Ex Parte Rainville et alDownload PDFPatent Trial and Appeal BoardMay 27, 201612209492 (P.T.A.B. May. 27, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/209,492 09/12/2008 Joseph D. Rainville 104102 7590 05/27/2016 BrooksGroup 48685 Hayes Shelby Township, MI 48315 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. P002724-PTC-CHE 4609 EXAMINER 0 DONNELL, LUCAS J ART UNIT PAPER NUMBER 1726 MAILDATE DELIVERY MODE 05/27/2016 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 JOSEPH D. RAINVILLE and BENNO ANDREAS-SCHOTT Appeal2014-009075 Application 12/209,492 Technology Center 1700 Before, JEFFREY T. SMITH, ELIZABETH M. ROESEL, and JEFFREY R. SNAY, Administrative Patent Judges. ROESEL, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1-9 and 11-20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellants identify General Motors LLC as the real party in interest. App. Br. 5. Appeal2014-009075 Application 12/209,492 STATEivIENT OF THE CASE Claimed Invention The claimed subject matter relates to a centrifugal pump for pressurizing and circulating coolant in a fuel cell system. Spec. i-fi-f l, 3-5, 14. Claims 1, 11, and 15 are illustrative of the subject matter on appeal and are reproduced below from Appellants' Claims Appendix, with bold added for emphasis to identify disputed limitations: 1. A product comprising: a lower end unit of a fuel cell system, the lower end unit defining a volute end face of the lower end unit; and an impeller, the volute end face having a mouth and a working area extending from said mouth, said volute further having a reinforcement located on said working area of the volute, the reinforcement covering less than the entire volute end face; and said reinforcement juxtaposed with said impeller in a noncontacting relationship, wherein the reinforcement is constructed and arranged to protect the volute from damage from the impeller. 11. A method of making a product, the method compnsmg: providing a lower end unit of a fuel cell system, the lower end unit having an end face; forming a volute of a pump in the end face, the volute including a mouth adjacent a spiral depression of the volute and a working area extending from said mouth; reinforcing the working area to provide a reinforcement and wherein the reinforcement covers less than the entire end face; and 2 Appeal2014-009075 Application 12/209,492 providing an impeller, said impeller juxtaposed in a noncontacting relationship with said working area; wherein the working area is constructed and arranged to protect the volute from damage from the impeller. 15. A product comprising: a volute defined in an end face of a lower end unit of a fuel cell system, the volute being a part of a coolant pump having an impeller, the volute having a mouth and a working area adjacent said mouth; a reinforcement attached to the volute and covering the working area, the reinforcement being removable from the working area, and wherein the reinforcement covering less than the entire end face; and said impeller juxtaposed in a noncontacting relationship with said reinforcement wherein the reinforcement is constructed and arranged to protect the volute from damage from the impeller. App. Br. 36-39. Ross Eberhardt Barker Garrett et al. Grasso Roudnev et al. Yamamoto et al. us 4,076,450 us 4,245,952 us 4,556,364 us 4,995,892 References US 2002/0164512 Al US 2004/0126228 Al JP 62-068832 A Feb.28, 1978 Jan.20, 1981 Dec. 3, 1985 Feb. 26, 1991 ("Garrett") Nov. 7, 2002 July 1, 2004 ("Roudnev") Mar. 28, 1987 ("Yamamoto")2 2 An English language abstract of Yamamoto was made of record April 12, 2012. 3 Appeal2014-009075 Application 12/209,492 Rejections 1. Claims 1, 2, 4, 6-7, 9, 11-15, and 18-20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Barker, Grasso, Roudnev, and Ross. Final Action 8-14.3 2. Claims 1, 2, 4---6, 9, 11, 15-16, and 19-20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Barker, Grasso, Roudnev, Ross, and Yamamoto. Id. at 15-16. 3. Claims 3, 12, and 17 are rejected under 35 U.S.C. § 103(a) as unpatentable over Barker, Grasso, Roudnev, Ross, Yamamoto, and Eberhardt. Id. at 16-17. 4. Claims 7, 8, and 13 are rejected under 35 U.S.C. § 103(a) as unpatentable over Barker, Grasso, Roudnev, Ross, Yamamoto, and Garrett. Id. at 17-18. ANALYSIS Appellants' arguments are directed to independent claims 1, 11, and 15 only. Appellants present no separate argument regarding the dependent claims, including separately rejected dependent claims 3, 7, 8, 12, 13, and 17. See App. Br. 23-27. As a consequence, the dependent claims stand or fall with their parent independent claims, and we confine our discussion to independent claims 1, 11, and 15. The Examiner finds that Barker discloses a centrifugal pump having a volute and replaceable wear resistant members (pins) at the innermost edges of the spiral walls of the volute, where the wear resistant members may be removed and replaced when they become worn. Ans. 4---6 (citing Barker 3 Final Action dated September 17, 2013. 4 Appeal2014-009075 Application 12/209,492 Figs. 4, 5 and 6:21-39). The Examiner finds that Barker discloses the limitations of claims 1, 11, and 15, except for a fuel cell with a lower end unit having an end face (claims 1, 11, and 15), and a reinforcement completely covering the working area of the volute (claim 15). Id at 6. 4 Regarding the first of these deficiencies, the Examiner finds that Grasso discloses a fuel cell, a coolant system, and a centrifugal pump and further discloses a "lower end unit" with an "end face." Ans. 9 (citing Grasso i-f 5 and Fig. 3, element 54). Regarding the second deficiency, the Examiner finds that Roudnev discloses a casing liner that is wear resistant, replaceable, has the contour of the volute, and covers the entire volute surface working area. Ans. 7-8 (citing Roudnev Figs. 1, 4 and 5A-5H). In addition, the Examiner finds that Ross discloses volute surface edges (lips 23) that are wear resistant, replaceable, and on the volute surface. Ans. 8-9 (citing Ross Fig. 2, 1 :5-35, 1 :50-2:29). The Examiner concludes that it would have been obvious to have used the centrifugal pump of Barker in a fuel cell system such as Grasso to obtain the advantages disclosed in Barker. Ans. 10. The Examiner further concludes that it would have been obvious to modify the volute of Barker to comprise a wear resistant reinforcement covering the working area of the volute (claim 15) in order to provide wear protection for regions of the volute that are prone to wear, as taught by Ross and Roudnev. Ans. 11. In this regard, the Examiner also cites Barker's disclosure of a removable ring (annular wear plate 34) that covers the working area and may be faced with 4 The Examiner restated and clarified his findings in the Answer. See Ans. 2-3. 5 Appeal2014-009075 Application 12/209,492 hard tool steel. Id. at 4, 11 (citing Barker Fig. 1(element34), 1:19-28, 1 :67---68). Appellants argue that Roudnev and Ross do not teach or suggest the limitations of claims 1, 11, and 15 set forth in bold above. App. Br. 13-19. Appellants also challenge the adequacy of the Examiner's findings regarding a motivation to combine, id. at 19-23, and argue that, even if Barker, Grasso, Roudnev, and Ross, were combined, the combination would not result in claims 1, 11, or 15, id. at 23. Appellants' arguments fail to identify a reversible error in the Examiner's rejections of claims 1, 11, and 15. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[E]ven assuming that the examiner had failed to make a prima facie case, the Board would not have erred in framing the issue as one of 'reversible error."'). Appellants do not identify reversible error in the Examiner's determination that Appellants' claimed improvements were known in the art of centrifugal pumps and would have been obvious to apply to centrifugal pumps used in a fuel cell. Regarding the limitations of claims 1 and 11 argued by Appellants, App. Br. 14, 16, Appellants do not identify reversible error in the Examiner's finding that these limitations read on structures disclosed by each of Barker, Ross, and Roudnev. Ans. 3-5, 7-9, 18-20. The Appeal Brief does not address the Examiner's finding that Barker's disclosure of replaceable reinforcement pins 70 is sufficient to teach "a reinforcement located on said working area of the volute, the reinforcement covering less than the entire volute end face" (claim 1) and "reinforcing the working area to provide a reinforcement and wherein the reinforcement covers less than the entire end face" (claim 11). Id. at 4--5, 6 Appeal2014-009075 Application 12/209,492 18. The Reply Brief argues that Barker does not teach the limitations of claims 1, 11 and 15 because Barker's pins 70 abut the outermost trailing edges of the impeller blades, whereas the claims recite a non-contacting relationship between the reinforcement and the impeller. Reply Br. 4--5 (citing Barker 6:24--28, 6:32-36). Appellants' reply argument does not, however, address Barker's teaching that steel protective members, e.g., removable pins 70, abut the radially innermost edges of the spiral walls 30 of the volute casing 14, as shown in Figure 5. Barker Fig. 5, 6:32-39. It is readily apparent from Barker Figure 5 that pins 70 that abut volute walls 30 are in a non-contacting relationship with impeller blades 18. Appellants do not identify reversible error by arguing that Roudnev fails to teach a reinforcement covering less than the entire volute end face. App. Br. 14, 16. The Examiner finds that Roudnev discloses a reinforcement in the form of pump casing liner 10. Ans. 7. The Examiner finds that Roudnev's casing liner "covers the volute working area but does not completely cover the volute 'end face' because the liner only covers the internal cavity of the end face surrounding the impeller," where the "end face" of Roudnev includes the pump casing. Id. at 19; see also id. at 12. Appellants do not address the Examiner's finding, which is adequately support by Roudnev. See, e.g., Roudnev Fig. 1, i-f 28 (liner body 10 is "sized to be received in the pump casing" and "may be comprised of two clam- shell-like halves 12, 14 that are sized to nest in the respective halves of a pump casing"). Appellants also do not identify reversible error by arguing that Ross' "volute lips 23 are not placed on top of the volute surface and do not extend radially from the mouth." App. Br. 14, 16. Claims 1 and 11 recite "a 7 Appeal2014-009075 Application 12/209,492 working area extending from said mouth" and a reinforcement "on" the working area of the volute and covering "less than the entire [volute] end face." Id. 36, 37. We agree with the Examiner that these limitations are taught by Ross's replaceable volute lips 23, which are "on" a working area of the volute and cover less than the entire end face of the volute. Ross Fig. 2, 1:5-34, 1:59-2:7. Claims 1 and 11 recite reinforcements on at least part of the working area, which extends from the mouth of the volute end face, but do not require that the reinforcements extend from the mouth. Regarding the limitations of claim 15 argued by Appellants, App. Br. 18, Appellants do not identify reversible error in the Examiner's finding that these limitations read on structures disclosed by each of Barker and Roudnev. Ans. 4, 7-8, 11, 20-21. The Appeal Brief does not address the Examiner's findings that Barker's disclosures in the background section and relating to Figures 1 and 2 are sufficient to teach "the volute having a mouth and a working area adjacent said mouth; a reinforcement attached to the volute and covering the working area" (claim 15). Ans. 4, 11, 21. The Examiner's findings are adequately supported by Barker, which discloses an annular wear plate around the inlet opening (mouth) of a volute casing, where the wear plate may be faced with hard tool steel (a reinforcement). Barker 1: 19-28, 1:65- 68. The Examiner's findings are further supported by Barker's disclosure of volute casing 14, spiral channels 32, and wear plate 34, as shown in Figures 1 and 2. According to Barker, volute casing 14 has inlet opening 36 (a mouth) and spiral channels 32 (a working area adjacent the mouth), and wear plate 34 (a reinforcement) is fixed to volute casing 14 and closes its open side, thus covering channels 32 (the working area) of the volute. Id. 8 Appeal2014-009075 Application 12/209,492 Figs. 1 and 2, 3:65--4:4. Barker also discloses that an annular wear plate, such as wear plate 34 (Figure 1) or wear plate 50 (Figure 4), is prone to wear and can be removed and replaced. Id. at 1: 19-53, 5:42-50, 6: 16-20. Appellants do not identify reversible error by arguing that Roudnev fails to teach a reinforcement attached to the volute and covering the working area. App. Br. 18. Appellants quote the Examiner's findings regarding Roudnev and quote from Roudnev' s disclosure, id. at 17-18, but fail to identify any inconsistency between the two and fail adequately to identify the basis for their allegation of "an error in fact," id. at 17. The Examiner that Roudnev discloses a reinforcement in the form of casing liner 10, which "covers the working area of the volute by nesting within the pump casing." Ans. 7-8, 21. The Examiner's findings are adequately supported by Roudnev, which discloses that liner body 10 "may be comprised of two clam-shell-like halves 12, 14 that are sized to nest in the respective halves of a pump casing" and "once degraded by wear, can be removed and replaced by a new pump casing liner." Roudnev Fig. 1, i-f 28. Regarding a motivation to combine Barker and Grasso, Appellants do not identify reversible error by arguing that "[n]either Barker nor Grasso teach[ es] or suggest[s] that fuel cell systems pump slurries." App. Br. 20. Appellants' argument incorrectly assumes that Barker's teachings are limited to "solving pump wear problems caused from pumping slurries." Id. In fact, Barker teaches centrifugal pumps for pumping "water or slurry." Barker 3:3--4, 4:30, 5:21-22. Appellants do not persuade us that the Examiner errs in concluding that a person of ordinary skill in the art would have had a reason to use Barker's centrifugal pump in a fuel cell system as taught, e.g., by Grasso. Ans. 9-10. 9 Appeal2014-009075 Application 12/209,492 Regarding a motivation to combine Barker with Roudnev and Ross, Appellants do not identify reversible error by arguing that "[ n ]either Roudnev nor Ross teach that the region adjacent the mouth of the volute is particularly prone to wear." App. Br. 22. The Examiner finds a motivation for combining these references "would be to provide wear protection for regions of the volute/casing which are prone to wear such as the region adjacent the mouth of the volute as taught by Ross and Roudnev." Ans. 11. This finding is adequately supported not only by Ross and Roudnev, but also Barker. Barker 1: 19-21 (discussing "wear around the inlet opening" of the wear plate); Roudnev i-f 10 ("wall surfaces of volute" are subject to wear); id. at i-f 34 (discussing "degradation in a prior art pump casing liner"); Ross 1 :57-58 (wear "takes place at the volute lips"). Appellants do not convince us that the areas taught in the cited art as being prone to wear are so far distant from mouth of the volute as to be considered not "adjacent" within the meaning of Appellants' claims. Based on the foregoing, the weight of the evidence supports the Examiner's conclusion of obviousness. Therefore, the § 103(a) rejections of claims 1-9 and 11-20 are sustained. CONCLUSION OF LAW AND DECISION The decision of the Examiner 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). AFFIRMED 10 Copy with citationCopy as parenthetical citation