Robert Bosch GmbH

Patent Trials and Appeals Board

Mar 16, 2022

2021005488 (P.T.A.B. Mar. 16, 2022)

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. 16/340,960 04/10/2019 Marcus Ertle 2178-2079 8090 10800 7590 03/16/2022 Maginot, Moore & Beck LLP One Indiana Square, Suite 2200 Indianapolis, IN 46204 EXAMINER KEASEL, ERIC S ART UNIT PAPER NUMBER 3753 MAIL DATE DELIVERY MODE 03/16/2022 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 MARCUS ERTLE, STEPHAN STEINGASS, CARSTEN BODMANN, HANS-PETER BARTOSCH, STEPHAN KNACKERT, and PHILIPP MUELLER Appeal 2021-005488 Application 16/340,960 Technology Center 3700 ____________ Before MICHAEL C. ASTORINO, KENNETH G. SCHOPFER, and TARA L. HUTCHINGS, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 1-5 and 7-12. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as “Robert Bosch GmbH is the assignee of this patent application.” Appeal Br. 2. Appeal 2021-005488 Application 16/340,960 2 STATEMENT OF THE CASE Claimed Subject Matter Claim 1, the sole independent claim, is representative of the subject matter on appeal and is reproduced below. 1. A solenoid valve for controlling a brake pressure of a wheel brake of a slip-controllable hydraulic brake system of a motor vehicle, the solenoid valve comprising: a valve insert; a valve seat; an armature; a valve element positioned between the armature and the valve seat, and positioned at least partly in the valve insert in a longitudinally movable manner so as to be configured to interact with the valve seat, wherein: the valve element includes a contact surface that operatively connects that valve element to the armature; and the contact surface is configured such that a central axis of the valve element and the contact surface form a non-right-angled intersection; a spring device with a force component that acts on the valve element, in an installed position of the valve element, in an opening direction with respect to the valve seat; and an electromagnetic actuator configured to actuate the valve element in a closing direction with respect to the valve seat. Appeal Br. 18, Claims App. References The prior art relied upon by the Examiner is: Name Reference Date Leidig US 8,998,167 B2 Apr. 7, 2015 Voss et al. (“Voss”) US 6,644,623 B1 Nov. 11, 2003 Appeal 2021-005488 Application 16/340,960 3 Rejections2 Claim 1 is rejected under 35 U.S.C. § 102(a)(1) as anticipated by Leidig. Claims 1-5 and 7-12 are rejected under 35 U.S.C. § 103(a) as unpatentable over Voss and Leidig. ANALYSIS Rejection of claim 1 as anticipated by Leidig Independent claim 1 recites, “the valve element includes a contact surface that operatively connects that valve element to the armature; and the contact surface is configured such that a central axis of the valve element and the contact surface form a non-right-angled intersection.” Supra. In other words, claim 1 requires a non-right-angle intersection formed between the valve element’s central axis and contact surface. The Examiner finds that the combination of tappet 42, valve tappet plate 46, and valve element 52 corresponds to the claimed “valve element” and the top of tappet 42 corresponds to the claimed “contact surface.” Final Act. 5; see Leidig col. 2, ll. 45-47, col. 3, ll. 21-27, Fig. 1. The Examiner finds that the intersection between the valve element’s central axis and contact surface forms a non-right-angle. See Final Act. 5. The Appellant argues that the Examiner fails to support the finding that Leidig’s intersection between valve element’s central axis and contact surface forms a non-right-angle. See Appeal Br. 10-12; Reply Br. 3-6. The Appellant’s argument is persuasive. 2 The Examiner has withdrawn the rejection of claim 5 under 35 U.S.C. § 112(b) as indefinite. Ans. 3. Appeal 2021-005488 Application 16/340,960 4 At the outset, we note that the Specification provides guidance to one of ordinary skill in the art as to the meaning of the “central axis of the valve element.” See Spec. 5:14-21. The Specification describes: The central axis of the valve element is taken to mean a virtual axis which passes through the geometrical center of the cross section of the valve element. Here, the central axis is parallel with the circumferential surface of the valve element. The central axis extends from the main sealing element to the end facing the armature. In doing so, it may follow any curvature of the valve element. Id.; see Reply Br. 4; see also Spec. 2:20-28 (discussing Figure 1 (prior art), which depicts valve element 6, main sealing element 6.2 and magnet armature 4). The Specification also provides guidance to one of ordinary skill in the art that the valve element’s “contact surface,” among other things, is a virtual surface. Spec. 5:21-35. The Specification describes: The contact surface is furthermore taken to mean a virtual surface which delimits the valve element and, in doing so, forms a contact surface with respect to the armature when the two components are in contact with each other in the installed position. It is defined by means of individual bearing points or, alternatively, bearing surfaces. The contact surface can also consist of a plurality of contact points or a plurality of partial contact surfaces. The contact surface is generally flat, i.e.[,] two dimensional. The contact surface should therefore be taken to mean an inclined virtual plane at the end of the valve element which faces the armature, wherein there are thereon contact points which define a bearing situation between the valve element and the armature. Id. Further, the Specification discloses various embodiments of the valve element. Id. at 16:15-25, 17:19-18:22, Figs. 3a-4c. Figures 4a and 4b are examples of the embodiments and are shown below: Appeal 2021-005488 Application 16/340,960 5 Figures 4a and 4b each show a schematic view of the upper region of valve element 6, projection(s) 6.3, end 6.4, central axis 6.5, contact surface 6.6, and angle a, which is defined between central axis 6.5 and contact surface 6.6. See Spec. 18:8-18. The Appellant submits that the alleged upper contact surface of Leidig’s tappet 42 appears to form a right angle relative to the central axis of the tappet. See Appeal Br. 7-12; Leidig Fig. 1. The Appellant annotates a portion of Leidig’s Figure 1 to support this position. Reply Br. 4. The annotated figure is shown below: Id. This figure shows a portion of a sectional view of Leidig’s solenoid valve, including tappet 42, valve tappet plate 46, valve element 52, and an Appeal 2021-005488 Application 16/340,960 6 annotation that identifies the central axis of tappet 42 by use of a dashed line. See Leidig col. 2, ll. 45-47. We find that the Appellant’s identification of the central axis of tappet 42 is also the central axis of the combination of tappet 42, valve tappet plate 46, and valve element 52 (i.e., the structures that the Examiner identifies as the claimed “valve element”). See Reply Br. 4-5. Additionally, we find that the dashed line represents the only axis that is consistent with the guidance of the “central axis of the valve element” as provided in the Specification and that intersects with the top of tappet 42 (i.e., Leidig’s alleged contact surface). See Ans. 3 n.1. The Examiner’s response fails to provide an alternative and supportable understanding of the claimed “central axis of the valve element,” which is required to be at a non- right-angle with respect to the contact surface, or the central axis of the combination of tappet 42, valve tappet plate 46, and valve element 52 (i.e., the structures that the Examiner identifies as the claimed “valve element”). See generally Ans. 4. We find persuasive the Appellant’s contention that Leidig does not explicitly or inherently disclose that the central axis of tappet forms a non- right-angle relative to the upper surface of tappet 42. See Appeal Br. 10-12; Reply Br. 5-6 n.1. Put simply, there is inadequate disclosure in Leidig to support a finding that the intersection between the central axis of the combination of tappet 42, valve tappet plate 46, and valve element 52 and the top of tappet 42 is at a non-right-angle. Therefore, we cannot agree with the Examiner that Leidig discloses that “the contact surface is configured such that a central axis of the valve element and the contact surface form a non-right-angled intersection” as recited by independent claim 1. Appeal 2021-005488 Application 16/340,960 7 Thus, we do not sustain the Examiner’s rejection of claim 1 under 35 U.S.C. § 102(a)(1) as anticipated by Leidig. Rejection of claims 1-5 and 7-12 as unpatentable over Voss and Leidig The Examiner’s rejection of claim 1 as unpatentable over Voss and Leidig relies on the same inadequately supported finding as discussed above; i.e., that Leidig discloses “contact surface is configured such that a central axis of the valve element and the contact surface form a non-right-angled intersection,” as recited by claim 1. See Final Act. 6-8. Thus, we do not sustain the Examiner’s rejection of claims 1-5 and 7-12 under 35 U.S.C. § 103(a) as unpatentable over Voss and Leidig. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1 102 Leidig 1 1-5, 7-12 103 Voss, Leidig 1-5, 7-12 Overall Outcome 1-5, 7-12 REVERSED