Ex Parte Junge et alDownload PDFPatent Trial and Appeal BoardAug 19, 201311215151 (P.T.A.B. Aug. 19, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/215,151 08/30/2005 Axel Junge GP-305557 3372 65798 7590 08/20/2013 MILLER IP GROUP, PLC GENERAL MOTORS CORPORATION 42690 WOODWARD AVENUE SUITE 200 BLOOMFIELD HILLS, MI 48304 EXAMINER WALLS, CYNTHIA KYUNG SOO ART UNIT PAPER NUMBER 1726 MAIL DATE DELIVERY MODE 08/20/2013 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 AXEL JUNGE and RAINER IMMEL ____________ Appeal 2012-006243 Application 11/215,151 Technology Center ____________ Before BRADLEY R. GARRIS, ROMULO H. DELMENDO, and LINDA M. GAUDETTE, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-006243 Application 11/215,151 2 Appellants appeal under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 1, 3-13, 15, 16, 18-22, and 27-29. We have jurisdiction under 35 U.S.C. § 6. We REVERSE. Appellants claim a system for delivering fuel from a tank to a fuel consuming device comprising a supply line 56, a shut-off valve 54 having a bellows chamber 66, and a control valve 52 in fluid communication with the shut-off valve through an input line 74 and a control line 88, the input line being in fluid communication with the supply line 56, and the control line being in fluid communication with the bellows chamber 66, wherein the control valve is configured to open the shut-off valve by reducing the fuel pressure in the bellows chamber (independent claim 1; see also remaining independent claim 16 and Fig. 2). A copy of representative claim 1, taken from the Claims Appendix of the Appeal Brief, is set forth below: 1. A system for delivering a fuel from a tank to a fuel consuming device, said system comprising: a supply line configured to receive the fuel within the tank; a shut-off valve positioned within the supply line such that fuel from the tank flows into the shut-off valve through an inlet port and out of the shut-off valve through an outlet port, the shut-off valve including a valve seat biased by a spring that operates to open and close an opening between the inlet port and the outlet port of the shut-off valve to close and open the supply line, the spring being positioned within a bellows that defines a bellows chamber; and Appeal 2012-006243 Application 11/215,151 3 a control valve coupled in fluid communication with the shut-off valve through an input line and a control line, the input line being in fluid communication with the supply line through the inlet port of the shut-off valve, and the control line being in fluid communication with the bellows chamber through a control port in the shut-off valve; wherein the control valve is configured to open the shut- off valve by reducing the fuel pressure in the bellows chamber. Under 35 U.S.C. § 103(a), the Examiner rejects independent claim 1 as unpatentable over Carroll (US 6,142,442 issued Nov. 7, 2000) in view of Horiguchi (US 6,537,692 B1 issued Mar. 25, 2003), Loth (US 5,357,999 issued Oct. 25, 1994), and Hirota (US 6,457,696 B1 issued Oct. 1, 2002), rejects independent claim 16 as unpatentable over Horiguchi in view of Carroll, Loth, and Hirota, and rejects the remaining dependent claims as unpatentable over these references alone or further in view of other prior art. In rejecting independent claims 1 and 16, the Examiner finds that "Carroll discloses an input line 52, but does not disclose the input line being in fluid communication with the supply line 12 through the inlet port of the shut-off valve" (Ans. 7 re claim 1; see also id. at 13 re claim 16). The Examiner concludes that it would have been obvious "to connect the input line 52 of Carroll with the supply line of Carroll 12, as taught by Hirota, for the benefit of providing pressure to the input line 52" (id. at 7, 13; emphasis added). Appellants argue that "the benefit of providing pressure to input line 52 as asserted by the Examiner is no more than a recitation of the result, rather than a convincing line of reasoning as to why one of ordinary skill in the art would modify Carroll to include the pilot route of Hirota" (App. Br. 14). We agree. Appeal 2012-006243 Application 11/215,151 4 "[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) quoted with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The Examiner's obviousness conclusion is not supported by rational underpinning. The Examiner states that an artisan would have connected Carroll's input line 52 with supply line 12 "for the benefit of providing pressure to the input line 52" (Ans. 7, 13). However, the Examiner has cited no teaching or suggestion in Carroll as support for the proposition that it would be beneficial to provide input line 52 with the pressure in supply line 12. For all we know based on the record created by the Examiner, providing this input line with the supply line pressure would render the valve of Carroll incapable of operating in the manner desired. In this latter regard, we note the Examiner's contention that "the modification would necessarily entail altering the functionality of Carroll, but would not change the basic function of providing fluid flow through the valve of Carroll" (id. at 19). This contention lacks persuasive merit because the Examiner has offered no citation to Carroll's disclosure as support for the contention. For the above reasons, we will not sustain any of the § 103 rejections advanced by the Examiner in this appeal. The decision of the Examiner is reversed. Appeal 2012-006243 Application 11/215,151 5 REVERSED bar Copy with citationCopy as parenthetical citation