Ex parte Baker

Board of Patent Appeals and Interferences

Jan 20, 1998

08201733 (B.P.A.I. Jan. 20, 1998)

Application for patent filed February 25, 1994.1
1
Paper No. 17
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte DAVID BAKER
______________
Appeal No. 97-1080
Application 08/201,7331
_______________
ON BRIEF
_______________
Before CALVERT, MEISTER, and PAK, Administrative Patent Judges.
MEISTER, Administrative Patent Judge.

DECISION ON APPEAL
David Baker (the appellant) appeals from the final rejection
of 1, 2, 6, 8-11 and 16. Claims 3-5 and 12-15, the only other
claims remaining in the application, stand allowed. We reverse.
The appellant’s invention pertains to (1) a spacecraft, (2)
a liquid pumping arrangement and (3) to an apparatus.
Independent claims 1, 8 and 16 are further illustrative of the
Appeal No. 97-1080
Application 08/201,733
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appealed subject matter and copies thereof may be found in
the appendix to the appellant’s brief.
The references relied on by the examiner are:
Szwargulski 3,520,330 July 14, 1970
Mandroian 3,898,017 Aug. 5, 1975
Dowdy et al. (Dowdy) 4,957,157 Sep. 18, 1990
Claims 1, 2, 6, 8-10 and 16 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Dowdy in view of Mandroian.
Claim 11 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Dowdy in view of Mandroian and Szwargulski.
Both of the above-noted rejections are bottomed on the
examiner’s position that:
The patent Dowdy et al., Figures 1b, 3a and
3b and in column 3, line 26 through column 4,
line 12, discloses [a] two phase closed-
looped thermal control system consisting of a
heat source (16), a capillary evaporator
(26), radiator/heat exchanger (20), a coolant
reservoir (50) and a power controlled
electrical heater (54). The patent of Dowdy
et al. fails to disclose a first and second
check valves located at second and third
locations. The features called for by the
claim are directed to inlet/outlet type check
valves for a pump connected to a fluid
circuit. Such details are not limited to
spacecraft but can be found in any system
requiring a pump connected to a fluid
circuit. The patent of Mandroian, in Figures
1 and 10 and in column 1, lines 45-59, in
column 2, lines 46-54 and in column 4, lines
25-30, discloses first (40) and second (45)
ball check valves located at second and third
locations which are just before and just
Appeal No. 97-1080
Application 08/201,733
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after the liquid (20) pumping reservoir (15)
for the purpose of restricting fluid flow in
an upstream or downstream direction in a heat
actuated pumping system. It would have been
obvious at the time the invention was made to
a person having ordinary skill in the art to
employ in Dowdy et al. first and second ball
check valves located just before and just
after the liquid pumping reservoir for the
purpose of restricting fluid flow in an
upstream or downstream direction as disclosed
in Mandroian. [Answer, pages 4 and 5.]
We do not agree with the examiner’s position. The mere fact
that the incorporation of Mandroian’s first and second ball check
valves into the device of Dowdy would result in Dowdy’s fluid
being restricted to either an upstream or downstream direction
does not serve as a proper motivation for combining the teachings
of Dowdy and Mandroian as the examiner apparently believes.
Instead, it is well settled that it is the teachings of the prior
art taken as a whole which must provide the motivation or
suggestion to combine the references. See, e.g., Uniroyal, Inc.
v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438
(Fed. Cir. 1988) and Interconnect Planning Corp. v. Feil,
774 F.2d 1132, 1143, 227 USPQ 543, 550-51 (Fed. Cir. 1985).
Essentially what the examiner has done is treated the
reservoir/heater arrangement 50, 54 of Dowdy as though it were a
pump for moving fluid around conduit loop 18, 24 and thereafter
Appeal No. 97-1080
Application 08/201,733
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concluded that it would have been obvious to utilize check valves
as taught by Mandroian in Dowdy’s conduit loop for the purpose of
directing the fluid flow in a desired direction. The problem is,
however, that Dowdy does not utilize the reservoir/heater
arrangement 50, 54 as a pump for moving the fluid around the
conduit loop 18, 24 in a desired direction. Instead, Dowdy
utilizes the reservoir/heater arrangement 50, 54 as a means to
maintain the conduit loop at a generally constant pressure,
thereby preventing any adverse affects such as a rupture of the
conduit loop due to an undesired increase in pressure (see,
generally, column 3). While, of course, in the broadest sense
the reservoir/heater arrangement 50, 54 of Dowdy might be
considered a pump, Dowdy simply utilizes the reservoir/heater
arrangement 50, 54 to either add or remove fluid from the conduit
loop, as distinguished from moving fluid around the conduit loop
in a desired direction. Absent the appellant’s own disclosure we
are at a loss to understand why one of ordinary skill in this art
would have been motivated to single out the check valves of
Mandroian (which are used in arrangement wherein a heat-activated
pumping system is utilized to move fluid along a conduit in a
desired direction) and incorporate them into the disparate
teachings of Dowdy. In our view, the examiner has impermissibly
Appeal No. 97-1080
Application 08/201,733
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relied upon the appellant’s own teachings in arriving at a
conclusion of obviousness. As the court stated in Uniroyal,
837 F.2d at 1051, 5 USPQ2d at 1438, "it is impermissible to use
the claims as a frame and the prior art references as a mosaic
to piece together a facsimile of the claimed invention."
With respect to the rejection of claim 11 based on the
combined teachings of Dowdy, Mandroian and Szwargulski, we have
carefully reviewed the reference to Szwargulski but find nothing
therein which would overcome the deficiencies of Dowdy and
Mandroian that we have noted above.
The decision of the examiner is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
JAMES M. MEISTER ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
CHUNG K. PAK )
Administrative Patent Judge )

Appeal No. 97-1080
Application 08/201,733
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William H. Meise
Patent Operation
Martin Marietta Corporation
Room M7211, Bldg. 100
P. O. Box 8555
Philadelphia, PA 19101
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