Ex Parte KarcherDownload PDFPatent Trial and Appeal BoardSep 26, 201612707333 (P.T.A.B. Sep. 26, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 121707,333 02/17/2010 62008 7590 09/28/2016 MAIER & MAIER, PLLC 345 South Patrick Street ALEXANDRIA, VA 22314 FIRST NAMED INVENTOR Rolf Karcher 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 07780008US 2352 EXAMINER MCMAHON, MARGUERITE J ART UNIT PAPER NUMBER 3747 NOTIFICATION DATE DELIVERY MODE 09/28/2016 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): patent@maierandmaier.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROLF KARCHER Appeal2014-009875 Application 12/707,333 Technology Center 3700 Before JAMES P. CAL VE, GEORGE R. HOSKINS, and AMANDA F. WIEKER, Administrative Patent Judges. CAL VE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from the rejection of claims 19-26. Appeal Br. 2. Claims 1-18 have been cancelled. Id. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. Appeal2014-009875 Application 12/707,333 CLAIMED SUBJECT MATTER Claim 19, the sole independent claim, is reproduced below. 1. A system for detecting a leakage of the tank ventilation system and the crankcase ventilation system of an internal combustion engine provided with an air intake line, a compressor of an exhaust gas turbocharger and a throttle valve disposed downstream of said compressor, comprising: a first fluid line having a first end communicable with said intake line upstream of said compressor and a second end communicable with said intake line downstream of said throttle valve; a second fluid line including a vent valve intercommunicating said tank ventilation system and said first fluid line; a third fluid line including a pressure regulatory valve intercommunicating said crank case ventilation system and said first fluid line; a first non-return valve disposed at the juncture of the first end of said first line and said intake line; a second non-return valve disposed at the juncture of the second end of said first fluid line and said intake line; means for sensing the pressure of said intake line downstream of said throttle valve; and means for sensing the pressure of said second and third fluid lines. REJECTIONS Claims 19-26 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Claims 19, 20, and 22-26 are rejected under 35 U.S.C. § 103(a) as unpatentable over Moren (US 2001/0022175 Al, pub. Sept. 20, 2001) and Beyer (US 2005/0022795 Al, pub. Feb. 3, 2005). Claim 21 is rejected under 35 U.S.C. § 103(a) as unpatentable over Moren, Beyer, and Shinagawa (US 2009/0025694 Al, pub. Jan. 29, 2009). 2 Appeal2014-009875 Application 12/707,333 ANALYSIS Claims 19-2 6 as being indefinite The Examiner determined that the recitations of "the tank ventilation system" and "the crankcase ventilation system" in the preamble of claim 19 and "the tank ventilation system" in the body of claim 19 lack antecedent basis and therefore render claims 19-26 indefinite. Final Act. 2; Ans. 6. Appellant argues that the recitation of these systems in the preamble requires no antecedent basis and also provides antecedent basis for further recitation of these elements in the body of claim 19. Appeal Br. 5. A claim lacking explicit antecedent basis is not necessarily indefinite if the scope of the claim can be determined reasonably by those of ordinary skill in the art. Energizer Holdings, Inc. v. Int'! Trade Comm 'n, 435 F.3d 1366, 1370-71 (Fed. Cir. 2006); see also MANUAL OF PATENT EXAMINING PROCEDURE§ 2173.05(e) (9th Ed. Rev. 7, Nov. 2015) (same). The meaning of claim 19 is not rendered unclear or indefinite by the perceived lack of antecedent basis noted by the Examiner. A skilled artisan would understand that the claimed system detects the leakage of tank and crankcase ventilation systems as disclosed in Appellant's Specification. The Examiner has not explained how any lack of antecedent basis present in claim 19 renders the meaning of claim 19 indefinite or unclear. Thus, we do not sustain the rejection of claims 19-26 on this basis. Claims 19, 20, and 22-26 as unpatentable over Moren and Beyer Appellant argues claims 19, 20, and 22-26 as a group. Appeal Br. 5- 6. We select claim 19 as representative. 37 C.F.R. § 41.37(c)(l)(iv). Claims 20 and 22-26 stand or fall with claim 19. 3 Appeal2014-009875 Application 12/707,333 The Examiner found that Moren teaches the invention substantially as claimed except for means for sensing pressure of the intake line downstream of the throttle valve and means for sensing pressure of the second and third fluid lines and first and second non-return valves 44, 41 located close to the junctions of the first line and the intake line. Final Act. 2-3. The Examiner found that Beyer teaches the claimed sensing means and determined that it would have been obvious to use the sensing means of Beyer in Moren to diagnose and prevent the escape of harmful gases. Id. at 4. The Examiner also determined that mounting the non-return valves of Moren directly at the juncture of the first and second fluid lines to the intake line, as claimed, rather than close to the juncture as taught by Moren, would have been an obvious matter of design choice because such a rearranging of parts involves only routine skill in the art. Id. at 3. The Examiner found that Moren's non-return valves function in exactly the same way as the claimed valves, and locating the valves at the juncture of the air intake line and the first fluid line is an obvious matter of design choice. Id.; Ans. 6-7. The Examiner found that Beyer teaches the claimed means for sensing pressure downstream of the throttle valve and providing such sensing means in Moren would allow the sensor to diagnose a leakage between the tank ventilation system and the crankcase ventilation system whether the non- return valves are mounted directly at the connecting points, as claimed, or just slightly below them, as disclosed in Moren. Id. at 7-8. Appellant argues that there is no motivation to position the non-return valves as claimed. Appeal Br. 6. Appellant also argues that the non-return valves allow a single sensor to diagnose leakage between the tank ventilation system and crankcase ventilation system and air intake line. Id. at 5-6. 4 Appeal2014-009875 Application 12/707,333 In appropriate circumstances, a modification of prior art teachings may be a matter of design choice. E.g., ACCO Brands Corp. v. Fellowes, Inc., 813 F.3d 1361, 1367 (Fed. Cir. 2016) (where the prior art consistently located two sensors in shredder's feed, skilled artisan faced two design choices of placing the thickness sensor above or below the presence sensor and each design choice was an obvious combination of prior art elements); Rexnord Indus., LLC v. Kappas, 705 F.3d 1347, 1356 (Fed. Cir. 2013) (where the prior art taught that conveyor belt elements are spaced to avoid pinching fingers, the claimed 10 mm dimension was a design choice that takes into account the size of fingers and small objects); Sciele Pharma Inc. v. Lupin Ltd., 684 F.3d 1253, 1263 (Fed. Cir. 2012) ("it would have been a routine and obvious design choice to make an extended release dosage form with a lower T max" in view of teachings in the prior art to lower T max and evidence that such change was predictable and within the level of skill in the art); PlaSmart, Inc. v. Kappas, 482 Fed. Appx. 568, 574 (Fed. Cir. 2012) (unpublished) (attaching safety wheel directly to twister member of scooter instead of body would have been a common sense alternative design choice as a safety feature to prevent tipping of the scooter); In re Conte, 36 Fed. Appx. 446, 451 (Fed. Cir. 2002) (unpublished) (whether keyhole slot used to retain rubber band to front of gun barrel faced upwardly or downwardly was a fairly insignificant design choice as both slots retained rubber band); In re Aslanian, 590 F.2d 911, 915 (CCPA 1979) (making front and rear bottom side portions co-planar was a design choice); In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (a spring-loaded electrical contact was an obvious matter of design choice within the skill in the art where placement of electrical contact provides no novel or unexpected result). 5 Appeal2014-009875 Application 12/707,333 However, a claimed change that results in a different structure and function may not be a design choice. E.g., Flour Tee, Corp. v. Kappas, 499 Fed. Appx. 35, 41--42 (Fed. Cir. 2012) (unpublished) (adding an expander to a low pressure feed to accommodate a high pressure feed was not a design choice when a separate high-pressure feed already was used); In re Gal, 980 F.2d 717, 719-20 (Fed. Cir. 1992) (custom logic cells that had a different structure and purpose than prior art logic cells were not a design choice), cf, Gardner v. TEC Sys., Inc., 725 F.2d 1338, 1349 (Fed. Cir. 1984) (claim was obvious because structure that functioned differently was not claimed). The Examiner's determination that it would have been an obvious design choice to locate Moren's non-return valves at the claimed junctures is supported by a preponderance of evidence. Appellant discloses that non- return valves 34, 35 ensure that air does not flow past compressor 12 or throttle flap 14 through ventilation line 29 (i.e., the first fluid line), and also ensure that air cannot flow from intake air line 10 back through ventilation line 29 and branches 32, 33 (i.e., the second and third fluid lines) into tank ventilation system 20 or crankcase ventilation system 21. Spec. 7. The Examiner found that Moren's non-return valves 41, 44 function the same way whether they are located at the junctures, as claimed, or close to the junctures, as Moren discloses. Ans. 6-7. Non-return valves 41, 44 block flow in one direction to prevent air from flowing past compressor 23 and throttle valve 26, or from flowing back into the crankcase or fuel tank ventilation systems. See Moren i-f 18. They allow Beyer's sensor to detect leakage, as claimed. See Ans. 7-8. Appellant's arguments do not persuade us of error in the Examiner's findings or determination of obviousness. Thus, we sustain the rejection of claims 19, 20, and 22-26. 6 Appeal2014-009875 Application 12/707,333 Claims 23 and 24 Although Appellant argues claims 19, 20, and 22-26 as a group in the Appeal Brief (see Appeal Br. 5---6), in the Reply Brief, Appellant argues that dependent claims 23 and 24 recite that the non-return valves are connected with detachable and non-detachable connections to the first fluid line and the intake line and none of the references teach this structure (Reply Br. 1 ). We do not consider this argument because it was raised for the first time in the Reply Brief and deprives the Examiner of the opportunity to respond to it. See 37 C.F.R. § 41.41(b)(2). Claim 21 as unpatentable over Moren, Beyer, and Shinagawa Appellant does not present arguments for the rejection of claim 21. See Appeal Br. 5---6. Thus, we summarily affirm that rejection. MANUAL OF PATENT EXAMINING PROCEDURE§§ 1205.02, 1215.03 (9th Ed. Rev. 7, Nov. 2015); see 37 C.F.R. § 41.37(c)(iv). DECISION We REVERSE the rejection of claims 19-26 under 35 U.S.C. § 112, second paragraph, as indefinite. We AFFIRM the rejections of claims 19-26 under 35 U.S.C. § 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation