Ex Parte Klabunde et al

Patent Trial and Appeal Board

Oct 29, 2012

11274799 (P.T.A.B. Oct. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte FRANK KLABUNDE and TOBIAS STOLL
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Appeal 2010-009778
Application 11/274,799
Technology Center 3700
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Before LINDA E. HORNER, PATRICK R. SCANLON and
TIMOTHY J. O’HEARN, Administrative Patent Judges.

O’HEARN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Frank Klabunde and Tobias Stoll (Appellants) seek our review under
35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1-6 and 8-11 in
the above application. Claim 7 was cancelled during prosecution. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm in part.

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THE INVENTION
Appellants’ claimed invention relates to a foil shield for use to cover
an opening of a vacuum pump and thereby block foreign objects from
entering the pump and block magnetic fields from passing into or out of the
pump past the foil shield. Claims 1 and 10 are the only independent claims
and are reproduced below.
1. A foil shield for covering at least one
opening of a suction flange of a vacuum pump, the
foil field1 comprising at least one member formed
of a material having a relative permeability μr
greater than 1,000 and having a coating formed of
an electroconductive material.

10. A molecular pump, comprising a high-speed
rotor; a magnetic bearing for supporting the rotor; a
suction flange; and a foil shield for covering at least
one opening of the suction flange for preventing exit
of magnetic field lines of the magnetic field of the
magnetic bearing, wherein the foil shield comprising
at least one member formed of a material having a
relative permeability μr greater than 1,000 and
having a coating formed of an electroconductive
material.
THE REJECTIONS
The Examiner rejected claims 1-3, 5 and 8-11 under 35 U.S.C. § 103(a)
as being unpatentable over Ishikawa et al (EP 1 270 949 Al, pub. Jan. 2, 2003)
in view of Hutkin (US 3,512,946, iss. May. 19, 1970). Ans. 4-9. The
Examiner rejected claims 4 and 6 under 35 U.S.C. § 103(a) as being
unpatentable over Ishikawa in view of Hutkin and further in view of Chan et al.

1 A Rule 116 amendment was filed to substitute the word “shield” for the word
“field” in claim 1. However, the Rule 116 amendment was not entered. The
claims in the Claims Appendix, therefore, are incorrect regarding this one
word in claim 1.
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(US 5,580,429, iss. Dec. 3, 1996) Ans. 9-10. Appellants argue the claims
subject to the first ground of rejection in four groups and state that the
claims in each group stand or fall together. The four groups are: (i) claims 1,
3, and 5; (ii) claims 2 and 8; (iii) claim 9; and (iv) claims 10-11.
ISSUE
Did the Examiner articulate adequate reasoning based on rational
underpinnings to support the determination that it would have been obvious
to one of ordinary skill in the art to combine the prior art references in a
manner that would arrive at the claimed subject matter?

ANALYSIS

Rejection of claims 1, 3, and 5 under 35 U.S.C. § 103(a) as unpatentable
over Ishikawa and Hutkin.
Appellants do not contest the Examiner’s findings as to the scope and
content of Ishikawa, the differences between Ishikawa and the claimed
invention and the disclosure of Hutkin regarding layers of copper and
nickel–iron alloy for shielding electrical and magnetic energy. See App. Br.
4-5. Instead, Appellants argue that the Hutkin reference is not combinable
with Ishikawa and, in fact, teaches away from the Examiner’s proposed
combination because Hutkin discloses the use of a plastic substrate beneath
the layers of metal. App. Br. 5-6. Appellants assert that plastic is
unacceptable in the inlet of a vacuum pump. App. Br. 5. The Examiner
counters with the observation that it is the concept of electroplating layers of
nickel and iron alloys on a substrate, such as the shield of Ishikawa, that is
the relevant teaching of the Hutkin reference and that the presence or
absence of a plastic layer would not detract from that teaching. Ans. 11.
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“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994). A reference does not teach away if it merely expresses a
general preference for an alternative invention from amongst options
available to the ordinarily skilled artisan, and the reference does not discredit
or discourage investigation into the invention claimed. See In re Fulton, 391
F3d. 1195, 1201 (Fed. Cir. 2004) (“mere disclosure of alternative designs
does not teach away”). In addition, there is no competent evidence in the
record to establish that the plastic taught by Hutkin could not be made to
work successfully in combination with the vacuum pump of Ishikawa. See
In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“[a]ttorney’s argument in
a brief cannot take the place of evidence.”) (citation omitted).
We agree with the Examiner that the further shielding provided by
layers of nickel and iron alloys taught in Hutkin on the shield of Ishikawa as
recited in claim 1 would have been obvious to one of ordinary skill in the art
in light of the teachings of these references. The same result applies to
claims 3 and 5 because the Appellants have argued them as a group and
represents that they stand or fall together.

Rejection of claims 10–11 under 35 U.S.C. § 103(a) as unpatentable over
Ishikawa and Hutkin.
Claim 10 is directed to a vacuum pump having the foil shield of claim
1 for covering an opening in a suction flange of the pump. Appellants rely
on the arguments for patentability raised for claim 1 as the basis for
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patentability of claim 10. App. Br. 11. For the reasons described above, we
agree with the Examiner’s rejection of claim 10. The same result applies to
claim 11 because the Appellants have argued them together and represent
that they stand or fall together.
Rejection of claims 2 and 8 under 35 U.S.C. § 103(a) as unpatentable over
Ishikawa and Hutkin.
Claim 2 is dependent on claim 1 and further comprises a centering
ring. Appellants contend that the prior art does not disclose that feature and
that the ring portion 1a shown in Ishikawa does not “necessarily” center the
shield. App. Br. 8. The Examiner finds that Ishikawa provides a ring 1a
with a stepped portion that forms a centering ring confining the net to the
center of the opening 1c. Ans. 5, 12. We agree with the Examiner’s
findings and analysis which explains a sound basis for rejection of claim 2.
The same result applies to claim 8 because the Appellants argued and
represented that claims 2 and 8 stand or fall together.
Rejection of claim 9 under 35 U.S.C. § 103(a) as unpatentable over
Ishikawa and Hutkin.
Claim 9 is dependent on claim 2 and recites a centering ring, suction
flange, and a flange of a vacuum chamber “which contact each other upon
assembly, have each a coating having a definite and constant friction
coefficient.” Appellants point out that the corresponding features in
Ishikawa do not come in contact with each other. App. Br. 10. Appellants
note that the members are separated by an elastic member 11 in Ishikawa.
Id. We agree with Appellants that, because the component parts are
separated by elastic member 11 in Ishikawa, the claimed combination of
claim 9 cannot be found in the prior art relied upon by the Examiner.
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Rejection of claims 4 and 6 under 35 U.S.C. § 103(a) as unpatentable over
Ishikawa, Hutkin, and Chan.
Claims 4 and 6 depend from claim 1. Appellants rely on their
arguments as to the patentability of claim 1 over Ishikawa and Hutkin as the
basis for patentability of claims 4 and 6 over Ishikawa, Hutkin, and Chan.
App. Br. 8. We find these arguments unavailing for the reasons set forth
supra in our analysis of claim 1. Accordingly, we likewise sustain the
Examiner’s rejection of claims 4 and 6.

CONCLUSION

The Examiner articulated adequate reasoning based on rational
underpinnings to support the determination that it would have been obvious
to one of ordinary skill in the art to combine the Ishikawa and Hutkin
teachings to arrive at the inventions recited in claims 1 and 2of the
application.
The Examiner did not articulate adequate reasoning based on rational
underpinnings to support the determination that it would have been obvious
to one of ordinary skill in the art to combine the teachings of Ishikawa and
Hutkin to arrive at the invention recited in claim 9.

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DECISION

We REVERSE the decision of the Examiner to reject claim 9.
We AFFIRM the decision of the Examiner to reject claims 1–6, 8 and
10–11.
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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