15422580 - (D) (P.T.A.B. Jul. 1, 2020)

CONTINENTAL AUTOMOTIVE FRANCE et al.

Patent Trials and Appeals BoardJul 1, 2020

15422580 - (D) (P.T.A.B. Jul. 1, 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. 15/422,580 02/02/2017 Philippe LEHUE 0563-1385 1056 466 7590 07/01/2020 YOUNG & THOMPSON 209 Madison Street Suite 500 Alexandria, VA 22314 EXAMINER MACKAY-SMITH, SETH WENTWORTH ART UNIT PAPER NUMBER 3753 NOTIFICATION DATE DELIVERY MODE 07/01/2020 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): DocketingDept@young-thompson.com yandtpair@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte PHILIPPE LEHUE Appeal 2019-006034 Application 15/422,580 Technology Center 3700 ____________ Before BIBHU R. MOHANTY, MICHAEL C. ASTORINO, and BRADLEY B. BAYAT, 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 1–17 and 21–23. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 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 Continental Automotive France. Appeal Br. 2. Appeal 2019-006034 Application 15/422,580 2 STATEMENT OF THE CASE Claimed Subject Matter Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A motor vehicle solenoid valve (10), comprising: a fixed body (20) intended to be mounted in a hydraulic system of the vehicle, a cylindrical coil support (40) mounted on said fixed body (20), the fixed body (20) extending along a longitudinal axis (X) in the coil support (40), the coil support comprising a first part extending along the longitudinal axis (X), a second top part extending radially from a top of the first part, and a third bottom part extending radially from a bottom of the first part, a mobile body (30) slidingly mounted in said fixed body (20) through said coil support (40), at least a first coil winding (50) arranged about the first part of the coil support (40) within the top part and the bottom part of the coil support (40), the at least a first coil winding (50) being suitable for generating a magnetic field for control of the sliding of said mobile body (30), the at least a first coil winding (50) having an outer surface, and a second coil winding (60) arranged about the outer surface of the first coil winding (50) in order to contain the magnetic field generated by said first coil winding (50), the first coil winding (50) and the second coil winding (60) being coaxial, the second coil winding located radially outside the top and bottom parts of the coil support (40) and extending from the bottom part of the coil support (40) to the top part of the coil support (40). Appeal 2019-006034 Application 15/422,580 3 Rejections Claims 1–17 and 21–23 are rejected under 35 U.S.C. § 112(b) as indefinite. Claims 1–17 and 21–23 are rejected under 35 U.S.C. § 103 as unpatentable over Heyer et al. (US 2014/0048732 A1, pub. Feb. 20, 2014) (“Heyer”) in view of Xu et al. (US 5,668,516, iss. Sept. 16, 1997) (“Xu”). ANALYSIS Indefiniteness The Examiner rejects claims 1–17 and 21–23 as indefinite because “the top part” and “the bottom part,” as recited in claims 1, 2, and 23, lack antecedent basis. Final Act. 3. The Appellant does not present an argument for this rejection. Ans. 11. We summarily sustain the Examiner’s rejection of claims 1–17 and 21–23 as indefinite as no arguments have been presented. Obviousness The Examiner finds that Heyer teaches the subject matter of claim 1 except for a second coil winding. See Final Act. 4–5. The Examiner finds that Xu teaches a first coil winding (main magnet coil 36c) and a second coil winding (bucking magnet coils 38) radially positioned outside of the first coil winding 36c. Id. at 5. The Examiner modifies Heyer’s teachings with the teaching of Xu and finds that the result of the modification yields some but not all of the subject matter of claim 1, in particular “locating the outer coil between the ends of the inner coil support.” Id. In other words, the Examiner finds that the combined teachings of Heyer and Xu fail to teach Appeal 2019-006034 Application 15/422,580 4 “the second coil winding located radially outside the top and bottom parts of the coil support (40) and extending from the bottom part of the coil support (40) to the top part of the coil support (40),” as recited in claim 1. To remedy the deficiency of the combined teachings of Heyer and Xu, the Examiner reasons that it would have been obvious to one of ordinary skill in the art to further modify Heyer’s valve such that the second coil, as taught by Xu, would extend between the ends of the coil support of Heyer (element number 1.13 (Fig. 1a)) because this further modification is a simple rearrangement of parts that involves only routine skill in the art. See Final Act. 5–6 (citing In re Japikse, 181 F.2d 1019 (CCPA 1950)); Ans. 11. The Appellant disputes the further modification of Heyer’s valve because the reasoning in the Examiner’s rejection lacks a proper motivation. Reply Br. 8–9. The Appellant’s argument is persuasive. In this case, the Examiner’s reasoning to further modify Heyer’s valve is inadequate to support the obviousness rejection. Among other things, the Examiner fails to compare the relevant facts of Japikse to the relevant facts particular to the modification of Heyer’s valve in this case. In Japikse, the court held that moving a starter switch to a location different from the prior art was an unpatentable difference because the operation of the device would not be modified. See In re Japikse, 181 F.2d at 1023. The Examiner fails to adequately explain how the further modification of Heyer’s valve would not have modified the operation of Heyer’s valve. Therefore, we determine that the Examiner’s reasoning lacks articulated reasoning with rationale underpinning to support the rejection of record. Thus, we do not sustain the Examiner’s rejection of claims 1–17 and 21–23. Appeal 2019-006034 Application 15/422,580 5 CONCLUSION In summary: Claims Rejected 35 U.S.C. § References/Basis Affirmed Reversed 1–17, 21–23 112(b) Indefinite 1–17, 21–23 1–17, 21–23 103 Heyer, Xu 1–17, 21– 23 Overall Outcome 1–17, 21–23 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED