Ex Parte Miller

Patent Trial and Appeal Board

Dec 8, 2015

12305567 (P.T.A.B. Dec. 8, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/305,567 11130/2009 Frank Miller
26646 7590 12/10/2015
KENYON & KENYON LLP
ONE BROADWAY
NEW YORK, NY 10004
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1019115736 5681
EXAMINER
GORMAN, DARREN W
ART UNIT PAPER NUMBER
3752
NOTIFICATION DATE DELIVERY MODE
12/10/2015 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):
uspto@kenyon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK MILLER
Appeal2013-010523
Application 12/305,567
Technology Center 3700
Before MURRIEL E CRAWFORD, HUBERT C. LORIN, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant 1 appeals under 35 U.S.C. § 134 from the Examiner's
rejections of claims 12-25. We have jurisdiction over this appeal under 35
U.S.C. § 6(b ).
We AFFIRM.
1 "The real party in interest in the present appeal is ROBERT BOSCH
GmbH." (Appeal Br. 1.)
Appeal2013-010523
Application 12/305,567
STATEMENT OF THE CASE
The Appellant's invention relates generally to a "dosing device" for
the delivery of fuel "without difficulty in especially high ambient
temperatures." (Spec. 3, lines 2-27.)
Illustrative Claim2
12. A dosing device for delivery of liquid fuels into one
of a chemical reformer, a postcombustion device for generation
of heat, an exhaust tract, and a particulate filter, comprising:
a metering line;
at least one metering device configured to meter fuel into
the metering line; and
a conditioning unit adjoining the metering line,
configured to deliver the fuel into a metering chamber,
wherein the conditioning unit is an elongated member
having a purely mechanical valve at a downstream end, the
conditioning unit having no electrical connections.
Rejections
I. The Examiner rejects claim 19 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
(Final Action 3.)
II. The Examiner rejects claims 12-16, 18, 20-22, and 24 under
35 U.S.C. § 102(b) as anticipated by Krohn (US 5,947,091 issued Sept. 7,
1999). (Id. at 5.)
III. The Examiner rejects claims 17, 23, and 25 under 35 U.S.C.
§ 103(a) as unpatentable over Krohn. (Id. at 7.)
2 This illustrative claim is quoted from the Claims Appendix ("Claims
App.") accompanying the Appeal Brief.
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Application 12/305,567
ANALYSIS
Claims 12, 23, and 24 are the independent claims on appeal, with the
rest of the claims on appeal (i.e., claims 13-22 and 25) depending therefrom.
(Claims App.) The claims on appeal are directed to "[a] dosing device for
delivery of liquid fuels," comprising "a metering line," "at least one
metering device," and "a conditioning unit." (Id.)
Rejection I
Dependent claim 19 recites that the dosing device further comprises
"a receptacle provided with cooling fins into which the conditioning unit is
introduced." (Claims App.) The Examiner determines that the subject
matter of claim 19 was not described in the Specification in such a way as to
reasonably convey to one of ordinary skill in the art that the inventor had
possession of this claimed subject matter at the time the application was
filed. (See Final Action 3--4.) The Appellant argues that the Examiner errs
in making this determination. (See Appeal Br. 3; Reply Br. 2-3.) As
discussed below, the Appellant's position is not persuasive.
The Appellant's arguments are premised, primarily, on a sentence in
the original Specification and a recital in an original claim. (See Appeal
Br. 3; Reply Br. 2.) The relevant sentence states that the conditioning unit
"may additionally be placed inside a receptacle provided with cooling fins"
(Spec. 8, lines 23-25) and the relevant claim recites a dosing device
"wherein" the conditioning device "is introduced into a receptacle which is
provided with cooling fins" (id. at 10, claim 8). However, this statement and
this recital convey that the dosing device can be used in combination with a
finned receptacle, which is different from the dosing device comprising a
finned receptacle.
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Application 12/305,567
As such, we agree with the Examiner that "[t]here is no discussion in
the originally specification which supports the claimed dosing device 'further
comprising: a receptacle provided with cooling fins into which the
conditioning unit is introduced', and thus the requirements of35 U.S.C.
§ 112, first paragraph, are not satisfied with respect to claim 19." (Answer 2.)
Thus, we sustain the Examiner's rejection of dependent claim 19
under 35 U.S.C. § 112, first paragraph.
Rejection II
As indicated above, independent claims 12 and 24 each require the
dosing device to comprise a metering device, a metering line, and a
conditioning unit. (Claims App.) The Examiner finds that Krohn discloses
a dosing device comprising a metering device (injection valve 10), a
metering line (bore 11 defined by casing 17), and a conditioning unit (outlet
valve 30). (See Final Action 5; see also Krohn Fig. 1.) The Appellant
argues that the Examiner's findings regarding the claimed metering line and
the claimed conditioning unit are flawed. (See Appeal Br. 3-5; Reply Br. 3.)
As discussed below, the Appellant's position is not persuasive.
Regarding the claimed "metering line," the Appellant contends "one
of ordinary skill in the art would not consider a bore to constitute a metering
line." (Appeal Br. 4.) However, the Appellant does not sufficiently explain
what structural features one of ordinary skill would deem necessary for
something to be considered a "metering line." Also, as noted by the
Examiner, Appellant's disclosed and depicted metering line is a "tubular
fluid pathway located between the metering device and the conditioning
unit." (Answer 3, see also Spec. Fig. 1.) Moreover, the Appellant does not
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Application 12/305,567
point, with particularity, to claim limitations corresponding to features of the
metering line that are allegedly absent in Krohn's bore 11.
As such, we agree with the Examiner that Krohn' s bore 11 can be
considered the claimed metering line. (See Answer 3.) Accordingly, we are
not persuaded by the Appellant's argument that a metering line is absent in
Krohn's dosing device, and therefore we are also not persuaded by the
Appellant's arguments premised upon such an alleged absence. 3
With respect to the claimed "conditioning unit," the Appellant
contends "it is the casing 17 together with heating elements 23, electric line
25 and valve 30" that "together constitute a conditioning unit." (Appeal Br.
4.) In other words, the Appellant contends that Krohn's outlet valve 30,
alone, cannot constitute the claimed conditioning unit. However, as noted
by the Examiner, none of these additional components "are necessarily
required to be considered as constituting any part of valve 30 or the
mechanical operations thereof." (Answer 4.) Moreover, the Appellant does
not point, with particularity, to claim limitations corresponding to features of
the conditioning unit that are allegedly absent in Krohn's outlet valve 30.
As such, we agree with the Examiner that Krohn's outlet valve 30
alone can be considered the claimed conditioning unit. (See Answer 4.)
Accordingly, we are not persuaded by the Appellant's argument that
3 Specifically, for example, we are not persuaded by the Appellant's
arguments that because Krohn does not disclose a metering line, it also does
not disclose: a metering line between the metering device and the
conditioning unit (Appeal Br. 4), a metering line distinct from the metering
device and the conditioning unit (id.), a metering line proceeding from an
adapter (i.e., Krohn's mounting sleeve 18) (id. at 5), and/or a metering line
having a specified shape (id.) and/or a metering line having a specified
length (id. at 6).
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Application 12/305,567
Krohn' s conditioning unit does not meet certain claim limitations as a
consequence of components (i.e., casing 17, heating elements 23, electrical
line 25) other than outlet valve 30.4
Thus, we sustain the Examiner's rejection of independent claims 12
and 24 under 35 U.S.C. § 102(b). As dependent claims 13-16, 18, and 20-
22, are not argued separately (see Appeal Br. 5), we also sustain the
Examiner's rejections of these claims under 35 U.S.C. § 102(b).
Rejection III
Independent claim 23 includes many of the same limitations as
independent claims 1 and 24 regarding the metering line and the Examiner
makes similar findings. (See Final Action 8-9.) For the same reasons as
discussed above, we are not persuaded by the Appellant's arguments that
Krohn does not disclose a metering line; and we are not persuaded by the
Appellant's arguments that because Krohn does not disclose a metering line,
claimed features associated with the metering line cannot be disclosed
thereby. (See Appeal Br. 6.)
Likewise, we are not persuaded by the Appellant's arguments that,
because Krohn does not disclose a metering line, claimed features associated
with the metering line cannot be obvious therefore. (See Appeal Br. 6.) 5
4 Specifically, for example, we are not persuaded by the Appellant's
argument that, because Krohn's conditioning unit has electrical connections
for heating elements 23 and electrical line 25, and Krohn's conditioning unit
does not meet a claim limitation requiring the conditioning unit to have no
electrical connections. (See Appeal Br. 4.)
5 Specifically, for example, we are not persuaded by the Appellant's
argument that Krohn "does not even refer to any metering line provided
between its injection valve 10 and outlet valve 30," and therefore cannot
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Thus, we sustain the Examiner's rejection of independent claim 23
under 35 U.S.C. § 103(a). As dependent claims 17 and 25 are not argued
separately or further (see Appeal Br. 5), we also sustain the Examiner's
rejections of these claims under 35 U.S.C. § 103(a).
DECISION
We AFFIRM the Examiner's rejections of claims 12-25.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED.
tkl
show or suggest "any specified length of a metering line." (Appeal Br. 6.)
The Appellant's arguments do not address, for example, why it would not
have been obvious to modify the dimensions of Krohn's bore 11 so as to
have "a length of 10 cm to 100 cm" as required by independent claim 23.
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