Ex Parte Kothen et al

Board of Patent Appeals and Interferences

Nov 19, 2010

10559207 (B.P.A.I. Nov. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/559,207 12/02/2005 Dirk Kothen 4100-374PUS 4772
27799 7590 11/19/2010
COHEN, PONTANI, LIEBERMAN & PAVANE LLP
551 FIFTH AVENUE
SUITE 1210
NEW YORK, NY 10176
EXAMINER
MCGRAW, TREVOR EDWIN
ART UNIT PAPER NUMBER
3752
MAIL DATE DELIVERY MODE
11/19/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DIRK KOTHEN, GERTRUD MEGGENRIEDER,
DIETMAR PINKERNELL, ANDREAS STICHNOTH
and HAKAN YALCIN
____________________

Appeal 2009-008394
Application 10/559,207
Technology Center 3700
____________________

Before JOHN C. KERINS, KEN B. BARRETT, and
FRED A. SILVERBERG, Administrative Patent Judges.

SILVERBERG, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-008394
Application 10/559,207

STATEMENT OF THE CASE
Dirk Kothen et al. (Appellants) seek our review under
35 U.S.C. § 134 of the final rejection of claims 6 and 9. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).
We REVERSE.

THE INVENTION
Appellants’ claimed invention is directed to a fuel injection nozzle
having a cooling duct (Spec. 1: para. [0001]).
Claim 6, reproduced below, is representative of the subject matter on
appeal.
6. A fuel injection nozzle comprising a housing, the housing
comprising:
a nozzle needle bore having a central axis, an axial
length, and a lower portion comprising a needle seat, an axial
dimension of the lower portion being substantially smaller than
the axial length of the bore;
an outside surface radially spaced from the axis;
a cooling duct arranged around the lower portion of the
bore, the cooling duct being closer to the bore than to the
outside surface of the housing, the cooling duct having a cross-
sectional area in a plane through the central axis, the cross-
sectional area having a height in the axial direction and a width
transverse to the axis, the width being approximately 0.25 times
the height, wherein an entire height of said cooling duct is
arranged at said lower portion proximate said needle seat; and
a cooling medium inflow line having a first portion
extending axially in the housing and a second portion
connecting the first portion to the cooling duct, the inflow line
having a cross-sectional area, the cross-sectional area of the
cooling duct being approximately twice the cross-sectional area
of the inflow line.

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Appeal 2009-008394
Application 10/559,207

THE REJECTION
The following rejection by the Examiner is before us for review:
Claims 6 and 9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Marsch2 (DE 27 46 901 A1, published Jul. 20, 1978).

ISSUES
The issues before us are: (1) whether the Examiner erred in finding
that Marsch describes “the cross-sectional area of the cooling duct being
approximately twice the cross-sectional area of the inflow line,” as called
for in claim 6 (Reply Br. 2, App. Br. 5), and (2) whether the Examiner erred
in concluding that the ratio between the cross-sectional area of the cooling
duct and the inflow line, as called for in claim 6, would have been obvious
to a person having ordinary skill in the art (Reply Br. 2, App. Br. 5).

ANALYSIS
Appellants contend that Marsch fails to describe that the cross-
sectional area of the cooling duct is approximately twice the cross-sectional
area of the inflow line (App. Br. 5). Appellants contend that Marsch is silent
as to the ratio between the cross-sectional area of the cooling duct 12 and
the coolant bore 15 (App. Br. 5). Appellants contend that as a result of the
claimed cross-section area design “a relatively high flow rate of the cooling
medium and thus a relatively large rate of dissipation of heat is brought
about” (Reply Br. 2).

2 We rely on the translation of Marsch supplied by the Examiner. Both
Appellants and the Examiner have supplied translations of Marsch, while
Appellants’ translation is computer-generated.
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Appeal 2009-008394
Application 10/559,207

The Examiner found, in the body of the rejection, that “the cross
sectional area of the cooling duct (12) is approximately twice the cross
sectional area of the cooling medium inflow line (15)” (Ans. 4). The
Examiner, in the response to arguments section of the Examiner’s Answer,
concluded that “changing the . . . area of the cooling duct is obvious to one
having ordinary skill in the art,” and that “the optimum sizing arrangement
of a feature, whether larger or smaller in cross-sectional area does not
constitute patentability and renders such a change as an obvious matter of
engineering design choice” (Ans. 5-6).
Claim 6 calls for, inter alia, “the cross-sectional area of the cooling
duct being approximately twice the cross-sectional area of the inflow line.”
Marsch’s specification is silent as to the ratio between the cross
sectional area of the cooling duct 12 and the coolant bore 15. The Examiner
apparently relies on Marsch’s drawings in making the finding as to the sizes
of the duct and bore. However, Marsch’s patent drawings may not be relied
on to show particular sizes since Marsch’s specification is completely silent
on the issue. See Hockerson-Halberstadt, Inc. v. Avia Group Int’l, 222 F.3d
951, 956 (Fed. Cir. 2000) (“it is well established that patent drawings do not
define the precise proportions of the elements and may not be relied on to
show particular sizes if the specification is completely silent on the issue.);
see also In re Wright, 569 F.2d 1124, 1127 (CCPA 1977) (“Absent any
written description in the specification of quantitative values, arguments
based on measurement of a drawing are of little value.”)
As a result, we find that that the Examiner’s finding that Marsch
describes approximately the claimed ratio between the cross sectional area
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Appeal 2009-008394
Application 10/559,207

of the cooling duct 12 and the coolant bore 15 is a conclusory statement not
supported by the actual disclosure.
It appears that the Examiner may have alternatively concluded that the
recited ratio between the cross-sectional areas of the cooling duct and the
inflow line would have been an obvious matter of engineering design choice
(see Ans. 5-6 (referring to changing the area of the cooling duct and
optimum sizing of a cross-sectional area)).
Appellants’ Specification describes that:
The cross sectional area of the cooling duct 6 here is
approximately twice the cross sectional area of the cooling
medium inflow line 7. As a result, a relatively high flow
rate of the cooling medium and thus a relatively large rate of
dissipation of heat is brought about. Dead water regions are
also avoided with this design.
(Emphasis added) (Spec. 3: para. [0011]).
In contrast to Appellants’ disclosure, the Examiner has not set forth
any reasoning to support why a person of ordinary skill in the art would
arrive at the claimed ratio of areas. Therefore, we conclude that the
Examiner has not adequately established that the claimed ratio between the
cross sectional area of the cooling duct 12 and the coolant bore 15 is an
obvious matter of engineering design choice. See KSR Int'l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007) (“[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.”). See In re Warner, 379 F.2d 1011, 1017
(CCPA 1967) (“The legal conclusion of obviousness must be supported by
facts. Where the legal conclusion is not supported by facts it cannot
stand.”.)
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Appeal 2009-008394
Application 10/559,207

Thus, we are constrained to reverse the rejection of independent claim
6, and claim 9 which depends therefrom.

CONCLUSIONS
The Examiner has erred in finding that Marsch describes “the cross-
sectional area of the cooling duct being approximately twice the cross-
sectional area of the inflow line,” as called for in claim 6.
The Examiner has erred in concluding that the ratio between the
cross-sectional area of the cooling duct and the inflow line, as called for in
claim 6, would have been obvious to a person having ordinary skill in the
art.

DECISION
The decision of the Examiner to reject claims 6 and 9 is reversed.

REVERSED

JRG

COHEN, PONTANI, LIEBERMAN & PAVANE LLP
551 FIFTH AVENUE
SUITE 1210
NEW YORK, NY 10176
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