Robert Bosch GmbH

Patent Trials and Appeals Board

May 20, 2021

2020006404 (P.T.A.B. May. 20, 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.
15/529,549 05/25/2017 Guenther Hohl BOSC.P10505US/1000202491 9746
24972 7590 05/20/2021
NORTON ROSE FULBRIGHT US LLP
1301 Avenue of the Americas
New York, NY 10019-6022
EXAMINER
MO, XIAO EN
ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
05/20/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
nyipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GUENTHER HOHL and FRIEDRICH MOSER
Appeal 2020-006404
Application 15/529,549
Technology Center 3700
Before WILLIAM A. CAPP, JEREMY M. PLENZLER, and
GEORGE R. HOSKINS, 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 12–24. 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 party in interest as Robert
Bosch GmbH. Appeal Br. 1.
Appeal 2020-006404
Application 15/529,549

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CLAIMED SUBJECT MATTER
The claims are directed to a gas injector. Claim 12, reproduced
below, is illustrative of the claimed subject matter:
12. A gas injector for injecting a gaseous fuel directly into a
combustion chamber of an internal combustion engine,
comprising:
a valve closing element for releasing and closing a
through-opening;
a first seal seat between the valve closing element and a
valve body, the first seal seat being a metallic seal seat having
two metallic sealing partners; and
a second seal seat between a seat bearer fixedly connected
to the valve closing element and a stationary component, the
second seal seat including at least one elastomer seal as sealing
partner, wherein the first seal seat is situated closer to the
combustion chamber than is the second seal seat,
wherein the at least one elastomer seal is situated in a
groove of the seat bearer,
wherein an annular space is disposed between the seat
bearer and the valve body.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Kannan US 8,069,842 B2 Dec. 6, 2011
Liskow US 2009/0050113 A1 Feb. 26, 2009
Holt US 2012/0104120 A1 May 3, 2012
Fujino US 2014/0224903 A1 Aug. 14, 2014
Appeal 2020-006404
Application 15/529,549

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REJECTIONS
Claims 12–18 and 24 are rejected under 35 U.S.C. § 103 as being
unpatentable over Fujino.
Claims 19–21 are rejected under 35 U.S.C. § 103 as being
unpatentable over Fujino and Kannan.
Claim 22 is rejected under 35 U.S.C. § 103 as being unpatentable over
Fujino and Holt.
Claim 23 is rejected under 35 U.S.C. § 103 as being unpatentable over
Fujino and Liskow.
OPINION
Appellant’s contentions do not reference any particular claim, but
address limitations found in claims 12 and 24. Accordingly, Appellant
argues claims 12–18 and 24 as a group. We select claim 12 as
representative. Claims 13–18 and 24 stand or fall with claim 12. See 37
C.F.R. § 41.37(c)(1)(iv). Appellant does not address the rejections of
claims 19–23.
Appellant presents two contentions: (1) Fujino’s “seat bearer is not
fixedly connected to the valve closing element, but rather is integral with it”
(Appeal Br. 3); and (2) “nowhere does Fujino . . . disclose that seal member
8x is located within a groove, let alone within a groove of the seat bearer”
and “[e]ven if seal member 8x was located within a groove, there is no
suggestion or motivation that upstream-movable-seat portion 310x should be
located in a groove of the seat bearer” (id. at 4).
Appellant does not dispute the Examiner’s finding that Fujino teaches
a seat bearer integral with a valve closing element. Rather, the dispute
concerns whether Fujino’s integral structure can reasonably be considered
Appeal 2020-006404
Application 15/529,549

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“fixedly connected” as recited in claim 12. Appellant contends that “[t]hese
two connections (fixedly and integral) are not only physically different but,
as indicated in the present specification, the latter results in ‘mak[ing] valve
closing element 2 significantly more expensive to produce.’ (See, page 6,
lines 1-5 of the substitute specification).” Appeal Br. 3.
Appellant’s Specification explains that “seat bearer 16 [is] fixedly
connected to valve closing element 2.” Spec. 5:25.2 The Specification
provides two examples of “fixedly connected.” In one example, “seal
bearer 16 is connected fixedly to valve closing element 2 by a first weld
connection 17,” and in the other, seal bearer 16 and valve closing element
are a single integral part (“valve closing element 2 could also be fashioned in
a corresponding geometric shape”). Spec. 5:29–6:3.
Accordingly, consistent with Appellant’s Specification, we agree with
the Examiner that “a seat bearer fixedly connected to the valve closing
element” reasonably encompasses a seat bearer integrally formed with the
valve closing element.
As for the claimed “elastomer seal . . . situated in a groove of the seat
bearer,” the Examiner finds that Fujino teaches elastomer seal 310x
corresponding to the “elastomer seal” recited in claim 12 (Final Act. 3), but
“does not appear to teach [that] elastomer seal is situated in a groove of the
seat bearer” (id. at 4). The Examiner finds that “Fujino does teach an
elastomer seal 8x is seated in a groove” and reasons that “[i]t would have
been obvious . . . to modify[] the elastomer seal 310x to being in a groove as

2 Consistent with Appellant’s citations, we reference Appellant’s Substitute
Specification.
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Application 15/529,549

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taught by element 8x in a groove of Fujino in order to provide a more secure
fit for the elastomer seal 310x to prevent the elastomer from moving.” Id.
Appellant does not dispute the Examiner’s findings or rationale in any
meaningful way. Rather, Appellant alleges, without explanation, that
Fujino’s seal member 8x is not located in a groove. Appeal Br. 4. The
Examiner has the better position on this finding, as clearly shown in Fujino’s
Figure 16, reproduced below.

Figure 16 is a cross-section view of Fujino’s fuel injector. As seen above,
seal member 8x is located in a groove on cylindrical portion 15x.
Appellant’s dispute regarding the Examiner’s rationale is similarly
unavailing, as it is simply an allegation that one skilled in the art would not
make the proposed modification. Appeal Br. 4. Appellant does not address
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Application 15/529,549

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the rationale provided by the Examiner and, therefore, does not apprise us of
error.
For the reasons set forth above, we are not apprised of error in the
Examiner’s decision to reject claims 12–24.
CONCLUSION
The Examiner’s rejections are affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
12–18, 24 103 Fujino 12–18, 24
19–21 103 Fujino, Kannan 19–21
22 103 Fujino, Holt 22
23 103 Fujino, Liskow 23
Overall
Outcome
12–24

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