Ex Parte Hoang

Patent Trial and Appeal Board

Dec 18, 2014

11658464 (P.T.A.B. Dec. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ANH-TUAN HOANG
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Appeal 2012-0115491
Application 11/658,464
Technology Center 3700
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Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the rejection of
claims 8, 11, 14, 15, 18, and 23.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
According to the Specification, Appellant’s invented a “fuel injector
. . . [with] the advantage that the valve sleeve is made of a material having

1 Appellant identifies ROBERT BOSCH GmbH as the real party in interest.
See Appeal Br. 1.
2 Our decision references Appellant’s Specification (“Spec.,” filed Jan. 24,
2007, as amended), Appeal Brief (“Appeal Br.,” filed May 2, 2012), and
Reply Brief (“Reply Br.,” filed Aug. 3, 2012), as well as the Examiner’s
Answer (“Answer,” mailed June 5, 2012).
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low magnetic permeability[] so that losses in the magnetic flux through the
armature of the fuel injector are able to be avoided and the magnetic force is
available in full” to actuate the fuel injector. Spec. 1, l. 25 – 2, l. 2. Claim 8,
which we reproduce below, is the only independent claim under appeal, and
is indicative of the appealed claims.
8. A fuel injector for a fuel-injection system of
an internal combustion engine, comprising a
solenoid coil, an armature cooperating with the
solenoid coil, a valve sleeve, and a support tube
situated in the valve sleeve, which is used as inner
pole for the solenoid coil, wherein the valve sleeve
is made of a material having low magnetic
permeability, wherein the material is a powder
composite material containing iron and non-
magnetic components;
wherein the saturation induction of the valve
sleeve amounts to less than 1 Tesla.
Appeal Br. Claims App.

REJECTION AND PRIOR ART
Appellant appeals the Examiner’s rejection of claims 8, 11, 14, 15, 18,
and 23 under 35 U.S.C. § 102(b) as anticipated by, or in the alternative
under 35 U.S.C. § 103(a) as unpatentable over, Bonnah (US 6,464,153 B1,
iss. Oct. 15, 2002).

ANALYSIS
We have carefully considered Appellant’s arguments. Inasmuch as
we do not find Appellant’s arguments to be persuasive, we sustain the
rejection of claims 8, 11, 14, 15, 18, and 23 for the below reasons.
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Independent claim 8, upon which the remaining claims depend, is
rejected under both Sections 102 and 103. Appellant argues that Bonnah
does not teach or suggest independent claim 8’s recitation of a valve sleeve
made of a powder composite material containing iron and non-magnetic
components. See Appeal Br. 3–4; see also Reply Br. 2–4. We agree with
the Examiner’s statement that “Bonnah teaches 300 series stainless steels,
[and] this is a group of alloys that is in fact specifically iron and non-
magnetic components.” Answer 2. When the claimed and prior art products
are identical or substantially identical in structure or composition, or are
produced by identical or substantially identical processes, a prima facie case
of either anticipation or obviousness has been established. See In re Best,
562 F.2d 1252, 1255 (CCPA 1977). “[W]hen the PTO shows a sound basis
for believing that the products of the applicant and the prior art are the same,
the applicant has the burden of showing that they are not.” In re Spada, 911
F.2d 705, 708 (Fed. Cir. 1990) (citations omitted). Further, the Examiner’s
prima facie case may be rebutted by evidence showing that the prior art
products do not necessarily possess the characteristics of the claimed
product. See In re Best, 562 F.2d at 1255. In this instance, the Examiner
provides the required basis because Bonnah teaches a stainless steel
material, which is understood by one of ordinary skill to include iron and
non-magnetic materials. Inasmuch as Appellant does not submit evidence
sufficient to rebut the Examiner’s prima facie case, we do not reverse the
rejection based on this argument.
Appellant argues that Bonnah does not teach or suggest forming a
valve sleeve from a powder. See Appeal Br. 3–4; see also Reply Br. 2–4.
We agree with the Examiner’s statement that it was known by one of
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ordinary skill to form stainless steel from powder. See Answer 2.
Irrespective of the above finding that is sufficient to sustain the rejection,
claims directed to an apparatus must be distinguished from the prior art in
terms of structure. Further, once the Examiner provides a rationale tending
to show that the claimed product appears to be the same or similar to that of
the prior art, although produced by a different process, the burden shifts to
Appellant to come forward with evidence establishing an unobvious
difference between the claimed product and the prior art product. See In re
Marosi, 710 F.2d 799, 802 (Fed. Cir. 1983). In this instance, Appellant does
not provide evidence sufficient to establish there is a structural difference
resulting from forming a sleeve from powder as compared to another
method. Thus, we do not reverse the rejection based on this argument.
Appellant argues Bonnah does not teach or suggest a saturation
induction of the valve sleeve amounts to less than 1 Tesla. See Appeal
Br. 4–5; see also Reply Br. 4–5. For the reasons discussed above, the
Examiner has the required basis for believing that the claimed invention and
Bonnah are structurally identical to support a prima facie rejection under
Sections 102 and 103, and thus Appellant has the burden to establish a non-
obvious difference to overcome the rejection. Inasmuch as Appellant does
not submit evidence sufficient to rebut the Examiner’s prima facie case, we
do not reverse the rejection based on this argument.
Based on the foregoing, we sustain the rejection of independent
claim 8, as well as the rejection of claims 11, 14, 15, 18 and 23 that depend
from claim 8 and which Appellant does not separately argue.

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DECISION
The Examiner’s rejection of claims 8, 11, 14, 15, 18, and 23 is
AFFIRMED.
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

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