Ex Parte DolsonDownload PDFPatent Trial and Appeal BoardSep 10, 201310959412 (P.T.A.B. Sep. 10, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RICHARD DOLSON ____________ Appeal 2011-007414 Application 10/959,412 Technology Center 3700 ____________ Before EDWARD A. BROWN, RICHARD E. RICE and CARL M. DeFRANCO, Administrative Patent Judges. RICE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-007414 Application 10/959,412 2 STATEMENT OF THE CASE Richard Dolson (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 17-25. App. Br. 1. Claims 1-16 have been canceled. Id. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER Claim 17, reproduced below, is the sole independent claim: 17. A submersible turbine pump for pumping fuel out of an underground storage tank, comprising: a manifold comprising an electrical cavity adapted to receive electrical wiring; a packer adapted to be removably secured to the manifold and comprising a chamber, said packer including an inlet port for passage of electrical wiring extending from the submersible turbine pump within the underground storage tank; a yoke assembly providing electrical interconnection such that the electrical wiring passes from the submersible turbine pump to the chamber in the packer and from the chamber in the packer to the electrical cavity of the manifold via said yoke assembly; and said yoke assembly being constructed and arranged such that said electrical communication will be automatically severed when the packer is removed from the manifold. App. Br., Claims App’x. REFERENCES RELIED ON BY THE EXAMINER Brown US 3,172,572 Mar. 9, 1965 Bonilla US 6,114,623 Sep. 5, 2000 Appeal 2011-007414 Application 10/959,412 3 THE REJECTIONS Claims 17-21 and 23-25 are rejected under 35 U.S.C. § 102(b) as anticipated by or in the alternative under 35 U.S.C. § 103(a) as obvious over Brown. Claim 22 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Brown and Bonilla. ANALYSIS Claim 17 calls for a submersible turbine pump comprising, inter alia, a yoke assembly providing electrical interconnection such that the electrical wiring passes from the submersible turbine pump to the chamber in the packer and from the chamber in the packer to the electrical cavity of the manifold . . . , said yoke assembly being constructed and arranged such that said electrical communication will be automatically severed when the packer is removed from the manifold. (Emphasis added). Appellant contends that the limitation “said electrical communication will be automatically severed when the packer is removed from the manifold” does not encompass “a disconnect arrangement [such as taught in Brown] in which the electrical wiring must be manually disconnected before the packer is removed from the manifold.” App. Br. 8. In support of this contention, Appellant cites paragraph [0040] of Appellant’s Specification, which distinguishes prior art systems in which “service personnel had to first remove the yoke assembly separately” before removing the pump via removal of the packer. Id. at 5. According to Appellant’s Specification, “[n]ow with the present invention, service personnel only need to remove the packer 18 to automatically sever the electrical wires 58 when the packer 18 is removed from the manifold 19 since the yoke assembly 60 is integral with Appeal 2011-007414 Application 10/959,412 4 the manifold 19 and not the packer 18.” Spec. para. [0040] (emphasis added). “Thus,” Appellant asserts, “the action of removing the packer will cause the electrical communication to be severed.” App. Br. 5. Appellant contends that “[b]ecause the arrangement of Brown necessitates that the electrical connection be severed before the packer is removed, it does not occur automatically and it cannot occur ‘when’ the packer is removed as [Appellant’s] claims require.” Id. at 8 (italics omitted). The Examiner does not dispute Appellant’s contention that “the separation of the electrical wiring in Brown would have to occur before the packer could be removed,” but instead finds that “one can interpret the reference to be severing the electrical communication ‘when the packer is removed,’ if the two events occur roughly at the same time” and that “it is reasonable to interpret the electrical communication to be ‘automatically’ severed because it is a step in removing of the packer.” Ans. 7. We agree with Appellant that the limitation “said electrical communication will be automatically severed when the packer is removed from the manifold” does not encompass a disconnect arrangement in which the electrical wiring must be manually disconnected before the packer is removed from the manifold. See App. Br. 8. The Examiner’s implicit claim construction that severing the electrical communication is a step in removing the packer and thus necessarily satisfies the “automatically severed” limitation would apply equally to the hypothetical limitation “said electrical communication will be [] severed when the packer is removed from the manifold,” which omits “automatically.” The Examiner’s claim construction thus renders “automatically” merely superfluous or meaningless. See Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Appeal 2011-007414 Application 10/959,412 5 Cir. 2006) (“claims are interpreted with an eye toward giving effect to all terms in the claim,” so that physical structures and characteristics specifically described in a claim are not rendered “merely superfluous”); In re Wilson, 424 F.2d 1382, 1385 (CCPA1970) (meaning must be given, where reasonably possible, to each term of a claim). Furthermore, the Examiner’s claim construction is inconsistent with Appellant’s disclosure that, “with the present invention,” service personnel only need to remove the packer to automatically sever the electrical communication when the packer is removed from the manifold. See Spec., para. [0040]; In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010) (during examination, the PTO gives claims “‘their broadest reasonable construction consistent with the specification.’”) (quoting In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007)). Because we disagree with the Examiner’s claim construction, we also do not agree with the Examiner’s finding that, because severing the electrical communication is a step in removing the packer, Brown discloses the “automatically severed” limitation. Alternatively, the Examiner reasons “that . . . the wires in the packer assembly would at least break away from the wires connected to the yoke and element 148’ when the packer is removed; thus ‘automatically’ severing electrical communication.” Ans. 8. The Examiner provides no further explanation of this alternative reasoning. It is our understanding that Brown’s packer 23’ must be removed vertically; however, plug element 162’ is supported to move horizontally toward and away from plug element 161’. Brown, col. 8, ll. 8-10; figs. 11 and 12. In particular, Brown discloses that “[t]he plug element 162’ is advantageously enclosed in a metal sheath 163’, which sheath is attached to a sleeve 164’ that is slidably supported in an Appeal 2011-007414 Application 10/959,412 6 opening 165’ in the cap 148’, to support the plug member 162’ for movement toward and away from the plug member 161’.” Id. at col. 8, ll. 5- 10; fig. 12. From figure 12 of Brown, it appears that metal sheath 163’ would interfere with attempted vertical removal of the packer 23’ if plug element 162’ were not first separated from plug element 161’. As such, we are not informed as to how the packer 23’ could be removed from the manifold 22’ in Brown’s second embodiment (see figures 11 and 12) without first separating the electrical plug elements 162’ and 161’. Therefore, on the record before us, we cannot find by a preponderance of the evidence that the wires in the packer assembly would automatically break away from the wires to the yoke and element 148’ as the packer is removed, or that Brown’s assembly is otherwise capable of performing the “automatically severed” limitation. The Examiner also determines, alternatively, that the “automatically severed” limitation would have been obvious because “broadly providing a mechanical or automatic means to replace manual activity, which has accomplished the same result, involves only routine skill in the art.” Ans. 7 (referencing In re Venner, 262 F.2d 91 (CCPA 1958)). In Venner, appellants asserted the patentability of a mold casting apparatus that included “a timer and solenoid which automatically actuate[d] [a] known pressure valve system . . . after a predetermined time ha[d] elapsed,” for use in a molding process. See Venner, 262 F.2d at 94. The timer was initiated at a certain point in the molding process by depressing a foot-operated switch. Id. at 92. In rejecting appellants’ contentions, our reviewing court reasoned, inter alia, that “using a floor switch to activate the timer detracts from Appeal 2011-007414 Application 10/959,412 7 appellants’ contention that the automatic timer relieves the operation from the mistakes and inertia of the human mind.” Id. at 95. Here, in contrast to Venner, the “automatically severed” feature recited in claim 17 avoids the preliminary step of manually disconnecting the electrical wiring before the packer is removed from the manifold. We determine that the Examiner’s alternative obviousness rejection is not supported by “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Accordingly, we do not sustain the rejection of claim 17 and its dependent claims 18-21 and 23-25 as anticipated by or in the alternative as obvious over Brown. As the Examiner does not rely on Bonilla to remedy the deficiency in Brown with respect to claim 17, we also do not sustain the rejection of claim 22, which depends from claim 17, as being unpatentable over Brown and Bonilla. DECISION We reverse the rejections of claims 17-25. REVERSED mls Copy with citationCopy as parenthetical citation