Ex Parte Reiter

Board of Patent Appeals and Interferences

Sep 11, 2012

11662621 (B.P.A.I. Sep. 11, 2012)

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.
11/662,621 08/07/2007 Ferdinand Reiter 10191/4730 8274
26646 7590 09/11/2012
KENYON & KENYON LLP
ONE BROADWAY
NEW YORK, NY 10004
EXAMINER
CERNOCH, STEVEN MICHAEL
ART UNIT PAPER NUMBER
3752
MAIL DATE DELIVERY MODE
09/11/2012 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 FERDINAND REITER
____________

Appeal 2010-008974
Application 11/662,621
Technology Center 3700
____________

Before PHILLIP J. KAUFFMAN, LYNNE H. BROWNE and
HYUN J. JUNG, Administrative Patent Judges.

BROWNE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Ferdinand Reiter (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision finally rejecting claims 18-34. Appellant cancelled
claims 1-17. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

Appeal 2010-008974
Application 11/662,621

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The Invention

Claim 18, reproduced below with emphasis added, is representative of
the subject matter on appeal.
18. A fuel injector, comprising:
a valve housing;
a solenoid coil;
a selectively deformable projection;
a restoring spring;
an armature, wherein the armature is acted
upon by the restoring spring, and wherein the
armature cooperates with the solenoid coil;
a valve needle, wherein valve needle and the
armature together form an axially displaceable
valve part;
a sealing seat formed by a valve-closure
member and a valve-seat body, wherein the valve
closure member is provided on the valve needle;
and
a disk made of an elastomeric material
affixed between the solenoid coil and the valve
housing.

The Rejections
Claims 18-21 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Casey (US 4,951,878, iss. Aug. 28, 1990) and Cerny (US 5,263,647,
iss. Nov. 23, 1993).
Claims 22-34 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Casey, Cerny, and Yokota (US 5,566,921, iss. Oct. 22, 1996).

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Application 11/662,621

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CONTENTIONS and ISSUE
Appellant argues:
Casey et al. does not disclose, or even
suggest, a selectively deformable projection . . .
The mating aperture (96) is not a selectively
deformable projection, but rather an opening used
to permit the electrical terminals (94) to pass
through the stator's radial flange (80) (Casey et al.,
Column 4, lines 53 to 55).
App. Br. 4.
The Examiner responds:
Regarding the appellant's argument
specifically against that of Casey et al. teaching a
“selectively deformable projection” of any kind,
the examiner would again like to reiterate the
explanation of why numeral 96 in figure 2 was
chosen in the office actions prior. As can be seen
in figure 2 and listed on lines 48-62 of column 4 in
Casey et al., the bobbin is disclosed as numeral 88
while numeral 96 is disclosed as “a pair of mating
apertures,” but as can be seen in figure 2, the
numeral and lead-in line of mating aperture, 96, is
directed toward an upwardly projecting portion of
the bobbin, 88, thus, this was done so as not to
cause confusion by only pointing toward the
bobbin, 88, and to specifically show a “projection”
as is appellant's selected terminology.
Ans. 6-7.

Appellant further argues:
The Examiner's reliance on the cross-
hatching in Figure 2 of Casey et al. as allegedly
disclosing that bobbin 88 must be selectively
deformable is untenable. . . . Although M.P.E.P
608.02 states that “[t]he following symbols should
be” -- but are not required to be – “used to
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Application 11/662,621

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indicate various materials,” M.P.E.P. also states[]
that “the Office will not ‘approve’ any published
collection of symbols as a group because their use
and clarity must be decided on a case-by-case
basis.”
Moreover, 37 C.F.R. § 1.84 (h)(3) merely
states that “various parts of a cross section of the
same item should be hatched in the same manner”
and that “[d]ifferent types of hatching should have
different conventional meanings as regards the
nature of a material seen in cross section,” but does
not require it. Additionally, while M.P.E.P 608.02
may indicate that the hatchings used for reference
numeral 100 and 88 (or 96) are “synthetic resin
or plastic,” nowhere does it indicate whether they
are deformable or not. In addition, nowhere do
Casey et al. indicate that electrical connector
housing 100 is selectively deformable.
App. Br. 5-6.
The Examiner responds:
Now, to move on to the more pertinent argument
that this “projection” of Casey et al. is not
disclosed as or inherently “selectively deformable”
as the rest of the claimed limitation states, the
examiner would like this opportunity to point out
that in fact any physical object is inherently
selectively deformable to a degree. A material
deformation and how much of a deformation it can
withstand is an inherent material property. Now to
correlate the bobbin, 88 (96), of Casey et al. with
that of appellant's “selectively deformable
projection” as disclosed in appellant's figure 3 as
numeral 27, it can be seen from figure 3 that the
cross-hatching chosen by appellant matches that of
the bobbin in Casey et al. which also matches that
of the known and accepted cross-hatching for
“synthetic resin or plastic” as shown in MPEP
608.02 in the top right corner. Synthetic resin
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Application 11/662,621

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and/or plastic are known for their inherently
present deformation properties.
Ans. 7.
Thus, the question before is whether Casey describes “a selectively
deformable projection” as required by independent claim 18 and by claims
19-34 which depend therefrom.

ANALYSIS
Claims 18-21
Appellant argues claims 18-21 as a group. We select independent
claim 18 as the representative claims and claims 19-21 stand or fall with
claim 18. See App. Br. 3-6; see also 37 C.F.R. § 41.37(c)(1)(vii)(2011).
In order to determine whether or not Casey discloses a “selectively
deformable projection” we must first construe the claim language
“selectively deformable.” When claim terminology is construed in the
United States Patent and Trademark Office, claims are to be given their
broadest reasonable interpretation consistent with the specification, reading
claim language in light of the specification as it would be interpreted by one
of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004).
The Specification does not assign or suggest a particular definition of
the term “selectively deformable projection” or otherwise indicate that this
term is used in a manner other than its ordinary and customary meaning.
Therefore, in determining the ordinary and customary meaning of the claim
term “selectively deformable projection” as viewed by a person of ordinary
skill in the art, it is appropriate to consult a general dictionary definition of
the words “selectively,” “deformable,” and “projection” for guidance.
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Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010). An
ordinary and customary meaning of the word “projection” is “a part that juts
out.”1 The word “selectively” is the adverbial form of the word “selective.”
An ordinary and customary meaning of the word “selective” is “highly
specific in activity or effect.”2 The word “deformable” is the adjective form
of the word “deform.” An ordinary and customary meaning of the word
“deform” is “to spoil the form of.”3
In the context of claim 18 the adjective “deformable” modifies the
noun “projection” and the adverb “selectively” modifies the adjective
“deformable.” Thus, “a selectively deformable projection” is a projection
that can have its form spoiled due to a highly specific activity or effect.4
Appellant’s argument that aperture 96 is an opening rather than a
selectively deformable projection as claimed is unpersuasive because it is
based upon semantics only, and does not explain why the Examiner’s
finding is in error. See App. Br. 4.
Appellant contends that the cross hatching symbol used for aperature
96 is not necessarily synthetic resin or plastic because such symbols are not
required by MPEP § 608.02. App. Br. 5-6; Reply Br. 2-3. This argument
concedes that Casey’s aperture 96 is indicated to be synthetic resin or

1 Merriam-Webster.com, © 2012, accessed at http://www.merriam-
webster.com/dictionary/projection (last visited August 31, 2012).
2 Id., accessed at http://www.merriam-webster.com/dictionary/selective (last
visited August 31, 2012).
3 Id., accessed at http://www.merriam-webster.com/dictionary/deform/ (last
visited August 31, 2012).
4 Appellant’s argument suggests that the selectively deformable projection
compensates for tolerances; however, such limitation is not imported from
the Specification into claim 18. See App. Br. 3-4; Spec. 6:16-25.
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plastic, and the fact that such marking is not mandated does not demonstrate
that this marking is in error. Further, consistent with the indication that it is
synthetic rubber or plastic, aperture 96 is formed by pair of bosses 98 that
circumscribe and electrically isolate electrical terminals 94. Casey, col. 4, ll.
55-58; fig. 7.
The Examiner finds that Casey has a projection as explained supra.
Appellant’s argument that aperture 96 is not a projection is inapposite. The
portion of bobbin 88 which forms aperture 96 juts out from the main body of
bobbin 88 as shown in Figure 2, thus constituting a projection as required by
claim 18.
This projection can have its form spoiled due to a highly specific
activity or effect such as when the jutting portion of bobbin 88 passes with
electrical terminals 94 through apertures 96 provided in the radial flange 80
or when the terminals 94 are mated with a power source for the solenoid coil
86. See Casey, col. 4. Ll. 51-55. Accordingly, Casey describes “a
selectively deformable projection” as broadly claimed.
For these reasons, we sustain the Examiner’s rejection of claims 18-21
under 35 U.S.C. § 103(a) as unpatentable over Casey and Cerny.
Claims 22-34
Appellant argues claims 22-34 as a group. We select claim 22 as the
representative claims and claims 23-34 stand or fall with claim 22. See App.
Br. 7; see also 37 C.F.R. § 41.37(c)(1)(vii). Appellant argues:

Yokota et al. is not relied upon for disclosing or
suggesting the features of claim 18 not disclosed or
suggested by Casey et al. or Cerny et al. Indeed, it
is respectfully submitted that Yokota et al. does
not disclose, or even suggest, the features included
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in claim 18 not disclosed or suggested by the
combination of Casey et al. and Cerny et al. As
such, it is respectfully submitted that the
combination of Casey et al., Cerny et al., and
Yokota et al. does not render unpatentable claims
22 to 34, which depend from claim 18.
App. Br. 7.
Thus, Appellant argues for claim 22 based upon its dependence from
claim 18. The features of claim 18 are unpatentable over Casey and Cerny
as discussed supra. Accordingly, we sustain the Examiner’s rejection of
claims 22-34 under 35 U.S.C. § 103(a) as unpatentable over Casey, Cerny,
and Yokota.

DECISION
We affirm the Examiner’s decision to reject claims 18-34.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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