Ex Parte Linde et al

Patent Trial and Appeal Board

Sep 10, 2018

13646478 (P.T.A.B. Sep. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/646,478 10/05/2012
131672 7590 09/10/2018
Whitmyer IP Group LLC
600 Summer Street
3rd Floor
Stamford, CT 06901
FIRST NAMED INVENTOR
Hans Juergen Linde
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
04893-P0006A 2374
EXAMINER
DOUNIS, LAERT
ART UNIT PAPER NUMBER
3748
MAIL DATE DELIVERY MODE
09/10/2018 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 HANS JUERGEN LINDE,
BERNHARD MURRENHOFF,
ROBERT KURZ, REINHARD DENK,
JOSEF STRASSL, THOMAS BOEHME,
HISHAM KAMAL, STEP AN WEIGL,
ROGER WILLIS, STEFAN KERN,
JOHANN KREIDL, GUNTER HERR,
FRANZ KNEIDL, MIKAEL TEKNEY AN,
ERWIN WEBER, MARCEL VERHOEVEN,
and MATHIAS GRADL
Appeal2017-000033
Application 13/646,478
Technology Center 3700
Before MICHAEL L. HOELTER, LYNNE H. BROWNE, and
ANNETTE R. REIMERS, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner's Final rejection of claims 1, 3-14, and 16-21. App. Br. 2.
1 "The real party in interest is NETZSCH-Pumpen & Systeme GmbH."
App. Br. 2.
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Application 13/646,478
Claims 2 and 15 have been canceled. App. Br. 15, 18 (Claims Appendix).
Appellants' counsel presented Oral argument on August 23, 2018. We have
jurisdiction under 35 U.S.C. § 6(b). For the following reasons, we AFFIRM
the Examiner's rejections.
THE CLAIMED SUBJECT MATTER
The disclosed subject matter "relates to contact elements for the rotary
pistons and the pump housing of rotary piston pumps." Spec. ,r 1.
Apparatus claims 1 and 21 are independent. Claim 1 is illustrative of the
claims on appeal and is reproduced below.
1. A rotary piston pump comprising:
at least two counter-rotating rotary pistons, each rotary
piston having rotary piston vanes and flanks, each rotary piston
having a recess cut out of at least one of said flanks to receive a
first contact element, said first contact element being removably
connected to the respective rotary piston,
a pump housing enclosing said at least two rotary pistons,
a second contact element removably positioned within an
interior of said pump housing, said second contact element
surrounding said at least two rotary pistons, said second contact
element comprising a first part removably inserted to cover a rear
side and radial surfaces of the interior of said pump housing and
a second part removably inserted to cover a front side of the
interior of said pump housing, said first part having extension
pieces that extend through inflow and outflow openings of said
pump housing,
said rotary pistons each with said first contact element
forming a friction pair,
wherein dimensions of the first contact elements match
dimensions of the recesses so that an active interrelation is
provided between the first contact elements and caps of the rotary
pistons.
2
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Application 13/646,478
Wolf
Wellington
Berkowitz
Lee et al.
Cargill
REFERENCES
us 1,097,783
us 2,754,050
us 4,028,021
US 2009/0016893 Al
GB 2429751 A
THE REJECTIONS ON APPEAL
May 26, 1914
July 10, 1956
June 7, 1977
Jan. 15,2009
Mar. 7, 2007
Claims 1, 3-14, and 16-21 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Wellington, Cargill, and Wolf.
Claims 17 and 19 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Wellington, Cargill, Wolf, and Berkowitz.
Claims 18 and 20 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Wellington, Cargill, Wolf, and Lee.
ANALYSIS
The rejection of claims 1, 3-14, and 16-21 as
unpatentable over Wellington, Cargill, and Wolf
Appellants argue all the claims together. App. Br. 4--14. We select
claim 1 for review, with the remaining claims (i.e., claims 3-14 and 16-21)
standing or falling with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
Claim 1 is directed to rotary pistons each having a recess to receive
therein a first contact element. Claim 1 recites, "wherein dimensions of the
first contact elements match dimensions of the recesses." The Examiner
relies on Wellington for such teachings (Final Act. 4 ), and on Cargill and
Wolf for other limitations. Final Act. 5---6.
Wellington is directed to applying an adhesively-bonded flock to the
pistons. See Wellington 1:72-2: 1. Appellants contend, "[t]he coatings are a
liquid which is sprayed or brushed onto metal in wet form." App. Br. 7
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Application 13/646,478
(referencing Wellington 1:72-2:13; 2:34--38). Consequently, "Wellington
does not teach that the coating has or is manufactured with dimensions, and
more specifically, dimensions which match dimensions of the recesses."
App. Br. 7; see also Reply Br. 2-5.
Appellants' Specification does not employ the claim term "match,"
but Paragraph 31 thereof discusses how the contact elements "are fitted to"
the piston. Paragraph 32 thereof states that contact elements "are
dimensioned such that [there is] active interrelation with a contact element."
Hence, we understand the claim term "match" to have its ordinary and
customary meaning, i.e., "a person or thing equal or similar to another" and
"a pair suitably associated. "2 Accordingly, Appellants' arguments regarding
possible variations in the depth of the flocking applied in Wellington (see
Reply Br. 4--5) is not persuasive since the term "match" does not mandate
mathematical exactitude.
Although it is understood that Wellington is directed to spraying or
brushing (see Wellington 2:9-13), Wellington also states, "[m]asks are
applied as required;" that "flock is applied by flowing the flock onto the
adhesively coated areas until the same are filled and will accept no more
fibers;" and, that "[ a ]fter the flock is applied the masks are removed if masks
have been used." 3 Wellington 2:33--44. Appellants' briefs do not address
Wellington's teaching of 'masking' the spray area, or explain how such
2 See https://www.merriam-webster.com/dictionary/match.
3 The Examiner addresses the matter of containing overspray stating, "[i]f
the coatings were to extend dimensionally beyond the 'undercut' portions,
this would increase the likelihood of actual contact between the rotors or
between the rotors and their housings. Contact introduces frictional forces
which reduce efficiency." Ans. 3.
4
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Application 13/646,478
'masking' fails to define an area to be sprayed as well as contain any
overspray. See App. Br. 7-8.
Wellington further teaches pistons having an "undercut ... at those
portions [ of the piston] which receive the adhesively bonded flock coatings."
Wellington 3: 14--1 7. From the above, Wellington teaches both that it is the
undercut that is to receive the flock and also masking so as to specifically
outline or delineate an area to be flocked. Accordingly, we are not
persuaded the Examiner erred in finding that Wellington teaches the
limitation "wherein dimensions of the first contact elements match
dimensions of the recesses."4 See Ans. 3.
Regarding Cargill, Appellants state, "[ u ]sing the teachings of Cargill,
one would modify the Wellington device by replacing only the flock
coatings . . . bonded to end plates [ and] pump housing [but that] flock
coatings ... on the rotary pistons, however, would not be altered to
wearplates." App. Br. 8 (emphasis added); see also Reply Br. 10-11.
Appellants' explanation as to why one skilled in the art would "only"
replace the flock coatings with wear plates on the end plates and housing,
but not on the pistons themselves, when all are subject to wear, is because
"Cargill lacks any suggestion of providing wearplates on the rotary pistons."
App. Br. 8. Appellants do not address the Examiner's reliance on
Wellington, not Cargill, for disclosing wear surfaces on the pistons
themselves, or the Examiner's reliance on Cargill for teaching the use of
4 As an aside, we further note that the secondary reference to Cargill (relied
on for disclosing contact element/wear plate removability (Final Act. 5; see
also Ans. 4)) states, "[t]he depth of the notches corresponds to the thickness
of each wearplate which it is connected with." Cargill 5 :2-3. Hence,
Cargill specifically teaches filling the recess in accordance with its depth.
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Application 13/646,478
removable wear plates. Final Act. 4--5. To be clear, the Examiner reasons
that it would have been obvious "to modify Wellington, as taught by Cargill,
by replacing the flock coatings of Wellington with inserts in order to
facilitate removal and replacement upon excessive wearing." Final Act. 5.
Accordingly, Appellants' contention is not persuasive of Examiner error.
Appellants also address Wellington's teaching above regarding
blowing the flock onto the recesses' adhesively coated areas "until the same
are filled and will accept no more fibers." Reply Br. 2 (referencing
Wellington 2:34--39). Appellants explain, "Wellington does not teach or
suggest the adhesive is accurately and precisely sprayed onto the [undercut]
so that the entire undercut portion ... is covered by adhesive." Reply Br. 2.
Appellants contend that, prior to flocking, "[ a ]reas of the undercut portion,
for example near the borders, may lack any adhesive because the spraying
process misses them" and as such, no flock will adhere to that portion of the
undercut. Reply Br. 3. Thus, "the dimensions of the flock coating is smaller
than - and thus fails to match the dimensions of- the undercut portion."
Reply Br. 3.
Indeed, it may occur that certain areas of the undercut may not be
properly prepared, and as a result, "may lack any adhesive" spray such that
flocking in that area will be lacking. However, this arises as a consequence
of an improper or incorrect application of Wellington's teachings.
Wellington, instead, discloses the use of a mask to specifically define an
area of spray, and also applying an adhesive "on the parts to be flocked."
Wellington 2:34--36. Thus, Wellington does not encourage or promote mis-
spraying if the missed area was, instead, intended "to be flocked." In other
words, we are not persuaded that the possibility of a teaching being mis-used
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or mis-applied is indicative that the Examiner erred in relying on such
teaching.
Appellants also contend, "Wellington Teaches Away From the
Presently Claimed Invention" and that "Wellington Would Render It
Unsatisfactory for its Intended Purpose." App. Br. 9. It is not disputed that
Wellington is concerned with costs and seeks to avoid expensive machining
operations. 5 See e.g., Wellington 1:33--42; see also App. Br. 10; and Reply
Br. 6-9. Appellants contend, "Wellington teaches away from using
expensive machining operations to make pump parts precisely according to
specific dimensions." App. Br. 1 O; see also Reply Br. 7. Appellants
explain, "[i]fwear plates ... were used instead of flock coatings as taught by
Wellington, then additional machining operations are required." Reply Br.
6-7.
The Examiner, on the other hand, states that employing wear surfaces
is less expensive than machining components so precisely that "no wear or
sealing components of any kind would be required ... since perfectly
dimensioned rotors and housings would also have perfectly machined
clearances which avoid contact and leakage." Ans. 5. Thus, "[t]he use of
the flock coatings or wear plates [ when Wellington is combined with
Cargill] allow for looser tolerances when constructing the rotors and
housing." Ans. 5. Furthermore, "Wellington does not teach against
5 Appellants also appear to acknowledge that Cargill is likewise concerned
with costs, i.e., "Cargill seeks to provide wear plates that require less time
and are easier to replace than previous wearplates that were not easily
replaceable and required some amount of disassembly of the rotors and
housing." Reply Br. 10 (referencing Cargill 1:15-24); see also Cargill 2:24--
26; 7:18-22.
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modification" and that "[ o ]n the contrary, Wellington would encourage use
of any wear/sealing component in order to avoid expensive machining of the
rotors and housing."6 Ans. 5.
"A reference does not teach away, however, if it merely expresses a
general preference for an alternative invention but does not 'criticize,
discredit, or otherwise discourage' investigation into the invention claimed."
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327
(Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004)). We have also been informed that just because better alternatives
exist in the prior art does not mean that an inferior combination is inapt for
obviousness purposes. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
Thus, although Wellington desires to reduce "[ e ]xpensive machining
operations" (Wellington 1 :33-34), Appellants are not persuasive that one
skilled in the art would be discouraged from modifying Wellington by
employing removable wear plates ( as disclosed in Cargill) rather than
adhesive-bonded spray-on flocking, "in order to facilitate removal and
replacement upon excessive wearing." Final Act. 5.
For the above reasons, we are not persuaded that Wellington teaches
away as Appellants assert, or that modifying Wellington would render
Wellington unsatisfactory for its intended purpose. See App. Br. 9-11; see
also Reply Br. 6-7, 11.
6 Regarding costs, Appellants contend, "the repair and downtime discussed
in Cargill refers to maintenance costs, which are different from the costs of
machining operations discussed in Wellington." Reply Br. 9. Appellants do
not explain why one skilled in the art, when considering costs, would only
consider one type of cost and not another.
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Appellants' further argument to the effect that the Examiner's reason
for combining the cited art lacks rational underpinning (App. Br. 11-14) is
also not persuasive. This is because Appellants, again, focus on
Wellington's teaching of reducing costs, and this matter has been discussed
above. We are further instructed, "[t]he fact that the motivating benefit
comes at the expense of another benefit, however, should not nullify its use
as a basis to modify the disclosure of one reference with the teachings of
another. Instead, the benefits, both lost and gained, should be weighed
against one another." Winner International Royalty Corp. v. Wang, 202
F.3d 1340, 1349 n. 8 (Fed. Cir. 2000). Appellants do not explain how
Wellington's desire to reduce machining costs is not compatible with
Cargill's desire to also reduce costs via the use of removable wear plates.
See supra.
Accordingly, we are not persuaded the Examiner erred in combining
the cited references. We sustain the Examiner's rejection of claims 1, 3-14,
and 16-21.
Regarding the remaining rejections involving the additional reliance
on Berkowitz and Lee, Appellants do not argue these rejections. Instead,
Appellants state, "the combination of Wellington, Cargill, Wolf, Berkowitz
and Lee fails to disclose, teach or suggest all the elements of Claims 1 and
21." App. Br. 14. Accordingly, we sustain these rejections as well.
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DECISION
The Examiner's rejections of claims 1, 3-14, and 16-21 are 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)(l )(iv). See
37 C.F.R. § 41.50(±).
AFFIRMED
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