Ex Parte Sibbett

Board of Patent Appeals and Interferences

Sep 30, 2008

10738465 (B.P.A.I. Sep. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SABINE BURHENNE, JOHANNES DEICHMANN,
BERND JAEGER and KARSTEN MEISER
____________

Appeal 2008-2815
Application 10/489,002
Technology Center 3700
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Decided: September 30, 2008
____________

Before LINDA E. HORNER, ANTON W. FETTING and
JOHN C. KERINS, Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Sabine Burhenne et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 6-10, the only claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

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SUMMARY OF DECISION
We REVERSE.

THE INVENTION
Appellants’ claimed invention is to a supply pump having a pump
housing, and a driven impeller rotatably disposed in the pump housing and
having at least one ring of vane chambers defined on the impeller. The
pump housing is to have an inlet channel, an outlet channel, and a partially
annular channel opposing the ring of vane chambers of the impeller. The
partially annular channel is to have a cross-section that includes a plurality
of constant radius sections, and adjacent ones of those sections each have
different radii.
Claim 6, reproduced below, is representative of the subject matter on
appeal.
6. A supply pump, comprising:

a pump housing; and

a driven impeller rotatably arranged in said pump
housing, at least one ring of vane chambers being
defined on said impeller,

wherein said pump housing includes an inlet
channel, an outlet channel, and a channel surface
defining a partially annular channel opposing said
at least one ring of vane chambers and extending
from said inlet channel to said outlet channel, and

wherein said partially annular channel has a cross
section including a plurality of sections, each
section of said plurality of sections having a
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constant radius, every two adjacent sections of said
plurality of sections having different radii.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Yu US 5,375,971 Dec. 27, 1994
Calvert, J.B., Ellipse, http://www.du.edu/~jcalvert/math/ellipse.htm
(University of Denver, 6 May 2002)(last visited Jun. 26, 2006).
The following rejection is before us for review:
1. Claims 6-10 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Yu.
ISSUES
A first issue raised in this appeal is whether Appellants have shown
that the Examiner erred in finding that Yu discloses, on a pump housing, a
partially annular channel having a cross section that includes a plurality of
sections, with each section having a constant radius of curvature, and with
adjacent sections having different radii.
FINDINGS OF FACT
The following enumerated findings of fact (FF) are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
FF 1. The partially annular channel disposed in the pump housing in
the Yu patent is disclosed as having a cross sectional shape that is semi-
elliptical, a portion of a full semi-ellipse, semi-circular (special case of a
semi-ellipse), or a portion of a full semi-circle. (Yu, Figs. 5-7; col. 3, l. 25-
col. 4, l. 36).
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FF 2. The radius of curvature of an ellipse changes continuously at
each point along the curve in accordance with the equation, R=(r x r’)3/2/ab,
where R is the radius of curvature, and r and r’ are the distances from the
point on the curve to the two foci. (Calvert, p. 2, ¶ 1). In the special case of
a circle, where the two foci are at the same point, the circle will have a
single, constant, radius of curvature throughout.
FF 3. As can be seen from the equation in FF 2 above, at each
progressive point along a non-circular ellipse or semi-ellipse, the values of r
and r’ continuously change, and, as a result, an ellipse will not have a
plurality of sections having a constant radius of curvature.
FF 4. An approximation of an ellipse or semi-ellipse may be
represented by drawing a shape using the Stevens’ Method, in which a
compass is employed to draw three arcs, a central arc of a larger radius of
curvature connecting to two flanking arcs having a smaller radius of
curvature. (Calvert, p. 3, last paragraph-p. 4, second paragraph).
FF 5. A mathematical or geometrical definition of the prefix “semi-”
is “half”. (See, "semi-." The American Heritage® Science Dictionary.
Houghton Mifflin Company, accessed 25 Sep. 2008, Dictionary.com
http://dictionary.reference.com/browse/semi-. Another, non-mathematical
definition of “semi-” is, “resembling or having some of the characteristics
of”. (See, "semi-." The American Heritage® Dictionary of the English
Language, Fourth Edition. Houghton Mifflin Company, 2004, retrieved 25
Sep. 2008, Dictionary.com http://dictionary.reference.com/browse/semi-).

PRINCIPLES OF LAW
Anticipation of a claim exists when each and every element set forth
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in the claim is found, either expressly or inherently described, in a single
prior art reference. Verdegaal Bros. v. Union Oil Co., 814 F.2d 628, 631
(Fed. Cir. 1987), cert. denied, 484 U.S. 827 (1987); In re Cruciferous Sprout
Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002). Once a prima facie case of
anticipation has been established, the burden shifts to the Appellant to prove
that the prior art product does not necessarily or inherently possess the
characteristics of the claimed product. In re Best, 562 F.2d 1252, 1255
(CCPA 1977); In re Spada, 911 F.2d 705, 708-09 (Fed. Cir. 1990).
Patent application claims are given their broadest reasonable
interpretation during the application process, for the simple reason that
before a patent is granted the claims may be readily amended, for the
purpose of distinguishing cited references, or in response to objections raised
under § 112, as part of the examination process. Burlington Indus., Inc. v.
Quigg, 822 F.2d 1581, 1583 (Fed. Cir. 1987). This broadest reasonable
construction is to be assessed in light of the specification as it would be
interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Further, in making this
assessment, embodiments or features present in the specification will not be
read into the claims in determining their scope. Phillips v. AWH Corp., 415
F.3d 1303, 1323 (Fed. Cir. 2005) (en banc); see also In re Trans Texas
Holdings Corp., 498 F.3d 1290, 1298-99 (Fed. Cir. 2007).
ANALYSIS
Claims 6-10 stand rejected under 35 U.S.C. § 102(b) in view of Yu,
with claim 6 being the only independent claim.
The Examiner’s position is that the semi-elliptical shape of the
annular channel disclosed in Yu can be described or characterized as a
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surface formed by two arcs (circles) of relatively small radius, connected to
a larger radius curve, citing to the Stevens’ Method of drawing an ellipse, set
forth at page 4 of the Calvert publication. (Answer 3). In the alternative, the
Examiner takes the position that the term “semi-elliptical” may be
interpreted as including or describing ellipse-like shapes, such as the shape
represented by the drawing generated using the Stevens’ Method. (Answer
4). The Examiner thus finds that the annular channel of Yu meets the claim
limitations set forth in claim 6 with respect to the cross section of the
annular channel. (Id.).
Appellants assign error to the rejection, asserting that Yu does not
disclose a partially annular channel having a cross section including a
plurality of sections, with each section of this plurality having a constant
radius, as set forth in appealed claim 6. (Appeal Br. 5)1. Appellants point
out that Yu teaches a partially annular channel having a semi-elliptical cross
section, and that an ellipse (or semi-ellipse) by definition can have no
section of a constant radius, in that the radius continuously changes at each
point along the curve. (Appeal Br. 4-5). The Examiner’s reliance on the
shape generated by using the Stevens’ Method is asserted to be in error, on
the basis that the shape is not that of an actual ellipse, but only an
approximation thereof. (Appeal Br. 6). Appellants further urge that the term
“semi-elliptical” can be interpreted only as “half an ellipse”, and can not be

1 References herein to the Appeal Brief are to the “SUPPLEMENTAL
APPEAL BRIEF in Response to Notification of Non-Compliant Appeal
Brief dated April 23, 2007”, filed on May 15, 2007.
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construed as meaning “like an ellipse”, as has been done by the Examiner.
(Reply Br. 1-2) We agree with Appellants on all counts.2
The Examiner’s position appears to be that persons of ordinary skill in
the art would regard a shape generated by the Stevens’ Method as being an
equivalent or functional equivalent of an ellipse or semi-ellipse. While that
may (or may not) be the case, the rejection on appeal is one of anticipation
under 35 U.S.C. § 102(b), and, as such, contentions along these lines are not
germane. Rather, it must be determined whether or not the Examiner has
carried his burden of establishing that the Yu patent identically discloses the
claimed invention.
The Yu patent discloses that the annular channel therein
corresponding to the claimed annular channel is to be semi-elliptical, a
portion of a full semi-ellipse, semi-circular (special case of a semi-ellipse),
or a portion of a full semi-circle. (FF 1). As noted by Appellants, and as
evidenced in the Calvert reference, the radius of curvature of an ellipse
changes continuously at each point along the curve, the radius of curvature R
represented in the formula R=(rr’)3/2/ab, where r and r’ are the distances to
the two foci from a given point on the ellipse. (FF 2). With r and r’
continuously changing at each point along the curve, the ellipse or semi-
ellipse is precluded from having more than one section having a constant

2 Appellants proffer, with their Reply Brief, a document containing a
definition of “semi-elliptical”, in support of their argument that the term can
not be construed to mean, “like an ellipse”. Notwithstanding Appellants’
contention that the proffer of this evidence was necessitated by a new
argument or position taken by the Examiner for the first time in the
Examiner’s Answer, the submission is not timely, and we are constrained to
deny admission of the evidence. 37 C.F.R. § 41.31(d)(2) (2007). Our
findings herein do not take into account this proffered evidence.
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radius of curvature3, and thus the Yu patent fails to disclose an annular
channel having a plurality of sections of constant radius. (FF 3).
The shape obtained using the Stevens’ Method is a representation or
an approximation of a true ellipse, and is an approach to drawing a
representation of an ellipse using circular arcs that can be drawn with a
compass, rather than employing more complicated methods. (FF 4). It is
thus incorrect from a technical standpoint, and error, to assert that the shape
generated using the Stevens’ Method is a true ellipse or semi-ellipse.
Further, nothing in the Yu patent supports the Examiner’s position
that the disclosure in Yu of a semi-elliptical annular channel would be
understood by persons of ordinary skill in the art to include or inherently
disclose channels that have “ellipse-like” shapes. The Examiner’s rationale
is not well understood, but appears to be grounded in an interpretation of the
prefix “semi-” as meaning, “resembling or having some of the characteristics
of”. (FF 5). Given that Yu uses the term in a strictly mathematical or
geometrical sense (semi-elliptical, semi-circular), and absent any disclosure
or suggestion in Yu that a different or broader meaning was intended, we see
no reason or rational basis to accord a meaning other than its most common
and accepted mathematical meaning, i.e., half.
Thus, the ultimate finding made by the Examiner, that the semi-
elliptical annular channel of Yu encompasses the Stevens’ Method shape in
which two curves (arcs of circles) of one radius flank and join to a curve (arc
of circle) having a different, larger radius, is in error. As such, the Examiner
has failed to meet his burden of establishing that the Yu patent identically

3 In the special case in which the ellipse is a circle, the circle will have a
single constant radius of curvature.
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discloses the claim limitations directed to the configuration or shape of the
cross section of the claimed partially annular channel.
Claims 7-10 depend from claim 6. The rejection of these dependent
claims relies upon the underlying rejection of independent claim 6. As such,
the Examiner has not established that the Yu patent identically discloses all
of the elements of claims 7-10 for the reasons stated above.
The rejection of claims 6-10 under 35 U.S.C. § 102(b) will thus not be
sustained.
CONCLUSION
We find that Appellants have successfully established that reversible
error exists in the rejection of claims 6-10 under 35 U.S.C. § 102(b) as
anticipated by Yu.
ORDER
The decision of the Examiner to reject claims 6-10 under 35 U.S.C.
§ 102(b) as anticipated by Yu is REVERSED.

REVERSED

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