Ateliers Busch SA

Patent Trials and Appeals Board

Jun 29, 2021

2020006667 (P.T.A.B. Jun. 29, 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.
14/382,810 09/04/2014 Paul Alers BOV-53245 1679
86378 7590 06/29/2021
Pearne & Gordon LLP
1801 East 9th Street
Suite 1200
Cleveland, OH 44114-3108
EXAMINER
PLAKKOOTTAM, DOMINICK L
ART UNIT PAPER NUMBER
3746
NOTIFICATION DATE DELIVERY MODE
06/29/2021 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):
patdocket@pearne.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL ALERS
Appeal 2020-006667
Application 14/382,810
Technology Center 3700
Before DANIEL S. SONG, CARL M. DEFRANCO, and
MICHAEL L. WOODS, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3–5, 8, 9, and 20.2 Appeal Br. 1.
We have jurisdiction under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). The Appellant identifies the real party in interest as
Ateliers Busch SA. Appeal Br. 1.
2 Claims 6, 7, and 11–15 have been withdrawn, but the Appellant argues that
these withdrawn claims “are allowable for at least the same reasons” as
claims 1 and 9. Appeal Br. 8. However, we note that withdrawn claims are
not before us for review.
Appeal 2020-006667
Application 14/382,810

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We REVERSE.
CLAIMED SUBJECT MATTER
The claims are directed to a pumping installation and method. Claim
1, reproduced below, is illustrative of the claimed subject matter:
1. Pumping installation comprising a first positive-
displacement machine and a second positive-displacement
machine, as well as a control module, in which pumping
installation a gas is evacuated from an enclosed volume by means
of the first positive-displacement machine and/or the second
positive-displacement machine,
wherein the pumping installation further comprises a 3-
way control valve which is controlled by the control module and
a pressure sensor at an outlet of the first positive-displacement
machine, upstream of the control valve, and/or a temperature
sensor at the outlet of the first positive-displacement machine,
upstream of the control valve, in order to control the flow of said
gas between the enclosed volume and an outlet of the pumping
installation, and
wherein the control valve is located at a junction of, and is
able to switch the flow of said gas between, a first course in
which the gas is pumped solely by the first positive-displacement
machine and a second course in which the gas is pumped by the
first positive-displacement machine and the second positive-
displacement machine.
Appeal Br. 9 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Bohn US 4,699,570 Oct. 13, 1987
Muramatsu US 2004/0075202 A1 Apr. 22, 2004
Metzger US 2008/0145258 A1 June 19, 2008
Shinohara US 2013/0171919 A1 July 4, 2013
Appeal 2020-006667
Application 14/382,810

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REJECTIONS
1. Claims 1, 3, 5, 9, and 20 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Bohn in view of Muramatsu. Final Act.
2.3
2. Claim 4 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Bohn in view of Muramatsu and Shinohara. Final Act. 5.
3. Claim 8 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Bohn in view of Muramatsu and Metzger. Final Act. 5–6.
OPINION
Rejection 1: Bohn in view of Muramatsu
The Examiner rejects claims 1, 3, 5, 9, and 20 as being unpatentable
over Bohn in view of Muramatsu. Final Act. 2. As to independent claims 1,
9, and 20, the Examiner finds that Bohn discloses a pumping installation
substantially as claimed, but fails to disclose that its control valve is a three-
way valve. Final Act. 3 (citing Bohn, col. 3, ll. 15–57; Fig. 4). The
Examiner finds that Muramatsu discloses a three-way rotary/spool valve,
and concludes that it would have been obvious to one of ordinary skill to:
replace Bohn’s two control valves (115 and 116) with a
solenoid operated rotary/spool three-way valve (of the type
taught by Muramatsu), at the junction of the three flow paths
(i.e., at the point where the flow path to valve 116 intersects
with the flow path between 113 and 117), since doing so would
consolidate multiple valves into a single valve, thereby
potentially reducing cost and reducing maintenance downtime.

3 The heading for this rejection erroneously states that the claims are rejected
as anticipated under 35 U.S.C. § 102(b). However, it is clear from the text
that the rejection is actually based on 35 U.S.C. § 103(a). See also Appeal
Br. 4, fn. 1 (noting the error).
Appeal 2020-006667
Application 14/382,810

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Final Act. 3–4 (citing Muramatsu ¶ 56; Fig. 1).
The Appellant argues, inter alia, that “there is no reason or motivation
to modify Bohn’s pumping installation to include the 3-way valve 72 of
Muramatsu as proposed” because during operation, both valves 115 and 116
of Bohn “remain open for a period of time when transitioning from one
course to the next.” Appeal Br. 5–6 (citing Bohn, col. 3, ll. 46–52). In that
regard, the Appellant argues that “Muramatsu fails to disclose a 3-way
control valve that has the ability to permit flow between multiple positions
simultaneously” as would be required by Bohn, and instead, Muramatsu’s
valve operates to switch “between the vacuum and atmospheric positions at
a controlled frequency.” Appeal Br. 6; see also Muramatsu ¶ 56. According
to the Appellant, if the 3-way valve of Muramatsu is used in Bohn as
suggested, the disclosed transition in Bohn “from one course to the next
would not be possible because Muramatsu’s 3-way valve would close off
flow to its second exit port when opening flow to the first, and vice versa.”
Appeal Br. 6 (citing Muramatsu ¶ 56). Thus, the Appellant argues that “the
substitution would render Bohn’s vacuum pump unsatisfactory for its
intended purpose and change the principle of operation.” Appeal Br. 6. We
find the Appellant’s arguments persuasive, and address the Examiner’s
responses infra.
The Examiner initially responds that:
during transition between open and closed states of this 3-way
valve, there would be a delay (several milliseconds typically)
between a fully opened and a fully closed state, wherein during
this delay, the flow paths would also be simultaneously at least
partially open, thereby allowing fluid to also temporarily flow
to both lines carrying valves 115 and 116 simultaneously, as
intended by Bohn.
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Ans. 6.
However, we agree with the Appellant that the Examiner’s response is
unsupported because in Bohn:
both valves 115 and 116 are opened simultaneously for
operational purposes, and not merely during de minimus time
periods measured in “several milliseconds” incident to their
switching between opened and closed conditions. Any
incidental “millisecond-duration” overlap in their (partially)
opened states is minimal and unintended, and certainly is not
what a person of ordinary skill in the art would consider to be
“simultaneous” open states, as the examiner has argued.
Reply Br. 4 (citing Bohn, col. 3, ll. 34–37).
The Examiner also points out that Muramatsu generally discloses a
“three-port (three-way) solenoid-operated switch valve of spool or rotary
type” and as such, asserts that “[t]his would include both T-port and L-port
3-way rotary valves.” Ans. 7. According to the Examiner, a T-port 3-way
rotary valve is well-known in the art, and “permits fluid to be simultaneously
delivered from one entry port to two exit ports,” and would allow “Bohn’s
intended operation of keeping the lines carrying valves 115 and 116
simultaneously open after these valves are replaced by a single 3-way rotary
valve.” Ans. 4–7 (annotated Figures A, B, C).
However, as the Appellant correctly points out, “[w]hile Muramatsu
discloses a 3-way solenoid valve, that valve switches between vacuum- and
atmospheric- positions with no discussion of flow through both the vacuum
and atmospheric chamber at the same time.” Reply Br. 2 (citing Muramatsu
¶¶ 53, 56). Thus, we find persuasive the Appellant’s argument that
Muramatsu discloses a conventional three-way valve that “switches between
one or the other (i.e. between directing flow from the common inlet to either
of two distinct outlets -- and not both at the same time.” Reply Br. 3.
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We also find persuasive the Appellant’s argument that “even if
Muramatsu disclosed a 3-way T-shaped valve . . . the valves 115 and 116
disclosed in Bohn not only have to be in their opened state at the same time,
but also in their closed state at the same time, so that both pump lines are
closed.” Reply Br. 2 (citing Bohn, col. 3, ll. 31–33). As the Appellant
correctly points out, “[w]ith the T-valve presented in [annotated] Figure B of
the Examiner’s Answer, this configuration is not possible. . . . [because] at
least one of the pump lines would be open at all times.” Reply Br. 2.
Therefore, in view of the above considerations, we reverse the
rejection of independent claims 1, 9, and 20, and claims 3 and 5 depending
from claim 1.

Rejections 2 and 3
The Appellant relies on dependency on claim 1 in support of
patentability of claims 4 and 8, and correctly points out that the Examiner’s
applications of Shinohara or Metzger in these rejections fail to remedy the
deficiencies of the rejection of claim 1. Appeal Br. 7. Accordingly, we
reverse these rejections as well.
CONCLUSION
The Examiner’s rejections are reversed.
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Application 14/382,810

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3, 5, 9, 20 103(a) Bohn, Muramatsu 1, 3, 5, 9, 20
4 103(a) Bohn, Muramatsu,
Shinohara
4
8 103(a) Bohn, Muramatsu,
Metzger
8
Overall
Outcome
1, 3–5, 8, 9,
20

REVERSED