Ex Parte Burger et al

Patent Trial and Appeal Board

Sep 23, 2013

10817403 (P.T.A.B. Sep. 23, 2013)

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.
10/817,403 04/01/2004 Kurt Burger 10191/3687 3199
26646 7590 09/23/2013
KENYON & KENYON LLP
ONE BROADWAY
NEW YORK, NY 10004
EXAMINER
LESLIE, MICHAEL S
ART UNIT PAPER NUMBER
3745
MAIL DATE DELIVERY MODE
09/23/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KURT BURGER, GUENTER SCHNEIDER,
RONALD NEIDHARDT, MANFRED HAUSER,
KLAUS BURGHOFF, STEFAN GROSSE,
ALEXANDER SCHATTKE, SASCHA HENKE,
CHRISTIAN BAYER and OLIVER SCHMAUTZ
____________

Appeal 2011-011982
Application 10/817,403
Technology Center 3700
____________

Before JOHN C. KERINS, NEIL T. POWELL and JILL D. HILL,
Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-011982
Application 10/817,403

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STATEMENT OF THE CASE
Kurt Burger et al. (Appellants) seek our review under 35 U.S.C.
§ 134(a) of the Examiner’s final rejection of claims 1, 2, 21-35, 41, 42, 44-
48 and 50-53. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

THE INVENTION
Appellants’ invention is directed to a pump device. Independent
claim 1, reproduced below, is representative of the claimed subject matter:
1. A pump device, comprising:

a metal housing;

at least one eccentric shaft; and

at least one of: i) a piston and ii) sealing elements
to seal the pump piston, the at least one of the
pump piston and sealing elements having a coating
containing at least one of i) halogen-, ii) silicon-,
iii) carbon-containing, and iv) metal-organic
monomers;

wherein the coating includes: an inner adhesive
layer including one of a) chromium, and b) silicon;
at least one intermediate layer including one of a)
chromium, b) tungsten, c) silicon, and d) carbon;
and one of a) an outer, metal-free functional layer
of diamond-like carbon (DLC), and b) an outer,
metal-containing functional layer including
tungsten carbide,

wherein one of the piston and the sealing elements
is made of metal, and another of the piston and the
sealing elements is made of an elastomeric
material,

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Application 10/817,403

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wherein the rotational motion of a drive is
transmitted via the at least one shaft to the at least
one piston,

wherein a section of the metal housing abuts the at
least one piston next to the at least one shaft and
guide the movement of the at least one piston,

and wherein a layer thickness of the three layers
together is approximately 0.5 micrometers to 4
micrometers at a micro-hardness of approximately
4 to 40 GPa.
THE REJECTIONS
Appellants appeal from the following rejections:
(i) claims 1, 2, 21-33, 41, 42, 44-46 and 50 under 35 U.S.C. § 103(a)
as being unpatentable over Volz (US 5,839,349, issued Nov. 24, 1998) in
view of Massler (DE 100 18 143 A1, published Oct. 25, 2001)1, Appellants’
Admitted Prior Art (APA) at page 2, lines 20-24 of Appellants’
Specification and a definition of fluoroelastomer from Encyclopaedia
Britannica Online (2010), http://www.search.eb.com/eb/article-9096402
(last viewed on June 16, 2010) (hereafter “Encyclopaedia Brittanica”); and
(ii) claims 34, 35, 47, 48, and 51-53 under 35 U.S.C. § 103(a) as being
unpatentable over Volz in view of Massler, APA, Encyclopaedia Britannica
and Harada (US 5,577,896, issued Nov. 26, 1996).
The Examiner withdrew, on appeal, a rejection of claim 53 under 35
U.S.C. § 112, second paragraph. Ans. 3.

1 Reference to Massler will be made at times herein to its U.S. counterpart,
US 7,160,616 B2, issued Jan. 9, 2007, and made of record in the application
in an Information Disclosure Statement filed September 8, 2008.
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Application 10/817,403

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ANALYSIS
Claims 1, 2, 21-33, 41, 42, 44-46 and 50--Obviousness--Volz/Massler/APA/
Encyclopaedia Britannica
Appellants argue the patentability of independent claim 1 and do not
separately argue any of the dependent claims subject to this rejection. Claim
1 will be taken as representative, and claims 2, 21-33, 41, 42, 44-46 and 50
will stand or fall with claim 1.
The Examiner concludes that the Modification by Volz in view of the
other cited references renders obvious the subject matter of claim 1. Ans. 4-
6. Appellants argue that the combined teachings of Volz and Massler do not
teach the following claim limitations:
wherein a layer thickness of the three layers
together is approximately 0.5 micrometers to 4
micrometers at a micro-hardness of approximately
4 to 40 GPa,
and
wherein a section of the metal housing abuts the at
least one piston next to the at least one shaft and
guide the movement of the at least one piston.
Appeal Br. 9-10; Claims Appendix.
As to the former, Appellants contend that “any review” of Massler
and Volz, taken alone or combined, would confirm that neither reference
discloses the claimed features of the layers of the coating. Appeal Br. 9.
Appellants maintain that the Final Office Action2 and Answer offer “nothing
more than broad conclusory and unsupported assertions as to these specific
features,” and affirmatively contend that the applied references do not
specifically disclose or suggest these features. Appeal Br. 9; Reply Br. 3.

2 Final Office Action dated June 21, 2010.
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These arguments are not well taken, as they are plainly at odds with the
content of the Final Office Action and Answer, as well as with the disclosure
of the coating in Massler.
Far from being broad, conclusory and unsupported assertions, the
Examiner specifically points to the paragraphs in Massler that disclose a
coating for moving parts of a piece of machinery having the characteristics
and parameters set forth in the claim limitation at issue. Ans. 5, citing to
Massler, paras. [0003] and [0025]; Ans. 7. Contrary to Appellants’
contention that Massler does not disclose or suggest those features, the
paragraphs cited to (corresponding to column 1, lines 19-24 and column 5,
lines 4-21, in the Massler US counterpart) specifically describe a wear
coating having hardnesses and total layer thicknesses falling within the
ranges for those values set forth in claim 1.
As to the latter limitation directed to a housing abutting a piston next
to a shaft with the housing guiding the movement of the piston, Appellants
do nothing more than baldly state that Volz does not disclose this aspect of
the claimed invention. Appeal Br. 10; Reply Br. 3. The Examiner, again in
a decidedly focused and nonconclusory manner, identifies that housing 1 and
metal pistons 2, 3, and eccentric shaft 6, 13 are the components found to be
responsive to the claim limitations. Ans. 4. The drawing figure in Volz
plainly illustrates that the pistons are carried by bores in the housing in
essentially the same manner as illustrated in Appellants’ Figure 3. We are
not apprised of Examiner error in this regard based on Appellants’ bare
assertion that the claim elements are not found in Volz.
Appellants lodge additional arguments under the heading for rejected
claims 34, 35, 47, 48 and 51-53 that appear to be directed to the rejection of
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these claims as well. Appeal Br. 10-14; Reply Br. 4-7. These arguments
characterize the rejections: as being improperly based on an “obvious to try”
standard; as “offer[ing] no evidence whatsoever, but only conclusory
hindsight, reconstruction and speculation,” that there is no finding as to a
specific principle that would “motivate” a person skilled in the art to make
the combination in the manner claimed; and presenting no evidence that the
references, taken alone or combined, would provide the features of the
claims. Appeal Br. 10-12. The Examiner does not base the rejection on an
“obvious to try” rationale, and the foregoing discussion addresses the
additional contentions made by Appellants.
Appellants continue their attack on the rejection by arguing that the
Examiner has not made any findings as to the level of ordinary skill in the
art. Appeal Br. 12. The absence of specific findings on the level of skill in
the art does not apprise us of error in the Examiner’s rejection, in that the
prior art of record in this application adequately reflects an appropriate level
of skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.
2001).
Appellants further maintain that the rejection appears to be based on
assertions that draw on facts within the personal knowledge of the Examiner,
and that the Examiner has not honored Appellants’ request to provide an
affidavit and/or published information in support of such assertions. Appeal
Br. 13. Appellants, however, fail to identify a single assertion believed to be
based solely on the personal knowledge of the Examiner. Even had
Appellants done so, the appropriate course of action for seeking redress of
any failure of the Examiner to provide the requested affidavit or information
would be by petition, as it is not a matter within the jurisdiction of the
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Board.
In view of the foregoing, the rejection of claims 1, 2, 21-33, 41, 42,
44-46 and 50 is sustained.
Claims 34, 35, 47, 48, 51-53--Obviousness--
Volz/Massler/APA/Encyclopaedia Britannica/Harada
The only argument advanced by Appellants relative to this rejection
that was not advanced with respect to the foregoing rejection is that Harada
fails to cure the alleged deficiencies of Volz and Massler pertaining to claim
1. Appeal Br. 10. As noted above, we are not apprised by Appellants’
arguments of any deficiencies in the combination of Volz and Massler. The
rejection of claims 34, 35, 47, 48, and 51-53 is sustained.
DECISION
The decision of the Examiner to reject claims 1, 2, 21-33, 41, 42, 44-
46 and 50 under 35 U.S.C. § 103(a) is affirmed.
The decision of the Examiner to reject claims 34, 35, 47, 48, and 51-
53 under 35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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