Ex parte MAIER et al.

Board of Patent Appeals and Interferences

Sep 11, 1998

08467326 (B.P.A.I. Sep. 11, 1998)

Application for patent filed June 6, 1995. According to appellants, the application1
is a continuation of Application 08/202,416, filed February 28, 1994, abandoned.
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publication in a law journal and (2) is not binding precedent of the Board.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. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MARTIN MAIER, NORBERT BELZNER, JORG HEYSE
AND CHRISTIAN PREUSSNER
__________
Appeal No. 97-3193
Application 08/467,3261
___________
ON BRIEF
__________
Befores STAAB, McQUADE , and CRAWFORD , Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection of claims 1 and 4.
Appeal No. 97-3193
Application 08/467,326
An amendment filed subsequent to the final rejection on December 9, 19962
(Paper No. 21), wherein claim 2 was rewritten in independent form and claim 3 was
amended to depend from claim 2, has been entered. See the advisory letter mailed
January 3, 1997 (Paper No. 22).
As shall be seen in our discussion infra, appellants make much of the fact that the3
Erb patent applied by the examiner against the claims does not expressly disclose
element 37 as being composed of metal. We note in passing, however, that appellants’
original disclosure likewise does not expressly disclose spray disk as having a central
region composed of metal.
2
Claims 2 and 3, the only other claims remaining in the application, have been allowed.2
Appellants’ invention pertains to a perforated spray disk for use in an injection valve
of a fuel injection system for an internal combustion engine. The disk has at least one
spray opining having a frustoconical form that flares in the downstream direction. This
shape is said to minimize variations in the volume of medium flowing through the openings.
Independent claim 1 is illustrative of the appealed subject matter and reads as follows:
1. A perforated spray disk for a valve having a lengthwise valve axis and a fluid flow
direction, comprising:
an upper surface;
a lower surface;
a metal spray disk central region, the central region having at least one spray[3]
opening;
the at least one spray opening being formed by electrical discharge machining and
having a frustoconical form which expands in the flow direction around an opening axis, the
at least one spray opening frustoconically extending from the upper surface to the lower
surface; and
Appeal No. 97-3193
Application 08/467,326
3
the opening axis and the lengthwise valve axis being parallel.
The single reference of record relied upon by the examiner in support of a rejection
under 35 U.S.C. § 102(b) is:
Erb et al. 4,018,387 Apr. 19, 1977
Claims 1 and 4 stand rejected under 35 U.S.C. § 102(b) as being unpatentable
over Erb. It is the examiner’s position that:
Erb et al. [in Figure 5] shows all [elements] of the basic device
including an upper surface at 49, a lower surface opposite 49, a metal spray
disk 37 with a central opening 47, the opening being frustoconical form
which expands in the flow direction and frustoconically extending from the
upper surface to the lower surface, and the central region being flat. The
disk is capable of being formed by electrical discharge machining.
At the outset, we note that appellants have not argued the appealed claims
separately. Therefore, claims 1 and 4 will stand or fall together in accordance with the
success or failure of the appellants’ arguments. See In re Hellsund, 474 F.2d 1307,
1309-10, 177 USPQ 170, 172 (CCPA 1973); In re Wood, 582 F.2d 638, 642, 199 USPQ
137, 140 (CCPA 1978); and In re Nielson, 816 F.2d 1567, 1572, 2 USPQ2d 1525, 1528
(Fed. Cir. 1987).
Appellants argue on pages 4 and 5 of the brief that element 37 of Erb is not a
perforated spray disk for a valve. Specifically, appellants assert that
element 37 of the Erb Patent is a cap element for a nebulizer, which is
provided on its side with a liquid inlet 44 for allowing a liquid to enter a liquid
supply chamber 46, which is positioned below a cap element 37. . . . Thus,
Appeal No. 97-3193
Application 08/467,326
4
Appellants assert that the cap element 37 of the Erb Patent is not for a
valve, much less does it constitute a valve spray disk [as claimed] . . . .
[Brief, page 5; bold in original.]
This argument is not persuasive. First of all, the preamble recitation in each of the
independent claims on appeal that the claimed spray disk is “for a valve” having certain
characteristics amounts to a statement of intended use which cannot be relied upon to
distinguish the claimed structure over a prior art structure which otherwise satisfies all the
structural limitations of the claims. See, for example, In re Yanush, 477 F.2d 958, 959,
177 USPQ 705, 706 (CCPA 1973); In re Finsterwalder, 436 F.2d 1028, 1032, 168 USPQ
530, 534 (CCPA 1971); In re Casey, 370 F.2d 576, 580, 152 USPQ 235, 238 (CCPA
1967); and In re Otto, 312 F.2d 937, 939, 136 USPQ 458, 459 (CCPA 1963). Accord for
this proposition is found in In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431
(Fed. Cir. 1997), wherein the Court noted that “[i]t is well settled that the recitation of an
new intended use for an old product does not make a claim to that old product patentable.”
Secondly, in that the shims 48 provided on Erb’s piston element 38 may be formed of
compressible material such that the pressure of gas flow acting against the underside of
the piston element may in increased to the point that liquid flow stops (column 9, lines 52-
60), Erb’s element 37 is “for a valve,” as broadly claimed. Further, in that appellants’
broad claim language is in an open-ended “comprising” format that does not exclude the
Appeal No. 97-3193
Application 08/467,326
See, for example, 2D. Chisum, Patents §8.06 (1) (1992).4
“Appellants further submit that . . . it would not be readily apparent to one of5
ordinary skill in the art of fuel injection valves to construct a valve spray disk . . . as recited
in claim 1” (brief, page 5; bold in original).
5
presence of other elements , the fact that Erb’s disk may include additional elements such4
as liquid inlet 44 is of no moment. Finally, to the extent appellants argue that Erb’s disk
element 37 is not usable in fuel injection valves , the argument fails at the outset because5
neither of the appealed claims recite, either positively of inferentially, a fuel injector valve.
In re Self, 671 F.2d 1344, 1348, 213 USPQ 1, 5 (CCPA 1982).
Appellants also argue that element 37 of Erb is not disclosed as being composed
of metal. We do not agree. A drawing is available as a reference for all that it teaches a
person of ordinary skill in the art. Further, a claimed invention may be anticipated by a
drawing in a reference, whether the drawing disclosure is accidental or intentional. In re
Meng, 492 F.2d 843, 847, 181 USPQ 94, 97 (CCPA 1974). Here, based on the drawing
conventions approved by the PTO and in effect as of (1) the filing date (June, 19, 1975) of
the parent S.N. 588,353 application to Erb, (2) the filing date (July 1, 1975) of the
application that matured into the Erb patent, and (3) the issue date (April 19, 1977) of the
Erb patent, as established by the Rules of Practice in effect at the time the application that
Appeal No. 97-3193
Application 08/467,326
See the attached copy of 37 CFR § 3.61, Symbols for Draftsmen (revised as of6
July 1, 1976), which is representative of the rule for the time period in question.
Copy attached.7
6
matured into the Erb patent was filed, we find that the cross hatching used by Erb in6
depicting element 37 would have conveyed to one of ordinary skill in the art that element
37 is made of metal material. Although the Rules of Practice no longer include a section
devoted exclusively to drawing conventions, current M.P.E.P.
§ 608.02, Drawings, indicates that the drawing conventions for cross hatching in effect at7
the time the Erb patent was filed continue to the present, thereby bolstering our view that
one of ordinary skill in the art would regard Erb’s element 37 as being made of metal
material. In further support of our finding in this regard, we note that there is nothing in
Erb’s verbal description which would lead the ordinarily skilled artisan to a contrary
conclusion. See National Latex Products Co. v. Sun Rubber Co., 274 F.2d 224, 230,
123 USPQ 279, 283 (6th Cir. 1959) (mold considered to be metal based on cross
hatching of drawings).
On page 6 of the brief, appellants argue, in effect, that since Erb purposefully
discloses nebulizer disk 20 as being composed of metal (see column 4, lines 38-41), if
Erb wanted to disclose other components as being composed of metal he would have
done so. This argument is without merit because, as noted above, a disclosure in the
drawings does not have to be purposeful in order to anticipate the claimed subject matter.
Appeal No. 97-3193
Application 08/467,326
7
In re Meng, 492 F.2d at 847, 181 USPQ at 97. Appellants note that element 20 in Figure
1 of Erb is not cross hatched to indicate metal and urge that Erb’s cross hatching for
element 37 in Figure 5 would therefore be disregarded by one of ordinary skill in the art
because Erb does not consistently follow the cross hatching scheme suggested in
M.P.E.P. § 608.02. This argument is not well taken for the reason noted by the examiner,
namely, Figure 1 of Erb is not a sectional view and therefore would not be expected to
show elements with cross hatching. We simply disagree with appellants’ argument on
page 7 of the brief that Erb’s cross hatching serves only to differentiate between
components, and not to designate the “specific compositions” of components. In a
nutshell, there is simply no reason for us to presume that one of ordinary skill in the art, in
reading Erb’s drawings, would ignore the conventional and well accepted cross hatching
scheme used in patent drawings to indicate various materials for elements, as urged by
appellants.
In light of the foregoing, the standing § 102 rejection of claims 1 and 4 is affirmed.
Appeal No. 97-3193
Application 08/467,326
8
Appeal No. 97-3193
Application 08/467,326
9
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN P. McQUADE )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
MURRIEL E. CRAWFORD)
Administrative Patent Judge )
Appeal No. 97-3193
Application 08/467,326
10
Richard L. Mayer
Kenyon & Kenyon
One Broadway
New York, New york 10004