EBARA CORPORATION

Patent Trials and Appeals Board

Dec 23, 2020

2020003812 (P.T.A.B. Dec. 23, 2020)

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.
14/928,846 10/30/2015 Ichiju SATO 4055-0119 3752
6449 7590 12/23/2020
ROTHWELL, FIGG, ERNST & MANBECK, P.C.
607 14TH STREET, N.W.
SUITE 800
WASHINGTON, DC 20005
EXAMINER
BRANDT, DAVID NELSON
ART UNIT PAPER NUMBER
3746
NOTIFICATION DATE DELIVERY MODE
12/23/2020 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):
PTO-PAT-Email@rfem.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ICHIJU SATO, HIROSHI SOBUKAWA,
TOSHIMITSU BARADA, TOMONORI OHASHI, and
SATOSHI MORI
Appeal 2020-003812
Application 14/928,846
Technology Center 3700
Before DANIEL S. SONG, EDWARD A. BROWN, and
CHARLES N. GREENHUT, 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, 2, 4, 5, and 7–17. We have
jurisdiction under 35 U.S.C. § 6(b). An oral hearing was conducted with the
Appellant’s representative on December 10, 2020, a transcript of which will
be entered into the electronic record in due course.

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 Ebara
Corporation. Appeal Br. 3.
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We REVERSE.
CLAIMED SUBJECT MATTER
The claims are directed to a magnetic levitated pump. Claim 1,
reproduced below, is the only independent claim on appeal and is illustrative
of the claimed subject matter:
1. A magnetic levitated pump comprising:
a pump casing having a suction port at a central part of the
pump casing and a discharge port at an outer circumferential part
of the pump casing;
an impeller housed in the pump casing and configured to
be magnetically levitated, the impeller having a suction port at
an axial end portion of the impeller and a projecting portion
arranged on an opposite side of the suction port of the impeller
and projecting from a rear surface of the impeller;
a permanent magnet motor configured to rotate the
impeller, the permanent magnet motor being arranged on the
opposite side of the suction port of the pump casing and the
suction port of the impeller, wherein the arrangement of the
suction port of the impeller and the suction port of the pump
casing imparts a first axial force during operation, wherein the
first axial force forces the impeller in a direction away from the
permanent magnet motor, and wherein the permanent magnet
motor imparts a second axial force acting on the impeller during
operation, and the second axial force forces the impeller in an
opposite direction to the first axial force to force the impeller in
a direction toward the permanent magnet motor;
a non-permanent electromagnet configured to
magnetically support the impeller, wherein the non-permanent
electromagnet is separate from the permanent magnet motor,
and the non-permanent electromagnet and the permanent magnet
motor are positioned on opposite sides of the impeller such that
they are arranged so as to face each other across the impeller,
wherein the non-permanent electromagnet is separately
controlled from the permanent magnet motor, and the non-
permanent magnet imparts a third axial force upon the impeller
which balances differences in forces upon the impeller resulting
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from differences between the first axial force and the second
axial force; and
a permanent magnetic radial repulsive bearing comprising
first ring-shaped permanent magnets provided on the projecting
portion projecting from the rear surface of the impeller and
second ring-shaped permanent magnets provided on the pump
casing so as to face the first ring-shaped permanent magnets in a
radial direction of the impeller.
Appeal Br. 35, Claims App. (emphasis added).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Wampler US 6,234,772 B1 May 22, 2001
Khanwilkar US 6,302,661 B1 Oct. 16, 2001
Yoichi JP H08144987
(citations to the
English machine
translation of record)
June 4, 1996
REJECTIONS
1. Claims 1, 2, 4, 5, and 7–17 are rejected under 35 U.S.C.
§ 112(a) as failing to comply with the written description requirement. Final
Act. 3.
2. Claims 1, 2, 4, 5, and 8–12 are rejected under 35 U.S.C. § 103
as being unpatentable over Yoichi in view of Wampler. Final Act. 4.
3. Claims 7 and 13–17 are rejected under 35 U.S.C. § 103 as being
unpatentable over Yoichi in view of Wampler and Khanwilkar. Final Act.
12.
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OPINION
Rejection 1: Written Description
The Examiner rejects claim 1 as failing to comply with the written
description requirement, and rejects claims 2, 4, 5, and 7–17 because they
depend from claim 1. Final Act. 3. According to the Examiner, the
limitation “wherein the non-permanent electromagnet is separately
controlled from the permanent magnet motor” is “considered new matter,
since no support for the new limitation can be found in either the
specification or the drawings.” Final Act. 3. The Appellant disagrees and
argues that “reasonable clarity is present in the specification, which would
convey to a person skilled in the art that the applicant was in possession of
the claimed invention.” Appeal Br. 14. We agree with the Appellant.
The “test for sufficiency is whether the disclosure of the application
relied upon reasonably conveys to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date.” Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). As
the Appellant points out, the Specification2 discloses that “the force of the
electromagnet is controlled to establish the following equation, i.e., the
motor attractive force=the pump differential pressure force+the
electromagnet force,” and that “the force of the electromagnet can be 0
(zero-power control).” Appeal Br. 15, citing Spec. ¶ 47.
In addition, as the Appellant also points out, the Specification
discloses that the electromagnet can be controlled for particular situations

2 The Appellant cites to the Specification of the present application as
published as US 2016/0131141 A1 (May 12, 2016). Accordingly, we
likewise do the same.
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such as during startup. Appeal Br. 15, 17, citing Spec. ¶¶ 7, 13, 21, 37, 47;
see, e.g., Spec. ¶ 13 (“Since the attractive force which allows the motor to
attract the impeller can be reduced by the force for pushing the impeller to
the suction port side, an electromagnetic force of the electro magnet can be
reduced when performing the control of disengaging the impeller, which is
attracted to the motor side at the time of pump startup, from the motor by the
electromagnetic force of the electromagnet. Thus, the electric power of the
electromagnet at the time of pump startup can be reduced.”). Accordingly,
we agree with the Appellant that the Specification reasonably conveys to
those of ordinary skill in the art that if the motor attractive force does not
offset the pump differential force, “the electromagnet is separately
controlled so as to accommodate or make up for the difference.” Appeal Br.
15.
The Examiner further explains that:
the term “separately controlled” is overly broad. Some of the
possible interpretations of the term are not supported by the
initial disclosure, such as the motors being controlled by two
separate controllers or the motors being controlled without
regard to the control of the other. Neither of these examples are
supported in the initial disclosure. Additionally, both of these
examples are contradictory to the disclosed invention since the
control of one motor, to adjust the respective forces on either side
of the impeller, is in response to how the opposing motor is
controlled.
Ans. 5–6.
However, we agree with the Appellant that the Examiner fails to apply
the broadest reasonable interpretation in view of the Specification, and
instead, applies hypothetical interpretations not supported by the
Specification. Reply Br. 5. Although the Examiner is not incorrect in
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stating that in the disclosed invention, “the motors are working in unison to
balance the forces on the impeller” (Ans. 6), such coordinated operation in
conjunction is not contradictory to the non-permanent electromagnet being
separately controlled from the permanent magnet motor so as to “impart[] a
third axial force upon the impeller which balances differences in forces upon
the impeller” as recited by the claim. See Reply Br. 7 (arguing that the
Examiner ignores the Specification and the language of claim 1, which
recites the functional result of the separate control in balancing the forces on
the impeller, and controlling for “special situations, such as start-up, where
less power/force is needed for the electromagnet.”).
Therefore, in view of the above, we agree with the Appellant that the
Specification reasonably conveys to those skilled in the art that the inventor
had possession of the claimed subject matter, and reverse this rejection.

Rejection 2: Yochi in view of Wampler
The Examiner rejects claims 1, 2, 4, 5, and 8–12 as unpatentable over
Yoichi in view of Wampler. Final Act. 4. The dispositive issue as to this
rejection is the correctness of the Examiner finding that Yoichi discloses the
invention substantially as claimed in claim 1, including the above
emphasized limitations thereof. Final Act. 4–7. In particular, the factual
dispute between the Examiner and the Appellant centers around whether
Yoichi discloses one or two motors,3 and if it does disclose two motors,
whether those motors are “separately controlled.”

3 Although for the purposes of this appeal, the Examiner and the Appellant’s
reference to “two motors” does not impact the analysis herein, we observe
that claim 1 does not require two motors, but instead, recites “a permanent
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The Examiner finds that:
Yoichi teaches two motors, one on either side of the impeller,
where their stator 17 shares an axis with the impeller 5, as shown
in Yoichi Figure 4. Both of these motors contain the same
elements, which happen to include a permanent magnet (13,
Paragraph 0040 of the translation) and an electromagnet (17;
Paragraph 0019). Since both motors contain both of the claimed
elements, either one can be described as the “permanent magnet
motor” or the “nonpermanent electromagnet” to differentiate
between the two motors. The Examiner labeled the motor on the
right, in Yoichi Figure 3, as the “permanent magnet motor'' and
the motor on the left as the “non-permanent electromagnet”.
Ans. 12, citing Final Act. 6 (referring to Examiner annotated Figure 3 of
Yoichi in Ans. 8). In seeking to support this finding of two motors, the
Examiner asserts that “Yoichi only provides the elements in Figure 4 one
time, assuming one of ordinary skill in the art would recognize the elements
within each motor are structurally the same.” Ans. 7 (referring to annotated
Yoichi’s Figure 4).
The Examiner also notes that no specific structure associated with the
permanent magnet motor or the non-permanent electromagnet is recited in
claim 1. Ans. 12. According to the Examiner:
all electric motors contain electromagnetic components, which is
usually part of the stator. The stator is comprised of a coil
wrapped around a core (usually an iron core) which is not
magnetic until electric current is passed through the core. This
makes the stator (Elements 16 and 17) a non-permanent
electromagnet, where one or both (16 &17) are placed on either
side of impeller (5). Likewise a permanent magnet motor is
created once the stator is used in conjunction with the permanent

magnet motor” and “a non-permanent electromagnet.” Appeal Br. 35,
Claims App.
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magnets (13) in the impeller (5), where the permanent magnet
and impeller combination act as the rotor.
Final Act. 5–6.
The Appellant disagrees and argues that “[t]here is no disclosure of an
electromagnet separate from, and separately controlled from, a permanent
magnet motor, much less a disclosure of the functions of the separately
controlled electromagnet in relation to the permanent magnet motor and
impeller as recited in present claim 1.” Appeal Br. 21; see also Appeal Br.
23. According to the Appellant, “elements on both sides of the impeller of
Yoichi are part of the same motor and, therefore, Yoichi does not disclose or
suggest two separate motors as asserted by the Examiner, nor a permanent
magnet motor and a separate electromagnet as presently claimed.” Appeal
Br. 24 (emphasis omitted). The Appellant argues that the Examiner
“provides no independent reason why a person skilled in the art would
identify two independent motors instead of a single motor given Yoichi only
describes one motor.” Reply Br. 10; see also Reply Br. 9 (arguing that the
Examiner’s annotation of Figure 4 of Yoichi delineating a left motor and a
right motor “are arbitrarily drawn and do not have support in the disclosure
of Yoichi.”). Thus, the Appellant argues that the Examiner’s findings with
respect to stators generally having an electromagnet is insufficient because
claim 1 requires a permanent magnet motor, and a non-permanent
electromagnet that is separate from the permanent magnet motor. Appeal
Br. 24.
As to the recited separate control, the Examiner finds that Yoichi:
discusses controlling each of the non-permanent electromagnets
17 based on the position of the impeller using a sensor 20
connected to each non-permanent electromagnet. Since each
sensor will provide data based on its respective side of the
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impeller, the non-permanent electromagnets must be controlled
separately to maintain the constant position of the impeller.
Final Act. 5, citing Yoichi ¶ 204; see also Ans. 13.
Based thereon, the Examiner takes the position that in Yoichi, “both
of the motors are ‘separately controlled’ based on the measurement value
signal to maintain the gap on either side of the impeller with the casing.”
Ans. 14.
The Appellant disagrees with the Examiner’s findings arguing that:
Even if there are two motors and gap sensors as the Examiner’s
Answer argues, Yoichi is silent regarding whether the control
device separately applies current to each of the coils 17. Simply
applying the same current to the coils 17 is not “separately
controlled” because the motors would simply be executing the
same instructions.
Reply Br. 16.
The Appellant argues that “Yoichi does not provide a non-permanent
electromagnet separate from the motor, which provides separate
force/position control or adjustment.” Appeal Br. 24; see also Appeal Br. 25
(arguing that Yoichi “fails to teach or suggest separate differential control,
via an electromagnet, which is separately controlled and which balances
differences between a permanent motor and suction forces acting upon an
impeller.”). The Appellant argues that “[f]or a feature to be inherent, it must
necessarily be present” to any extent that the rejection is based on inherency.
Appeal Br. 26.

4 Paragraph 20 of Yoichi teaches that based on the input signal from a non-
contact gap sensor, “the control device supplies a control current to the
bearing coil 17b so that the bearing coil 17b is required to maintain the
impeller 5 in a fixed position in the axial direction with respect to the casing
1 [t]hereby generating a magnetic field.” Yoichi ¶ 20.
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Upon careful review and consideration of Yoichi, the rejection, and
the arguments presented, we ultimately find that the Examiner has failed to
establish obviousness by a preponderance of the evidence. In re Caveney,
761 F.2d 671, 674, (Fed. Cir. 1985). Yoichi’s general disclosure as to its
structure and its operation is of insufficient detail to support the Examiner’s
fact finding that it discloses two motors. Yoichi’s general disclosure is also
of insufficient detail to support the Examiner’s fact finding that it discloses
separate control as recited in claim 1. Indeed, Yoichi clearly discloses
levitating the impeller using a generated magnetic field via the thrust bearing
coil 17b “to maintain the impeller 5 in a fixed position in the axial
direction.” Yoichi ¶ 20. However, what is not clearly evident is whether
such control of the thrust bearing coils 17b are independent of the control of
what the Examiner finds to be the permanent magnet motor. Although the
disclosure of Yoichi is adequate to establish that both of the above discussed
findings of the Examiner are possible, without more concrete disclosure in
Yoichi as to its structure and operation, we are left with evidentiary gaps that
must be filled-in by speculation.
To be clear, we do not find that Yoichi does not have both a motor
and separate, separately controlled electromagnet, or that Yoichi is not
operated to provide separate control in the manner found by the Examiner.
We also do not find that the Appellant’s characterizations of Yoichi are
correct. Rather, we find that Yoichi’s disclosure is simply insufficient to
determine whether the Examiner’s findings are correct (versus the
Appellant’s characterizations). As such, we determine that the Examiner has
failed to meet the burden of demonstrating obviousness. See In re Warner,
379 F.2d 1011, 1016 (CCPA 1967) (“[T]he precise language of 35 U.S.C.
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§ 102 that ‘[a] person shall be entitled to a patent unless,’ concerning
novelty and unobviousness, clearly places a burden of proof on the Patent
Office which requires it to produce the factual basis for its rejection of an
application under sections 102 and 103. . .Where such proof is lacking we
see no necessity for resolving doubt in favor of the Patent Office’s Position. .
. [The Patent Office] may not, because it may doubt that the invention is
patentable, resort to speculation, unfounded assumptions or hindsight
reconstruction to supply deficiencies in its factual basis.”).
In view of the above, we reverse the Examiner’s rejection of claim 1,
and claims 2, 4, 5, and 8–12 that ultimately depend from claim 1. The
remaining dispute between the Examiner and the Appellant regarding
whether Yoichi discloses the recited fluid balancing (Appeal Br. 26; Reply
Br. 14–15; Ans. 14) and the role of Yoichi’s sensor are moot (Appeal Br. 26;
Reply Br. 15; Ans. 15). In addition, the Appellant’s arguments directed to
Khanwilkar are moot because it is not relied upon in this rejection or for the
rejection of claim 1. See Appeal Br. 27–28; see also Ans. 4, 15.

Rejection 3: Yochi in view of Wampler and Khanwilkar
The Examiner rejects dependent claims 7 and 13–17 as unpatentable
over Yoichi in view of Wampler and Khanwilkar. Final Act. 12. However,
the Examiner’s application Khanwilkar does not remedy the above noted
deficiency relative to the Examiner’s findings as to Yoichi. Accordingly, we
reverse this rejection as well. The dispute between the Examiner and the
Appellant directed to whether Khanwilkar discloses the limitations reciting
detecting the impeller based on impedance of the electromagnet; positioning
the impeller in the ϴx and ϴy directions; and teaching away by Khanwilkar
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from the suggested combination (Final Act. 13–14; Appeal Br. 32; Reply Br.
16–18) are all moot.
CONCLUSION
The Examiner’s rejections are reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 4, 5, 7–
17
112(a) Written
Description
1, 2, 4, 5, 7–
17
1, 2, 4, 5, 8–
12
103 Yoichi, Wampler 1, 2, 4, 5, 8–
12
7, 13–17 103 Yoichi, Wampler,
Khanwilkar
7, 13–17
Overall
Outcome
1, 2, 4, 5, 7–
17
REVERSED