Ex Parte Dorr

Board of Patent Appeals and Interferences

Aug 17, 2012

10542781 (B.P.A.I. Aug. 17, 2012)

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.
10/542,781 07/20/2005 Walter Dorr 49090 9232
1609 7590 08/17/2012
ROYLANCE, ABRAMS, BERDO & GOODMAN, L.L.P.
1300 19TH STREET, N.W.
SUITE 600
WASHINGTON,, DC 20036
EXAMINER
LOPEZ, FRANK D
ART UNIT PAPER NUMBER
3745
MAIL DATE DELIVERY MODE
08/17/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________
Ex parte WALTER DORR
____________________

Appeal 2010-005280
Application 10/542,781
Technology Center 3700
____________________

Before: PHILLIP J. KAUFFMAN, CHARLES N. GREENHUT, and
JOHN W. MORRISON, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-005280
Application 10/542,781
2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
11-181. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The claims are directed to a piston-type accumulator. Claim 11,
reproduced below, is illustrative of the claimed subject matter:
11. A piston accumulator, comprising:
an accumulator housing forming a cylindrical tube of
magnetizable material and defining an axial direction along a
longitudinal axis thereof, said housing having a gas space and a
hydraulic fluid space;
a piston axially movable along a stroke path in said
cylindrical tube and forming a movable separating element
separating said spaces in said housing, said piston having
radially smaller and larger circumferential sections spaced from
and engaging said cylindrical tube, respectively, and having a
radially extending shoulder surface extending between said
smaller and larger circumferential sections, said smaller
circumferential section located on an end of said piston opening
on said gas space, said larger circumferential section defining
an opposite end of said piston facing said fluid space;
a magnet arrangement mounted on and about said smaller
circumferential section of said piston and generating a field on
said cylindrical tube, said magnet arrangement including first
and second annular rings of magnetizable material and a
plurality of magnet elements with pole end surfaces between
said annular rings with said pole end surfaces abutting said
annular rings, said second annular ring being supported on said
shoulder surface to support said magnet arrangement in a
direction of said hydraulic fluid space; and
a magnet field sensor positioned in an exterior of said
cylindrical tube and including a first Hall sensor generating

1 The Examiner withdrew the rejection of claims 20-24. Ans. 2.
Appeal 2010-005280
Application 10/542,781
3
signals representative of piston positions along said stroke path
in response to said field generated by said magnet elements.

REJECTIONS
Claims 11-18 are rejected under 35 U.S.C. § 103 as being
unpatentable over Peter (US 4,644,976, iss. Feb. 24, 1987), Schabuble (US
6,346,806 B1, iss. Feb. 12, 2002), and Clark (US 3,636,824, iss. Jan. 25,
1972). Ans. 3.

OPINION
Our disposition of this appeal requires resolution of a single issue:
whether it was reasonable for the Examiner to interpret the combination of
Peter’s housing 1 configured as a cylinder, cover 3, and housing tube
member 5 as “a cylindrical tube” (Ans. 8) as recited in claim 11, the sole
independent claim involved in this appeal.
[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in applicant’s specification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). During examination of
a patent application, pending claims are given their broadest reasonable
construction consistent with the specification. In re Prater, 415 F.2d 1393,
1404-05 (CCPA 1969); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). Although the PTO must give claims their broadest
reasonable interpretation, this interpretation must be consistent with the one
that those skilled in the art would reach. In re Cortright, 165 F. 3d 1353,
1358 (Fed. Cir. 1999).
Appeal 2010-005280
Application 10/542,781
4
Prior art references may be ‘indicative of what all those skilled
in the art generally believe a certain term means ... [and] can
often help to demonstrate how a disputed term is used by those
skilled in the art.’ Accordingly, the PTO's interpretation of
claim terms should not be so broad that it conflicts with the
meaning given to identical terms in other patents from
analogous art.
Id. (Citations omitted).
The fact that Peter refers to the elements relied upon by the Examiner
as a distinct cylinder, cover and housing tube member is some evidence that
one of ordinary skill in the art would not understand them to be “a
cylindrical tube.” The Examiner also seems to refer to the housing tube
member 5 as a separate cylinder. Ans. 8. Despite averring it to be so, the
Examiner provides no explanation of why one of ordinary skill in the art
would reach the conclusion that “a cylindrical tube” includes these three
distinct elements. Reply Br. 2. Thus, we cannot agree with the Examiner that
one of ordinary skill in the art would regard the combination of Peter’s
housing 1 configured as a cylinder, cover 3, and housing tube member 5 as
“a cylindrical tube.” Since the Examiner’s determination of obviousness is
based on an incorrect construction of claims 11-18, we cannot sustain the
Examiners rejection. .

DECISION
The Examiner’s rejection of claims 11-18 is reversed.

REVERSED

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