Ex Parte Paluncic et al

Patent Trial and Appeal Board

Jul 20, 2017

13324200 (P.T.A.B. Jul. 20, 2017)

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.
13/324,200 12/13/2011 Zdravko Paluncic LIND 9047 8462
321 7590 07/24/2017
SFNNTOFR POWFR N T T P EXAMINER
100 NORTH BROADWAY KASTURE, DNYANESH G
17TH FLOOR
ST LOUIS, MO 63102 ART UNIT PAPER NUMBER
3746
NOTIFICATION DATE DELIVERY MODE
07/24/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
uspatents @ senniger.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ZDRAVKO PALUNCIC, ANDREAS SCHOENFELD,
and MILOS CVETANOVIC
Appeal 2016-005268
Application 13/324,200
Technology Center 3700
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
BRADLEY B. BAYAT, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants1 seek our review under 35 U.S.C. § 134 of the Final
Rejection of claims 1 and 4—14. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002).
SUMMARY OF DECISION
We AFFIRM.
1 The Appellants identify Lincoln GmbH, as the real party in interest. Br. 1.
Appeal 2016-005268
Application 13/324,200
THE INVENTION
Claim 1 is representative, and is reproduced below with bracketed
numerals added:
1. A lubricant pump for delivering lubricant to at least one
lubricating point, featuring a lubricant container, a pump unit, a
drive assigned to the pump unit, at least one lubricant outlet and
a control unit assigned to the drive, characterized by:
[1] at least one heating element is also provided and can be
actuated by an actuating control unit consisting of the control unit
and/or another control unit;
[2] at least one temperature sensor is also provided and
connected to the actuating control unit in order to actuate the at
least one heating element in dependence on the temperature
determined by the temperature sensor; and
[3] at least one pressure sensor is also provided, assigned to
the at least one lubricant outlet, and connected to the actuating
control unit in order to actuate the at least one heating element in
dependence on the lubricant pressure determined by the pressure
sensor.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Hoekstra
Stiegelmann et al.
(“Stiegelmann”)
US 3,414,522
US 5,533,800
Dec. 3, 1968
July 9, 1996
Dumas et al. US 5,720,721 Feb. 24, 1998
(“Dumas”)
Paluncic et al. US 6,244,387 B1 June 12, 2001
(“Paluncic”)
Nagashima
Beattie, JR.
(“Beattie”)
US 2007/0229611 Al Oct. 4, 2007
US 2009/0257887 Al Oct. 15, 2009
2
Appeal 2016-005268
Application 13/324,200
Takayanagi US 2011/0204633 A1 Aug. 25,2011
The following rejections are before us for review:
1. Claims 1,9, 10, and 11 are rejected under 35 U.S.C. § 103 as being
unpatentable over Beattie, Dumas, Takayanagi, Applicant Admitted Prior
Art (“AAPA”), and Hoekstra.
2. Claims 4 and 12 are rejected under 35 U.S.C. § 103 as being
unpatentable over Beattie, Dumas, Takayanagi, AAPA, Hoekstra,
Steigelmann, and Paluncic.
3. Claims 5—7 are rejected under 35 U.S.C. § 103 as being unpatentable
over Beattie, Dumas, Takayanagi, AAPA, Hoekstra, Steigelmann, Paluncic,
and Nagashima.
4. Claim 8 is rejected under 35 U.S.C. § 103 as being unpatentable over
Beattie, Dumas, Takayanagi, AAPA, Hoekstra, Steigelmann, and Paluncic.
5. Claims 13 and 14 are rejected under 35 U.S.C. § 103 as being
unpatentable over Beattie, Dumas, Takayanagi, AAPA, Hoekstra,
Steigelmann, and Paluncic.
ISSUES
Did the Examiner err in rejecting claims 1,9, 10, and 11 under
35 U.S.C. § 103(a) as being unpatentable over Beattie, Dumas, Takayanagi,
Applicant Admitted Prior Art (“AAPA”), and Hoekstra; claims 4 and 12
under 35 U.S.C. § 103(a) as being unpatentable over Beattie, Dumas,
Takayanagi, AAPA, Hoekstra, Steigelmann, and Paluncic; claims 5—7 under
35 U.S.C. § 103(a) as being unpatentable over Beattie, Dumas, Takayanagi,
AAPA, Hoekstra, Steigelmann, Paluncic, and Nagashima; claim 8 under
3
Appeal 2016-005268
Application 13/324,200
35 U.S.C. § 103 as being unpatentable over Beattie, Dumas, Takayanagi,
AAPA, Hoekstra, Steigelmann, and Paluncic; and claims 13 and 14 under
35 U.S.C. § 103 as being unpatentable over Beattie, Dumas, Takayanagi,
AAPA, Hoekstra, Steigelmann, and Paluncic?
FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.
ANALYSIS
The rejection of claims 1, 9, 10, and 11 under 35 U.S.C. § 103(a) as being
unpatentable over Beattie, Dumas, Takayanagi, AAPA, and Hoekstra.
The Appellants argue that the Examiner has failed to establish a prima
facie case of obviousness of claim 1 (Br. 2—8). According to the Appellants,
the cited references do not disclose limitation [3] of claim 1, and “the
Examiner has failed to provide an articulated reasoning with rational
underpinning to support a conclusion of obviousness” {id. at 7).
We disagree.
The Examiner’s position is that Beattie discloses all of the structural
limitations of claim 1, except for “at least one pressure sensor . . .” (Final
Act. 2—3). The Examiner finds a pressure sensor disclosed at column 6,
lines 3—8 of Dumas2 (Final Act. 3—4). The Examiner also finds that the
claim 1 “limitation of actuating the heating element based on pressure is
2 The Examiner also finds, in the alternative, that Applicant Admitted Prior
Art (“AAPA”) discloses limitation [3]. Because we sustain the Examiner’s
findings in Dumas, we do not address this alternative finding.
4
Appeal 2016-005268
Application 13/324,200
simply a manner in which the apparatus is operated” that does not patentably
distinguish over the prior art {id. at 11). Nevertheless, the Examiner finds
that Hoekstra discloses that “it is well known to turn a heater up or down (on
or off) based on fluid pressure readings for the purpose of controlling the
viscosity and flow rate” (id.; see also Ans. 6). According to the Examiner, it
would have been obvious to modify the pump disclosed by Beattie to
incorporate a pressure sensor as taught by Dumas in order to get “an
indicator of viscosity to ensure that it is not too high to risk
malfunction impairment of the pump, and if it is too high (at low
temperatures), to raise the temperature by turning on the heater so that the
viscosity lowers to acceptable levels” (Final Act. 4). The Examiner finds
motivational evidence in Takayanagi {id. at 3) and Hoekstra {id. at 4). The
Examiner cites paragraph 6 of Takayanagi, which discloses that excessively
high lubricant viscosity can cause equipment malfunction or leakage of
lubricant. According to the Examiner, the cited disclosure in Takayanagi
“provides motivation for one of ordinary skill to turn on the heater to reduce
the viscosity if the pressure (load) sensor readings are too high” (Ans. 3).
The Examiner also cites column 5, lines 43 46 and column 7, lines 50—62 of
Hoekstra, which disclose a pressure controller that measures fluid pressure
and regulates fluid viscosity by controlling a heater (Ans. 6).
The Appellants argue, as the Examiner has acknowledged, that
“Beattie does not disclose or suggest a pressure sensor” (Br. 3). The
Appellants also argue that “Dumas does not disclose a heating unit” {id.
at 5). As explained above, the Examiner finds the “heating element” of
claim 1 in Beattie, not Dumas. In effect, the Appellants address the
5
Appeal 2016-005268
Application 13/324,200
teachings of the references individually, failing to address the Examiner’s
reasoning that one of ordinary skill in the art would have been led by the
combination of the references to the claimed method.
According to the Appellants, in the Examiner’s proposed
modification, “the Beattie control would only turn the pump on or off and
would not actuate the heating element in response to the lubricant pressure”
(id. at 4) and “the modified pump control would either alarm if the measured
pressures were outside a desired range or the pump speed would be changed
just as in Dumas” (id. at 5). But the question is not whether the bodily
incorporation of the pressure sensor of Dumas into the Beattie control
system would yield the claimed invention, but whether it would have been
obvious to those of ordinary skill in the art. Cf. In re Keller, 642 F.2d 413,
425 (CCPA 1981)(“The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference; nor is it that the claimed invention must be expressly
suggested in any one or all of the references. Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.”).
Here, the relationship between temperature, pressure, and viscosity of
a fluid is thoroughly documented by the Examiner’s findings. Beattie
discloses an oil pumping system comprising a thermostatically controlled
heater that keeps the oil at a consistent operating temperature (Beattie paras.
17—19). Dumas discloses a pump comprising pressure sensors that detect
viscosity changes (Dumas col. 6,11. 3—8). Takayanagi discloses that
excessively high viscosity can cause equipment malfunction or leakage of
6
Appeal 2016-005268
Application 13/324,200
lubricant (Takayanagi, para. 6). Hoekstra discloses that viscosity of a fluid
can be reduced using a heater (Hoekstra col. 7,11. 50-62). Thus, the
Examiner has clearly articulated reasoning why a person of ordinary skill in
the art would have found it obvious “to turn on the heater to reduce the
viscosity if the pressure (load) sensor readings are too high” (Ans. 3),
namely in order to avoid equipment malfunction or leakage of lubricant. In
view of these facts, we find that a prima facie case of obviousness has been
established.
As to the concern over hindsight (Br. 4), that is indeed something to
avoid, but “[r]igid preventative rules that deny factfinders recourse to
common sense, however, are neither necessary under our case law nor
consistent with it.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
“Common sense teaches, however, that familiar items may have obvious
uses beyond their primary purposes, and in many cases a person of ordinary
skill will be able to fit the teachings of multiple patents together like pieces
of a puzzle.” Id. at 420-421.
We do not find that the Appellants have made the case that the
claimed subject matter is more than a combination of familiar elements each
performing its known function as evidenced by the prior art disclosures.
“[W]hen a patent “simply arranges old elements with each performing the
same function it had been known to perform” [(Sakraida v. Ag Pro, Inc.,
425 U.S. 273, 282 (1976))] and yields no more than one would expect from
such an arrangement, the combination is obvious.” KSR, 550 U.S. at 417.
In that regard, the Appellants have not come forward with sufficient
argument and/or evidence in support of finding that the combination yields a
7
Appeal 2016-005268
Application 13/324,200
result one of ordinary skill in the art would not have expected. No
secondary factors to support nonobviousness have been shown.
For the foregoing reasons, the Appellants’ arguments as to error in the
rejection are unpersuasive. Accordingly, the rejection of claim 1 under
35 U.S.C. § 103(a) is sustained.
The rejection of claims 4 and 12 under 35 U.S.C. § 103(a) as being
unpatentable over Beattie, Dumas, Takayanagi, AAPA, Hoekstra,
Steigelmann, and Paluncic.
The rejection of claims 5—7 under 35 U.S.C. § 103(a) as being unpatentable
over Beattie, Dumas, Takayanagi, AAPA, Hoekstra, Steigelmann, Paluncic,
and Nagashima.
The rejection of claim 8 under 35 U.S.C. § 103 as being unpatentable over
Beattie, Dumas, Takayanagi, AAPA, Hoekstra, Steigelmann, and Paluncic.
The rejection of claims 13 and 14 under 35 U.S.C. § 103 as being
unpatentable over Beattie, Dumas, Takayanagi, AAPA, Hoekstra,
Steigelmann, and Paluncic.
The Appellants make the same argument against each of these
rejections; that is, given that claim 1 is patentable, so are the claims
dependent therefrom. See Br. 8—10. The argument is unpersuasive for the
reasons stated herein. Accordingly, these rejections are sustained.
CONCLUSIONS
The rejection of claims 1,9, 10, and 11 under 35 U.S.C. § 103(a) as
being unpatentable over Beattie, Dumas, Takayanagi, AAPA, and Hoekstra
is sustained.
The rejection of claims 4 and 12 under 35 U.S.C. § 103(a) as being
unpatentable over Beattie, Dumas, Takayanagi, AAPA, Hoekstra,
Steigelmann, and Paluncic is sustained.
8
Appeal 2016-005268
Application 13/324,200
The rejection of claims 5—7 under 35 U.S.C. § 103(a) as being
unpatentable over Beattie, Dumas, Takayanagi, AAPA, Hoekstra,
Steigelmann, Paluncic, and Nagashima is sustained.
The rejection of claim 8 under 35 U.S.C. § 103 as being unpatentable
over Beattie, Dumas, Takayanagi, AAPA, Hoekstra, Steigelmann, and
Paluncic is sustained.
The rejection of claims 13 and 14 under 35 U.S.C. § 103 as being
unpatentable over Beattie, Dumas, Takayanagi, AAPA, Hoekstra,
Steigelmann, and Paluncic is sustained.
DECISION
The decision of the Examiner to reject claims 1 and 4—14 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).
AFFIRMED
9