Ex Parte Fassbender et al

Board of Patent Appeals and Interferences

Jun 26, 2009

10489566 (B.P.A.I. Jun. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte BAD HOMBURG GmbH
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Appeal 2009-002920
Application 10/489,566
Technology Center 3700
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Decided: June 29, 2009
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Before JAMESON LEE, SALLY C. MEDLEY, and MICHAEL P.
TIERNEY, Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
This is a decision on appeal by the real party in interest, Bad Homburg
GmbH (BHG), under 35 U.S.C. § 134(a) from a final rejection of claims 12-
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25. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part and
enter new grounds of rejection.

References Relied on by the Examiner
Gettel 5,111,660 May 12, 1992

The Rejections on Appeal
The Examiner rejected claims 12-25 under 35 U.S.C. § 103(a) as
unpatentable over Gettel.

The Invention
The invention relates to a pump for use as a power-assisted steering
pump that includes each of a flow-control valve and an electrically
adjustable bypass throttle valve. (Spec. 2: ¶ 0004.)
Independent claim 12 is reproduced below (Claims App’x 7:1-10):
12. A pump comprising:

a flow-control valve having a hydraulic resistance; and

an electrically adjustable bypass throttle valve disposed in
parallel to the flow-control valve wherein the pump further includes at
least one of:

(a) a cover and a variable position connector connecting
the cover to the electrically adjustable bypass throttle valve; and

(b) a pump housing and a flow control valve housing, the
electrically adjustable bypass throttle valve being vertically
above the flow control valve housing or being on a back side of
the pump housing axially behind the flow control valve
housing.
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B. ISSUES
1. Has BHG shown that the Examiner was incorrect in finding that
Gettel discloses a flow control valve?
2. Has BHG shown that the Examiner was incorrect in finding that
Gettel discloses a flow control valve housing?
3. Has BHG shown that the Examiner erred in determining that it
would have been obvious to a person of ordinary skill in the art to arrange
Gettel’s electronically variable orifice vertically above a flow control valve
housing?
4. Has BHG shown that the Examiner was incorrect in finding that
Gettel discloses a primary throttle valve?
C. FINDINGS OF FACT
1. Gettel discloses a flow control system for regulating the flow
rate between a pump and a steering gear in an automotive power steering
system. (Gettel 2:25-27.)
2. In Gettel, element 94 is disclosed as a relief valve spool that,
along with other components including discharge port orifice 84, forms a
flow control valve. (Id. at 4:55-61.)
3. Orifice 84 includes a passage 114 that allows a flow of
hydraulic fluid from a pump to a steering gear. (Id. at 5:6-9.)
4. Passage 114 includes a fixed or constant size orifice and is
arranged in parallel with an electronically variable orifice 105 that also
fluidly connects the pump and steering gear. (Id. at 5:18-21.)
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5. Gettel’s Figure 4 is reproduced below and illustrates the
arrangement of fixed orifice 114 and the electronically variable orifice1
between the pump outlet and steering gear (Id. at 5:25-27):

Figure 4 depicts a schematic of a power steering pump.
6. As shown in Figure 4 and described in Gettel, the flow of
hydraulic fluid through each of the fixed orifice of passage 114 and the
electronically variable orifice 105 are added together to collectively supply
hydraulic fluid to the steering gear. (Id. at 5:39-42.)
7. Gettel also discloses that the flow rate through passage 114 can
be adjusted through operation of the flow control valve independently and
without affecting the position of the electronically variable orifice. (Id. at
5:21-27.)
8. The flow volume controlled by the electronically variable
orifice being substantially less than the total flow volume supplied to the
steering gear. (Id. at 2:53-57.)

1 Evidently, in Figure 4, electronically variable orifice 105 has been
mislabeled using reference character 104.
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9. In Gettel, the flow-control valve “opens and closes an orifice of
constant size connecting the pump outlet to a power steering gear.” (Id.
Abstract.)
10. The flow-control valve is contained within bore 14. (Id. at
4: 8-9.)
11. Gettel’s Figure 1 is reproduced below:

Figure 1 depicts an isometric view of a power steering pump.

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12. Gettel’s Figure 3, reproduced below, shows “a cross section
through the power steering relief valve and adjacent housing” during
operation of the pump. (Id. at 3:45-47).

Figure 3 depicts a cross section of a power steering pump.
13. Gettel discloses that electronically variable orifice 105 which
forms an electrically adjustable bypass throttle valve is engaged by screw
threads in bore 16. (Id. at 4:66-68).
14. Gettel also discloses that bore 16 forms a portion of the power
steering pump which also contains the flow control valve. (Id. at 4:6-11.)
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15. Parameters for controlling the flow rate through the
electronically variable orifice include “the speed of the vehicle and steering
wheel.” (Id. at 5:10-15.)
16. Gettel also discloses that its flow control system regulates flow
rate based on “vehicle speed, steering wheel velocity, steering wheel torque,
and other measurable parameters.” (Id. at 2:25-30.)
17. A portion of BGH’s specification reads (Spec. 1: ¶ 0002):
Flow-control valves are also known, which in response to
increasing engine speed, i.e. increasing motor vehicle speed,
reduce the volumetric flow to the steering system, in order to
give the driver a more direct steering sensation at high speeds.
Flow-control valves of this kind have, for example, a control
pin having a conical end, which is positioned in an annular
orifice. As the flow-control valve continues to open, the
primary throttle valve, made upon of this control pin and the
annular orifice, closes more and more, thereby reducing the
volumetric flow streaming to the steering system.
D. PRINCIPLES OF LAW
The simple substitution of one known element for another is likely
obvious if it does no more than yield predictable results. See KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 417 (2007).
A reference only teaches away when it suggests the developments
flowing from its disclosure are unlikely to produce the objective of the
applicant’s invention. Syntex (U.S.A) LLC v. Apotex, Inc., 407 F.3d 1371,
1380 (Fed. Cir. 2005).
E. ANALYSIS
The Examiner rejected claims 12-25 as obvious in view of the
teachings of Gettel. We address the claims in the following two groupings:
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(1) claims 12, 13, 16, 17, 19, 20, 24, and 25; and (2) claims 14, 15, 18, and
21-23.
Claims 12, 13, 16, 17, 19, 20, 24, and 25
Dependent claims 13, 16, 17, 19, 20, 24, and 25 are argued
collectively with independent claim 12. We focus on the disputed
limitations. BHG disputes that Gettel discloses “a flow-control valve.”
The Examiner found that Gettel’s element 114 is a flow control valve.
BHG argues that element 114 is simply a passageway and does not
correspond to the claimed valve because it does not regulate a flow of
materials. (Reply Br. 2:7-15.) BGH contends that the Examiner has not
identified any other component in Gettel as forming the claimed flow-
control valve. (Id. at ll. 15-18.)
BHG’s argument is not persuasive. The Examiner found that Gettel’s
“flow-control valve 114” also includes “a control piston 94.” (Ans. 4:4-5.)
Thus, the Examiner did not rely solely on element 114 as satisfying the
claimed flow-control valve. Gettel discloses element 94 as a relief valve
spool that, along with other components including discharge port orifice 84,
forms a flow control valve. (Gettel 4:55-61.) Gettel also discloses that
orifice 84 includes a passage 114 that allows a flow of hydraulic fluid from a
pump to a steering gear. (Id. at 5:6-8.) Passage 114 has a fixed or constant
size orifice and is arranged in parallel with an electronically variable orifice
105 that also fluidly connects the pump and steering gear. (Id. at 5:18-21.)

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Gettel’s Figure 4 is reproduced below and illustrates the arrangement
of fixed orifice 114 and electronically variable orifice 105 (mislabeled as
104) between the pump outlet and steering gear (Id. at 5:25-27):

Figure 4 depicts a schematic of a power steering pump.
As shown in Figure 4 and described in Gettel, the flow of hydraulic
fluid through each of the fixed orifice of passage 114 and the electronically
variable orifice 105 are added together to collectively supply hydraulic fluid
to the steering gear. (Id. at 5:39-42.) Gettel also discloses that the flow rate
through passage 114 can be adjusted through operation of the flow-control
valve independently and without affecting the position of the electronically
variable orifice. (Id. at 5:21-27.) Further, the flow-control valve “opens and
closes an orifice of constant size connecting the pump outlet to a power
steering gear.” (Id. Abstract.) Thus, the constant sized orifice of passage
114 forms the portion of the flow-control valve in which flow of fluid is
regulated between a pump and a power steering gear.
We reject BHG’s argument that Gettel does not disclose a flow-
control valve as required in claim 12.
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BHG also disputes that Gettel discloses “a flow-control valve
housing.” The Examiner pointed to Gettel’s Figure 4 as satisfying that
requirement. (Ans. 3:13-14.) According to BHG, Figure 4 is a schematic
only and does not show a flow-control valve housing. BHG also argues that
such a housing would not be inherent or obvious in light of Gettel’s
disclosure. (App. Br. 4:3-11.)
The schematic that is Gettel’s Figure 4 does not depict or show a
housing for a flow-control valve. However, Gettel’s Figures 1-3 are not
only schematics and they do show the structural characteristics of its power
steering system.
Gettel’s Figure 1 is reproduced below:

Figure 1 shows an isometric view of a power steering pump.
Gettel discloses that the power steering pump includes a flow-control
valve that is contained within bore 14. (Id. at 4:8-9.) As shown in Figure 1,
bore 14 forms a cylindrical opening within a surrounding structure at an
upper portion of the pump.
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Gettel’s Figures 2 and 3 are similar to one another and each show “a
cross section through the power steering relief valve and adjacent housing”
during operation of the pump. (Id. at 3:41-47). That language indicates that
the power steering relief valve, i.e. the flow-control valve, has a housing and
that the housing is depicted in Figures 2 and 3.
Figure 3 is reproduced below:

Figure 3 depicts a cross section of a power steering pump.
As shown in Figure 3, the components of the flow-control valve are
entirely contained within bore 14. In light of the teachings of Gettel, one
with ordinary skill in the art would have recognized that bore 14 forms the
opening in a housing that surrounds and contains the flow-control valve.
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Lastly, BHG disputes that Gettel satisfies the requirement of “the
electrically adjustable bypass throttle valve being vertically above the flow
control valve housing.” (App. Br. 4:12-14.)
The Examiner does not disagree with BGH that Gettel lacks the
above-noted arrangement of components. To remedy the deficiency, the
Examiner reasoned that (Ans. 5:20-6:2):
It would have been obvious to one having ordinary skill in the art at
the time the invention was made to arrange the valves in that order to
make the electronically adjusted valve more readily available to the
user for servicing and observation.

BHG argues that a person of ordinary skill in the art would have
avoided placing Gettel’s valve components in the claimed vertical
configuration. According to BHG, that configuration “would make the
valve less accessible as it is further away from pump 10.” (App. Br. 4:21-
22.)
BHG’s argument is not persuasive. BHG argues that the valve would
be “less accessible” if spaced from a pump. Yet, BHG does not explain its
reasoning in concluding that the accessibility of a valve is determined based
on the valve’s distance from a pump. Neither does BHG offer any expert
testimony or affidavit evidence that substantiates the argument. Mere
argument of counsel cannot take the place of evidence lacking in the record.
Estee Lauder Inc. v. L'Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997).
Accordingly, the argument is rejected.
In any event, an obviousness analysis is not limited to determining the
single best or most desirable configuration of components. That a
component is less accessible or otherwise less than optimally arranged in
one configuration does not make that configuration non-obvious. In this
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case, a person of ordinary skill in the art would have recognized that
components of a power steering pump may be arranged in different
configurations. If it is the case that one configuration provides less
accessibility than another, one with ordinary skill in the art may simply
recognize that difference among alternative viable configurations.
For all the foregoing reasons, we sustain the rejection of claims 12,
13, 16, 17, 19, 20, 24, and 25 as unpatentable over Gettel.
Claims 14, 15, 18, and 21-23
Claim 14 is dependent on claim 12 and adds the limitation that “the
flow-control valve includes a control piston and a primary throttle valve.”
Claims 15, 18, 21, 22, and 23 are each dependent on claim 14.
We focus on the requirement in claim 14 of a primary throttle valve.
The Examiner found that requirement satisfied by Gettel’s element 114.
(Ans. 4:5.) BHG contends that element 114 is simply a passageway or
aperture and is not a primary throttle valve as claimed. (App. Br. 4:26-5:2;
Reply Br. 2:7-13.)
As disclosed in BHG’s specification, a primary throttle valve is an
adjustable component that assumes variable configurations for regulating a
volumetric flow of fluid. (Spec. 4-5: ¶ 0017.)
Gettel describes element 114 as either a “passage” (Gettel 5:7) or an
“aperture” (Id. at 5:30-31). Gettel does not disclose passage 114 as a
primary throttle valve or even simply a valve. Although, as noted above,
passage 114 forms part of a flow-control valve, flow through that passage is
controlled by operation of other portions of the flow control valve, such as
spool 94 and compression spring 98. (Id. at 5:36-42.) The Examiner does
not explain how passage 114 taken alone forms an adjustable component
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that itself regulates flow. We do not see how passage 114 itself forms a
primary throttle valve.
We do not sustain the rejection of claim 14 as unpatentable over
Gettel.
Claims 15, 18, 21, 22, and 23 are each dependent on claim 14 and are
rejected based on the Examiner’s incorrect premise that Gettel’s passage 114
is a primary throttle valve. We also do not sustain the rejection of those
claims as unpatentable over Gettel.
New Grounds of Rejection
The Examiner has directed our attention to a portion of BHG’s
specification describing known prior art flow-control valves. (Ans. 7:2-4.)
In particular, a portion of BHG’s paragraph 0002 reads (Spec. 1: ¶ 0002):
Flow-control valves are also known, which in response to increasing
engine speed, i.e. increasing motor vehicle speed, reduce the
volumetric flow to the steering system, in order to give the driver a
more direct steering sensation at high speeds. Flow-control valves of
this kind have, for example, a control pin having a conical end, which
is positioned in an annular orifice. As the flow-control valve
continues to open, the primary throttle valve, made up of this control
pin and the annular orifice, closes more and more, thereby reducing
the volumetric flow streaming to the steering system.

BHG does not dispute that the above-quoted portion of its
specification describes known components of prior art flow-control valves.
That is, BHG admits that prior art flow-control valves that operate to control
fluid flow to steering systems are known to include a primary throttle valve
made up of a control pin and an annular orifice. In light of BHG’s admitted
prior art, we exercise our authority pursuant to 37 C.F.R. § 41.50(b) and
enter new grounds of rejection of claims 14, 15, 18, and 21-23.
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Claims 14, 15, 18, and 21-23 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Gettel and the admitted prior art described in
paragraph 0002 of BHG’s specification.
Claim 14 is dependent on claim 12 and adds the limitation that “the
flow-control valve includes a control piston and a primary throttle valve.”
Claim 15 is dependent on claim 14 and adds the limitation that “the
primary throttle valve includes a control pin and an annular orifice.”
With reference to the Examiner’s rejection of claim 12 appearing in
the Examiner’s Answer and in light of our analysis set forth above, we find
that the teachings of Gettel account for all the limitations of claims 14 and
15 with the exception that a flow-control valve includes a primary throttle
valve that is made up of a control pin and an annular orifice. However, as
disclosed in the admitted prior art appearing in paragraph 0002 of BHG’s
specification, flow-control valves having those features are known in the art.
The simple substitution of one known element for another is likely
obvious if it does no more than yield predictable results. See KSR Int’l Co.,
550 U.S. at 417. Here, each of the admitted prior art flow-control valve and
Gettel’s flow-control valve are known valve assemblies for controlling a
fluid flow supplied to a power steering system. The level of ordinary skill in
the power steering pump art is such that one with ordinary skill would have
recognized that one known prior art flow-control valve may be substituted
for another. In other words, a skilled artisan would have understood that
BHG’s admitted prior art flow-control valve would predictably operate to
control a flow of fluid to a power steering system when substituted for the
flow-control valve in Gettel.
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Claim 18 is dependent on claim 14 and adds the limitation that “a
pressure differential acting on the bypass throttle valve is the same as a
pressure differential acting on the primary throttle valve.”
In rejecting claim 18 over Gettel, the Examiner pointed to the parallel
configuration of Gettel’s flow control valve and electronic variable orifice
shown in Figure 4 and found that the pressure differential acting on each
valve is the same. (Ans. 7:7-9.) BHG contends that that Gettel “teaches
away” from having the same pressure differentials. (App. Br. 5:14-16.)
With reference to BHG’s Figure 1 and as explained in the
specification at page 6, paragraph 0019, the pressure differential for each
valve is calculated by subtracting the pressure P2 at the input of the power-
assisted steering system from the pressure P1 at the output of the pump.
That is, because the valves are arranged in parallel with the same flow input
pressure P1 and output pressure P2, the pressure differential acting on each
valve is the same.
A reference only teaches away when it suggests the developments
flowing from its disclosures are unlikely to produce the objective of the
applicant’s invention. Syntex (U.S.A) LLC, 407 F.3d at 1380. Here, as
shown in Figure 4, Gettel discloses that its flow-control valve with
passageway 114 and electronically variable orifice 105 are also arranged in
parallel between the outlet port 112 of pump 10 and the input pressure tube
116 that leads to the steering gear. In light of that disclosure, we find that
the pressure differentials acting on Gettel’s flow-control valve and
electronically variable orifice are the same. BHG does not explain why
Gettel’s disclosure would not produce the same pressure differential across
the valves.
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Claim 21 is dependent on claim 14 and adds the limitation that “the
electrically adjustable bypass throttle valve is installed onto an existing
pump having the flow control valve.”
Gettel discloses that electronically variable orifice 105 which forms
an electrically adjustable bypass throttle valve is engaged by screw threads
in bore 16. (Gettel 4:66-68.) Gettel also discloses that bore 16 forms a
portion of the power steering pump which also contains the flow control
valve. (Id. at 4:6-11.) Those teachings of Gettel satisfy the above-quoted
limitation of claim 21.
Claims 22 is dependent on claim 14 and adds the limitation that “the
primary throttle valve provides a basic volumetric flow rate to a steering
system with or without electrical power and wherein the electrically
adjustable bypass throttle valve is configured to modify the basic volumetric
flow rate to a modified volumetric flow rate according to at least one
parameter.”
Gettel discloses that each of its flow control valve with fixed orifice
passage 114 and its electrically variable orifice 105 independently supply
and adjust a flow of fluid between the pump outlet and the steering gear.
(Gettel 5:21-27.) In Gettel, the flows are added to one another (Id. at 5:39-
42) with the flow volume controlled by the electronically variable orifice
being substantially less than the total flow volume supplied to the steering
gear (Id. at 2:53-57). In light of the teachings of Gettel, a person of ordinary
skill in the art would have recognized that the flow rate through the fixed
orifice of Gettel’s flow-control valve is a “basic volumetric flow rate” that is
modified by the flow rate through the electrically variable orifice. When a
flow-control valve having a primary throttle valve, such as that disclosed in
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BHG’s admitted prior art, is substituted for Gettel’s flow control valve, the
flow rate through the primary throttle valve would also constitute the basic
volumetric flow rate.
Gettel further discloses that electronically variable orifice 105 controls
fluid flow in response to a parameter, such as the speed of a vehicle. (Id. at
5:10-17.) The combined teachings of Gettel and the admitted prior art
satisfy the limitation added by claim 22.
Claim 23 is dependent on claim 22 and adds the limitation that “the at
least one parameter includes at least one of a driving speed, an engine speed,
a cornering behavior, a braking characteristic, a vehicle stability, a steering
angle, a steering-wheel angular velocity, a wheel speeds and a wheel slip.”
Gettel discloses that parameters for controlling the flow rate through
the electronically variable orifice include “the speed of the vehicle and
steering wheel.” (Gettel 5:10-15.) Gettel also discloses that flow rate is
varied based on “vehicle speed, steering wheel velocity, steering wheel
torque, and other measurable parameters.” (Id. at 2:25-30.) Gettel satisfies
the added limitation of claim 23.
F. CONCLUSION
1. BHG has not shown that the Examiner was incorrect in finding
that Gettel discloses a flow-control valve.
2. BHG has not shown that the Examiner was incorrect in finding
that Gettel discloses a flow-control valve housing.
3. BHG has not shown that the Examiner erred in determining that
it would have been obvious to a person of ordinary skill in the art to arrange
Gettel’s electronically variable orifice vertically above a flow-control valve
housing.
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4. BHG has shown that the Examiner was incorrect in finding that
Gettel discloses a primary throttle valve.
G. ORDER
The rejection of claims 12, 13, 16, 17, 19, 20, 24, and 25 under 35
U.S.C. § 103(a) over Gettel is affirmed.
The rejection of claims 14, 15, 18, and 21-23 under 35 U.S.C.
§ 103(a) as unpatentable over Gettel is reversed.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of
rejection . . . shall not be considered final for judicial review.” That section
also provides that BHG, WITHIN TWO MONTHS FROM THE DATE OF
THE DECISION, must exercise one of the following two options with
respect to the new ground of rejection to avoid termination of the appeal as
to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to the
examiner….

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same
record….

AFFIRMED-IN-PART
New ground of rejection under 37 C.F.R. § 41.50(b) (2008)

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MAT

Davidson Davidson & Kappel, LLC
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