Ex parte Johnston et al.

Board of Patent Appeals and Interferences

Jul 13, 1998

08304333 (B.P.A.I. Jul. 13, 1998)

Application for patent filed September 12, 1994.1
-1-
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte GARY L. JOHNSTON, JAMES W. ZEHNDER II,
WILLIAM C. KRUCKEMEYER and MICHAEL L. OLIVER
________________
Appeal No. 96-3156
Application 08/304,3331
________________
ON BRIEF
________________
Before ABRAMS, STAAB and McQUADE, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection of
claims 4-12, all the claims pending in the application. Two
amendments have been filed subsequent to the final rejection.
The first (Paper No. 15), submitted February 22, 1996, has not
been entered, while the second (Paper No. 24), submitted November
Appeal No. 96-3156
Application 08/304,333
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5, 1996, has been entered. See page 2 of the supplemental
examiner’s answer (Paper No. 25).
THE INVENTION
Appellants’ invention pertains to a fluid brake system for
vehicles. As explained on page 2-3 of the brief (Paper No. 13):
Appellants’ invention provides a brake system (10)
that enables using only one solenoid valve per control
wheel brake (Fig. 1). The invention provides a first
mode for default base brake operation that provides a
direct connection between the unboosted master cylinder
(22) and the wheel brakes (12, 14, 16, 18). The
invention provides a second mode for all power brake
operation that maintains an open flow path between
master cylinder (22) and an artificial pedal feel
device (30, 32) while automatically modulating braking
pressure at each wheel brake independently through the
use of an individual valve (52, 54, 56, 58) per wheel.
Each valve is responsive to pressurization of the
system through manual actuation of the master cylinder
and additionally, to electronic control in response to
wheel sensor readings falling within various
preprogrammed events.
The operation of appellants’ invention is further explained
on pages 3-5 of the brief.
THE CLAIMS
Independent claim 4, a copy of which is appended to
appellants’ brief, is representative of the appealed subject
matter.
Independent claims 4 and 10 define a brake system that
includes a valve which in one mode or position provides fluid
Appeal No. 96-3156
Application 08/304,333
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communication between the master cylinder and the brake, and in a
second mode or position provides modulation of fluid pressure at
the wheel brake while providing a constantly open fluid
communication channel between the master cylinder and the
artificial pedal feel device. Independent claim 7 is similar
except that in the second position, the valve provides modulation
of fluid pressure at the wheel brake while the master cylinder is
out of communication with the brake.
THE REFERENCES
The references of record relied upon by the examiner in
support of a rejection under 35 U.S.C. § 103 are:
Arikawa 5,141,296 Aug. 25, 1992
Steiner et al. 2,252,373 Jun. 5, 1992
(British Patent Document)
With reference to Figure 1, Steiner, the examiner’s primary
reference, pertains to a fluid brake system similar to
appellants’ system in that in a first default mode the system
operates to provide for unboosted operation of the wheel brakes
(14, 16, 17, 18) by a master cylinder (13), and in a second mode
the system operates to provide for power brake operation of the
wheel brakes. In the unboosted first mode, function control
valve (39) is positioned in the illustrated left hand or “O”
Appeal No. 96-3156
Application 08/304,333
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position, whereby master cylinder line (36) is connected to line
(36’), which communicates with, for example, wheel brake (17) via
ABS system (12) and line (36’’). In the powered second mode,
function control valve (39) is positioned in the non-illustrated
right hand or “II” position, whereby the master cylinder is
maintained in open flow communication with buffer reservoir (42)
(which appears to be equivalent to appellants’ artificial pedal
feel device), while pressure to the wheel brake is modulated by
brake pressure control valve (47) under the control of energizing
solenoid (64). In particular, depending upon the position of the
brake pressure control valve (47) amongst the “II”, “O” and “I”
positions, the pressure modulator (44) is placed, respectively,
in fluid communication with pressure source (48) to pressurize
the modulator, unpressurized storage reservoir (49) to vent the
modulator, or blocked from communicating with either to hold the
pressure of the modulator. The pressure condition of the
pressure modulator (44) is in turn relayed to the wheel brake via
line (36’), ABS system (12) and line (36’’) to modulate brake
pressure.
Arikawa also pertains to a fluid brake system for a vehicle.
The brake system of Arikawa includes, inter alia, a three-port
three position valve (36, 37, 47, 48) provided at each wheel
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Application 08/304,333
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brake. The teaching of Arikawa upon which the examiner relies is
found at column 9, lines 62-66 and reads as follows: “In the
above embodiment, the one three-port three position valve [36,
etc.] is provided for the one wheel brake apparatus.
Alternatively, two two-port two-position valves or an inlet valve
and an outlet valve may be used for the one wheel brake.”
THE REJECTION
Claims 4-12 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Steiner in view of Arikawa.
In rejecting the appealed claims under 35 U.S.C. § 103, the
examiner has taken the position that the valves (39) and (42) of
Steiner function in basically the same way as appellants’
integral control and isolation valve (e.g., valve 58). From this
starting point, the examiner proceeds as follows:
Steiner et al fail to teach the use of a single
“integral control and isolation valve” in place of
valves 39 and 47. Arikawa teaches the well known
substitution of a single valve for two separate
valve[s] in an antilock/traction control brake system
(col. 9, lines 62-66). One of ordinary skill in the
art at the time of the invention would have found it
obvious to provide the brake system of Steiner et al
with a single “integral control and isolation valve” in
place of the valves 39 and 47, in view of the teaching
of Arikawa, as such would provide the same fluid
connections while reducing manufacture cost and
assembly time by reducing the number of components.
[answer (Paper No. 14)), page 5]
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Application 08/304,333
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Further insight into the examiner’s position is gleaned from
the following statement, offered in response to appellants’
argument:
One of ordinary skill [would] have known to provide the
combined valve of Steiner et al with a range of
position[s] which provide communication between the
master cylinder and the artificial pedal feel device so
as to allow the communication of the brake to be
modulated. The ordinary level of skill in the art is
far beyond merely attaching the two valves of Steiner
together as suggested by appellant [sic, appellants] on
page 17 of the brief. One of ordinary skill in the art
would know that the appropriate port connection must be
maintained so as not to destroy the functions of
Steiner et al. [answer, page 9]
OPINION
Our court of review has repeatedly cautioned against
employing hindsight by using appellant’ disclosure as a blueprint
to reconstruct the claimed invention out of isolated teachings of
the prior art. See, e.g., Grain Processing Corp. v. American-
Maize Products Co., 840 F.2d 902, 907, 5 USPQ2d 1788, 1792 (Fed.
Cir. 1988). That court has also cautioned against focusing on
the obviousness of the differences between the claimed invention
and the prior art rather than on the obviousness of the claimed
invention as a whole as § 103 requires. See, e.g., Hybritech
Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1383, 231
USPQ 81, 93 (Fed. Cir. 1986), cert. denied, 480 USPQ 947 (1987).
Appeal No. 96-3156
Application 08/304,333
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In the present instance, for the reasons that follow, we think
that the examiner has lost sight of the claimed invention as a
whole and has improperly focused upon the supposed obviousness of
the differences between the claimed invention and the prior art
cited against the claims.
First, we do not agree with the examiner’s determination
that the valves (39, 47) of Steiner are simultaneously actuated
(answer, page 5). As is made clear by Steiner on page 26, lines
8-20, and as aptly pointed out by appellants on page 16 of the
brief, valves (39) and (47) of Steiner act independently to
achieve their function. This circumstance teaches away from
replacing Steiner’s valves (39) and (47) with a single valve.
Second, the complexity of the Steiner system would require a
complete reworking thereof with no guidance from the cited
references as to how this is to be accomplished in order to bring
about the examiner’s proposed modification. The mere fact that
Arikawa teaches generally that two smaller valves may be replaced
by a single valve is not sufficient in this regard, and it is
improper to rely on the ordinary level of skill in the art to
make up for the deficiencies of Steiner and Arikawa in this
respect. Third, assuming that Steiner’s valves (39) and (47)
could be replaced by a single valve, it is not clear that the
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claimed system would result in the absence of the guidance
provided by appellants’ disclosure. Finally, it is not clear why
one of ordinary skill in the art would be motivated to modify
Steiner in the manner proposed by the examiner. In this respect,
appellants’ argument on page 34 of the brief to the effect that
replacing Steiner’s valves (39) and (47) with a single multi-
function valve would not necessarily reduce manufacturing costs
and assembly time is well taken.
In light of the foregoing, we shall not sustain the standing
§ 103 rejection.
The decision of the examiner is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
LAWRENCE J. STAAB ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 96-3156
Application 08/304,333
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Jeffrey A. Sedlar
Genaral Motors Corporation
Legal Staff
P.O. Box 33114
Detroit, MI 48232