Ex Parte Schofield

Patent Trial and Appeal Board

Sep 25, 2013

10536781 (P.T.A.B. Sep. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte NIGEL PAUL SCHOFIELD
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Appeal 2011-005801
Application 10/536,781
Technology Center 3700
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Before JOHN C. KERINS, SCOTT A. DANIELS and NEIL T. POWELL,
Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/536,781

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STATEMENT OF THE CASE
Nigel Paul Schofield (Appellant) seeks our review under 35 U.S.C.
§ 134(a) of the Examiner’s final rejection of claims 1, 3-5, 7-11, 16, 18 and
19. Claims 2, 6, 12-15 and 17 are canceled. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.
THE INVENTION
Appellant’s invention is directed to a vacuum pumping arrangement.
Independent claim 1, reproduced below, is representative of the claimed
subject matter:
1. A vacuum pumping arrangement comprising:

a turbomolecular pumping mechanism having a
rotor, wherein the rotor comprises a rotor body and
rotor blades extending radially outwards from the
rotor body; and

a molecular drag pumping mechanism connected
in series with the turbomolecular pumping
mechanism, wherein a rotor of the molecular drag
pumping mechanism is affixed to the rotor blades
of the turbomolecular pumping mechanism; and

wherein the rotor blades of the turbomolecular
pumping mechanism are provided with an annular
ring, disposed co-axially with the rotor body and
positioned between two ends of each of the rotor
blades in a radial direction, to which the rotor of
the molecular drag pumping mechanism is fixed.

THE REJECTIONS
Appellant appeals from the following rejections:
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(i) claims 1, 3-5, 7, 8 and 16 under 35 U.S.C. § 102(b) as being
anticipated by, or, in the alternative, under 35 U.S.C. § 103(a) as being
unpatentable over, Conrad (US 5,893,702, issued Apr. 13, 1999);
(ii) claims 9, 18 and 19 under 35 U.S.C. § 103(a) as being
unpatentable over Conrad in view of Stones (US 6,135,709, issued Oct. 24,
2000);
(iii) claim 10 under 35 U.S.C. § 103(a) as being unpatentable over
Conrad in view of Rourk (US 4,465,434, issued Aug. 14, 1984); and
(iv) claim 11 under 35 U.S.C. § 103(a) as being unpatentable over
Conrad in view of Schofield (US 5,848,873, issued Dec. 15, 1998).

ANALYSIS
Claims 1, 3-5, 7, 8 and 16--Anticipation or Obviousness--Conrad
The Examiner maintains that Conrad discloses each and every
element set forth in claim 1, and, to the extent that Conrad were found to not
expressly disclose the use of a drag pumping mechanism employing the
connection member disclosed in Figure 3 in the combined turbomolecular
and drag pumping system shown in Figure 6, it would have been obvious to
do so. Ans. 5. Appellant contends, inter alia, that Conrad fails to disclose a
structure in which rotor blades of a turbomolecular pumping mechanism are
provided with an annular ring, and a rotor of the molecular drag pumping
mechanism being fixed to the annular ring. Appeal Br. 7-8; Reply Br. 5.
Appellant maintains, in this regard, that the Examiner’s interpretation of the
language of claim 1 as encompassing a structure in which the claimed
annular ring and the claimed rotor of the molecular drag pumping
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mechanism are integrally formed, is inconsistent with Appellant’s disclosure
and therefore unreasonably broad. Reply Br. 5-6.
The Examiner proposes two potential interpretations of the claim
language at issue. Ans. 11. Each of these is premised on the position that
the use of a connector element in the molecular drag pumping section of
Conrad having the configuration shown in Figure 3 will result in the
connector element effectively operating as a turbomolecular rotor. Ans. 9-
10. While Appellant challenges this finding (Appeal Br. 7-8), we need not
decide whether the Examiner’s contention is correct.
Assuming, without deciding, that the Examiner’s position in this
respect is tenable, the Examiner posits that one of the drag pump rotors 5 in
Conrad may be considered to be the claimed annular ring provided for the
turbomolecular rotor blades, and another of the rotors 5 in Conrad may be
regarded as the claimed drag pump rotor. Ans. 11. The Examiner asserts
that these two components are “mutually fixed to each other via the
connection element 14.”1 Id. Appellant’s Specification and drawings,
however, do not disclose any embodiment in which the claimed annular ring
and molecular drag pumping rotor are affixed to each other via some further
structural element. See Spec., figs. 1, 6. As such, a person of ordinary skill
in the art would not understand the claimed “annular ring, . . . , to which the
rotor of the molecular drag pumping mechanism is fixed” to be sufficiently
broad to include an indirect affixation via an additional structural component
attached at a separate location to each of those components. Appeal Br.,

1 Connection element 14 referred to by the Examiner is the Figure 3
embodiment employing vanes as a gas discharge structure. See Conrad col.
2, ll. 19-27 and Fig.3.
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Claims Appendix, Claim 1 (emphasis added). This interpretation is thus
unreasonably broad.
The Examiner alternatively posits that an upper section of one of the
Conrad rotors 5 could be regarded as meeting the claimed annular ring,
while the lower portion could be regarded as meeting the claimed rotor of
the molecular drag pumping mechanism. Ans. 11. The Examiner maintains
that the annular ring (upper portion) and rotor (lower portion) are “fixed by
integral formation therewith.” Id. Again, this construction is unreasonably
broad in terms of what persons of ordinary skill in the art would understand
the meaning of the recitation in claim 1 to be in light of Appellant’s
disclosure, in which two separately identified components, the annular ring
and the molecular drag pump rotor, are fixed to each other. Indeed,
Appellant’s Specification inferentially contrasts integral formation, which is
how the annular ring and rotor blades are formed, with separately fixing the
molecular drag pump rotor to the annular ring. Spec. 7, ll. 13-18.
A proper anticipation rejection must evidence that the same device,
including all the claim limitations, is shown in a single prior art reference.
Every element of the claimed invention must be literally present, arranged as
in the claim. Perkin–Elmer Corp. v. Computervision Corp., 732 F.2d 888,
894 (Fed.Cir.), cert. denied, 469 U.S. 857 (1984). The Examiner’s rejection
can only possibly be said to meet this standard by using an unreasonably
broad claim construction. The rejection of claim 1, and of claims 3-5, 7, 8
and 16 depending therefrom, as anticipated by Conrad, is not sustained.
As noted at the outset, the rejection of these claims as being obvious
over Conrad involves only the employment of the connecting member in
Figure 3 with the pumping device shown in Figure 6, and not any
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modification based upon a broadest reasonable claim interpretation. As
such, the rejection is not sustained.
Claims 9, 18 and 19--Obviousness-- Conrad/Stones
The Examiner does not rely on Stones in any manner that remedies
the problem with the anticipation and obviousness rejections of claim 1,
from which these claims ultimately depend. The rejection of claims 9, 18
and 19 is thus not sustained.
Claim 10--Obviousness--Conrad/Rourk
The Examiner does not rely on Rourk in any manner that remedies the
problem with the anticipation and obviousness rejections of claim 1, from
which this claim ultimately depends. The rejection of claim 10 is thus not
sustained.
Claim 11--Obviousness--Conrad/Schofield
The Examiner does not rely on Schofield in any manner that remedies
the problem with the anticipation and obviousness rejections of claim 1,
from which this claim ultimately depends. The rejection of claim 11 is thus
not sustained.

DECISION
The decision of the Examiner to reject claims 1, 3-5, 7-11, 16, 18 and
19 is reversed.

REVERSED

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