Ex Parte Williams et al

Board of Patent Appeals and Interferences

Sep 15, 2011

11220831 (B.P.A.I. Sep. 15, 2011)

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.
11/220,831 09/07/2005 David John Williams 065485-0016 5358
26127 7590 09/15/2011
DYKEMA GOSSETT PLLC
39577 WOODWARD AVENUE
SUITE 300
BLOOMFIELD HILLS, MI 48304-5086
EXAMINER
BERTHEAUD, PETER JOHN
ART UNIT PAPER NUMBER
3746
MAIL DATE DELIVERY MODE
09/15/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DAVID JOHN WILLIAMS, DAVID BLACK, RAYMOND
MARTIN JOHNSON, CHRISTOPHER SADLER, and TIM P. BUTTERY
____________________

Appeal 2010-002143
Application 11/220,831
Technology Center 3700
____________________

Before: FRED A. SILVERBERG, CHARLES N. GREENHUT, and
WILLIAM V. SAINDON, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-002143
Application 11/220,831
2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-13. We have jurisdiction under 35 U.S.C. § 6(b).
Claim 10, reproduced below with added emphasis, is illustrative of the
claimed subject matter.
10. A method of making a pump assembly including a
pumping element mounted for rotation within a pump chamber,
movement of the pumping element in the chamber causing
pumping of fluid within the pump chamber, and a motor, the
motor including a stator and a rotor which is connected to the
pumping element such that activation of the motor causes
movement of the pumping element and hence pumping of fluid
within the pump chamber, there being a sealing assembly which
permits fluid in the pumping chamber to flow around the rotor
but which substantially prevents fluid from the pumping
chamber from contacting the stator, the sealing assembly
including a partition part which lies between the stator and the
pumping chamber and a sealing part which lies between the
stator and the rotor, wherein the method includes the steps of:
locating the partition part in a mould cavity; and,
overmoulding the sealing part such that during the
overmoulding process the sealing part is moulded onto and
around an attachment portion of the partition part.
References
The Examiner relies upon the following prior art references:
Sinn
Peters
Klein
Brown
Håkansson
Hembree
US 5,785,013
US 6,036,456
US 6,264,440 B1
US 6,293,772 B1
US 6,363,918 B2
US 7,101,158 B2
Jul. 28, 1998
Mar. 14, 2000
Jul. 24, 2001
Sep. 25, 2001
Apr. 2, 2002
Sep. 5, 2006
Appeal 2010-002143
Application 11/220,831
3
Rejections1
I. Claim 13 is rejected under 35 U.S.C. § 112, second paragraph, as
indefinite for failing to particularly point out and distinctly claim the
subject matter which applicant regards as the invention.
II. Claims 1, 2, 4-6, and 10-13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sinn, Hembree, and Brown.
III. Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Sinn, Hembree, Brown, and Håkansson.
IV. Claims 7 and 8 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Sinn, Hembree, Brown, and Klein.
V. Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Sinn, Hembree, Brown, and Peters.

SUMMARY OF DECISION
We REVERSE.

OPINION
Rejection I
Claim 13 requires that the pump assembly made in the method of
independent claim 10 further has a joint between the sealing part and the
partition part. The Examiner found that it was “unclear whether the term
‘joint’ is used to refer to a specific element, such as a screw or fastener, or
whether it is simply being used to describe the partition plate sealing part
assembly in general.” Ans. 3. Appellants argue that the Specification does
not describe any fasteners as a “joint,” and further, notes that a “joint” is “a
place where two things or parts are joined.” Br. 8 (citing Webster’s Ninth
New Collegiate Dictionary, 651 (1984)).

1 The Examiner withdrew the 35 U.S.C. § 112, first paragraph, rejection of
claim 13. Ans. 9.
Appeal 2010-002143
Application 11/220,831
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We do not find a definition of “joint” in the Specification, and the
Examiner does not offer a definition of “joint.” We find that Appellants’
definition of “joint” is consistent with Appellants’ Specification and the
ordinary meaning of the word “joint.” Accordingly, we will use Appellants’
definition in our analysis. Reading the claim in light of this definition, it is
clear that “joint” in claim 13 does not refer to a fastener but rather the place
where the sealing part and partition part meet. Accordingly, we find that
claim 13 is not indefinite and do not sustain Rejection I.
Rejections II-V
In relevant part, independent claim 10 requires a sealing part
“moulded onto and around an attachment portion of the partition part.” The
Examiner found that Sinn describes a partition part (4, 5) and a sealing part
(6, 7), and that Hembree describes a sealing part (26) formed onto and
around an attachment portion of a partition part (28). Ans. 4-5. The
Examiner additionally found that Brown describes overmoulding a sealing
part 16 onto and around an attachment portion of a partition part 14. Ans. 6.
The Examiner concluded that it would have been obvious to modify the
pump of Sinn to have the sealing member (6, 7) on the outer radial surface
(presumably, of partition part 4, 5) “in order to allow the partition plate to be
in closer contact with the rotor assembly” and as “merely a design choice.”
Ans. 5-6.
Appellants argue that the so-called partition part identified by the
Examiner in Hembree (28) is actually an outer wear ring that has no role in
sealing. Br. 12-13; see Hembree, col. 4, ll. 19-27. Appellants add that only
the so-called sealing part identified by the Examiner (containment shell 26)
functions as a seal in Hembree (and thus acts as both a partition part and a
sealing part). Br. 13-14; see Hembree at col. 4, ll. 19-27. Lastly, Appellants
Appeal 2010-002143
Application 11/220,831
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argue that the Examiner fails to provide a reason why one of ordinary skill
would find it obvious to have the sealing member (6, 7) of Sinn formed on
the outer radial surface. Br. 14.
Accordingly, the issue presented is whether the Examiner has
articulated a reason based on rational underpinning as to why one of
ordinary skill in the art would have found it obvious to modify the sealing
part (6, 7) of Sinn to be attached to the outer radial surface of the partition
part (4, 5) in view of Hembree’s teaching of a sealing assembly 26 in contact
with the outer radial surface of outer wear ring 28.
We find that the power electronics (located on plate 18) of the electric
motor of Sinn dissipates heat via contact with cooling body 4. Sinn, col. 2,
ll. 37-44, col. 3, ll. 1-10. The Examiner proposes to modify this
configuration “in order to allow the partition plate [cooling body 4] to be in
closer contact with the rotor assembly [rotor 9]” (Ans. 11), but the Examiner
has not articulated how the proposed modification will place the body 4 in
closer contact with the rotor 9 (it will remain separated) or why this
modification would have any benefit. Further, reattaching the sealing part
(6, 7) of Sinn to the outer circumference of the partition part (4, 5) in the
manner shown in Hembree would place a barrier between the cooling body 4
and the plate 18 having thereon the power electronic circuit to be cooled by
the cooling body 4. Thus, the proposed modification is not supported by any
evidence or other reasoning in the record before us, and is likely to hinder
the cooling ability of Sinn’s pump. Accordingly, the Examiner’s conclusion
that it would have been obvious to modify the partition part (4, 5) of Sinn
and the sealing part (6, 7) “in order to allow the partition plate to be in closer
contact with the rotor assembly” (Ans. 5-6) is not based on a reason with
rational underpinning. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418
Appeal 2010-002143
Application 11/220,831
6
(2007) (“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.”)
The Examiner alternatively concludes that the proposed combination
would have been an obvious design choice. Ans. 6, 11. However, we find
that the arrangement of the so-called “partition part” and “sealing part”
components identified by the Examiner in Sinn (4, 5 and 6, 7, respectively)
perform different functions than those parts identified in Hembree (28 and
26, respectively). In particular, the outer wear ring 28 (Examiner: “partition
part”) of Hembree is a bearing for the impeller 14; it does not function as a
seal nor does it appear that it is involved in cooling or sealing. Hembree,
col. 6, ll. 18-21 (“Some of the pumpage collected in casing fluid channel 60
passes between the pairs of case rings 28, 30[] and … collects in the …
containment shell 26”). Indeed, the containment shell 26 in Hembree
(Examiner: “sealing part”) appears to function as the partition part and the
sealing part because it both (1) lies between the stator (outer magnet
assembly 36) and the pumping chamber 60 at the portions adjacent to the
chamber 60 and (2) lies between the stator (36) and the rotor (inner magnet
assembly 16) in the “U” shaped portion. See fig. 1. Accordingly, we find
the portions identified by the Examiner in Sinn and Hembree are not
substitutions subject to mere reversal or design choice, but rather two
different assemblies.
For the reasons set forth above, the Examiner has not articulated a
reason with rational underpinning explaining why it would have been
obvious to modify the sealing part (6, 7) of Sinn to be attached to the outer
radial surface of the partition part (4, 5) in view of Hembree’s teaching of a
Appeal 2010-002143
Application 11/220,831
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sealing assembly 26 in contact with the outer radial surface of outer wear
ring 28. Accordingly, we do not sustain the Examiner’s rejection of claim 1
or of claims 2, 4-6, and 10-13, which depend therefrom (Rejection II). In
addition, we do not sustain the Examiner’s separate rejections (III-V) of
dependent claims 3 and 7-9 because these rejections likewise do not contain
an articulated reason with rational underpinning as to why it would have
been obvious to modify the sealing part (6, 7) of Sinn to be attached to the
outer radial surface of the partition part (4, 5).

DECISION
We reverse the Examiner’s decision regarding claims 1-13.

REVERSED

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