Ex Parte Stones et al

Patent Trial and Appeal Board

Mar 10, 2014

10572894 (P.T.A.B. Mar. 10, 2014)

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.
10/572,894 03/20/2006 Ian David Stones M03B354 (E223.12-0005) 1336
27367 7590 03/10/2014
WESTMAN CHAMPLIN & KOEHLER, P.A.
SUITE 1400
900 SECOND AVENUE SOUTH
MINNEAPOLIS, MN 55402
EXAMINER
BOBISH, CHRISTOPHER S
ART UNIT PAPER NUMBER
3746
MAIL DATE DELIVERY MODE
03/10/2014 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 IAN DAVID STONES,
NIGEL PAUL SCHOFIELD, and
MARTIN NICHOLAS STUART
____________

Appeal 2012-000303
Application 10/572,894
Technology Center 3700
____________

Before NEAL E. ABRAMS, ANNETTE R. REIMERS,
and FRANCES L. IPPOLITO, Administrative Patent Judges.

ABRAMS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Ian David Stones et al. (Appellants) seek our review under 35 U.S.C.
§ 134 from the Examiner’s decision rejecting claims 1, 3-29, 31-42 and 45-
59. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2012-000303
Application 10/572,894

2
THE INVENTION
The claimed invention is directed to a vacuum pump and an impeller
for a vacuum pump.
Claims 1 and 55, reproduced below, are illustrative of the subject
matter on appeal.
1. A vacuum pump comprising a molecular drag pumping
mechanism and, downstream therefrom, a regenerative
pumping mechanism, wherein a rotor element of the molecular
drag pumping mechanism surrounds rotor elements of the
regenerative pumping mechanism,
wherein the rotor element of the molecular drag pumping
mechanism comprises a cylinder mounted for rotary movement
with the rotor elements of the regenerative pumping
mechanism.

55. An impeller for a vacuum pump, the impeller having
integral therewith a rotor element of a turbomolecular pumping
stage, a plurality of rotor elements of a regenerative pumping
mechanism, and a rotor for receiving a rotor element of a
molecular drag pumping mechanism in a manner that the rotor
element of the molecular drag pumping mechanism is a piece of
material mounted to a separate piece of material forming the
rotor element of the turbomolecular pumping stage and the
rotor elements of the regenerative pumping mechanism.

THE PRIOR ART
The Examiner relied upon the following as evidence of
unpatentability:
Mase US 5,020,969 Jun. 4, 1991
Schutz US 5,695,316 Dec. 9, 1997
Conrad US 5,733,104 Mar. 31, 1998
Stones EP 0 959 253 A2 Nov. 24, 1999

Appeal 2012-000303
Application 10/572,894

3
THE REJECTIONS
The following rejections stand under 35 U.S.C. § 103(a):
1. Claims 1, 3-11, 13-17, 25, 26, 29, 31-38, 42 and 45-52 on the basis
of Stones and Mase.1
2. Claims 12, 53 and 54 on the basis of Stones, Mase and Schutz.2
3. Claims 18-24, 27, 28 and 39-41on the basis of Stones, Mase and
Conrad.
4. Claims 55-59 on the basis of Stones.
OPINION

1 Claims 3, 31 and 45 appear in the Claims Appendix of the Brief as
depending, respectively, from claims 2, 30 and 44, which have been
canceled. The Examiner has taken the liberty of considering claim 3 as
depending from claim 1, claim 31 from claim 29, and claim 45 from claim
42. Ans. 3. Appellants have not disputed this decision.
2 The Notice of Appeal (filed December 14, 2010) states, “Applicant hereby
appeals to the Board of Patent Appeals and Interferences [now the Patent
Trial and Appeal Board] from the last decision of the examiner.” In the
Appeal Brief (filed March 2, 2011), Appellants identify only rejections 1, 3
and 4, listed above, as the “GROUNDS OF REJECTION TO BE
REVIEWED ON APPEAL.” Br. 5-6. Further, Appellants only present
arguments directed to rejections 1, 3 and 4. Br. 6-12. The Examiner
repeated all the rejections of the Final Rejection (mailed June 10, 2010) in
the Examiner’s Answer (mailed May 13, 2011), thus clearly indicating that
rejection 2, listed above, has not been withdrawn. See Final Rej. 15-16;
Ans. 21-23. As Appellants do not address rejection 2, Appellants have
waived any argument of error. Accordingly, we are constrained to
summarily sustain the rejection of claims 12, 53 and 54 under 35 U.S.C. §
103(a) as being unpatentable over Stones, Mase and Schutz. See In re
Berger, 279 F.3d 975, 984, 985 (Fed. Cir. 2002) (holding that the Board did
not err in sustaining a rejection under 35 U.S.C. § 112, second paragraph,
when the applicant failed to contest the rejection on appeal); MPEP §
1205.02, 8th ed., Rev. 8, July 2010 (“if a ground of rejection stated by the
examiner is not addressed in the appellant’s brief, that ground of rejection
will be summarily sustained by the Board.”).
Appeal 2012-000303
Application 10/572,894

4
Claims 1, 3-11, 13-17, 25, 26, 29, 31-38, 42 and 45-52
Obviousness- Stones and Mase
The Examiner has found all of the subject matter of the vacuum pump
recited in independent claims 1, 29 and 42 to be disclosed or taught by
Stones except for a rotor surrounding the regenerative pumping mechanism.
Ans. 6-7, 11-12 and 16. However, the Examiner has further found that Mase
discloses such a pump in that the rotor element 51A of the molecular drag
pumping mechanism 72 surrounds rotor elements 55A of the regenerative
pumping mechanism, and has concluded that “[i]t would have been
obvious . . . to locate the molecular drag pump mechanism and rotor
element of Stones in the manner taught by Mase in order to further
minimize pump size.” Ans. 7, 12 and 17.
Appellants argue that in Stones the rotor elements of the drag
pumping mechanism and the rotor elements of the regenerative pumping
mechanism are on opposite sides of a mounting plate (Br. 7), and that
modifying Stones by surrounding the rotor element of the regenerative
pumping mechanism with the rotor elements of the drag pumping
mechanism would defeat Stones’ intended purpose of space efficiency (Br.
8). Appellants also argue that there is there is no suggestion to combine the
references in the manner suggested by the Examiner, that “Stones teaches
away from surrounding the rotor elements of the regenerative pumping
mechanism with the rotor elements of the drag pumping mechanism on the
same side,” and that Mase fails to teach the limitation that the rotor element
of the molecular drag pumping mechanism “comprises a cylinder mounted
for rotary movement with the motor elements of the regenerative pumping
mechanism.” Br. 8-9.
Appeal 2012-000303
Application 10/572,894

5
The Examiner has not provided a persuasive explanation of how the
teachings of Stones and Mase are combined to render obvious the
requirement in independent claims 1, 29 and 42 that the rotor element of the
molecular drag pumping mechanism “surrounds rotor elements of the
regenerative pumping mechanism . . . [and] comprises a cylinder mounted
for rotary movement with the rotor elements of the regenerative pumping
mechanism.” In this regard, in Figure 3 Stones discloses two cylinders
(unnumbered) that extend from the rotor 9 of regenerative section 1 of the
pump and surround portions of the molecular drag section 2 of the pump
(para. [0012]), which is the opposite of the arrangement recited in
Appellants’ claims, and in Figure 1 Stones discloses a pump body (22) to
which are affixed concentric cylinders (23, 24, 25), which do not rotate but
form the stator of the molecular drag section of the pump (para. [0014]).
And, Mase does not disclose cylinders that rotate. See Br. 9. Therefore, we
share Appellants’ view that this requirement of all three independent claims
would not have been obvious to one of ordinary skill in the art in view of the
combined teachings of Stones and Mase.
The rejection of independent claims 1, 29 and 42, and dependent
claims 3-11, 13-17, 25, 26, 31-38, 42 and 45-52, is not sustained.
Claims 18-24, 27, 28 and 39-41
Obviousness- Stones, Mase and Conrad
The teachings of Conrad, cited for disclosing particular locations of
components of pumping systems, also fail to overcome the shortcomings in
the rejection of independent claims 1 and 29, from which these claims
depend, and therefore this rejection also is not sustained.

Appeal 2012-000303
Application 10/572,894

6
Claims 55-59
Obviousness- Stones
The issue with regard to independent claim 55 is whether it would
have been obvious to modify the Stones system by making the cylindrical
rotor body 52 and rotor 9 of Stones into an integral piece of structure. The
Examiner’s position is that such is the case, because both integral and non-
integral rotor cylinder arrangements were known in the art, and the common
definition of “integral” is “composed of constituent parts” or “formed as a
unit with another part.” Ans. 28. Appellants argue that it would not have
been obvious to do so because “Stones requires the vertical portion of the
rotor 9 to be placed on the same side as the rotor vanes 54 of the cylindrical
rotor body 52,” and if they were made an integral structure “the
manufacturing would have been extremely difficult . . . [in that] the
orientations of the rotor vanes 54 and the vertical portion 9 would not
provide easy access angles for the manufacturing machines.” Br. 11-12.
In describing the structure in Figure 3, Stones states that “mounted on
the rotor 9 for rotary movement therewith is a cylindrical rotor body 52.”
Para. [0022]. Appellants have not disputed the Examiner’s position that this
construction falls within the scope of the common definition of “integral,”
nor have they challenged the Examiner’s assertion that both integral and
non-integral rotor constructions were known in the art. Appellants have
relied only upon what they perceive would be difficulties in manufacturing,
which conclusion is not supported by evidence.
We therefore are not persuaded by Appellants’ arguments, and the
rejection of independent claim 55 and dependent claims 56-59 is sustained.

Appeal 2012-000303
Application 10/572,894

7
DECISION
The rejection of claims 1, 3-11, 13-17, 25, 26, 29, 31-38, 42 and 45-52
as being unpatentable over Stones and Mase in reversed.
The rejection of claims 12, 53 and 54 as being unpatentable over
Stones, Mase and Schutz is affirmed.
The rejection of claims 18-24, 27, 28 and 39-41 as being unpatentable
over Stones, Mase and Conrad is reversed.
The rejection of claims 55-59 as being unpatentable over Stones 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-IN-PART

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