Ex Parte KLEINDL et al

Patent Trials and Appeals Board

Feb 1, 2019

13765342 - (D) (P.T.A.B. Feb. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/765,342 02/12/2013
24972 7590 02/05/2019
NORTON ROSE FULBRIGHT US LLP
1301 Avenue of the Americas
NEW YORK, NY 10019-6022
FIRST NAMED INVENTOR
Michael KLEINDL
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.
BOSC.P7852US/1000200199 1869
EXAMINER
DANDRIDGE, CHRISTOPHER R.
ART UNIT PAPER NUMBER
3752
NOTIFICATION DATE DELIVERY MODE
02/05/2019 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):
nyipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL KLEINDL and CORNELIA GIESSLER 1
Appeal2018-005792
Application 13/765,342
Technology Center 3700
Before MICHELLE R. OSINSKI, ANNETTE R. REIMERS, and
NATHAN A. ENGELS, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to reject under 35 U.S.C. § 103(a): (1) claims 1, 4---6, and 10-13 as
unpatentable over Herold (US 6,170,767 Bl, issued Jan. 9, 2001); and (2)
claims 1, 3, 4, 6-10, and 12 as unpatentable over Shingu (US 2009/0288640
Al, published Nov. 26, 2009). 2 Claim 2 has been canceled. We have
1 ROBERT BOSCH GmbH ("Appellant"), is the applicant as provided under
37 C.F.R. § 1.46 and is identified as the real party in interest. Appeal Brief 1
("Appeal Br."), filed Oct. 30, 2017.
2 The Examiner refers to the Shingu reference as "Aota." See Final Office
Action 5 ("Final Act."), dated Mar. 30, 2017; see also Examiner's Answer 4
Appeal2018-005792
Application 13/765,342
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
CLAIMED SUBJECT MATTER
The claimed subject matter "relates to a fuel injector for injecting
fuel directly into a combustion chamber." Spec. 1:3--4, Figs. 1, 2. Claims
1 and 11 are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A fuel injector for direct injection of fuel into a
combustion chamber, comprising:
a housing having at least one combustion-chamber side
injection aperture;
a linearly movable valve needle for opening and closing
the injection aperture;
a solenoid;
an armature which is linearly movable by the solenoid; and
a first sleeve, first sleeve being formed as a hollow, tubular
component having a constant inside and outside diameter;
wherein the first sleeve is a separate component and the
first sleeve is attached to the armature;
wherein a first stop surface facing away from the
combustion chamber is formed on the first sleeve, and a second
stop surface facing the combustion chamber is formed on the
valve needle, the first and second stop surfaces striking one
another when at least one of the valve needle and the armature is
moved linearly; and
wherein the armature has a continuous recess and the first
sleeve is situated on a wall of the recess.
("Ans."), dated Mar. 19, 2018; Appeal Br. 4; Reply Brief 3 ("Reply Br."),
filed May 17, 2018.
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Application 13/765,342
ANALYSIS
Obviousness over Herold
Claims 1, 4-6, and 10---13
Appellant does not offer arguments in favor of independent claim 11
and dependent claims 4---6, 10, 12, and 13 separate from those presented for
independent claim 1. Appeal Br. 3--4. We select claim 1 as the
representative claim, and claims 4---6 and 10-13 stand or fall with claim 1.
37 C.F.R. § 4I.37(c)(l)(iv).
Independent claim 1 is directed to a fuel injector for direct injection of
fuel into a combustion chamber including "a first sleeve, [the] first sleeve
being formed as a hollow, tubular component having a constant inside and
outside diameter." See Appeal Br., Claims App. 1. The Examiner finds
Herold discloses that "sleeve (56) is a tubular component (Figures 2 and 3),
but differs from the current invention in that it is not hollow, with a constant
inside and outside diameter." Ans. 3; see also Final Act. 3. According to
the Examiner, "[t]he difference between the prior art device and the current
device is shape" and Herold's sleeve "is configured as a shape that allows it
to reduce rebounding tendency .... As such, the functional requirements of
the current invention are fulfilled by the Herold sleeve." Ans. 3 (citing
Herold 2:9-14) (emphasis omitted).
Appellant contends a skilled artisan "would not have redesigned the
device of Herold to include a first sleeve formed [ of] a hollow, tubular
component, since doing so would require substantial reconstruction and
undue experimentation" and if a skilled artisan "replaced the side bearing of
Herold with a hollow, tubular component, the resulting device would be
unsatisfactory for its intende[ d] purpose, since it is unclear that the resulting
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Application 13/765,342
device would function properly." Appeal Br. 3--4.
As an initial matter, Appellant does not apprise us as to how
modifying Herold to include a first sleeve formed of a hollow, tubular
component "would require substantial reconstruction and undue
experimentation" or as to how the resulting modified device of Herold
"would be unsatisfactory for its intende[d] purpose"/"would [not] function
properly." See id.
In response to Appellant's argument, the Examiner points out
"Appellant proposes no criticality as to the claimed shape, and it appears the
claimed shape is one of numerous [ shapes,] which one having ordinary skill
in the art would find, without undue experimentation." Ans. 4. Appellant
does not apprise us of Examiner error.
In addition, the Examiner's proposed modification to Herold
(replacing a bearing sleeve with a hollow tubular sleeve of constant inner
and outer diameter) does not appear to be uniquely challenging, and
Appellant has not explained with any specificity why a person of ordinary
skill in the art would not have had an expectation of success in making the
proposed modification. Furthermore, Appellant does not provide any
evidence or argument sufficient to show that the proposed modification
would have been beyond the level of ordinary skill in the art. Neither does
Appellant provide any persuasive evidence or argument sufficient to show
that the proposed modification would have been more than a predictable use
of prior art elements according to their established functions. "The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results." KSR Int 'l Co.
v. Teleflex Inc., 550 U.S. 398,416 (2007). "If a person of ordinary skill can
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Application 13/765,342
implement a predictable variation, § 103 likely bars its patentability." Id. at
417.
In the Reply Brief, Appellant contends "if side bearing 5 6 [ of Herold]
were modified to take the shape of a hollow, tubular component having a
constant inside and outside diameter, bearing steel balls 59 ... would lose
their entire function," in that "edging 77 would be removed and bearing balls
59 would cease to perform their function." Reply Br. 3; see also Herold
8:4--19, Fig. 2.
Herold discloses "[a]fter balls 59 of upstream slide bearing 56 have
been pressed in, the rim at upstream end surface 72 is edged over by way of
an edging indicated by reference character 77, so that balls 59 cannot escape
from enlargement 73." Herold 8:4--7, Fig. 2. Given that edging 77 is on the
rim of end surface 72, which is part of armature 19, not side bearing (sleeve)
56, we fail to see how modifying side bearing 56 of Herold "to take the
shape of a hollow, tubular component having a constant inside and outside
diameter" would result in "edging 77 [being] removed and bearing balls 59
[ceasing] to perform their function." See Reply Br. 3; see also Herold 7:38-
43, Fig. 2
Appellant contends "forming the first sleeve as a hollow, tubular
component achieves a further reduction in weight, which increases the
service life of the fuel injector." Appeal Br. 4; see also Reply Br. 2; Spec.
1 :23-2:3 ("The fuel injector according to the present invention makes it
possible to reduce the wear on the armature and/or the valve needle. This
extends the service life of the fuel injector. The sleeves used have only a
very low volume and accordingly a low mass."). 3
3 Appellant cites to paragraph 5 of Kleindl (US 2013/0206872 Al, published
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However, claim 1 recites nothing about "forming the first sleeve as a
hollow, tubular component achieves a further reduction in weight, which
increases the service life of the fuel injector." See Appeal Br.4; id. at Claims
App. 1; In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (explaining that
limitations not appearing in the claims cannot be relied upon for
patentability ).
In response to Appellant's argument, the Examiner points out
"Appellant does not disclose that their particular shape solves any stated
problem, or is for any stated purpose, or that their shape is anything more
than one of numerous configurations a person of ordinary skill in the art
would find obvious for the purpose of [reducing rebounding tendency]" and
"it appears the sleeve (15) of the instant apparatus would perform equally
well, regardless of the shape of the sleeve, as long as it features a low mass
and volume, as disclosed." Ans. 3 (citing In re Dailey, 357 F.2d 669 (CCPA
1966)). Appellant does not provide persuasive evidence or argument
apprising us of Examiner error.
We disagree with Appellant that the Examiner "ignores" the limitation
of the sleeve "having a constant inside and outside diameter." See Reply Br.
2; see also Appeal Br., Claims App. 1. To the contrary, the Examiner points
out "Appellant discloses that it is critical for the valve body to have a
uniform recess," in that such a feature "provides for reception of a simply
designed sleeve. However, Appellant makes no disclosure as to why the
shape of the sleeve must feature a uniform diameter." Ans. 4; see also Spec.
3:9-12 ("It is furthermore advantageously provided that the recess has a
uniform diameter over its entire length, measured parallel to the longitudinal
Aug. 15, 2013). See Appeal Br. 4; see also Reply Br. 2.
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Application 13/765,342
axis. This makes it possible to attach a simply designed sleeve to the wall of
the recess."). 4 Thus, the Examiner concludes that "[a] simply designed
sleeve may take various shapes, and still be complimentarily received in the
recess." Ans. 4; see also Final Act. 3. Appellant does not provide
persuasive evidence or argument apprising us as to why the Examiner's
proposed modification to bearing sleeve 56 of Herold would not include a
sleeve having constant inside and outside diameter. Nor does Appellant
provide any evidence or argument sufficient to show that such a proposed
modification would have been beyond the level of ordinary skill in the art.
We also are not persuaded that the Examiner engages in impermissible
hindsight in the proposed modification of Herold. See Appeal Br. 3--4. The
Examiner's rationale for the proposed modification of Herold is grounded in
the teachings of Herold (see Final Act. 2-3; see also Ans. 3--4) and is based
on knowledge that was within the level of ordinary skill at the time the
claimed invention was made, and not on Appellant's disclosure alone.
In summary, and based on the record presented, we are not persuaded
the Examiner erred in rejecting independent claim 1 as unpatentable over
Herold. Accordingly, we sustain the Examiner's rejection of independent
claim 1. We further sustain the rejection of claims 4---6 and 10-13, which
fall with claim 1.
4 See also Advisory Action 2 ( stating that the Examiner does not find that
Appellant's disclosure "addresses criticality for the diameter of the sleeve, but
rather that the disclosure puts forth criticality as to the design of the recess,
which receives the sleeve"), dated Aug. 9, 2017.
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Application 13/765,342
Obviousness over Shingu
Claims 1, 3, 4, 6--10, and 12
Independent claim 1 recites "a first stop surface ... formed on the
first sleeve, and a second stop surface ... formed on the valve needle, the
first and second stop surfaces striking one another when at least one of the
valve needle and the armature is moved linearly." See Appeal Br., Claims
App. 1. The Examiner finds Shingu discloses a first stop surface formed on
the first sleeve (Figure 6, upper surface of 1 7) and a second stop surface
formed on the valve needle (Figure 6, bottom face of 16), "the first and
second stop surfaces striking one another when at least one of the valve
needle and the armature is moved linearly (Paragraph 8)." See Final Act. 5.
The Examiner states that the term "[ s ]trike, by definition, means 'to
come into contact forcefully'" and takes the position that "the broadest
reasonable interpretation of the prior art, regardless of whether the spring
and needle are attached, the spring and needle will always 'come into
contact forcefully' with one another during a closing movement." Ans. 5
(citing https://www.merriam-webster.com/dictionary/strike (5 March 2018)).
Thus, according to the Examiner, "upon impact of the needle, spring and
armature, [ of Shingu] a forceful contact will be transferred between the
surfaces of the spring, needle, and armature. As such, the first stop and
second stop surfaces of the needle and spring will strike one another when
the combination is moved linearly." Id.
Appellant contends "the asserted first stop surface [ of Shingu] (i.e., the
surface of component 17 facing away from the combustion chamber) does
not strike the asserted second stop surface (i.e., the surface of stopper 16
facing towards the combustion chamber)," because "component 17 is a
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spring that is physically attached to both armature 7 and needle 8. That is,
during the operation of the device of Shingu, armature 7 and needle 8 remain
in contact and the components do not strike." Appeal Br. 5; see also Reply
Br. 3-5.
Appellant has the better position here. Shingu discloses that "an
elastic member 17, such as a spring, is inserted between the needle 8 ( the
stopper [16]) 5 and the armature 7" and "[b ]ecause the existence of the elastic
member 17 enables the armature 7 to travel in the axis direction by a
predetermined amount with respect to the needle 8, an impact force caused
by a collision is relaxed." Shingu ,r 8 ( emphasis added); see also id. ,r 11.
As Shingu discloses that elastic member 1 7 enables the "impact force"
caused by a collision between armature 7 and needle 8 to be "relaxed," a
preponderance of the evidence does not support the Examiner's finding that
"upon impact of the needle, spring and armature, [ of Shingu] a forceful
contact will be transferred between the surfaces of the spring, needle, and
armature." See Ans. 5 (emphasis added). Thus, the Examiner does not
establish that Shingu discloses the fuel injector of claim 1.
For these reasons, we do not sustain the Examiner's rejection of
independent claim 1 and its dependent claims 3, 4, 6-10, and 12 as
unpatentable over Shingu.
5 Shingu discloses "(the stopper 18)." Shingu ,r 8. We consider this a
typographical error.
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Appeal2018-005792
Application 13/765,342
DECISION
We AFFIRM the decision of the Examiner to reject claims 1, 4---6, and
10-13 as unpatentable over Herold.
We REVERSE the decision of the Examiner to reject claims 1, 3, 4,
6-10, and 12 as unpatentable over Shingu.
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-IN-PART
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