Ex Parte Kent

Board of Patent Appeals and Interferences

Aug 31, 2012

10832499 (B.P.A.I. Aug. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte BLAIR M. KENT
____________________

Appeal 2010-008673
Application 10/832,499
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, BENJAMIN D. M. WOOD, and
REMY J. VANOPHEM, Administrative Patent Judges.

WOOD, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
1-2, 6-12, 16, 19-31, 33-39, 49, 60-63, and 66-69. Claims 3-5, 13-15, 17-18,
32, 50-58 and 64-65 have been cancelled. Claims 40-48 have been
withdrawn. Claim 59 has been deemed allowable. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm-in-part.
THE INVENTION
The claims are directed to peristaltic pump. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A peristaltic pump comprising:
opposing occlusion surfaces;
a rotor between the occlusion surfaces and carrying a set
of occluding surfaces fixed relative to one another, wherein at
least one of either the set of occluding surfaces or the opposing
occlusion surfaces are linearly movable relative to the other of
the set of occluding surfaces and the occlusion surfaces during
pumping;
a first compressible conduit extending between the set of
occluding surfaces and one of the occlusion surfaces; and
a second compressible conduit extending between the set
of occluding surfaces and the other of the occlusion surfaces,
wherein at least one of either the set of occluding surfaces or
the opposing occlusion surfaces are linearly movable relative to
the other of the set of occluding surfaces and occlusion surfaces
by a distance sufficient such that substantially equal
compression forces are applied to the first compressible conduit
and the second compressible conduit.

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Gelfand
Allington
Calari
Aubert
Peclat
Thomas
US 3,832,096
US 4,673,334
US 5,064,358
US 5,249,937
US 6,102,678
US 6,322,330 B1
Aug. 27, 1974
Jun. 16, 1987
Nov. 12, 1991
Oct. 5, 1993
Aug. 15, 2000
Nov. 27, 2001

REJECTIONS
The Examiner made the following rejections:
Claims 1, 2, 6, 7, 16, 19, 49 and 66 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Calari and Aubert. Ans. 4, 14, 15.
Claims 8-11, 60-61, and 68-69 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Calari, Aubert, and Peclat. Ans. 7.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Calari, Aubert, and Thomas.
Claims 20, 21, 24-28, and 36-38 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Calari and Gelfand. Ans. 9.1
Claims 22 and 23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Calari, Gelfand, and Allington.
Claims 24 and 29-31 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Calari, Gelfand, and Aubert.
Claims 29, 33-35, 62, and 63 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Calari, Gelfand, and Peclat.

1 The Examiner also applied this rejection to claim 48. Ans. 9. However,
as noted above, this claim has been withdrawn. See Miscellaneous
Communication to Applicant 1 (Jan. 1, 2010).
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Claim 39 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Calari, Gelfand, and Thomas.
ANALYSIS
Claims 1, 2, 6, 7, 16, 19, 49, and 66 – Obviousness – Calari and Aubert
Claim 1
Appellant argues claims 1, 2, 6, 7, and 16 as a group. We select claim
1 as representative, with claims 2, 6, 7, and 16 standing or falling with claim
1. 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner found that Calari teaches the claimed opposing
occlusion surfaces, rotor between the occlusion surfaces carrying a set of
occluding surfaces, and the first and second compressible conduits (tubes).
Ans. 4 (citing Calari Figs. 3, 4). The Examiner then relied on Aubert to
teach a peristaltic pump with flexible, elastic occlusion surfaces that move
linearly with respect to the occluding surfaces. Ans. 4-5. In this regard,
Aubert teaches an occlusion surface that is an “elastic wall” that is
“deformable under the action of the presser rollers.” Aubert, col. 3,
ll. 38-39. Therefore, teaches Aubert:
The tube in which the liquid circulates is locally compressed
against such elastic wall. . . . [I]f such tube exhibits variations
in diameter due to manufacturing tolerances, the elastic wall of
the support piece may be deformed in a manner to compensate
for such variations. Consequently, the tube will always be
correctly crushed and the motor will not be required to supply
an additional couple in order to crush such tube.
Aubert, col. 3, ll. 39-50.
Based on these teachings the Examiner reasoned that it would have
been obvious for a person of ordinary skill in the art at the time of the
invention “to have modified the occlusion surfaces and thus the housing of
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Calari to be linearly movable relative to the set of occluding surfaces, as
taught by Aubert, in order to compensate for variations in the diameter of the
tubes due to manufacturing tolerances.” Ans. 5.
Appellant disputes the Examiner’s determination that claim 1 is
obvious over Calari in view of Aubert because
[n]either Calari nor Aubert, alone or in combination,
disclose a pump wherein either a set of occluding surfaces or a
set of opposing occlusion surfaces linearly move relative to the
other by a distance sufficient such that substantially equal
compression forces are applied to a first compressible conduit
and a second compressible conduit.

App. Br. 12 (emphasis in original). Appellant reasoned that “assuming,
arguendo, that [it would be obvious to modify the occlusion surfaces of
Calari so to be linearly movable as taught by Aubert], this would still not
necessarily result in substantially equal compression forces applied to two
different compressible conduits or tubes.” Id.
The Examiner characterized the limitation requiring linear movement
sufficient to equalize compression forces between the first and second
compressible conduits as a functional limitation. Ans. 18. Appellant
apparently does not dispute that characterization. See App. Br. 13 (stating
that claim 1 recites a structure “in terms of its function”). As our review
court has stated,
A patent applicant is free to recite features of an
apparatus either structurally or functionally . . . . Yet, choosing
to define an element functionally, i.e., by what it does, carries
with it a risk . . . . [W]here the Patent Office has reason to
believe that a functional limitation asserted to be critical for
establishing novelty in the claimed subject matter may, in fact,
be an inherent characteristic of the prior art, it possesses the
authority to require the applicant to prove that the subject
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matter shown to be in the prior art does not possess the
characteristic relied on.
In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (internal citations
omitted).
We agree with the Examiner that there is a “reason to believe” that the
functional limitation at issue, linear movement sufficient to equalize
compression force across the tubes, is inherent in the combination of Calari
and Aubert. As the excerpt from Aubert cited by the Examiner explains, the
flexible elastic support structure is specifically provided to compensate for
variations in tube diameter due to manufacturing tolerances, allowing the
motor to apply the same force regardless of the tube diameter. See Aubert
col. 3, ll. 49-50 (no “additional couple” required for larger diameter tube).
This characteristic, applied to Calari’s two-tube configuration, would
reasonably be expected to permit the motor to apply equal compression force
to the two tubes regardless of differing diameters of the tubes. Appellant has
not provided any evidence or persuasive argument showing that the prior art
combination does not possess this characteristic. We therefore sustain the
Examiner’s rejection.
Claim 19
Claim 19 depends from Claim 1 and further requires a certain range of
movement, i.e., that at least one of either the set of occluding surfaces or the
opposing occlusion surfaces are linearly movable relative to the other of the
set of occluding surfaces and the occlusion surfaces during pumping of fluid
by a distance of at least 2.0% Dmean, wherein Dmean is equal to one-half the
sum of the distance between opposing occlusion surfaces and the distance
between opposing occluding surfaces. The Examiner reasoned that the
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claimed value is merely “an optimum or workable range,” the discovery of
which involves only routine skill in the art. Ans. 6 (citing In re Aller, 220
F.2d 454, 456 (CCPA 1955). But this principle applies only for optimizing
variables that are recognized as “result effective,” i.e., that, when varied, are
known in the art to produce expected results. In re Antonie, 559 F.2d 618,
620 (CCPA 1977). The Examiner has not shown that this particular variable
is recognized in the art as result effective. Accordingly, we do not sustain
the rejection.
Claim 49
Claim 49 recites an “image forming device,” comprising at least one
fluid dispensing device configured to dispense fluid upon a medium, a fluid
reservoir and a pump that, essentially, meets the limitations of claim 19.
App. Br. 35. In addition to the argument set forth above with respect to
claim 19, Appellant argues that neither Calari nor Aubert, alone or in
combination, disclose “[a] fluid dispensing device configured to dispense
fluid upon a medium.” App. Br. 16. The Examiner responds that this
limitation is merely an intended use of the invention and therefore does not
confer patentability to the claim. We disagree. The claimed fluid
dispensing device requires specific structure – a fluid reservoir – beyond the
peristaltic pump disclosed in Calari. We do not sustain this rejection.
Claim 66
Appellant argues that “[n]either Calari nor Aubert, alone or in
combination, disclose opposing occlusion surfaces that are fixedly coupled
to one another. App. Br. 19 (emphasis in original). The Examiner does not
appear to have made a finding that this limitation is found in Calari or
Aubert. We do not sustain this rejection.
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Claims 8, 9, 11, 60-61, and 68-69 – Obviousness –
Calari, Aubert, and Peclat
Claims 8, 9, 11 and 60-61
Appellant raises the same arguments for the patentability of these
claims that were raised, and rejected, with respect to claim 1. Accordingly,
we sustain the rejections of claims 8, 9, 11, and 60-61.
Claims 10 and 68-69
Claims 10 and 68-69 depend indirectly from claim 1 and further recite
a drive shaft extending along an axis and coupled to the rotor, wherein the
rotor is linearly movable relative to the shaft in a direction non-parallel to
the axis. App. Br. 30, 37. The Examiner relied on Peclat to disclose this
limitation, and found that “it would have been obvious to one of ordinary
skill in the art at the time of invention to have modified the rotor/shaft
assembly of Calari in view of Aubert by making the rotor linearly moveable
relative to the shaft and housing” as taught by Peclat, “in order to
compensate for variations in the diameter of the tube due to manufacturing
tolerances.” Ans. 7-8. Appellant argues that Peclat teaches a vibrating
stator rather than a rotor, and teaches away from the use of a driveshaft:
Peclat teaches that because it uses a vibrating stator rather than
a driveshaft, it can provide radial play between the rotor and the
stator. Nowhere does Peclat disclose that the radial play could
alternatively be provided in a pump with a driveshaft. One of
ordinary skill in the art following the teachings of Peclat would
not be led to modify Calari to provide such radial play.
App. Br. 21.
In our view, if a person of ordinary skill had already combined Calari
with Aubert to compensate for variations in the tube diameter, as the
Examiner found, (Ans. 5), there would be little if any motivation to
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thereafter combine the Calari/Aubert combination with Peclat for the same
purpose. This is particularly true considering that Peclat’s pump – unlike
those of Calari and Aubert – is specifically designed to operate without a
drive shaft. We do not sustain this rejection.
Claim 12 – Obviousness – Calari, Aubert, and Thomas
Appellant makes the same arguments for patentability as were made
for claim 1, which we previously discussed and rejected. We sustain the
Examiner’s rejection of claim 12.
Claims 20, 21, 24-28, and 36-38 – Obviousness – Calari and Gelfand
Appellant argues claims 20, 21, 24-28, and 36-38 as a group. App.
Br. 22-24. We select claim 20 as representative. Claim 20, from which the
remaining claims in the group depend, either directly or indirectly, recites a
peristaltic pump which includes a plurality of pump units arranged in a
stack, wherein each pump unit includes:
a housing having a half-clamshell shape, wherein the
housing includes:
a main wall extending generally perpendicular to a
rotational axis of the rotor and opposite to axial ends of each of
the rollers;
a first rim fixed to and extending from the wall in a first
direction and providing one of a set of opposing occlusion
surfaces; and
a second rim fixed to and extending from the wall in the
first direction and providing the other of the set of opposing
occlusion surfaces.
App. Br. 31-34.
The Examiner relied on Gelfand to show “a plurality of pump units
arranged in a stack.” Ans. 10. The Examiner also apparently relied on
Gelfand to disclose the half-clamshell housing with the main wall and first
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and second rims, based on the finding that Gelfand uses “the housing of an
adjacent pump unit to retain a tube along the at least one occlusion surface
of a first pump unit.” Fin. Off. Action 11. This in turn is based on the
finding that discs 10-13 are part of the housing. Ans. 22. We agree with
Appellant, however, that Gelfand’s housing is represented by element 20
and does not include discs 10-13. We do not sustain this rejection.
Claims 22 and 23 – Obviousness – Calari, Gelfand and Allington
The Examiner does not rely on Allington to cure the deficiencies in
the combination of Calari and Gelfand noted above. Accordingly, we do not
sustain this rejection.
Claims 24 and 29-31 – Obviousness – Calari, Gelfand, and Aubert
The Examiner does not rely on Allington to cure the deficiencies in
the combination of Calari and Gelfand noted above. Accordingly, we do not
sustain this rejection.
Claims 29, 33-35, 62, and 63 – Obviousness – Calari, Gelfand, and Peclat
The Examiner does not rely on Peclat to cure the deficiencies in the
combination of Calari and Gelfand noted above. Accordingly, we do not
sustain this rejection.
Claim 39 – Obviousness – Calari, Gelfand, and Thomas
The Examiner does not rely on Thomas to cure the deficiencies in the
combination of Calari and Gelfand noted above. Accordingly, we do not
sustain this rejection.
DECISION
For the above reasons, the Examiner’s rejection of claims 1, 2, 6-9,
11, 12, 16, and 60-61 is affirmed. The rejection of claims 10, 19-31, 33-39,
49, 62, 63, 66-68, and 69 is reversed.
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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) (2011).

AFFIRMED-IN-PART

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