Ex Parte Berger

Board of Patent Appeals and Interferences

Dec 10, 2008

10904120 (B.P.A.I. Dec. 10, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ALVIN H. BERGER
____________

Appeal 2008-1538
Application 10/904,120
Technology Center 3700
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Decided: December 10, 2008
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Before JENNIFER D. BAHR, LINDA E. HORNER, and STEFAN
STAICOVICI Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Alvin H. Berger (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1-3 and 15-17.
Appeal 2008-1538
Application 10/904,120

We have jurisdiction over this appeal under 35 U.S.C. § 6 (2002). 1

THE INVENTION
The Appellant’s invention is drawn towards a variable output gerotor
pump 10 having an outer rotor 42, an inner rotor 46 mounted to a driving
shaft 52, inlet port 12, an outlet port 14, an output control ring 24, and a
torque arm 60 which divides an annular control cavity 56 into two chambers
having variable sizes (Spec. ¶¶ 28, 30, and 31 and fig. 1). The output flow
of the pump is controlled by the rotational position of the output control ring
24 (¶ 10).
Claim 15 is representative of the claimed invention and reads as
follows:
15. A pressure lubrication system for an internal combustion
engine comprising:

a source of lubricating oil;

an oil pressure sensor for a generating a pressure signal;

a variable output gerotor oil pump for providing
lubricating oil to the engine; and

a controller operatively connected with said oil pump and
said pressure sensor, with said controller operating said
oil pump so as to control the flow rate of lubricating oil
through said pump as a function of at least said pressure
signal.

1 Claims 12-14 have been allowed and claims 4-11 are objected to by
the Examiner as being dependent upon a rejected base claim and otherwise
indicated as being allowable if rewritten in independent form including all of
the limitations of the base claim and any intervening claim. Claims 4-14 are
not part of the instant appeal.
2
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Application 10/904,120

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:

Zumbusch US 5,145,329 Sep. 8, 1992
Bachmann US 6,709,245 B2 Mar. 23, 2004

The following rejections are before us for review:2
The Examiner rejected claims 1-3 under 35 U.S.C. § 102(b) as
anticipated by Zumbusch.
The Examiner rejected claim 15 under 35 U.S.C. § 102(b) as
anticipated by Bachmann.
The Examiner rejected claims 15-17 under 35 U.S.C. § 103(a) as
unpatentable over Zumbusch in view of Bachmann.

THE ISSUE
Has the Appellant shown that the Examiner erred in interpreting the
limitation in claims 1 and 15 of a “variable output gerotor pump” as simply a
gerotor pump that has an output such as speed or pressure that is variable?
For the reasons set forth in our discussion below, we are persuaded by
the Appellant’s arguments.
Accordingly, we REVERSE the Examiner’s rejections.

2 The rejection of claims 1-3 under 35 U.S.C. § 102(b) as anticipated by
Morse (US Patent No. 6,238,315) has been withdrawn by the Examiner
(Ans. 2).
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Application 10/904,120

FINDINGS OF FACT
The record supports the following findings of fact by a preponderance
of the evidence:
1. Zumbusch describes a gerotor pump including an outer gear (outer
rotor) 74, an inner gear 72 (inner rotor) mounted on shaft 66, and a
control ring formed by six circumferentially arranged magnets 76 (col.
4, ll. 32-36 and fig. 3).
2. Zumbusch further describes that the volume of fluid pumped varies as
a function of the rotational speed of outer gear 74 (col. 5, ll. 46-50).
3. Bachmann describes a gerotor oil pump for an internal combustion
engine having an outer rotor 2, an inner rotor 3, a flow inlet 4 having a
suction region 5, and a flow outlet 6 having a pressure region 7 (col.
5, ll. 21-26 and fig. 1).
4. Bachmann describes a control piston 10 that is controlled by a
pressure sensor to regulate the flow of fluid within the pump between
the suction region 5 and the pressure region 7 such that the flow of the
pump remains constant in relation to the speed (col. 4, ll. 33-48 and
col. 9, ll. 4-7 and fig. 2).
5. Bachmann further describes that when a threshold speed is exceeded,
the control piston 10 is moved such that fluid can flow from the
pressure region 7 into the suction region 5, hence maintaining the
fluid flow of the pump at a constant level (col. 5, ll. 47-60).
6. Those skilled in the art at the time of the invention understood a fixed
displacement pump to refer to a pump “which pumps a given volume
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Application 10/904,120

of fluid for each revolution “ (U.S. Patent No. 3,653,403 to Petit,
issued Apr. 4, 1972, col. 3, ll. 12-14).
7. Those skilled in the art at the time of the invention understood a
variable displacement pump to refer to a pump that “operate[s] by
changing the volume of fluid which the pump can displace in a given
cycle of operation” (U.S. Patent No. 3,847,515 to Caldwell, issued
Nov. 12, 1974, col. 1, ll. 7-9).
8. Those skilled in the art at the time of the invention knew that in a
variable output (displacement) pump an output adjustable element is
required in order to change the output of the pump (U.S. Patent No.
4,035,105 to Dantlgraber, issued Jul. 12, 1977, col. 1, ll. 11-12 and
21-26).

PRINCIPLES OF LAW
1. "A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single
prior art reference." Verdegaal Bros. v. Union Oil Co. of California,
814 F.2d 628, 631, cert. denied, 484 U.S. 827 (1987).
2. It is elementary that to support an obviousness rejection all words in a
claim must be considered in judging the patentability of that claim
against the prior art. In re Wilson, 424 F.2d 1382, 1385 (CCPA
1970).
3. When construing claim terminology in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable
interpretation consistent with the specification, reading claim
language in light of the specification as it would be interpreted by one
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of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367
F.3d 1359, 1364, 70 USPQ2d 1827, 1830 (Fed. Cir. 2004)).

OPINION
The Appellant argues that the term “variable output pump” is known
by those skilled in the art to mean that a “pump’s chambers push a variable
volume of fluid per revolution “(App. Br. 4) (underlining in original). In
response, the Examiner takes the position that the term “variable output
pump” is much broader such that “the output of the pump can be the output
speed, output pressure, etc., not only volume per revolution” (Ans. 5).
Between the Appellant and the Examiner we believe the Appellant has the
better argument here.
We find that a person skilled in the art would understand a fixed
output (displacement) pump to be a pump that delivers the same amount of
fluid on each cycle (FF 6). Further, we find that a person skilled in the art
would understand a variable output (displacement) pump to be a pump in
which the output volume (displacement) varies throughout a cycle of
operation (FF 7). Furthermore, in a variable displacement pump an output
adjustable element is required in order to change the output of the pump (FF
8).
Zumbusch describes a gerotor pump (FF 1). However, the fluid
pumped by the pump of Zumbusch varies as a function of the rotational
speed of the pump (FF 2). In other words, the output volume can be
changed only by changing the rotational speed of pump, that is, the pump
delivers the same amount of fluid on each cycle. Hence, in contrast to the
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Appellant’s claimed invention, the pump of Zumbusch is a fixed output
(displacement) pump.
Bachmann describes a gerotor pump for an internal combustion
engine (FF 3). The output flow of Bachmann’s pump is maintained constant
by moving a control piston 10 (FF 4). Specifically, when a threshold
pressure is exceeded in the pressure region 7, the control piston 10 is pushed
downward such that fluid can flow from the pressure region 7 into the
suction region 5, hence maintaining the fluid flow of the pump at a constant
level (FF 5). It appears that the output flow in the pump of Bachmann is
determined by the fluid flow between the pressure region 7 and the suction
region 5, which is similar to how a pressure-regulating valve functions. The
Examiner has not shown and we could not find any teachings in Bachmann
that would lead a person skilled in the art to understand that during a cycle
of operation of the pump the volume of the pressure region 7 or the suction
region 5 changes. Furthermore, the Examiner has not shown which element
of Bachmann’s pump can be adjusted so as to modify the volume of the
pressure region 7 or the suction region 5 during a cycle of operation and
thereby increase or decrease the volume of fluid pumped per cycle. In
conclusion, the Examiner has not shown and we could not find any teachings
in Bachmann that would lead a person skilled in the art to understand that
Bachmann’s pump is a variable output (displacement) pump.
In conclusion, the Examiner improperly interprets the limitation in
independent claims 1 and 15 of a “variable output gerotor pump” as simply a
gerotor pump that has an output, such as speed or pressure, which is
variable. Accordingly, the rejection of claim 1, and claims 2 and 3
depending from claim 1, under 35 U.S.C. § 102(b) as anticipated by
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Zumbusch cannot be sustained. For the same reasons, the rejection of claim
15 under 35 U.S.C. § 102(b) as anticipated by Bachmann, likewise, cannot
be sustained.
With respect to claims 15-17, we find that the application of
Bachmann does not make up for the deficiencies in Zumbusch as discussed
above. Hence the rejection of claims 15-17 under 35 U.S.C. § 103(a) as
unpatentable over Zumbusch in view of Bachmann is also reversed.

DECISION
The decision of the Examiner to reject claims 1-3 and 15-17 is
reversed.

REVERSED

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Appeal 2008-1538
Application 10/904,120

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