Ex Parte Gebhardt et alDownload PDFPatent Trial and Appeal BoardJun 17, 201310545751 (P.T.A.B. Jun. 17, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DIPL-ING RAINER GEBHARDT, DR. ING LOTHAR KUHLMEYER, JOACHIM OLEK, DIPL-ING GUIDO RESCHKE, and DIPL-ING JURGEN SCHOLZIG ____________ Appeal 2010-010473 Application 10/545,751 Technology Center 2800 ____________ Before SCOTT R. BOALICK, DENISE M. POTHIER, and DAVID C. McKONE, Administrative Patent Judges. McKONE, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a Non-Final Rejection of claims 11, 12, and 14-20, which constitute all the claims pending in this application. See Br. 1. Claims 1-10 and 13 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2010-010473 Application 10/545,751 2 THE INVENTION Appellants’ invention relates to a washing apparatus for printing and coating mechanisms. See Spec. 1:8-9. Claim 11, which is illustrative of the invention, reads as follows: 11. A washing apparatus for a printing and/or coating mechanism in a processing machine with a holding container for collecting soiled cleaning fluid, comprising: at least one washing device; a machine controller of the processing machine; a piston pump having a pressure chamber and being connected to the at least one washing device in the processing machine, and having an inlet valve and an outlet valve, the inlet valve being connected to a first branch line for feeding soiled cleaning fluid into the pressure chamber of the piston pump, the piston pump being controlled by the machine controller to expel the soiled cleaning fluid from the pressure chamber; and a second branch line connecting the piston pump to the holding container for feeding the expelled soiled cleaning fluid from the piston pump into the holding container. THE REJECTIONS The Examiner relies on the following prior art in rejecting the claims: Uribe US 5,277,111 Jan. 11, 1994 Mack US 5,421,262 June 6, 1995 Lippold US 5,797,328 Aug. 25, 1998 Kaufman US 6,029,688 Feb. 29, 2000 Claims 11, 12, 14-17, 19, and 20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Mack, Uribe, and Kaufman. See Ans. 3-5. Appeal 2010-010473 Application 10/545,751 3 Claim 18 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Mack, Uribe, Kaufman, and Lippold.1 See Ans. 5. ISSUE The issue raised by Appellants’ contentions is whether the Examiner erred in concluding that a person of ordinary skill in the art would have substituted the displacement pump taught by Mack with a piston pump having an inlet valve and an outlet valve as taught by Kaufman. See Br. 4. ANALYSIS REJECTION OF CLAIMS 11, 12, 14-17, 19, AND 20 UNDER 35 U.S.C. § 103(a) Appellants state that independent claim 11 is the focus of their discussion in the Brief. See Br. 4. Therefore, we treat claim 11 as representative. The Examiner finds that Mack teaches a washing apparatus for a printing machine having a holding container for collecting soiled cleaning fluid, and that the container is connected to a positive displacement pump controlled by a machine controller. See Ans. 3. The Examiner further finds that Uribe teaches a printing cylinder cleaning system having at least one washing device and a machine controller. See Ans. 3-4. However, the Examiner acknowledges that neither Mack nor Uribe teaches a piston pump having an inlet valve and an outlet valve, as recited in claim 11. See id. The 1 While the statement of the rejection lists only Mack, Uribe, and Lippold, see Ans. 5, claim 18 depends on claim 11, which is rejected under Mack, Uribe, and Kaufman. Moreover, the substance of the rejection of claim 18 discusses Kaufman. See Ans. 5. Therefore, the evidence shows that claim 18 is rejected over Mack, Uribe, Kaufman, and Lippold. Appellants have not raised an issue regarding the Examiner’s omission of Kaufman in the statement of rejection of claim 18. Appeal 2010-010473 Application 10/545,751 4 Examiner finds that Kaufman teaches a piston pump having a pressure chamber, an inlet valve, and an outlet valve. See Ans. 4. According to the Examiner, it would have been obvious to substitute Kaufman’s piston pump for Mack’s positive displacement pump to provide an alternative choice of pumping systems. See id. Appellants contend that such a substitution would not have been straightforward and would not have worked. See Br. 4. Specifically, Appellants argue that if Kaufman’s piston pump were substituted for Mack’s positive displacement pump, Mack’s valves 2 would not work properly such that underpressure would be generated in the pipe line 12 between the pump and the valve 2 closest to the collecting tank 4. See id. According to Appellants, some soiled fluid would always remain in the pipe line between the two valves, contaminating or clogging the pipe line. See Br. 5. Appellants further argue that the valves internal to Kaufman’s pump would not operate properly in conjunction with Mack’s valves 2. See id. Instead, Appellants assert, the valves internal to the piston pump would fight against the valves already in Mack’s design. See id. The Examiner responds that Appellants are arguing against a bodily incorporation of Kaufman into Mack without taking into account what those references would have suggested. See Ans. 6. The Examiner then explains that a person of ordinary skill in the art, in modifying Mack to substitute in a piston pump per Kaufman, would have recognized that Mack’s valves 2 should also be substituted for the inlet and outlet valves integrated with Kaufman’s piston pump, and would have known how to make these substitutions. See Ans. 7. Appeal 2010-010473 Application 10/545,751 5 We agree with the Examiner. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted). Appellants’ arguments assume that a person of ordinary skill in the art simply would have swapped out Mack’s positive displacement pump with Kaufman’s piston pump without having the skill to make minor modifications to other structure in Mack’s system. However, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007); see also id at 418 (“[A] court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”). We see no error in the Examiner’s finding (Ans. 7-8) that a skilled artisan would have known that, in substituting one known pump for another, the valves working in conjunction with those pumps would also have to be modified. Appellants also contend that Uribe does not teach a return pipe line. See Br. 5. The Examiner responds by pointing to Uribe’s return line 210, finding that it is a return pipe that feeds waste effluents to a transfer unit or tank 211. See Ans. 8 (citing Uribe, Figs. 1, 2; col. 14, ll. 1-25). Appellants have not persuasively explained why this finding is erroneous. Accordingly, we sustain the rejection of claim 11 and claims 12, 14- 17, 19, and 20 not separately argued with particularity. Appeal 2010-010473 Application 10/545,751 6 REJECTION OF CLAIM 18 UNDER 35 U.S.C. § 35 U.S.C. § 103(a) Claim 18 depends on claim 11. Appellants do not separately argue claim 18 with particularity. Accordingly, we sustain the rejection of claim 18 for the reasons given for claim 11. ORDER The decision of the Examiner to reject claims 11, 12, and 14-20 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED llw Copy with citationCopy as parenthetical citation