Ex Parte Hartwig et al

Patent Trial and Appeal Board

Aug 23, 2017

13814829 (P.T.A.B. Aug. 23, 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.
13/814,829 02/20/2013 Johannes Hartwig 67417-069 PUS 1 4918
26096 7590 08/25/2017
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
VENKATESAN, UMASHANKAR
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
08/25/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHANNES HARTWIG and AN YU VAN
Appeal 2016-006566
Application 13/814,829
Technology Center 3700
Before STEFAN STAICOVICI, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Johannes Hartwig and An Vu Van (“Appellants”) appeal under 35
U.S.C. § 134(a) from the Examiner’s decision rejecting claims 19—39.1 We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter NEW GROUNDS OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
1 Appellants submit the real party in interest is ROSS EUROPA GmbH.
Appeal Br. 1.
Appeal 2016-006566
Application 13/814,829
THE CLAIMED SUBJECT MATTER
Claim 19, reproduced below, is illustrative of the claimed subject
matter.
19. A valve comprising:
a first valve housing portion including an inner end
surface having one of an opening and a protruding annular rim
with an annular groove; and
a second valve housing portion including an inner end
surface having the other of the opening and the protruding
annular rim, wherein a seal is received in the annular groove,
the second valve housing portion includes a passage, and a
manual release is located in the passage;
a pilot that actuates the valve; and
a magnet attached to the second valve housing portion
that actuates the pilot to actuate the valve;
wherein the first valve housing portion and the second
valve housing portion are separate components attached together
to define a valve housing, and the protruding annular rim is
received in the opening to define a valve housing.
REJECTIONS
1) Claim 38 is rejected under 35U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
2) Claims 37 and 38 are rejected under 35U.S.C. § 112, second
paragraph, as being indefinite.
3) Claims 19—21, 24, 25, 29, 32, 33, 36, 37, and 39 are rejected
under 35 U.S.C. § 103(a) as unpatentable over Leibfritz (US 3,540,480,
issued Nov. 17, 1970) and Harms (US 6,286,535 Bl, issued Sept. 11, 2001).
4) Claims 22, 28, and 30 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Leibfritz, Harms, and Bertsch (DE 10 2006 024 762 Al,
published Dec. 6, 2007).
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Application 13/814,829
5) Claims 23, 31, and 38 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Leibfritz, Harms, and Lindquist (US 5,732,678, issued
Mar. 31, 1998).
6) Claims 26, 27, 34, and 35 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Leibfritz, Harms, and Liepold (US 7,350,535 B2,
issued Apr. 1,2008).
DISCUSSION
Rejections 1 and 2: 35 U.S.C. § 112 1st and 2nd Paragraphs
Appellants do not address the rejection of claim 38 under 35 U.S.C.
§ 112, first paragraph, or the rejection of claims 37 and 38 under 35 U.S.C.
§112, second paragraph. See Appeal Br. 3—5. Appellants, thus, waived any
argument of error, and we summarily sustain rejections 1 and 2 with respect
to claims 37 and 38. In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002)
(holding that the Board did not err in sustaining a rejection under 35 U.S.C.
§ 112, second paragraph, when the applicant failed to contest the rejection
on appeal); Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008)
(explaining that summary affirmance without consideration of the
substantive merits is appropriate where an appellant fails to contest a ground
of rejection).
Rejection 3: Obviousness of Claims 19—21, 24, 25, 29, 32, 33, 36, 37, and 39
over Leibfritz and Harms
Claims 19—21, 24, 25, 29, 32, 33, and 39
The Examiner finds that Leibfritz discloses, inter alia, a valve having
a first valve housing, a second valve housing, and a magnet that actuates a
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Application 13/814,829
pilot valve. Final Act. 5 (citing Leibfritz, Fig. 1). The Examiner finds that
Leibfritz does not teach a protruding rim in the second valve housing and an
annular groove in the first valve housing, or a seal in the annular groove, and
that Leibfritz does not disclose that the magnet is attached to the second
valve housing. Id. The Examiner finds, however, that Harms teaches a first
valve housing with an annular groove and a seal in the groove, and a second
valve housing with an annular protrusion and a magnet attached to the
second valve housing. Id. The Examiner concludes that it would have been
obvious to modify the valve of Leibfritz with a protrusion and a groove with
a seal in-between, “in order to locate the housings with respect to each other
at the precise location,” and to have an external magnet “making it easier to
manufacture.” Id. at 5—6.
Appellants argue that by repositioning the magnet of Leibfritz “to be
attached to the housing 4, the specific flow paths of Leibfritz would be
disrupted, changing how Leibfritz operates.” Appeal Br. 3.
The Examiner responds that the flow path of Leibfritz would not be
disrupted because “a person having ordinary skill in the art will [be] able to
assemble the modular electromagnet with pilot exhaust flow path in a fluid
tight manner to second housing by using simple mistake-proofing assembly
aids such as a pin and socket that can be assembled only in the correct
orientation.” Ans. 7. The Examiner states that the location of the
electromagnet in the valve or the flow path disclosed by Leibfritz would,
thus, remain the same and that the proposed “modification would make the
electromagnet modular thereby easier to manufacture.” Id.
Appellants reply that the Examiner’s reason for the modification,
namely, “that the process of manufacturing an electromagnetic-coil winding
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Application 13/814,829
is complex and difficult,” is unclear because Harms also discloses a solenoid
coil. Reply Br. 3. Appellants continue that the “benefit [of] substituting the
solenoid 21 of Leibffitz with the solenoid coil 252 of Harms” is not
apparent. Id. Appellants assert that the Examiner’s modification “would
result in a redesign of the valve of Leibfritz for no reason.” Id.
Although the Examiner finds that Leibfritz does not disclose a magnet
attached to the second valve housing, this finding and part of the rationale
for the combination are based on the mistaken premise that claim 19 requires
the magnet to be located external to the housing. See Final Act. 5—6 (“a
magnet that is replaceable with the valve actuator actuates a valve external
of the magnet’’) (emphasis added). Appellants’ arguments that having the
magnet of Leibfritz “attached to the housing 4” would disrupt the specific
flow paths of Leibfritz, “changing how Leibfritz operates” (Appeal Br. 3),
and that that the Examiner’s modification “would result in a redesign of the
valve of Leibffitz for no reason” (Reply Br. 3) are based on the same
mistaken premise and hence are not commensurate with the scope of claim
19.
Claim 19 recites “a magnet attached to the second valve housing
portion.” Appeal Br. 6 (Claims App.). Claim 19 does not specify where the
magnet is located relative to the second housing. However, claim 37, which
depends from claim 19 recites “the magnetic is external of the second valve
housing.” Id. at 9. The doctrine of claim differentiation provides that “‘the
presence of a dependent claim that adds a particular limitation raises a
presumption that the limitation in question is not found in the independent
claim.’” Bancorp Servs. L.L.C. v. Sun Life Assurance Co. of Can. (U.S.),
687 F.3d 1266, 1275 (Fed. Cir. 2012). Specifying that the magnet is
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Application 13/814,829
external of the second valve housing in claim 37 raises a presumption that an
external attachment is not required in claim 19. If claim 19 were construed
to require the magnet to be located external to the housing, claim 37 would
not further limit claim 19. In such a circumstance, claim 37 would fail to
meet the requirements of either 35U.S.C. § 112, fourth paragraph, or second
paragraph. Consequently, the scope of claim 19, which is necessarily
broader than claim 37, encompasses both an internally attached magnet and
an externally attached magnet. Based on this determination, we find that
Leibffitz discloses a magnet attached to the second valve housing portion.
Leibff itz discloses solenoid 21 attached to the inner walls of housing 20
(second valve housing portion). Leibfritz, col. 2,11. 35—36; Figs. 1 and 2.
We conclude that it would have been obvious to modify Leibfritz to include
an annular groove, seal, and annular protrusion as taught by Harms “in order
to locate the housings with respect to each other at the precise location.”
Final Act. 5. SeeKSRInt’l Co. v Teleflex Inc., 550 US 398, 416 (2007)
(“The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”).
We, thus, sustain the rejection of claim 19. Appellants make the same
arguments for claims 20, 21, 24, 25, 29, 32, 33, and 39 as those made for
claim 19 (Appeal Br. 3—4), and we sustain the rejection of these claims for
the reasons discussed above. As our findings, reasoning and claim
construction differ from the findings, reasoning, and claim construction
presented by the Examiner, we designate our affirmance of the rejection of
claims 19-21, 24, 25, 29, 32, 33, and 39 as a NEW GROUND OF
REJECTION to provide Appellants with a full and fair opportunity to
respond to the rejection.
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Application 13/814,829
Clams 3 6 and 3 7
Claim 36 recites that “the magnet is attached to the outer end surface
of the second valve housing,” and claim 37 recites that “the magnetic is
external of the second valve housing.” Appeal Br. 9 (Claims App.).
Attachment to “the outer end surface” is an external attachment, and
thus, unlike claims 19—21, 24, 25, 29, 32, 33, and 39, claims 36 and 37
require an external attachment. Appellants’ arguments in connection with
claim 19 that modifying the location of the magnet of Leibffitz to be external
to the housing based on the teachings of Harms are persuasive. As
Appellants note, both Leibfritz and Harms use a solenoid as the magnet (see
Reply Br. 3), and the Examiner does not adequately explain why Harms’
solenoid is “easier to manufacture.” Final Act. 6. Even if it is easier to
manufacture Harms’ modular externally attached solenoid than Leibfritz’s
internally attached solenoid, the Examiner’s proposal to add a “pilot exhaust
flow path” through the magnet of Harms (see Ans. 6—7) increases the
complexity of the modular solenoid. Adding a flow path not only requires
pins and sockets as the Examiner proposes, but also requires seals and a
redesign of the magnet to include a flow path where one did not previously
exist. Based on the increased complexity of a redesign and the requirement
to include additional elements, the Examiner’s conclusion that Harms’
solenoid would be “easier to manufacture” is not supported by a rational
underpinning.
For these reasons, we do not sustain the rejection of claims 36 and 37
as unpatentable over Leibfritz and Harms.
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Application 13/814,829
Rejections 4-6
Appellants rely only on the arguments discussed above in connection
with claim 19 to contest Rejections 4—6. See Appeal Br. 4. Accordingly, for
the reasons discussed above, we affirm Rejections 4—6, and we designate our
affirmance as NEW GROUNDS OF REJECTION.
DECISION
The Examiner’s decision rejecting claim 38 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement, is affirmed.
The Examiner’s decision rejecting claims 37 and 38 under 35 U.S.C.
§112, second paragraph, as being indefinite, is affirmed.
The Examiner’s decision rejecting claims 19—39 under 35 U.S.C.
§ 103(a) is affirmed as to claims 19—35, 38, and 39 and is reversed as to
claims 36 and 37. We designate our affirmance of the rejections of claims
19-35, 38, and 39 as NEW GROUNDS OF REJECTION.
FINALITY OF DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides:
When the Board enters such a non-final decision, the
appellants], within two months from the date of the decision,
must exercise one of the following two options with respect to
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Application 13/814,829
the new ground of rejection to avoid termination of the appeal
as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellants] may again appeal to the Board pursuant to
this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART; 37 C.F.R, $ 41.50(b)
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