 103(a) as unpatentable over Gebauer and Knauth. Rejection II-IV – Obviousness based on Gebauer/Knauth/Yoshida, Gebauer/Knauth/Hertell, and Gebauer/Knauth/Baumanns, respectively The Examiner’s remaining rejections all rely on the erroneous finding that Knauth’s through opening in mounting device 12 is capable of engagement of a part of said bolted connection 7, 20, 22, 24, and 26. The Examiner does not point to anything in Yoshida, Hertell, and Baumanns which cures the deficiency of the combination of Gebauer and Knauth with regard to the rejection of claim 11. Accordingly, for the same reason as discussed above with respect to independent claim 11, we do not sustain the Examiner’s rejections, under 35 U.S.C. § 103(a), of: claims 12-14 as unpatentable over Gebauer, Knauth, and Yoshida; claim 19 as unpatentable over Gebauer, Knauth, and Hertell; and claims 20 and 21 as unpatentable over Gebauer, Knauth, and Baumanns. Appeal 2011-002551 Application 10/508,661 7 DECISION We reverse the Examiner’s decision to reject claims 11-23. REVERSED Klh Copy with citationCopy as parenthetical citation