Ex Parte Tollner et al

Patent Trial and Appeal Board

Sep 28, 2016

12311225 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/311,225 12/07/2009
28863 7590 09/30/2016
SHUMAKER & SIEFFERT, P, A,
1625 RADIO DRIVE
SUITE 100
WOODBURY, MN 55125
FIRST NAMED INVENTOR
Martin Ernst Tollner
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.
l l 93-034US01/M06B 165 7888
EXAMINER
LEGENDRE, CHRISTOPHER RY AN
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
09/30/2016 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):
pairdocketing@ssiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN ERNST TOLLNER and
MARK SPITTELER
Appeal2014-007796
Application 12/311,225 1
Technology Center 3700
Before JOHN C. KERINS, GEORGE R. HOSKINS, and
FREDERICK C. LANEY, Administrative Patent Judges.
LANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Martin Ernst Tollner and Mark Spitteler (Appellants) appeal under 35
U.S.C. § 134(a) from the Examiner's decision rejecting claims 1, 2, 4, 5, 7,
8, and 10-13.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We REVERSE.
According to Appellants, the real party in interest is Edwards Limited.
Appeal Br. 3.
2 Claims 3, 6, 9, 14, and 15 have been canceled. Amendment (filed Jan.
28, 2013).
Appeal2014-007796
Application 12/311,225
fNVENTION
Appellants' invention "relates to a molecular drag pumping
mechanism, and in particular to a Siegbahn pumping mechanism." Spec. 1,
11. 3--4.
Claims 1 and 7 are independent. Claim 1 is illustrative of the claimed
invention and reads as follows:
1. A pumping mechanism comprising a rotor element and a
stator element located proximate the rotor element, one of the
rotor element and the stator element comprising a plurality of
walls extending towards the other one of the rotor element and
the stator element and defining a plurality of spiral channels, the
stator element comprising a plurality of sections and means for
bringing the sections into contact, wherein the means for
bringing the sections into contact extends about the sections and
forms a seal with casing surrounding the rotor and stator
elements.
Appeal Br. 15 (Claims App.) (emphasis added).
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 1, 2, 4, 7, 8, 10, 12, and 13 under
35 U.S.C. § 103(a) as unpatentable over Applicant's Admitted
Prior Art ("APA"), Carboneri (US 6,676,368 B2, iss. Jan. 13,
2004), and Beyer (WO 2004/099622 Al, pub. Nov. 18, 2004).
II. The Examiner rejected claims 5 and 11 under 35 U.S.C.
§ 103(a) as unpatentable over APA, Carboneri, Beyer, and
Englander (US 6,641,376 Bl, iss. Nov. 4, 2003).
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Appeal2014-007796
Application 12/311,225
ANALYSIS
Rejection I
The Examiner concludes the combination of AP A, Carboneri, and
Beyer render obvious the apparatus claims 1 and 7 describe. Final Act. 4--9.
Both claims 1 and 7 recite a stator element having a plurality of sections,
which come into contact by a means that "extends about the sections and
forms a seal with [a] casing surrounding the rotor and stator elements."
Appeal Br. 15-16 (Claims App.) (emphasis added). Appellants'
Specification identifies "a resilient member," such as "a resilient 0-ring
sealing member," as the structure that "extends about the sections and forms
a seal with [a] casing surrounding the rotor and stator elements." Spec. 3, 11.
23-26; 6, 1. 22-7, 1. 12; 7, 1. 27-8, 1. 2.
The Examiner finds Carboneri discloses using a resilient member to
bring the stator halves together, but does not find the resilient member in
Carboneri forms a seal with a casing surrounding the rotor and stator
elements. Final Act. 5---6. For that missing element, referring to an
annotated version of Figure 1, reproduced below, the Examiner finds Beyer
discloses "a turbovacuum pump having rotor and stator sections ... and a
surrounding housing ( 12b )(Figure 1) with a sealing member ... disposed
therebetween." Id. at 6. Appellants challenge this finding.
Figure 1 {Englaen der '713)
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Appeal2014-007796
Application 12/311,225
The above figure is the Examiner's annotated version of Beyer Figure 1. Id.
Appellants argue, "Beyer does not disclose or suggest that the portion of
Figure 1 of Beyer characterized by the Examiner as a sealing element is, in
fact, a sealing element." Appeals Br. 7.
Thus, the issue presented is whether a preponderance of the evidence
supports the Examiner's finding that Beyer discloses a sealing member
positioned between a stator section and a housing of a turbovacuum pump.
For the following reasons, Appellants have persuasively shown a
preponderance of the evidence does not support the Examiner's finding.
The Examiner relies on Beyer Figure 1 to evidence it was known to
have a sealing member positioned between a stator section and a housing of
a turbo vacuum pump, but Beyer' s Specification is silent about the structures
the Examiner references to support that finding. In particular, Beyer's
Specification does not describe the "sealing element" structures that the
Examiner identifies as forming a seal, nor does it describe compressing
those structures between the stator section and the housing. As a result, the
Examiner refers instead to Beyer's characterization of structures 25, 26, and
27 as "a plurality of seals" to support the finding that a skilled artisan would
also have viewed the unidentified structures the Examiner points to as
"sealing elements." Final Act. 2; Ans. 10. The Examiner finds,
the identified sealing element is depicted using the same general
symbol as seals 25 and 26 and, more acutely, the identical
symbol as seal 25. Therefore, since the identified element
conforms to the drawing convention established by Beyer for
depicting seals, then it is reasonably inferred as such.
Ans. 10 (emphasis added). There are flaws in the Examiner's reasoning.
In view of the importance the Examiner places on Beyer's Figure 1 to
evidence Beyer discloses a sealing element positioned between a stator
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Appeal2014-007796
Application 12/311,225
section and a housing of a turbovacumn pump, we are mindful of Federal
Circuit precedent regarding the appropriate evidentiary value prior art
figures may provide. Evidence that something is old and within the
knowledge of the skilled artisan can be established by what is clearly shown
in patent drawings, even as to features unexplained by the specification. In
re Mraz, 455 F.2d 1069, 1072 (CCPA 1972). A drawing is evaluated on the
basis of what it reasonably discloses and suggests to a person of ordinary
skill in the art. In re Aslanian, 590 F.2d 911, 914 (CCPA 1979). Of course,
there is the exception against relying on patent drawings to establish specific
proportions of elements, if the specification is completely silent on the issue.
Hockerson-Halberstadt, Inc. v. Avia Group Int'!, 222 F.3d 951, 956 (Fed.
Cir. 2000). That exception is implicated in this case.
The problem with the Examiner's reliance on Beyer Figure 1 for the
"sealing element" is that it requires Figure 1 to establish specific proportions
of the area in which the alleged "sealing element" sits. While we agree with
the Examiner's reliance on Beyer's description of elements 25-27 to
establish the undescribed and unidentified "sealing elements" are resilient
members (i.e., the materials are similar), we disagree that information also
supports a reasonable inference a seal is formed between the stator section
and housing.
Carboneri evidences skilled artisans used resilient members, located
between the stator sections and housing, to bring the stator halves together,
without forming a seal between the stator halves and the housing. Final Act.
5---6. This fact demonstrates Appellants' position that simply showing a
resilient member positioned between the stator and housing does not
necessarily mean the member forms a seal between those parts. To establish
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Appeal2014-007796
Application 12/311,225
a seal exists in this case, there must be some evidence the area between the
stator and housing in which the "sealing element" sits is proportioned to
compress the element to block fluid from passing. Appellants correctly
point out that Beyer depicts elements 25-27, which are described as creating
a seal between the pump part and the engine part (Beyer 4 (English
Translation)), as having a general oval shape indicating compression. Reply
27
The above figure is an excerpt from Beyer Figure 1 showing elements 25-27
and the unnumbered, alleged "sealing elements." Appellants point out
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Appeal2014-007796
Application 12/311,225
further, again correctly, that "the unlabeled portion of Figure 1 of Beyer
asserted by the Examiner to be a sealing portion is not oval shaped; rather, it
is circular." Reply Br. 5.
The above facts persuade us the Examiner's reliance on Beyer's
Figure 1 was improper to evidence the alleged "sealing elements," in fact,
form a seal between the stator and housing. It improperly requires an
interpretation of Figure 1 that the area between the stator and housing
compresses the resilient element to form a seal, when Beyer is completely
silent about proportioning the area to do so. See Hockerson-Halberstadt,
Inc., 222 F.3d at 956. "The Patent Office has the initial duty of supplying
the factual basis for its rejection. It may not, because it may doubt that the
invention is patentable, resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in its factual basis." In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967) (emphasis added). For the
foregoing reasons, Appellants have persuasively shown the Examiner did
not establish, by a preponderance of the evidence, that Beyer discloses
having a sealing member positioned between a stator section and a housing
of a turbovacuum pump.
Therefore, we do not sustain the Examiner's rejection of claims 1 and
7. Because claims 2, 4, 8, 10, 12, and 13 depend, either directly or
indirectly, from those claims, and the Examiner's rejection of the dependent
claims does not cure the deficiencies described above, we also do not sustain
the Examiner's rejection of claims 2, 4, 8, 10, 12, and 13.
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Application 12/311,225
Rejection II
Claims 5 and 11 depend from claims 1 and 7, respectively. The
Examiner's rejection of claims 5 and 11 under 35 U.S.C. § 103(a) as
unpatentable over AP A, Carboneri, and Beyer relies on the same
unsupported findings discussed above with respect to independent claims 1
and 7. See Final Act. 11-13. The Examiner does not remedy the
deficiencies discussed above with Englander, as the Examiner's premise for
applying Englander is that the combination of AP A, Carboneri, and Beyer
already includes a sealing element. See id. Therefore, we do not sustain the
Examiner's obviousness rejection of claims 5 and 11.
DECISION
The Examiner's decision to reject claims 1, 2, 4, 5, 7, 8, and 10-13 is
reversed.
REVERSED
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