Ex Parte Coolens et al

Patent Trial and Appeal Board

Feb 27, 2018

13307607 (P.T.A.B. Feb. 27, 2018)

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.
13/307,607 11/30/2011 Holger Coolens 508983 9875
53609 7590 03/01/2018
REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
EXAMINER
CAHILL, JESSICA MARIE
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
03/01/2018 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):
RockMail@reinhartlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HOLGER COOLENS, MATTHIAS HERZEL,
KLAUS BENDL, GABRIELE GORBACH, ERICH AMANN,
GERD REICHLE, and TOBIAS MICHAEL GRUHLER
Appeal 2016-006160
Application 13/307,60V1
Technology Center 3700
Before STEFAN STAICOVICI, LEE L. STEPINA, and
ANTHONY KNIGHT, Administrative Patent Judges.
KNIGHT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
decision rejecting claims 1-3, 6, 8-10, 13, 14, 18, 20-23, 26, 28, and 32-
39.2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is ElringKlinger
AG. Appeal Br. 2.
2 Claims 4, 5, 7, 11, 16, 17, 19, 24, 25, 27, and 29-31 have been withdrawn
and claims 12 and 15 have been canceled. Appeal Br. 15-18, Claims
Appendix.
Appeal 2016-006160
Application 13/307,607
CLAIMED SUBJECT MATTER
The claims are directed to “an oil separator unit provided for vehicle
drives.” Spec. ^ 2. Claim 1, the sole independent claim, is representative of
the claimed subject matter and is reproduced below:
1. An oil separator unit provided for vehicle drives, comprising
an oil separator housing with an oil collecting device, a
drainage system and a check valve unit comprising a valve
housing, a valve seat and a valve element, said valve element
comprising a valve member of an umbrella-shaped design,
having a stem connected thereto, and consisting of an
elastomer, the valve member of the valve element is connected
to an insert part by the stem extending through and guided by
an opening in the insert part, the valve element and stem are
movable as a whole, relative to the insert part and the valve
seat, between a closed position and an open position, and
wherein the insert part is, for its part, inserted into an insert part
receptacle provided in the valve housing.
Appeal Br. 15, Claims Appendix.
REJECTIONS
The Examiner made the following rejections:
I. Claims 1-3, 6, 8-10, 13, 14, 18, 20-23, 26, 28, 32, and 36-39
stand rejected under 35 U.S.C. § 103(a) as unpatentable over Burgess (US
2001/0054418 Al, published Dec. 27, 2001) and Savard (US 2008/0142102
Al, published June 19, 2008).
II. Claims 33-35 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Burgess, Savard, and Yonebayashi et al. (US 7,631,639
B2, issued Dec. 15, 2009)(hereinafter “Yonebayashi”).
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Appeal 2016-006160
Application 13/307,607
OPINION
Rejection I— The rejection of claims 1—3, 6, 8—10, 13, 14, 18, 20—23, 26, 28,
32, and 36^39 under 35 U.S.C. § 103(a)
In rejecting claim 1, the Examiner finds that Burgess teaches inter
alia, “an oil separator housing (57),” “a valve housing (housing around the
valve; see Fig. 3),” “a valve element (140/144),” “an insert part (124),” and
“an insert part receptacle (98+57 together; see Figs. 4+6; connector and
space provided by 98+57 for the receptacle as so broadly recited) provided
in the valve housing (see Fig. 4).” Final Act. 3—4. The Examiner relies
upon Savard to teach that a check valve can be made of an elastomer.
Appellants respond that “the valve pan 124 of Burgess does not
satisfy the requirements for the insert part of claim 1 in that the valve pan
124 is not inserted into an insert part receptacle in the valve housing, as
required by claim 1.” Appeal Br. 6. Further, according to Appellants, the
Examiner’s “interpretation would require that the valve pan 124 of Burgess,
identified as the claimed insert part, be inserted into a combination of the
impermeable end cap 98 and crankcase emission control system housing
57.” Id. at 7.
As the Examiner explains further in the Examiner’s Answer,
The insert part receptacle (i.e., the space between
elements 98 and 57) is in the valve housing, which is the
housing (57 surrounding the valve). The insert part (124) is
shown inserted into a receptacle in the valve housing in Fig. 4.
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Application 13/307,607
The claims do not clarify the shape, exact location or other
specific features of the valve housing.
Ans. 10.
Appellants respond that “the requirements for the claimed insert part
receptacle cannot be satisfied by empty space. Claim 1 requires that the
insert part is inserted into the insert part receptacle provided in the valve
housing.” Reply Br. 5. Thus, according to Appellants “it is clear from the
instant Specification and claims that the insert part receptacle is a structural
component of the oil separator unit whose limitations cannot be satisfied by
empty space.” Id.
Claims are to be given their broadest reasonable interpretation
consistent with the specification, reading claim language in light of the
specification as it would be interpreted by one of ordinary skill in the art. In
re Am. Acad. ofSci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
However, “[t]he protocol of giving claims their broadest reasonable
interpretation . . . does not include giving claims a legally incorrect
interpretation.” In re Skvorecz, 580 F.3d 1262, 1267 (Fed. Cir. 2009).
An ordinary and customary meaning of the term “receptacle” is “a
container, device . . . that receives or holds something.” See
www.dictionary.com/browse.receptacle, last visited February 27, 2018.
Such a construction is consistent with Appellants’ Specification, which
describes the insert part receptacle as the “insert part receptacle which is
designated as a whole as 80 and has an insert part support element 82 with a
passage 84, through which the holding sleeve 62 of the insert part 60 can be
pushed.” Spec. ^ 89; see also Fig. 2. Thus, in light of Appellants’
Specification, the insert part receptacle constitutes a structural part (device)
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Application 13/307,607
having a passage for receiving an insert part. As such, we agree with
Appellants that in light of Appellants’ Specification a reasonable
interpretation of the phrase “insert part receptacle” is not that of a void or
recess. See Reply Br. 5. Therefore, for the foregoing reasons, we do not
agree with the Examiner’s finding that Burgess discloses an “insert part
receptacle,” as called for by claim 1. See Final Act. 4.
The Examiner relies upon Savard to teach the use of an elastomer;
however, this does not make-up for the deficiencies in Burgess. See id.
Accordingly, the rejection of claim 1 is not sustained.
Claims 2, 3, 6, 8-10, 13, 14, 18, 20-23, 26, 28, 32, and 36-39 are
dependent upon and incorporate all of the limitations of claim 1. Appeal Br.
15-18, Claims Appendix. Thus, the rejection of claims 2, 3, 6, 8-10, 13, 14,
18, 20-23, 26, 28, 32, and 36-39 based upon Burgess and Savard is likewise
not sustained.
Rejection 2 — The rejection of claims 33—35 under 35 U.S.C. § 103(a)
With respect to the obviousness rejection based upon the combined
teachings of Burgess, Savard, and Yonebayashi, the Examiner relies on the
same erroneous findings with respect to Burgess discussed supra. See Final
Act. 9.
The Examiner does not rely upon Yonebayashi to cure the
deficiencies of Burgess. See id. Therefore, for the same reasons discussed
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Application 13/307,607
above, we also do not sustain the rejection under 35 U.S.C. § 103(a) of
claims 33-35 as unpatentable over Burgess, Savard, and Yonebayashi.
DECISION
The Examiner’s decision to reject claims 1-3, 6, 8-10, 13, 14, 18, 20-
23, 26, 28, and 32-39 under 35 U.S.C. § 103 is reversed.
REVERSED
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