Ex Parte Knis et al

Patent Trial and Appeal Board

Jun 20, 2018

13261227 (P.T.A.B. Jun. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/261,227 03/22/2012
10800 7590 06/20/2018
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
FIRST NAMED INVENTOR
Wolfram Knis
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.
2178-0484 6021
EXAMINER
CHAUDRY, ATIF H
ART UNIT PAPER NUMBER
3753
MAIL DATE DELIVERY MODE
06/20/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WOLFRAM KNIS, UWE EHRHARDT, and TILMAN MIEHLE
Appeal2017-010140 1
Application 13/261,2272
Technology Center 3700
Before PHILIP J. HOFFMANN, BRUCE T. WIEDER, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of
claims 13-20 and 29-31. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references the Appeal Brief ("Br.," filed Jan. 18, 2017), the
Examiner's Answer ("Ans.," mailed Apr. 18, 2017), and the Final Office
Action ("Final Act.," mailed Aug. 18, 2016).
2 According to Appellants, the real party in interest is Robert Bosch GmbH.
Br. 2.
Appeal2017-010140
Application 13/261,227
BACKGROUND
According to Appellants, "[t]he invention relates to a non-return valve
having a first closing body and an associated first valve seat[,] as well as a
second closing body and an associated second valve seat." Spec. ,r 1.
CLAIMS
Claims 13 and 3 1 are the independent claims on appeal. Claim 13 is
illustrative of the appealed claims, and recites:
13. A non-return valve for conveying liquid fuel in a fuel
injector system, comprising:
a common valve seat component defining a first valve
seat and a second valve seat;
a first closing body configured to cooperate with the first
valve seat to selectively allow the liquid fuel to flow in a first
flow direction through the non-return valve, the first closing
body being configured as a solid ball; and
a second closing body configured to cooperate with the
second valve seat to selectively allow the liquid fuel to flow in
a second flow direction opposite the first flow direction through
the non-return valve,
wherein the common valve seat component (i) positions
the first valve seat radially inward from the second valve seat
and axially spaced from the second valve seat in a direction
opposite the first flow direction such that the first valve seat is
spatially nested entirely within the second valve seat, (ii)
positions the second valve seat radially outward from the first
valve seat such that the second valve seat entirely surrounds the
first valve seat, and (iii) further defines a first common
hydraulic space and a second common hydraulic space
selectively isolated from the first common hydraulic space by
the first closing body and the second closing body,
wherein the first closing body opens towards the second
valve seat to allow the liquid fuel to flow in the first flow
direction from the first common hydraulic space, through the
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Application 13/261,227
first valve seat, around the first closing body, and into the
second common hydraulic space, and
wherein the second closing body opens towards the first
valve seat to allow the liquid fuel to flow in the second flow
direction opposite the first flow direction from the second
common hydraulic space, through the second valve seat, and
into the first common hydraulic space.
REJECTIONS
1. The Examiner rejects claims 13-20 and 31 under 35 U.S.C. § I03(a) as
unpatentable over Gordon3 in view ofKrone4 and Pareja. 5
2. The Examiner rejects claim 29 under 35 U.S.C. § I03(a) as unpatentable
over Gordon in view of Krone, Pareja, and Ikeda. 6
3. The Examiner rejects claim 30 under 35 U.S.C. § I03(a) as unpatentable
over Gordon in view of Krone, Pareja, and Mori. 7
DISCUSSION
With respect to claim 13, the Examiner finds that Gordon's Figure 3
discloses a non-return valve as claimed, except that Gordon does not
disclose that the first inner closing body is a solid ball and that, as modified
by Krone, Gordon does not disclose the "first inner valve seat axially spaced
from the second seat towards such that the spring elements are overlapping
in this axial direction and such that first closing body opens towards the
second valve seat and second closing body opens towards the first valve
seat." Final Act. 3-5. The Examiner relies on Krone as disclosing a non-
3 Gordon, US 4,016,904, iss. Apr. 12, 1977.
4 Krone, US 3,304,952, iss. Feb. 21, 1967.
5 Pareja, US 4,032,263, iss. June 28, 1977.
6 Ikeda et al., US 2008/0029060 Al, pub. Feb. 7, 2008.
7 Mori et al., US 2002/0033465 Al, pub. Mar. 21, 2002.
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Appeal2017-010140
Application 13/261,227
return valve including an inner closing body that is a solid ball, and the
Examiner concludes that it would have been obvious to use a solid ball as in
Krone in Gordon's device because the valve bodies are functionally
equivalent structures such that substituting one for the other would yield
predictable results. Id. at 4--5. The Examiner relies on Pareja's disclosure of
the claimed arrangement of spring elements and concludes that it would
have been obvious to modify Gordon based on Pareja's teachings "in order
to provide a more compact device with reduced axial length." Id. at 5.
As discussed below, we are not persuaded of reversible error with
respect to the rejection of claim 13.
Appellants first argue that the flanged valve used in Gordon and the
solid ball valve used in Krone are not recognized as equivalent structures in
the art. Br. 8. We are not persuaded. Rather, we agree with the Examiner
that both the flanged valve of Gordon and the solid ball valve of Krone are
both "one-way valves [that] allow flow in one direction against bias of a
spring while precluding flow in the opposite direction by engaging the valve
head with valve seat." Ans. 11. To the extent that Appellants assert that the
flanged valve of Gordon is designed to prevent explosion and the ball valve
in Krone is not so designed, we agree with the Examiner's response. See id.
at 12. Specifically, we agree that the pressure rating of the valve would be
dependent on the spring closing force of the spring and only on the structure
of the valve body to a lesser extent.
Further, the rejection does not rely on a bodily incorporation of
Krone's entire valve design into Gordon's device, or even an incorporation
of the pressure ratings of Krone's valve into Gordon's device. Id.; see also
In re Keller, 642 F.2d413, 425 (CCPA 1981). Although, the specific design
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Appeal2017-010140
Application 13/261,227
of Krone's valve, including the spring, ball, etc., only allows for relief of
"normal" pressure and not "emergency relief," we see no indication in
Krone that a solid ball could not be used with an appropriate spring
mechanism in a valve allowing for emergency relief of pressure. We find
that the relevant portion of Krone cited by Appellants, i.e., Krone col. 5,
11. 21-31, indicates only that the specific overall valve design in Krone
prevents the valve from providing emergency pressure relief.
Next, Appellants argue that the rejection is not a simple substitution of
one known element for another. Br. 9-12. Rather, Appellants assert that
Gordon's valve body includes "an axial extension in the direction opposite
valve body movement for the guidance of the valve body within the central
flow aperture during pressure relief." Id. at 9-10. Appellants contend that
the rejection and proposed modification of Gordon "does not address the
positioning and guidance of the ball ... within the valve of Gordon." Id.
at 10. Appellants further contend that the "extent of modifications required
to incorporate the ball 61 of Krone is certainly not the 'mere substitution of
one element for another known in the field."' Id. at 11.
We are not persuaded of error by this argument. First, we note that
the rejection does not appear to rely on a rationale that the combination
would have been obvious as a simple substitution of parts. Rather, the
rejection states that ball and flange valves are functionally equivalent and
substituting one for the other would yield predictable results. See Final
Act. 5. Second, we agree with the Examiner's unrebutted findings in the
Answer that "a person of ordinary skill in the art would know the essential
structural features to be incorporated in a ball valve structure" when
modifying Gordon in view of Krone. Ans. 14. We also note again that the
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Application 13/261,227
rejection does not rely on a bodily incorporation or substitution of Krone's
ball valve for the Gordon's flange valve. See id.
Appellants also argue that the proposed modification would render
Gordon's valve unsatisfactory for its intended purpose. Br. 12-13. This
argument is similar to Appellants' first argument, discussed above, and is
premised on the contention that Krone's solid ball cannot be used in a valve
that must provide for emergency pressure relief. Id. As discussed above, we
are not persuaded that one of ordinary skill in the art would consider a solid
ball unsuitable for use in emergency pressure relief valves based on the
teachings of Krone. Rather, it is only the specific valve structure of Krone,
including the solid ball, which does not allow for emergency pressure relief,
but the rejection is not premised on the bodily incorporation of Krone's
specific valve structure into Gordon's device.
Appellants also argue that Pareja does not disclose a two-way check
valve as characterized by the Examiner. Br. 13-14. Specifically, Appellants
assert that Pareja is a one-way check valve that does not permit flow in a
second flow direction opposite a first flow direction through the non-return
valve, as required by claim 13. Id. at 14.
We are not persuaded of error. First, we agree with the Examiner that
Pareja discloses flow in two directions with respect to the valve, based on
the description of the valve provided by Appellants. See Ans. 15; Br. 14.
Specifically, Appellants description states that flow in two directions is
provided by the suction stroke and pressure stroke, respectively. We note
that the rejection states only that Pareja "discloses a similar two-way check
valve" without any indication that Pareja is relied upon as teaching second
flow in a direction opposite the first flow and through the non-return valve.
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Application 13/261,227
Thus, we are not persuaded that the Examiner has mischaracterized Pareja in
such a way that the rejection includes reversible error.
Finally, Appellants argue that "the Examiner has not provided [a]
'clear articulation of the reason(s) for why the claimed invention would have
been obvious' that is required to establish a prima facie case of
obviousness." Br. 14--15. In support, Appellants assert that Gordon already
achieves the objective for which Pareja is relied upon, i.e. providing a more
compact device with reduced axial length. Id. at 14. Gordon does disclose
that a vent valve is provided that is "considerably more compact" with
respect to the valve disclosed in Figures 1 and 4. Gordon col. 2, 11. 8-11.
However, the rejection does not rely on these embodiments of Gordon.
Rather, the rejection relies on Gordon's description of the prior art valve
depicted in Figure 3. See Final Act. 3-5. Thus, this is not the situation
where the specific embodiment relied upon in the base reference already
includes the advantages cited for the modification based on a secondary
reference, and therefore, the fact that Gordon's disclosed embodiments
might reduce axial length does not show error in the Examiner's conclusion
that it would have been obvious to modify the prior art valve in Gordon's
Figure 3 based on the teachings of Pareja as means to produce a more
compact device.
Based on the foregoing, we are not persuaded of reversible error in the
rejection of claim 13. Accordingly, we sustain the rejection. With respect to
the rejections of the remaining claims, Appellants do not raise any additional
arguments. Thus, we also sustain the rejections of claims 14--20 and 29-31
for the same reasons.
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Application 13/261,227
CONCLUSION
We AFFIRM the rejections of claims 13-20 and 29-31.
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
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