11146813 (B.P.A.I. Aug. 15, 2011)

Ex Parte Matlack

Board of Patent Appeals and InterferencesAug 15, 2011

11146813 (B.P.A.I. Aug. 15, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/146,813 06/07/2005 Floyd Kent Matlack 67010-170; H2782-PP 5899 26096 7590 08/15/2011 CARLSON, GASKEY & OLDS, P.C. 400 WEST MAPLE ROAD SUITE 350 BIRMINGHAM, MI 48009 EXAMINER DAVIS, MARY ALICE ART UNIT PAPER NUMBER 3748 MAIL DATE DELIVERY MODE 08/15/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte FLOYD KENT MATLACK ____________________ Appeal 2009-010275 Application 11/146,813 Technology Center 3700 ____________________ Before STEVEN D.A. McCARTHY, STEFAN STAICOVICI, and FRED A. SILVERBERG, Administrative Patent Judges. SILVERBERG, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-010275 Application 11/146,813 2 STATEMENT OF THE CASE Floyd Kent Matlack (Appellant) seeks our review under 35 U.S.C. § 134 of the final rejection of claims 1-23. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION Appellant’s claimed invention is directed to a pump system which may be interchangeably utilized for either a clockwise or counterclockwise propeller rotation (Spec. 1: para. [0001]). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A pump system comprising: a pump housing; a seal plate mountable to said pump housing; a first gear system contained at least partially within said pump housing; and a second gear system contained at least partially within said pump housing, said second gear system in meshing engagement with said first gear system to pump a fluid from a pump inlet through said seal plate to a pump discharge through said seal plate wherein one of said first gear system and said second gear system is in communication with a drain aperture, the other of said first gear system and said second gear system in communication with a drive aperture through said seal plate. Appeal 2009-010275 Application 11/146,813 3 THE REJECTIONS The following rejections by the Examiner are before us for review: 1. Claims 1-10, 14 and 16-18 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Hoffer (US 3,076,413, issued Feb. 5, 1963) in view of Caslow (US 4,245,969, issued Jan. 20, 1981). 2. Claims 11-13, 15 and 19-21 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Hoffer in view of Caslow, and further in view of Taylor (US 2,258,077, issued Oct. 7, 1941). 3. Claim 22 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Hoffer in view of Caslow and Taylor, and further in view of Santerre (US 2005/0166705 A1, published Aug. 4, 2005). 4. Claim 23 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Hoffer in view of Caslow, and further in view of Santerre. ISSUES The issues before us are: (1) whether the Examiner erred in concluding that the combined teachings of Hoffer and Caslow would have led a person having ordinary skill in the art to a pump inlet extending through a seal plate, as called for in independent claims 1 and 14 (App. Br. 7), and (2) whether the Examiner erred in concluding that the combined teachings of Hoffer and Caslow would have led a person having ordinary skill in the art to a pump inlet extending through a seal plate, as called for in independent claim 11 (App. Br. 9). Appeal 2009-010275 Application 11/146,813 4 ANALYSIS Rejections of claims 1-10, 14 and 16-18 over Hoffer and Caslow; and claims 11-13, 15 and 19-21 over Hoffer, Caslow and Taylor Claims 1-10, 14 and 16-18 Appellant contends that the combination of Hoffer and Caslow is improper (App. Br. 6). The Examiner found that (1) “Hoffer fails to disclose a seal plate mountable to the housing and mounting pad with each gear system, inlet, discharge, drive and drain apertures passing therethrough” (Ans. 3-4), and (2) “Caslow teaches a pump system including a seal plate (36) mountable to the housing (60) and mounting pad (left face of 36, Fig. 1) with each gear system, inlet (44), discharge (46), drive and drain apertures (31 and connected to 29) passing therethrough” (Ans. 4) (emphasis bolded). The Examiner concluded that “[i]t would have been obvious for a person having ordinary skill in the art . . . to utilize a seal plate as described above in order to cheapen the pump construction through a simplified construction” (id.). Independent claims 1 and 14 call for, inter alia, a pump inlet extending through a seal plate. Hoffer describes an end cap 11 having a fluid inlet passage 15 (col. 2, ll. 53-54), and a drive shaft 22 engaging one of the meshed gear pump gears 24, 25, which form elements of the cartridge 12, wherein the drive shaft 22 is located to engage the lowermost of the gears (col. 2, ll. 63-69). Hoffer describes that the drive shaft 22 is rotatable in both a clockwise and a counterclockwise direction (col. 1, ll. 46-55). Referring to Figure 1, Hoffer describes the following regarding the drive shaft 22 engaging gear 24 instead of gear 25: Appeal 2009-010275 Application 11/146,813 5 However, in any installation in which the drive shaft 22 must rotate counterclockwise, said shaft is engaged with the gear 24 which must rotate counterclockwise. This change of having the shaft 22 engage gear 24 instead of gear 25, is effected by installing the cartridge 12 and the cap plate 11 in position turned 180° from those shown. (Col. 3, ll. 1-7). When Hoffer is modified by the teachings of Caslow, as proffered by the Examiner, both the inlet passage 15 and the drive shaft 22 would extend through the seal plate. Hoffer describes changing the rotation of the drive shaft 22 from a clockwise to a counterclockwise direction by rotating the cartridge 12 to switch which gear 24, 25 the drive shaft 22 engages, and by rotating the cap 11, and hence the inlet passage 15. Since after rotating the cartridge 12 the drive shaft 22 still engages the lowermost gear, but the position of the inlet passage 15 would be rotated 180o, we fail to see how both the inlet passage 15 and the drive shaft 22 would be properly oriented so as to extend through the seal plate of Hoffer and Caslow. See Tec Air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999) (where the proposed modification would render the prior art invention being modified inoperable for its intended purpose, the proposed modification would not have been obvious.) We reverse the rejection of independent claims1 and 14 and dependent claims 2-10 and 16-18. Claims 11-13, 15 and 19-21 The Examiner has not relied on Taylor for any teaching that would remedy the deficiency in the combined teachings of Hoffer and Caslow, as set forth supra regarding independent claims 1 and 14 (Ans. 6). Appeal 2009-010275 Application 11/146,813 6 Thus, we are constrained to reverse the rejection of independent claim 11, and claims 12, 13, 15 and 19-21, which depend from independent claims 1, 11 and 14, respectively. Rejections of claim 22 over Hoffer, Caslow, Taylor and Santerre; and claim 23 over Hoffer, Caslow and Santerre The Examiner has not relied on Santerre for any teaching that would remedy the deficiency in the combined teachings of Hoffer and Caslow, as set forth supra regarding independent claim 1 (Ans. 7). Thus, we are constrained to reverse the rejections of dependent claims 22 and 23. CONCLUSIONS The Examiner has erred in concluding that the combined teachings of Hoffer and Caslow would have led a person having ordinary skill in the art to a pump inlet extending through a seal plate, as called for in independent claims 1 and 14. The Examiner has erred in concluding that the combined teachings of Hoffer and Caslow would have led a person having ordinary skill in the art to a pump inlet extending through a seal plate, as called for in independent claim 11. DECISION The decision of the Examiner to reject claims 1-23 is reversed. REVERSED Appeal 2009-010275 Application 11/146,813 7 mls