Ex Parte Baltes

Patent Trial and Appeal Board

Apr 16, 2013

10508661 (P.T.A.B. Apr. 16, 2013)

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.

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Application 10/508,661

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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.

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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
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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
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“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
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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.

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DECISION
We reverse the Examiner’s decision to reject claims 11-23.

REVERSED

Klh