Ex Parte Stewart et al

Patent Trial and Appeal Board

Jul 22, 2013

11445949 (P.T.A.B. Jul. 22, 2013)

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.
11/445,949 06/02/2006 Ted Stewart AGE12.1 8053
64278 7590 07/22/2013
STEVEN L. SCHMID
1824 HICKORY TRACE DRIVE
FLEMING ISLAND, FL 32003
EXAMINER
COLEMAN, KEITH A
ART UNIT PAPER NUMBER
3783
MAIL DATE DELIVERY MODE
07/22/2013 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 TED STEWART and JAMES NAPIER
____________

Appeal 2011-005147
Application 11/445,949
Technology Center 3700
____________

Before STEFAN STAICOVICI, GAY ANN SPAHN, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
rejection of claims 1, 4-9, 13-15, and 18-23. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.

Appeal 2011-005147
Application 11/445,949

2
Claimed Subject Matter
Claim 1, reproduced below, with emphasis added, is illustrative of the
appealed subject matter.
1. A fuel injection mechanism for regulating the volume of
fuel injected comprising:
a plunger having a first and a second opposed ridge;
a recessed channel positioned between and defined by the
first and second opposed ridges and encircling an axial portion
of the plunger; and
the opposed ridges having a plurality of horizontal
control surfaces, wherein the horizontal control surfaces are
positioned about the longitudinal axis of the plunger and around
the axial portion of the plunger such that the horizontal control
surfaces being associated with separate throttle positions,
the horizontal control surfaces of the first opposed ridge
are associated with the separate throttle positions and the
horizontal control surfaces of the second opposed ridge are
associated with the separate throttle positions.

Independent claim 9 is directed to a fuel injection mechanism
including, inter alia, a plunger having a first opposed ridge with a plurality
of horizontal control surfaces such that at least one of the horizontal control
surfaces is associated with at least two separate throttle positions.
Independent claim 15 is directed to a diesel engine including, inter
alia, a plurality of fuel injection mechanisms, each including a plunger
having a first opposed ridge with a plurality of horizontal control surfaces
such that at least one of the horizontal control surfaces is associated with at
least two separate throttle positions.
Appeal 2011-005147
Application 11/445,949

3
Rejections
The following Examiner’s rejections are before us for review:1
I. claims 1, 4-9, 13-15, 18-20, 22, and 232 under 35 U.S.C.
§ 102(b) as anticipated by Henson (US 4,327,694, issued May 4, 1982); and
II. claim 21 under 35 U.S.C. § 103(b) as unpatentable over Henson
and DeLuca (US 6,009,850, issued Jan. 4, 2000).

OPINION
Rejection I – Anticipation based on Henson
The issue presented by the present appeal is whether Henson teaches a
plurality of horizontal control surfaces each associated with separate throttle
positions.
With respect to each of independent claims 1, 9, and 15, Appellants
argue that Henson fails to teach a plurality of horizontal control surfaces
each associated with separate throttle positions, because Henson discloses
that:
[t]he flat portions 66, 70 of the upper 64 and lower 62 control
edges are at no time aligned with either the upper or lower fuel
ports 32 and 30, and therefore form no part of the fuel injection

1 The Examiner withdrew the rejections of: claim 15 under 35 U.S.C. § 112,
second paragraph, as being indefinite; and claims 1, 4-9, 13-15, and 18-23
on the grounds of nonstatutory double patenting over claims 1-8 of US
6,779,561 B2, issued Aug. 24, 2004 to Reck. Ans. 3.
2 Although the Examiner’s ground of rejection lists claim 21 (Ans. 4), we
have removed claim 21 from the claim listing because the subject matters of
claims 1, 4-9, 13-15, 18-20, 22, and 23 are specifically discussed in the body
of the rejection (Ans. 4-9), but the subject matter of claim 21 is not. Thus, it
appears that claim 21 is only rejected under the second ground of rejection.
See Ans. 9.
App
App

App

finds
ridge
Figu
plura
Hens
plun
anno
inter
62, 6
supr
(low
secti
ridge
flat p
eal 2011-0
lication 11
process.
the circu
. Br. 8-12;
With res
that Hens
s 62, 64.
re 2 to sho
lity of hor
The Exam
on’s Figu
ger groove
tated by th
prets are a
4.
Thus, fro
a, we unde
er control
on 70 and
(upper co
ortion 66
05147
/445,949
These sur
mferential
Reply Br.
pect to eac
on disclos
Ans. 10, 1
w where t
izontal co
iner’s ann
re 2 depict
26 (Hens
e Examin
plurality o
m the Exa
rstand the
edge 62) h
the flat top
ntrol edge
and the fla
faces 66,
groove 26
3-4; and H
h of indep
es a plung
2-13, and
he Examin
ntrol surfa
otated Figu
s a develo
on, col. 2,
er to have
f horizont
miner’s a
Examiner
as two hor
of startin
64) has tw
t bottom o
4
70 are pres
around th
enson, co
endent cla
er 12 havi
16. The E
er conside
ces.
re 2 of He
ped view o
ll. 6-7 and
arrows po
al control
nnotated F
to be indi
izontal co
g projectio
o horizon
f starting
ent merely
e plunger
l. 4, ll. 46
ims 1, 9, a
ng first an
xaminer a
rs Henson
nson is re
f the entir
col. 3, ll.
inting to w
surfaces in
igure 2 of
cating that
ntrol surfa
n 78, and
tal contro
groove 76
to compl
12.
-51.
nd 15, the
d second o
nnotates H
to disclos
produced
e circumfe
15-17), an
hat the Ex
each con
Henson re
Henson’s
ces, name
Henson’s
l surfaces,
.
ete
Examine
pposed
enson’s
e a
below:
rential
d has been
aminer
trol edge
produced
first ridge
ly, flat
second
namely,
r

Appeal 2011-005147
Application 11/445,949

5
Appellants reply that “the flat portions 66 and 70 are not control
surfaces.” Reply Br. 3. We agree. As correctly pointed out by Appellants,
Henson indicates that the flat portions 66, 70 of the upper and lower control
edges 64, 62, respectively, are never aligned with either the upper or lower
fuel ports 32, 30, and therefore form no part of the fuel injection process.
Reply Br. 3, 6 (citing Henson, col. 4, ll. 46-49). Henson also indicates that
the flat portions 66, 70 are only present to complete the circumferential
groove 26 around the plunger 12. Henson, col. 4, ll. 49-51. Appellants also
correctly point out that “[i]f the flat portion [66 or 70] found on each helix is
not part of the fuel injection process[, then] the flat portion [66 or 70] cannot
be associated with a throttle position,” in which an increased or decreased
amount of fuel is delivered. Reply Br. 6. Thus, Henson does not anticipate
independent claims 1, 9, and 15 because neither of the first and second
ridges (control edges 62, 64) include a plurality of horizontal control
surfaces since Henson’s flat portions 66, 70 do not constitute horizontal
control surfaces and are not associated with a throttle position.
Accordingly, we do not sustain the Examiner’s rejection of
independent claims 1, 9, and 15, and claims 4-8, 13, 14, 18-20, 22, and 23
dependent thereon, under 35 U.S.C. § 102(b) as anticipated by Henson.

Rejection II – Obviousness based on Henson and DeLuca
The Examiner’s rejection of claim 21 relies on the erroneous finding
that Henson discloses a first opposed ridge including a plurality of horizontal
control surfaces each associated with separate throttle positions. The
Examiner has not relied on DeLuca to cure the deficiency with respect to
Henson. See Ans. 9. Accordingly, for the same reason as discussed supra
Appeal 2011-005147
Application 11/445,949

6
with respect to independent claim 15, we do not sustain the Examiner’s
rejection of claim 21 under 35 U.S.C. § 103(a) as unpatentable over Henson
and DeLuca.

DECISION
We reverse the Examiner’s decision to reject claims 1, 4-9, 13-15, and
18-23.

REVERSED

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