Ex Parte Nagel

Board of Patent Appeals and Interferences

Nov 13, 2009

11787948 (B.P.A.I. Nov. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL NAGEL
__________

Appeal 2009-13044
Application 11/787,948
Technology Center 2800
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Decided: November 13, 2009
____________

Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 the final rejection of
claims 15, 16, 18, and 19. We have jurisdiction over the appeal pursuant
to 35 U.S.C. § 6(b).
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We AFFIRM.
Appellant’s invention is directed to method using a pump which
includes the step of printing a sheet by applying the pump’s drive fluid onto
the sheet (claim 15).
Claim 15 is illustrative:
15. A method for using a pump, the method comprising the following
steps:

driving the pump with a drive fluid; and

printing a sheet by applying the drive fluid onto the sheet or
varnishing the sheet by applying the drive fluid onto the sheet.

The Examiner relies on the following prior art references as evidence
of unpatentability:
Neal 3,065,693 Nov. 27, 1962
Hirvonen 4,547,134 Oct. 15, 1985

Appellant appeals the following rejection:
1. Claims 15, 16, 18, and 19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Neal in view of Hirvonen.
Appellant argues the claims as a group. Accordingly, we select claim
15 as representative of the group on which to render our Decision.

ISSUES
1. Has Appellant shown that the Examiner reversibly erred in
determining that the combined teachings of Neal and Hirvonen would
have suggested “printing a sheet by applying the drive fluid [of the
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pump] onto the sheet” as recited in claim 15? We decide this issue in
the negative.
2. Has Appellant shown that the Examiner reversibly erred in
determining that substituting Hirvonen’s dosing device for Neal’s
pump would have been obvious because such a substitution changes
the principle of operation of Neal’s printing press? We decide this
issue in the negative.

PRINCIPLES OF LAW
The applicant bears the procedural burden of showing error in the
Examiner’s rejections. See, e.g., In re Kahn, 441 F.3d 977, 985-86 (Fed.
Cir. 2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness”)
(citation and internal quote omitted).
The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art. In re
Keller, 642 F.2d 413, 425 (CCPA 1981).

FACTUAL FINDINGS (FF)
We adopt the Examiner’s findings on pages 3-4 of the Answer as our
own. We add the following findings primarily for completeness.
1. With the exception of the fluid used to drive the dosing device,
Appellant does not contest that Hirvonen’s dosing device operates in
the same manner as Appellant’s claimed method of driving the pump.
2. Hirvonen teaches that the dosing device may be used to pump a liquid
or slurry (col. 2, ll. 4-8). Hirvonen teaches that the piston stroke
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frequency and thereby the volume flow of the liquid or slurry, remains
constant in spite of variation in the feed pressure and viscosity of the
liquid or slurry (col. 2, ll. 42-45). Hirvonen discloses adjusting the
feed rate of the device by using a time relay 10 to change the stroke
frequency (and thus volume flow of liquid per unit time) of the piston
(col. 3, ll. 39-41; 64-67). Hirvonen further discloses using valves to
control the flow of the liquid to and from the dosing device based on
time relays 10 and switches 4 (col. 3, ll. 36-40; Fig. 1). Hirvonen
discloses that the dosing device can more precisely, more rapidly, and
more reliably dose liquid than previously accomplished (col. 2, ll. 46-
48). The liquid fed by the dosing device determines the material used
to make the device (col. 3, ll. 34-35). In other words, the dosing
device may be constructed to dose practically any liquid or slurry
including viscous liquids or slurries.
3. Hirvonen discloses that the device is operated solely by the pressure
of the liquid or slurry such that no external source of energy is
required for driving the device (col. 4, ll. 26-29).
4. Neal discloses a printing machine ink pumping system (col. 1, ll. 9-
10). Neal discloses that the pumps include pistons and cylinders (12,
13), valves (32) for controlling the flow of ink, bell crank (23) for
controlling the pump piston stroke, and cams for controlling the
pumping (col. 3, ll. 17-75; Figs. 2-4). Neal discloses that it is known
in the art that ink has a “somewhat viscous character” and that
printing machines generally use a positive displacement pump
consisting of a cylinder and a piston to meter the ink (col. 1, ll. 25-31).
Neal further discloses that because the inks are viscous and tend to
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settle, difficulty is experienced in maintaining the desired regulated
rates of flow (col. 1, ll. 31-35).
5. The Examiner states that:
It would have been obvious to a person having ordinary skill in the
art at the time the invention was made to modify Neal to combine the
metering device of Hirvonen, including the pump drive fluid and
pump driven by the drive fluid, because a person having ordinary skill
in the art would [have] recognize[d] that this [modification] would
[have] predictably provide[d] the apparatus of Neal with a metering
device that provides completely automatic, precise, and rapid-acting
metering with a constant volume flow despite variations in feed
pressure [as taught by Hirvonen].

(Ans. 4).
Appellant does not contest the Examiner’s reason for combining
Hirvonen’s dosing device with Neal (Br. generally).

ANALYSIS
Issue (1): Printing a Sheet by Applying the Drive Fluid of the Pump to a
Sheet Claim Feature
Appellant argues that Hirvonen does not teach using a printing fluid
as the drive fluid of the dosing device (Br. 4-6). Appellant contends that
Hirvonen’s disclosure of using a “liquid or slurry” is too broad to constitute
a disclosure of the more specific printing fluid (Br. 4-5). Appellant contends
that Hirvonen and Neal fail to teach all the claimed features (i.e., printing a
sheet by applying the drive fluid of the pump onto the sheet) (Br. 6). We are
not persuaded.
Appellant’s arguments improperly focus on the teachings of the
references individually, instead of addressing what the combined teachings
would have suggested to one of ordinary skill in the art. Keller, 642 F.2d at
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425. Accordingly, Appellant has not shown error in the Examiner’s
determination that the teachings of Neal and Hirvonen, as a whole, would
have suggested using printing fluid (i.e., ink) as the dosing device drive
fluid.
Indeed, applying the proper obviousness standard, we are in full
agreement with the Examiner that using ink or printing fluid as the drive
fluid would have been obvious. Specifically, Neal recognizes that printing
fluids (i.e., inks) are viscous by nature (FF 4) and that pumps are used to
supply the ink to the fountain rollers of the machine.
Hirvonen discloses that the dosing device may be used to dose liquids
including viscous liquids, while maintaining the stroke frequency and
volume flow of the liquid (FF 2).
Appellant does not contest the Examiner’s reason for combining Neal
and Hirvonen (FF 5). Accordingly, once Neal’s device is modified to
accommodate Hirvonen’s dosing device for the Examiner’s undisputed
reasons, the teachings of the references, as a whole, would have suggested
using Neal’s viscous ink (i.e., printing fluid) as the drive fluid for
Hirvonen’s dosing device and the printing fluid in Neal’s printing machine.
Appellant’s arguments fail to show that the Examiner reversibly erred.

Issue (2): Proposed Combination Changes Neal’s Principle of Operation
Appellant contends that modifying Neal’s printing machine by
substituting Hirvonen’s dosing device for Neal’s ink pumps would change
the principle of operation of Neal’s pumps, which are driven in a very
specific manner by the press drive and the cams associated therewith and
have stroke volume that can be precisely set (Br. 6-7). Appellant’s argument
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focuses on Neal’s disclosure to use a press drive to power the pump as
evidence that substituting Hirvonen’s device that does not require an
external power source would change Neal’s principle of operation. We do
not agree.
Appellant does not dispute the Examiner’s reason for combining
Hirvonen’s dosing device with Neal’s printing press (FF 5). Neal teaches
using a pump arrangement to control the supply of ink to a printing press by
controlling the stroke of the pump, and valves (FF 4). Accordingly, Neal’s
principles of operation include providing ink to printing presses by pumps
using valves and controlling the piston stroke.
Similarly, Hirvonen discloses a dosing device for controlling the
supply of liquid by controlling the valves and stroke frequency of the device
(FF 2). Accordingly, modifying Neal’s printing ink pump arrangement by
substituting Hirvonen’s dosing device for Neal’s pump would not change the
principles of operation of Neal’s pump. The modified pumping arrangement
would still pump ink by control of the piston stroke frequency and valves,
but with the added benefits of reliably, precisely, and rapidly dosing the
printing fluid while not requiring an external power source, thereby making
the pump more efficient (FF 2 and 3).
Appellant has not shown error in the Examiner’s determination that
the claimed invention would have been obvious over the combined teachings
of Neal and Hirvonen.
We affirm the Examiner’s § 103 rejection of claims 15, 16, 18, and 19
over Neal in view of Hirvonen.

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DECISION
The Examiner’s decision 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)(2009).

ORDER
AFFIRMED

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