Ex Parte Nigrin

Board of Patent Appeals and Interferences

Jan 25, 2011

10789469 (B.P.A.I. Jan. 25, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte UWE NIGRIN
____________

Appeal 2009-009205
Application 10/789,469
Technology Center 3700
____________

Before STEVEN D.A. McCARTHY, MICHAEL W. O’NEILL, and
STEFAN STAICOVICI, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown in the PTOL-90A cover letter attached to this decision.

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Application 10/789,469

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STATEMENT OF THE CASE
Uwe Nigrin (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting:
(1) claims 1, 2, 6, 8, 9, and 13 under 35
U.S.C. § 103(a) as unpatentable over Taguchi
(Japanese Patent Application Publication No.
JP 62-000684 A, published Jan. 6, 1987); 2
(2) claims 1-6 and 8-13 under 35 U.S.C.
§ 103(a) as unpatentable over Udono (Japanese
Patent Application Publication No. JP 56-151296
A, published Nov. 24, 1981);3, 4
(3) claims 7 and 14 under 35 U.S.C.
§ 103(a) as unpatentable over Udono and Grossner
(German Patent Application Publication No.
DE-10 2005 007 602 A1, published Aug. 24,
2006).

We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.
The Invention
The claims on appeal relate to a vane cell pump for delivering fluids.
Claims 1 and 8, reproduced below, are representative of the subject
matter on appeal.
1. A vane cell pump for delivering fluids,
comprising a rotor, a cam ring and a plurality of
vanes which are pre-tensioned by means of spring
elements, the spring elements being an integral
part of the rotor, wherein the rotor is made of

2 Our citations are to the English translation made of record July 9, 2008.
3 We have consolidated the Examiner’s rejection of claims 1-4, 6, 8-11, and
13 on pages 4-5 of the Examiner’s Answer and the Examiner’s rejection of
claims 5 and 12 on page 5 of the Examiner’s Answer into a single rejection
as both rejections are under 35 U.S.C. § 103(a) as unpatentable over Udono.
4 Our citations are to the English translation made of record July 9, 2008.

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Application 10/789,469

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plastic and the spring elements are captively
molded into the rotor.

8. A vane cell pump for delivering fluids,
comprising
a plastic rotor having integrated spring
elements captively molded into the rotor,
a cam ring, and
a plurality of vanes whereby the vanes are
pre-tensioned by said spring elements.

OPINION
Issue
The determinative issue in this appeal is:
Did the Examiner err in determining that it would have been obvious
to a person of ordinary skill in the art to modify the rotor of the vane cell
pump of either Taguchi or Udono to be made of plastic and to have integral
spring elements “captively molded” (App. Br. 11) therein based upon the
case law of In re Leshin, 277 F.2d 197, 199 (CCPA 1960)?
Analysis
Appellant contends that neither Taguchi nor Udono discloses or
suggests spring elements which are captively molded into the rotor and are
an integral part of the rotor as recited in independent claims 1 and 8. App.
Br. 5 and 7. Appellant also contends that the recitations of captively molded
and integral recite physical conditions which limit the claim and are not just
a product-by-process limitation as suggested by the Examiner on page 6,
lines 1-5, of the Final Office Action mailed Nov. 27, 2007. Id. In view of
the Examiner’s citation to In re Hotte, 475 F.2d 644, 647 (CCPA 1973), on
page 2, lines 4-5, of the Advisory Action mailed Feb. 1, 2008, for the
proposition that the word “‘integral’ is sufficiently broad to embrace
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constructions united by such means a fastening and welding,” Appellant
contends that neither Taguchi nor Udono teaches or suggests that the spring
elements are an integral part of the rotor since the spring elements are not
fastened or welded or otherwise united with the rotor. App. Br. 6 and 8.
Appellant also contends that neither Taguchi nor Udono discloses that the
rotor is made of plastic and that making the rotor of plastic is not merely a
design feature which would be obvious to a person of ordinary skill in the art
because the spring elements can only be captively molded to be an integral
part of the rotor if the rotor is made of plastic. App. Br. 7 and 8-9.
The Examiner’s position is that both Taguchi and Udono disclose the
invention substantially as claimed, but both Taguchi and Udono fail to
explicitly disclose “the rotor being made of plastic.” Ans. 3 and 4. The
Examiner posits that it would have been obvious to a person of ordinary skill
in the art to have made the rotors of Taguchi and Udono of a plastic material
because making the rotor of a plastic material is “merely design parameters,
depending on temperature, pressure, or stress acted/applied on the rotor
depending on being used for a particular purpose or solving a stated
problem.” Id. The Examiner also posits that nothing in the record
establishes that the claimed plastic rotor presents a novel or unexpected
result and cites the case law of In re Kuhle, 526 F.2d 553 (CCPA 1975).
Ans. 3-4 and 4. The Examiner also posits that “the selection of a know[n]
material based upon its suitability for the intended use is a design choice
consideration within the skill in the art” and cites to Leshin. Ans. 4.
Taguchi discloses a first embodiment of a vane type compressor
which includes a cylinder 11 having a rotor 14 eccentrically provided inside
thereof. Fig. 1 and translation 5. The rotor 14 has slits 16 in a radial pattern
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in which vanes 19 are located so as to be able to rise and sink freely. Fig. 1
and translation 5-6. When the vane 19 has fully sunk in the slit 16, a
corrugated spring 17 attached to a holding metal fitting 18 is immediately
adjacent the end of the vane 19 and is deformed for maximum spring
tension. Fig. 2 and translation 6. When the vane 19 is protruded by the
maximum stroke, the corrugated spring 17 is separated from the end of the
vane 19 and is not deformed so that there is no spring tension. Id. Taguchi
is silent as to what material the rotor is made of.
Udono discloses a first conventional embodiment of a vane cell pump
P including a rotor 3 and a cam ring 5. Fig. 1 and translation 2. The rotor 3
has grooves 1 spaced in the circumferential direction and in which vanes 2
are located. Fig. 1 and translation 2. The vanes 2 are slidably and radially
biased in the grooves via springs 6 so as to press the vanes 4 against the
inner circumferential surface 4 of the cam ring 5. Fig. 1 and translation 2-3.
Thus, the vanes 4 remain in contact with the cam ring 5 at all times
notwithstanding the centrifugal force generated by the rotations of rotor 3 in
order to prevent back flow of hydraulic oil when the vane cell pump P is in
operation. Fig. 2 and translation 3. Udono also discloses first and second
embodiments of a vane cell pump P having a rotor 3, cam ring 5, and vanes
2. Figs. 4-6, Figs. 7 and 8, and translation 4-7. The vanes 4 are located in
circumferentially space grooves 1 and are radially biased against the inner
circumferential surface 4 of the cam ring 5 by vane biasing bodies 23. Figs.
4-6, Figs. 7 and 8, and translation 4 and 6. The vane biasing body 23
includes an annular ring body 24 from which elastic protrusions 25 extend.
Figs. 4-6, Figs. 7 and 8, and translation 4-5 and 6. The annular ring body 24
of the vane biasing body 23 is housed within an annular concave part 22 of
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the rotor 3 and the elastic protrusions 5 rest against the outer circumference
of the rotor 3. Fig. 5, Fig. 7, and translation 4-5 and 6. In neither the first
conventional embodiment nor the first and second embodiments of the
present invention is there any disclosure as to what material the rotor is
made of.
We agree with Appellant that it would not have been obvious to one
of ordinary skill in the art to make the rotors of Taguchi and Udono of a
plastic material. The Examiner’s reliance upon Leshin is misplaced. In
Leshin, the container-dispenser at issue was of a type made of plastics prior
to the invention. Thus, the selection of a known plastic to replace the plastic
of a prior art container-dispenser was considered to be obvious since it is
well within the skill of an ordinary skilled artisan to replace one plastic with
another plastic depending upon the application. See id. at 199. However,
the present case is distinguishable from Leshin because here the Examiner
has not established that it is known to make rotors of plastics so that the
Examiner would be merely replacing the plastics of a known plastic rotor
with another known plastic suitable for a particular application. Since the
Examiner has misapplied Leshin, we are not persuaded that a person of
ordinary skill in the art would have found it obvious to modify the rotor of
either Taguchi or Udono to be made of plastic.
In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 1, 2, 6, 8, 9, and 13 under 35 U.S.C. § 103(a) as unpatentable over
Taguchi and the Examiner’s rejection of claims 1-6 and 8-13 under 35
U.S.C. § 103(a) as unpatentable over Udono. Since the Examiner has not
found that Grossner cures the deficiencies of Udono and since the
Examiner’s rejection of claims 7 and 14 is based upon the same erroneous
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obviousness conclusion as the Examiner’s rejection of claims 1-6 and 8-13
under 35 U.S.C. § 103(a) as unpatentable over Udono, we also do not sustain
the Examiner’s rejection of claims 7 and 14 under 35 U.S.C. § 103(a) as
unpatentable over Udono and Grossner.

CONCLUSION
The Examiner erred in determining that it would have been obvious to
a person of ordinary skill in the art to modify the rotor of the vane cell pump
of either Taguchi or Udono to be made of plastic based upon Leshin and
thus, have integral spring elements captively molded therein.

DECISION
We reverse the Examiner’s rejection of: (1) claims 1, 2, 6, 8, 9, and 13
under 35 U.S.C. § 103(a) as unpatentable over Taguchi; (2) claims 1-6 and
8-13 under 35 U.S.C. § 103(a) as unpatentable over Udono; and (3) claims 7
and 14 under 35 U.S.C. § 103(a) as unpatentable over Udono and Grossner.

REVERSED

Klh

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