Ex Parte Gless et al

Patent Trial and Appeal Board

Aug 30, 2017

14005589 (P.T.A.B. Aug. 30, 2017)

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.
2178-0791 3781
EXAMINER
GATEWOOD, DANIEL S
ART UNIT PAPER NUMBER
1729
MAIL DATE DELIVERY MODE
14/005,589 11/27/2013
10800 7590 08/31/2017
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
Michael Gless
08/31/2017 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 MICHAEL GLESS and ULRICH ZIMMMERMANN
Appeal 2017-002248
Application 14/005,589
Technology Center 1700
Before MARKNAGUMO, JEFFREY B. ROBERTSON, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-002248
Application 14/005,589
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of pending claims 1—10. (Appeal Br. 4—19.) We have
jurisdiction pursuant to 35 U.S.C. § 6(b).
We REVERSE.
The Specification states that the present invention relates to a pressure
equalization element having a water-impermeable membrane, and
specifically, a pressure relief valve acting in two directions or a combination
of two pressure relief valves acting in opposite directions arranged upstream
or downstream of the water-impermeable membrane. (Spec. p. 1,11. 8—12, p.
2,11. 8—14.) The Specification states that “[sjuitable pressure relief valves,
e.g., duckbill valves, are likewise known to a person skilled in the art from
the prior art.” (Spec. p. 2,11. 21—24.)
Claim 1, reproduced below, is representative:
1. A pressure equalization element for a housing comprising:
a water-impermeable membrane; and
a pressure relief valve assembly configured to open in a
first configuration to vent gas in a first direction through the
pressure relief valve assembly, and to open in a second
configuration to vent gas in a second direction through the
pressure relief valve assembly,
wherein the pressure relief valve assembly is arranged
upstream or downstream of the membrane.
(Appeal Br., Claims App’x, 21.)
1 According to the Appellants, the Real Party in Interest is Robert Bosch
GmbH and Samsung SDI Co., Ltd. (Appeal Brief filed August 1, 2016,
hereinafter “Appeal Br.” 2.)
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Appeal 2017-002248
Application 14/005,589
The Examiner rejected claims 1—10 as follows:
Claims 1—3 and 7 under 35 U.S.C. § 102(b) (pre-AIA) as anticipated
by Imamura;2
Claim 4 under 35 U.S.C. § 103(a) (pre-AIA) as obvious over
Imamura;
Claims 5 and 6 under 35 U.S.C. § 103(a) (pre-AIA) as obvious over
Imamura in view of Lee;3
Claim 8 under 35 U.S.C. § 103(a) (pre-AIA) as obvious over Imamura
and Warthmann;4
Claim 9 under 35 U.S.C. § 103(a) (pre-AIA) as obvious over Imamura
and Joswig;5 and
Claim 10 under 35 U.S.C. § 103(a) (pre-AIA) as obvious over Joswig
and Imamura.
(Examiner’s Answer mailed September 19, 2016, hereinafter “Ans.”
2-9.)
2 WO 2009/001947 A1 published December 31, 2008, English Abstract. We
have not been directed to a full English translation of record.
3 United States Patent Application Publication US 2009/0263693 A1
published October 22, 2009.
4 DE 10 2008 034 698 Al, published June 18, 2009. English Abstract. We
have not been directed to a full English translation of record.
5 WO 2009/109323 Al published September 11, 2009, with United States
Patent Application Publication US 2011/0244278 Al serving as an English
translation.
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Appeal 2017-002248
Application 14/005,589
ISSUE
The dispositive issue on appeal is:
Did the Examiner err in finding that Imamura discloses a pressure
relief valve assembly that is configured to open in a second configuration to
vent gas in a second direction as recited in the claims?
PRINCIPLES OF LAW
“Anticipation requires that every limitation of the claim in issue be
disclosed, either expressly or under principles of inherency, in a single prior
art reference.” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc.,
868 F.2d 1251, 1255-56 (Fed. Cir. 1989).
DISCUSSION
We agree with Appellants that the Examiner erred in finding that
Imamura discloses a pressure relief valve assembly configured to open in a
second configuration to vent gas in a second direction.
Figure 3 of Imamura as annotated in the Examiner’s Answer (Ans. 11)
is reproduced below:
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Appeal 2017-002248
Application 14/005,589
Figure 3 depicts a pressure regulating valve with gas flow passage (3),
gas permeating member (4), ON/OFF member (5), seal (6),6 and gas-liquid
separating film (7) shown in the “open” configuration with gas flow between
seal (6) and gas permeating member (4). (See fmamura Abstract; Ans. 10.)
The Examiner’s annotation shows gas flow through gas permeating
member (4), which the Examiner finds to be the “second direction” for
venting gas recited in the claims. (Ans. 11.) In this regard, the Examiner
found that fmamura discloses a pressure regulating valve (ON/OFF member
5), which is “movable in two different directions by the rise and
subsequent drop of the gas pressure in the container, thereby to
open/close the pressure regulating valve.” (Ans. 3.) The Examiner stated
further the claims do not specifically recite in which direction the gases are
vented in relation to each other, and that in the OFF configuration, gas will
vent through element (4) disclosed in fmamura due to the fact that element
(4) is a porous network of silicon based compounds, which is gas
permeable.7 (Ans. 10-11; citing fmamura, Fig. 3.)
Appellants contend that fmamura does not disclose a pressure relief
valve assembly configured to open in a second configuration to vent gas in a
second direction, because ON/OFF member (5) has only two configurations,
6 The English Abstract of fmamura does not identify reference no. (6) as a
seal. However, Appellants do not dispute the Examiner’s finding in this
regard. As such, we accept the Examiner’s findings as correct for the
purposes of this decision.
7 The English Abstract does not appear to disclose that gas permeating
member (4) is a network of silicon based compounds the structural
characteristics. However, Appellants do not appear to challenge the
Examiner’s finding in this regard, and as such, we accept the Examiner’s
findings as correct for the purposes of this decision.
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Appeal 2017-002248
Application 14/005,589
open and closed, whereas the claims require two open configurations.
(Appeal Br. 5—6.) Appellants argue that the claim language requires the
pressure relief valve assembly be configured to undergo a change in state
from closed to open, whereas the gas permeating member (4) of Imamura
does not change state or condition. (Reply Brief filed November 21, 2016,
2-3.)
Based on the evidence in this appeal, we agree with Appellants that
the gas permeating member (4) of Imamura’s pressure relief valve assembly
does not open when ON/OFF member (5) is in the OFF or the “closed”
position with gas permeating member (4) abutting seal (6). Rather, the
porous network of silicon based compounds that allegedly are the structural
component of gas permeating member (4) do not close, but are “open” in
both the ON and OFF configurations. Thus, moving the ON/OFF member
(5) from the “open” to the “closed” position does not result in a “second
configuration” that opens the gas permeating member (4).
Accordingly, Imamura does not disclose “a pressure relief valve
assembly configured ... to open in a second configuration to vent gas in a
second direction” as recited in the claims. Therefore, we reverse the
Examiner’s rejection of claims 1—3, and 7 as anticipated by Imamura.
Rejections of Claims 4—6 and 8—10
The rejections of claims 4—6 and 8—10 rely on the same position with
respect to Imamura and a pressure relief valve assembly that is configured to
open in a second configuration to vent gas in a second direction. (Ans. 4—9.)
The additional cited prior art does not remedy the deficiencies in Imamura
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Appeal 2017-002248
Application 14/005,589
discussed above. Accordingly, we reverse the Examiner’s rejections of
claims 4—6 and 8—10 for the same reasons discussed supra.
CONCLUSION
The Examiner erred in finding that Imamura discloses a pressure relief
valve assembly that is configured to open in a second configuration to vent
gas in a second direction.
ORDER
We reverse the Examiner’s decision rejecting claims 1—10.
REVERSED
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