Milan Klimes

Patent Trials and Appeals Board

Jan 19, 2021

2019006101 (P.T.A.B. Jan. 19, 2021)

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.
12/845,151 07/28/2010 Milan Klimes 1576-0593 9438
28078 7590 01/19/2021
MAGINOT, MOORE & BECK, LLP
One Indiana Square, Suite 2200
INDIANAPOLIS, IN 46204
EXAMINER
LOPEZ, FRANK D
ART UNIT PAPER NUMBER
3745
MAIL DATE DELIVERY MODE
01/19/2021 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 MILAN KLIMES
Appeal 2019-006101
Application 12/845,151
Technology Center 3700
Before WILLIAM A. CAPP, JEREMY M. PLENZLER, and
LISA M. GUIJT, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3, 5–8, and 19–22. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real parties in interest as Robert
Bosch, GmbH and Robert Bosch, LLC. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed to a braking system. Claim 1, reproduced
below with emphasis added, is illustrative of the claimed subject matter:
1. A braking system with an electric hydraulic booster
including a housing, the braking system comprising:
a boost chamber defined within the housing;
a booster piston activating chamber defined within the
housing;
a boost piston located between the boost chamber and the
booster piston activating chamber, the boost piston configured to
move within the housing, the boost piston including a cavity;
an input rod operably connected to the boost piston and
configured to move in the cavity;
a travel sensor fixedly positioned in the cavity adjacent to
the input rod and configured to detect travel of the input rod in
the cavity; and
a solenoid valve operably connected in fluid
communication between a high pressure source, the boost
chamber, and the booster piston activating chamber, the solenoid
movable between (i) a first position in which fluid flows from
said booster piston activating chamber through said solenoid
valve and into said boost chamber under control of said solenoid
valve in a continuous manner between the chambers, to vent
fluid from said booster piston activating chamber to said booster
chamber, and fluidly isolated from the high pressure source, (ii)
a second position whereat the boost chamber and the booster
piston activating chamber are fluidly isolated from each other
and from the high pressure source, and (iii) a third position
whereat the booster piston activating chamber and the high
pressure source are in fluid communication and fluidly isolated
from the boost chamber,
wherein the solenoid valve includes;
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a piston including an internal bore in fluid
communication with the boost chamber entirely within the
housing;
an inlet seat; and
a sealing member, the sealing member configured
to seal the internal bore when the solenoid valve is in the
second position and configured to form a seal with the
inlet seat when the solenoid valve is in the first position
and the second position.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Burgdorf US 4,580,847 Apr. 8, 1986
Leiber US 4,620,750 Nov. 4, 1986
Myers US 4,625,515 Dec. 2, 1986
Takata US 5,031,968 July 16, 1991

REJECTIONS
Claims 1–3, 5–8, and 19–22 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite.
Claim 20 is rejected under 35 U.S.C. § 112, fourth paragraph, as being
an improper dependent claim.
Claims 1–3, 5–8, and 19–22 are rejected under 35 U.S.C. § 103 as
being unpatentable over Myers, Leiber, Takata, and Burgdorf.
OPINION
Prior Board Decision
Appellant notes that “[a] prior appeal was filed on February 17, 2016,
culminating in a Board decision issued on December 21, 2017.” Appeal
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Br. 3. Appellant does not identify the appeal number or the holding of that
prior appeal.
The prior appeal is 2017-001782, and the decision in that case was an
affirmance of the Examiner’s rejections, including an obviousness rejection
based on the same combination of references as before us in this appeal.
Ex parte Klimes, Appeal No. 2017-001782, 2017 WL 6816976 (PTAB Dec.
20, 2017) (“Prior Board Decision”). Claims 1 and 19 were amended after
the Prior Board Decision. The amendment added the language included in
italics in claim 1 above (similar language was added to claim 19) (“the
amended claim language”). The amended language replaced “whereat the
boost chamber and the booster piston activating chamber are in fluid
communication” (“the previous claim language”). Feb. 21, 2018
Amendment.
The Prior Board Decision made multiple findings relevant to this
appeal. Those findings include:
1. Appellant’s Specification does not support the notion that “the
movement of the solenoid valve . . . cause[s] or stop[s] fluid flow
in the boost chamber.” Prior Board Decision at *3.
2. “The only discussion of venting of Appellant’s boost activation
chamber 118 is found in paragraph 36 of Appellant’s
Specification,” which describes “a vent path for the boost
activating chamber 118 through fluid channel 124 to chamber 130
and reservoir 106.” Id. at *4.
3. “[T]he operation of valve 30 [of Myers] controls when chamber 22
is also in fluid communication with pressure chamber 26.” Id. at
*3.
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4. “[T]he venting of fluid from pressure chamber 26 in Myers results
from pressure differentials present between reservoir 44 and
chamber 22 when valve 30 moves to the first position.” Id. at *4.
5. Myers teaches “that in the first position of valve 30, boost chamber
22 and booster piston activating chamber 26 are in fluid
communication to vent fluid from booster piston activating
chamber 26 to booster chamber 22.” Id.
Appellant can no longer dispute these findings. See MPEP § 706.07(h)(XI)
(“a Board decision in an application is the ‘law of the case,’ and is thus
controlling in that application and any subsequent, related application”).
As explained below, much of the dispute before us concerns the
meaning of “fluid flows . . . in a continuous manner.”
Indefiniteness
Independent claims 1 and 19 each recite that when the solenoid valve
is in a first position “fluid flows . . . in a continuous manner . . . to vent fluid
from said booster piston activating chamber to said booster chamber.” The
Examiner determines that the claims are indefinite, as “[c]onfusion arises
(i.e. the 112) because, when the valve is in the same physical position, it
may or may not meet the claimed limitations ([continuous] flow) of being in
the first position.” Ans. 7.
Appellant contends that “[a]ll that is required in claims 1 and 19 is
that the fluid flow in the first position be continuous between the chamber[s]
while the flow is occurring” and “[t]he claim does not preclude the solenoid
valve from remaining in the ‘first position’ after the pressure has equalized
and the flow has stopped.” Appeal Br. 9. Appellant contends that “[f]or the
claimed ‘first position’, the structural relationship between the valve
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components is such that a continuous fluid flow between the two chambers
can occur to vent the booster piston activating chamber to the booster
chamber” and “[t]he physical position of the valve components is the ‘first
position’ that allows this continuous flow to occur.” Reply Br. 3. Appellant
contends that “the Examiner’s pedantic definition ignores that the ‘first
position’ limitation refers to venting one chamber to the other, and that the
person of ordinary skill would understand that venting one chamber to
another in a hydraulic braking system means that the fluid flow will
necessarily stop when the pressures are equalized.” Id.
A claim is properly rejected as indefinite if, after applying the
broadest reasonable interpretation in light of the specification, the metes and
bounds of a claim are not clear because the claim contains words or phrases
whose meaning is unclear. In re Packard, 751 F.3d 1307, 1310 (Fed. Cir.
2014) (per curiam); see also Ex parte McAward, Appeal No. 2015-006416,
2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (adopting the
approach for assessing indefiniteness approved by the Federal Circuit in
Packard). Appellant has the opportunity to resolve ambiguities during
prosecution. See, e.g., McAward, at *6–7.
The claims before us are unclear because we are unable to tell what
the difference is between the amended claim language and the previous
claim language. As noted above, we know that there is no discussion of
“fluid flow . . . in a continuous manner” in Appellant’s Specification, nor
can there be any dispute on this matter. Rather, when discussing the first
position of the solenoid valve, the Specification explains that “the boost
chamber 126 . . . is in fluid communication with the boost activating
chamber 118.” Spec. ¶ 38 (emphasis added); see also Spec. ¶¶ 41, 43
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(describing “fluid communication” between various chambers provided
when the solenoid valve is in the second and third positions).
As explained above, the claims at issue in the Prior Board Decision
were substantially identical to those before us now, but recited “fluid
communication,” rather than “fluid flow . . . in a continuous manner.” The
Prior Board Decision affirmed the Examiner’s rejection of the claims with
the “fluid communication” recitation based on the same combination of
references before us now.
Accordingly, we know that the amended claim language must mean
something different than the previous claim language. The problem is that
the difference is unclear. Turning to the Specification does not help because
it includes no discussion of flow, let alone flow in a continuous manner.2
For at least the reasons set forth above, we sustain the Examiner’s
decision to reject claims 1–3, 5–8, and 19–22 as indefinite.
Improper Dependent Claim
The Examiner explains that “[c]laim 20 claims the valve is modulated
(i.e. moved) between the second and third positions,” and “[i]f this means
that the valve is moved to either the second or third positions, then this is
found in claim 19 line 12–19.” Final Act. 5.
Claim 20 depends from claim 19. Claim 19 recites that “the solenoid
valve [is] movable between . . . a first position . . . a second position . . . and
. . . a third position.” Claim 20 adds that “the program instructions executed

2 Our decision not to enter a new ground of rejection of the claims under 35
U.S.C. § 112, first paragraph, as lacking written description support should
not be read as a tacit acknowledgement that written description support
exists for the amended claim language.
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by said controller are operable to control the solenoid valve to modulate the
solenoid valve between the third position and the second position.”
Emphasis added.
Claim 20 previously recited that “the program instructions executed
by said controller are operable to control the solenoid valve to modulate the
solenoid valve between the third position to the second position.” Emphasis
added. Feb. 21, 2018 Amendment. That claim was similarly rejected under
35 U.S.C. § 112, fourth paragraph. The Prior Board Decision determined
that “[t]he Examiner reasonably construed this claim language to refer to
movement of the valve from the third position to the second position, which
is the same limitation as recited in claim 19.” Prior Board Decision at *2.
Appellant’s amendment to replace the term “to” with “and” does not
change the meaning of the claim in the manner asserted by Appellant.
Consistent with the Prior Board Decision, the amended version of claim 20
refers to movement of the valve between the third position and the second
position, which, again, is the same limitation recited in claim 19.
Appellant contends that “Para. 49 of the original specification
provides a ‘special’ definition to the term ‘modulate’ to refer to moving the
solenoid valve back and forth between two discrete positions.” Appeal Br.
11 (emphasis added). Based on this “special definition,” Appellant contends
that “[t]he term ‘modulate’ recited in claim 20 means that the solenoid valve
‘moves directly’ from the third position to the second position and then
‘moves directly’ from the second position to the third position.” Id.
As noted above, the meaning of the term “modulate” was already
addressed in the Prior Board Decision, without assigning the alleged “special
definition.” That term was associated with “movement” without a “back and
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forth” requirement now alleged by Appellant. Moreover, as the Examiner
notes (Ans. 17), the alleged “special definition” of “modulation” in
paragraph 49 is in connection with describing pressure in the system.
Further, we do not see anything in paragraph 49 rising to the level of a
special definition of that term, particularly in connection with movement of
the solenoid valve.
For the reasons set forth above, we are not apprised of Examiner error.
Obviousness
To the extent the recited “fluid flow . . . in a continuous manner” is
the same as the “fluid communication” previously recited and discussed in
the Specification, we again note a rejection of claims of the same scope
based on the same references before us now has already been affirmed in the
Prior Board Decision. As explained above, if the amended claim language
means something different than the previous claim language, we do not
know what the amended claim language requires. When such a situation
arises, it is appropriate to simply reverse the rejection. See In re Steele, 305
F.2d 859, 862 (CCPA 1962) (holding that the Board erred in affirming a
rejection of indefinite claims under 35 U.S.C. § 103(a), because the rejection
was based on speculative assumptions as to the meaning of the claims). It
should be understood, however, that our decision in this regard is based
solely on the indefiniteness of the claimed subject matter, and does not
reflect on the adequacy of the prior art evidence applied in support of the
rejection.
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CONCLUSION
The Examiner’s indefiniteness rejection is affirmed. The Examiner’s
obviousness rejection is reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 5–8,
19–22
112 ¶2 Indefiniteness 1–3, 5–8,
19–22

20 112 ¶4 20
1–3, 5–8,
19–22
103 Myers, Leiber,
Takata, Burgdorf
1–3, 5–8,
19–22
Overall
Outcome
1–3, 5–8,
19–22

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED