Ex Parte Hain et al

Patent Trial and Appeal Board

Apr 19, 2017

13128933 (P.T.A.B. Apr. 19, 2017)

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.
13/128,933 05/12/2011 Rainer Hain 4174-TWEL 4552
26822 7590 04/21/2017
Hackler Daghighian Martino & Novak
433 North Camden Drive, Fourth Floor
Beverly Hills, CA 90210
EXAMINER
HOANG, MICHAEL G
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
04/21/2017 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):
marc @martinopatentlaw.com
jcf@hdmnlaw.com
marc@hdmnlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAINER HAIN and MARTIN ALLGAIER
Appeal 2015-002216
Application 13/128,9331
Technology Center 3700
Before THOMAS F. SMEGAL, LISA M. GUIJT, and
BRENT M. DOUGAL, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Rainer Hain and Martin Allgaier (Appellants) seek our review under
35 U.S.C. § 134 of the Examiner’s rejection2 under 35 U.S.C. § 103(a) of
claims 1, 3, 6, 7, 11—14, and 16 as unpatentable over Allgaier (DE
102006016566 Al, pub. Mar. 29, 2007) and Taniguchi (US 6,727,473 B2,
iss. Apr. 27, 2004); of claims 8 and 9 as unpatentable over Allgaier,
Taniguchi, and Zach (DE 102008009429 Al, pub. Sept. 18, 2008); of claim
10 as unpatentable over Allgaier, Taniguchi, Zach, and Kern (EP 1881315
1 According to Appellants, the real party in interest is BORGWARNER
BERU SYSTEMS GMBH. Appeal Br. 3.
2 Appeal is taken from the adverse decision of the Examiner as set forth in
the Final Office Action, dated March 7, 2014 (“Final Act.”).
Appeal 2015-002216
Application 13/128,933
A2, pub. Jan. 23, 2008); and of claims 17—19 as unpatentable over Allgaier,
Taniguchi, and Muller (US 5,589,091, iss. Dec. 31, 1996).3 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim, is reproduced below and
illustrates the claimed subject matter, with disputed limitations emphasized.
1. A glow plug, comprising:
a housing;
a ceramic glow pencil having a first end projecting from
the housing and a second end disposed in the housing;
a feed line arranged in the housing and leading to the glow
pencil; and
a sleeve enclosing a first section of the glow pencil
projecting from the housing;
wherein the glow pencil comprises a second section that is
surrounded by the housing and tapered towards the second end;
and
a contact element disposed in the housing and around the
second section of the glow pencil where the glow pencil projects
through the contact element, wherein the contact element
includes a narrowing section configured to surround the tapering
of the second section of the glow pencil forming a
circumferentially continuous annular electrical connection
between the contact element and the second section of the glow
pencil, and wherein the contact element includes at least one
circumferentially continuous annular space between the
contact element and the tapered second section wherein the at
least one circumferentially continuous annular space comprises
3Claims 2, 4, 5, and 15 were canceled in an Amendment filed April 12,
2013.
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Appeal 2015-002216
Application 13/128,933
an increasing gap between the contact element and the second
section of the glow pencil when moving away from the
circumferentially continuous annular electrical connection,
where the at least one circumferentially continuous annular space
is configured to act as a buffer to accept a braze or a solder.
ANALYSIS
Obviousness of Claims 1, 3, 6, 7, 11—14, and 16 over Allgaier and
Taniguchi
Appellants argue claims 1, 3, 6, 7, 11—14, and 16 together in
contesting the rejection of these claims as obvious over Allgaier and
Taniguchi. See Appeal Br. 12—15; Reply Br. 2—4. We select claim 1 as the
representative claim for this group, and the remaining claims stand or fall
with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
Regarding claim 1, the Examiner finds that Allgaier discloses a glow
plug with substantially all of the elements of the claim including, inter alia,
a contact element “forming an annular electrical connection between the
contact element and the second section of the glow pencil” and “at least one
annular space between the contact element and the tapered second section . .
. configured to act as a buffer to accept braze or a solder.” Final Act. 2—3
(citing Allgaier, Fig. 14, || 48, 69, 70). However, the Examiner
acknowledges that Allgaier “does not disclose that the annular electrical
connection between the contact element and the second section of the glow
pencil is circumferentially continuous,” or that “the contact element
includes at least one circumferentially continuous annular space between
the contact element and the tapered second section [having] an increasing
gap between the contact element and the second section of the glow pencil
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Application 13/128,933
when moving away from the circumferentially continuous annular electrical
connection.”4 Id. at 3. (emphasis added).
The Examiner then looks to Taniguchi for disclosing
an annular electrical connection between a contact element and
a section of a glow pencil that is circumferentially continuous
and wherein the contact element includes at least one
circumferentially continuous annular space between the contact
element and the section of the glow pencil, wherein the at least
one circumferentially continuous annular space comprises an
increasing gap between the contact element and the section of
the glow pencil when moving away from the circumferentially
continuous annular electrical connection.
Id. at 4 (citing Taniguchi, Fig. 5A).
Based on the foregoing, the Examiner reasons that it would have been
obvious to apply “the teachings of Taniguchi to Allgaier, i.e. modifying the
space (which has hard solder layer 4) between the second section of the
ceramic glow pencil (which corresponds to ceramic heating conductor 48)
and the contact element (metallic sleeve 47, Fig. 14) of Allgaier,” and that
“[o]ne of ordinary skill in the art at the time the invention was made would
be motivated to do so, [] in order to prevent the glow pencil from sliding out
of the contact element, as suggested by Taniguchi in col. 9: lines 11—16.”
Id. at 4—5.
In taking issue with the analysis and conclusions presented in the
Final Office Action, Appellants first contend that “all of the structures of the
housing (4), silver solders (10), contact elements (3) and circumferential
4 Notably, Figure 2 of Allgaier, described at paragraphs 46 to 48, appears to
illustrate an increasing gap between the contact element 2 and the tapered
second section of the glow pencil.
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Application 13/128,933
groove (32s) [of Taniguchi] are not electrical connections.” Appeal Br. 13;
Reply Br. 2—3. Appellants also point out that “Taniguchi's electrical
connections were made through the power feeding leads 15 and 16 and not
through any of the structure of the circumferential groove 32s, the solder 10
or the metallic cylinder member 3.” Id. at 14 (citing Taniguchi, col. 1,11.
40-52).
In response, the Examiner first explains “[wjhile it is true that
Taniguchi discloses power feeding leads 15 and 16 which feed electric
current to the ceramic heater 2,” . . . Taniguchi discloses that the ‘power
feeding leads 15 and 16 are soldered to those terminals,’” so that ‘“[t]he
heater device thus constructed is able to generate a resistive heat to heat the
ceramic heater 2 by feeding an electric current thereto (i.e. the ceramic
heater 2) through the power feeding leads 15 and id.’” Ans. 3 (citing
Taniguchi, col. 1,11. 48—52).
The Examiner continues by reasoning that
Figure 5A shows a solder layer 10 deposited between the
ceramic heater 2 and the metallic cylinder 3.Since current is
required to run through the ceramic heater 2 in order to
resistively heat the ceramic heater 2, and the solder layer 10 and
metallic cylinder 3 are made of metals, then technically, a
degree of current is running from the ceramic heater 2, through
the solder layer 10, and to the metallic cylinder 3.
Id. From the foregoing, the Examiner concludes that “this cited structural
feature of Taniguchi does, in fact, have an annular electrical connection, as
claimed.” Id.
Furthermore, irrespective of what Appellants contend is disclosed by
Taniguchi, the Examiner is relying on the combination of Taniguchi and
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Application 13/128,933
Allgaier, having observed in the Final Action that “Allgaier was also
indicated to have an annular electrical connection,” reasoning that
[t]he German-English translation of Allgaier discloses in
paragraph 0069 that “"The second contact surface 52 is provided
with a metal sleeve 47 soldered, which forms part of the metallic
case of a glow plug or is connected to and operated at ground
potential . . . The metallic conductor 46 performs the operation
of the glow plug, the positive potential from the electrical system
of the vehicle with a diesel engine.”
Id. at 4. The Examiner explains that “[t]his means that current is running
from the metallic conductor 46 and to the grounded metal sleeve 47, as
shown in Figure 14.” Id. Appellants have not apprised us of any error in the
Examiner’s findings or conclusions regarding this disclosure of Allgaier, and
we find none.
Appellants continue by contending that “Allgaier’s ceramic insulator
49 as seen in Allgaier's FIG. 14 is part of the glow pencil itself. . . and is
not a separate sleeve that goes over the glow pencil,” as compared to
Appellants’ sleeve, which “is a separate structure that protects the glow
pencil from the harsh environmental conditions inside a combustion
chamber . . . but can still abut the contact element or overlap the contact
element when assembled.” Appeal Br. 15; Reply Br. 3^4.
However, we determine the scope of the claims in a patent application
upon giving claims “their broadest reasonable interpretation consistent with
the specification” and “in light of the specification as it would be interpreted
by one of ordinary skill in the art.” In re Am. Acad, of Sci. Tech Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004). Thus, regarding the claim recitation of “a
sleeve enclosing a first section of the glow pencil projecting from the
housing,” as the Examiner explains, “when taking the language of the claims
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Application 13/128,933
into consideration, ... it is proper to interpret the conductor 48 to be a
separate glow pencil structure with a ceramic insulator 49, interpreted to be a
separate sleeve structure around the glow pencil structure.” Ans. 5. We
agree.
Appellants also contend that “Allgaier simply never teaches where the
contact element abuts to the sleeve, where the contact element and the sleeve
overlap each other, where a sleeve is connected to the housing via a sealing
element, where a sleeve and the contact element are manufactured from
different materials or where the glow pencil is press-fitted into the sleeve.”
Appeal Br. 15. However, each of Appellants’ contentions are unavailing as
they are not commensurate with the scope of claim 1, which does not recite
any of the alleged distinctions from the teaching of Allgaier. See Appeal Br.
17, Claims App. As we are instructed by our reviewing court, “limitations
are not to be read into the claims from the [Specification.” In re Van
Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citing In reZletz, 893 F.2d
319, 321 (Fed. Cir. 1989)); see also In re Self, 671 F.2d 1344, 1348 (CCPA
1982).
For the foregoing reasons, we discern no error in the Examiner’s
findings and sustain the Examiner’s unpatentability rejection of claims 1,3,
6, 7, 11—14, and 16 over Allgaier and Taniguchi.
Obviousness of Claims 8 and 9 over Allgaier, Taniguchi, and Zach;
and of Claim 10 over Allgaier, Taniguchi, Zach, and Kern
Other than observing “these rejections are also unsupportable because
the base combination of Allgaier with Taniguchi did not equate to the
Applicant's invention,” (Appeal Br. 15), we understand Appellants’ appeal
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Application 13/128,933
of the rejections of claims 8—10 to rest on the arguments presented against
the rejection of claim 1, which we found not demonstrative of error in the
Examiner’s rejection of claims 1, 3, 6, 7, 11—14, and 16 over Allgaier and
Taniguchi, as set forth supra. Therefore, we sustain the Examiner’s
unpatentability rejection of claims 8 and 9 over Allgaier, Taniguchi, and
Zach; and of Claim 10 over Allgaier, Taniguchi, Zach, and Kern.
Obviousness of Claims 17—19 over as unpatentable over Allgaier,
Taniguchi, and Muller
Although claims 17—19 are not separately argued, Appellants contend
that the “Examiner uses Muller on page 11 of the Office Action to teach a
first tapered end of a glow pencil but still relied upon Allgaier to teach a
sleeve, to which it does not.” Appeal Br. 15. Thus, we understand
Appellants’ appeal of the rejection of claims 17—19 to rest on the arguments
presented against the rejection of claim 1, which we found not demonstrative
of error in the Examiner’s rejection of claims 1, 3, 6, 7, 11—14, and 16 over
Allgaier and Taniguchi, as set forth supra. Accordingly, we sustain the
Examiner’s unpatentability rejection of claims 17—19 over Allgaier,
Taniguchi, and Muller.
DECISION
We AFFIRM the Examiner’s rejections.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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