RB Distribution, Inc.

Patent Trials and Appeals Board

Oct 30, 2020

2020005999 (P.T.A.B. Oct. 30, 2020)

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.
16/239,233 01/03/2019 Tam Van NGUYEN RBI-PT082 9595
3624 7590 10/30/2020
Volpe Koenig
30 SOUTH 17TH STREET, 18TH FLOOR
PHILADELPHIA, PA 19103
EXAMINER
MACKAY-SMITH, SETH WENTWORTH
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
10/30/2020 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):
eoffice@volpe-koenig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAM VAN NGUYEN
Appeal 2020-005999
Application 16/239,233
Technology Center 3700
Before BRETT C. MARTIN, MICHAEL J. FITZPATRICK, and
MICHAEL L. WOODS, Administrative Patent Judges.
WOODS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 21 and 25–31.1 Appeal Br. 3. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies RB Distribution, Inc. as the real party in
interest. Appeal Br. 3.
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Application 16/239,233

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CLAIMED SUBJECT MATTER
The Specification describes a solenoid control valve that is allegedly
“easier to assemble and less prone to leakage.” Spec. ¶ 6. Claim 21 is the
sole independent claim. See Appeal Br. 14–15 (Claims App.). Below, we
reproduce claims 21 and 25, with emphasis added to particular limitations
addressed in our decision:
21. A hydraulic fluid solenoid comprising:
a one-piece metallic valve body having: a closed end; an
open end that includes a base portion; a central opening that
extends between the closed end and the open end and
communicates with a plurality of fluid ports;
a movable armature has a first portion positioned in the
central opening of the valve body and a second portion that
extends beyond the base of the valve body;
a bobbin has wire windings that define a central recess
dimensioned to receive the second portion of the movable
armature extending beyond the base;
a bobbin surround supports the bobbin;
a housing having a closed end and an open end that
receives the bobbin surround and the valve body with the second
portion of the movable armature extending beyond the base;
a grommet with a central opening, the grommet is
positioned on the bobbin surround within the housing and around
the second portion of the movable armature completely
surrounds the central recess in the bobbin; and,
wherein the open end of the housing is crimped over the
base of the valve body and the grommet stabilizes the bobbin
surround within the housing.

25. The solenoid of claim 21, wherein the plurality of
ports are covered by a respective filter.
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Appeal Br. 14 (Claims App.) (emphasis added).
REFERENCE
The prior art relied upon by the Examiner is Najmolhoda et al., U.S.
7,673,597 B2, issued March 9, 2010 (hereinafter “Najmolhoda”).
REJECTIONS
The following rejections are before us on appeal:
Claims Rejected 35 U.S.C. § Reference(s)/Basis
21, 26–29 112(a) Written Description
25–29 112(b) Indefiniteness
21, 25–31 103 Najmolhoda
Final Act. 5–11.
OPINION
I. Claims 21 and 26–29 Rejected for Lacking Written Description
Support
The Examiner rejects claims 21 and 26–29 under 35 U.S.C. § 112(a)
for failing to comply with the written description requirement. Final Act. 5–
6.
Claim 21 recites, “a grommet [that] completely surrounds the central
recess in the bobbin.” Appeal Br. 14 (Claims App.) (emphasis added). The
Examiner finds that there “is no support for an unbroken washer,” which we
understand to be the claimed grommet that “completely surrounds the
central recess.” See Final Act. 5. The Examiner asserts that “none of the
figures, either alone or in combination, depict the grommet as a complete
circle.” Id. at 3.
In response, Appellant argues that the “Examiner’s characterization of
the figures is wrong.” Appeal Br. 8.
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Appellant has the better position.
Figures 2 and 3 of the Specification together depict an “unbroken”
grommet. To illustrate, we reproduce Figures 2 and 3, below:

Figure 2 (above-left) is a cross-sectional view of a solenoid valve. See Spec.
¶¶ 9, 10, 40. “Figure 3 [(above-right)] is an exploded view illustrating the
spool valve and bobbin housing or can before assembly.” Id. ¶ 11.
Together, these views depict grommet 74 that completely surrounds
armature 50. If grommet 74 did not completely surround armature 50,
Figure 3 would depict grommet 74 with dashed lines to illustrate the location
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Application 16/239,233

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of the discontinuity. We further note that the Specification describes “shelf
72 that receives grommet 74 and an internal O-ring 76.” Id. ¶ 43. By its
name, an O-ring is circular and completely surrounds that which it is sealing,
in this case, the mating surface between grommet 74 and bobbin housing 14.
See id. at Figs. 2, 3. Figure 2 along with its associated description at
paragraph 43 support a finding that grommet 74 sits in close mating
relationship with O-ring 76 and within shelf 72, and we find that a skilled
artisan would have understood that grommet 74 must also be circular, or
otherwise unbroken, so that the O-ring can provide a proper seal.
For this reason, we do not sustain the written description rejection of
claim 21.
The Examiner also rejects claims 26–29 for lacking written
description support. See Final Act. 5–6. The Examiner does not reject these
claims for being dependent from independent claim 21, as discussed above,
but for an additional reason. See id. In particular, the Examiner points out
that claim 25 recites a “filter” and claims 26 and 28 further recite an “exit
port,” yet exit port is not described in the specification as having a filter. See
id. at 6.
Appellant does not specifically respond to the rejection of claims 26–
29. See generally Appeal Br.; see also generally Reply Br. Absent any
argument, we summarily affirm the rejection of claims 26–29 for lacking
written description support.
For the foregoing reasons, we reverse the rejection of claim 21 but
affirm the rejection of claims 26–29 under 35 U.S.C. § 112(a).

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II. Claims 25–29 Rejected as Indefinite
The Examiner rejects claims 25–29 under 35 U.S.C. § 112(b) for
being indefinite. Final Act. 6. In particular, the Examiner finds that the
claim limitation, “the plurality of ports,” lacks antecedent basis. Id. In the
Answer, the Examiner explains, “it is unclear if Appellant’s intent is to
further limit the fluid ports recited in Claim 21.” Ans. 4. The Examiner
further finds that claims 26–29 “are rejected as depending from an indefinite
claim.” Final Act 7.
We do not sustain the rejection. We understand the claimed “the
plurality of ports” (recited in dependent 25) to have first been recited in
independent claim 21 as “a plurality of fluid ports.” Appeal Br. 14 (Claims
App.). The omission of the word “fluid” in dependent claim 25 does not
render the claim indefinite.
For the foregoing reasons, we do not sustain the indefiniteness
rejection of claims 25–29.

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III. Claims 21 and 25–31 Rejected as Unpatentable over Najmolhoda
In rejecting independent claim 21, the Examiner cites to
Najmolhoda’s Figure 1 and finds that Najmolhoda discloses the claimed
features with the exception of (1) a specific material for a valve body and (2)
a washer that completely surrounds a central recess. Final Act. 8–10. We
reproduce Najmolhoda’s Figure 1, below:

Figure 1 “is a longitudinal sectional view of a hydraulic fluid supply passage
of a hydraulic valve lifter activation/deactivation system . . . and an engine
oil solenoid actuated fluid control valve.” Najmolhoda, 2:36–39. The
Examiner finds that Figure 1 depicts a solenoid with a one-piece valve body
(12a through 12f) having closed end (17, 21), open end (at 12f) that includes
base portion (12f), central opening (26) that extends between the closed and
open ends and communications with a plurality of fluid ports (EP, CP, SP),
movable armature (52) with first portion (19) positioned in central opening
(26) and second portion (53) that extends beyond base (12f). Final Act. 8.
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Application 16/239,233

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As to the claimed “bobbin surround,” the Examiner submits a
partially-annotated version of Najmolhoda’s Figure 1, which we reproduce,
below:

The Examiner finds that the above-annotated figure depicts grommet (80)
positioned on bobbin surround (A) within housing (64) and surrounding the
central recess (at 52). See id. at 9, 10.
The Examiner acknowledges that “Najmolhoda does not specifically
teach a washer [“grommet” 80] that completely surrounds a central recess,”
but reasons that “such a feature is merely an obvious variation of
Najmolhoda.” Id. The Examiner explains, “Najmolhoda teaches
‘approximately’ 85%, which is read as including other percentages such as
100% [and] that a ‘washer’ is notoriously well known in the art to take an
unbroken circular form, as admitted by Applicant.” Id. at 9–10. The
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Examiner further asserts that “Appellant has admitted that an unbroken
washer is prior art.” Ans. 3 (citation omitted).
In contesting the rejection, Appellant points out that Najmolhoda
explicitly discloses that “washer 80 extends approximately 85% of the
periphery of armature 52.” Reply Br. 5 (quoting Najmolhoda, 6:66–67).
Appellant submits its own partially-annotated portion of Najmolhoda’s
Figure 1, which we reproduce below:

According to Appellant, the above figure depicts structure—denoted by the
dashed-line rectangular box—that precludes Najmolhoda’s washer 80 from
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being modified to be unbroken, or otherwise completely surrounding
armature 52. Id.
Appellant’s argument is persuasive. Simply because unbroken
washers exist in the prior art does not persuade us that a skilled artisan
would have modified Najmolhoda’s washer 80 to “completely surround”
armature 52. We do not find anything in Najmolhoda that teaches washer 80
as being anything but “about approximately 85% of the periphery of
armature 52.” Najmolhoda, 6:64–67. We also agree with Appellant that
Najmolhoda’s Figure 1 appears to disclose structure that would prevent
washer 80 from being modified to “completely surround” armature 52. See
Reply Br. 5.
For these reasons, we do not sustain the Examiner’s rejection of
independent claim 21 as unpatentable in view of Najmolhoda, or of
dependent claims 25–31, which inherit the same rejection infirmity. See
Final Act. 10–11.
CONCLUSION
The Examiner’s written description rejection of claim 21 is reversed.
The Examiner’s written description rejection of claims 26–29 is
affirmed.
The Examiner’s indefiniteness rejection of claims 25–29 is reversed.
The Examiner’s prior art rejection of claims 21 and 25–31 is reversed.

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Application 16/239,233

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DECISION SUMMARY
In summary:

Claims
Rejected
35 U.S.C. § Reference/Basis Affirmed Reversed
21 112(a) Written
Description
21
26–29 112(a) Written
Description
26–29
25–29 112(b) Indefinite 25–29
21, 25–
31
103 Najmolhoda 21, 25–31
Overall
Outcome
26–29 21, 25,
30, 31

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART