Ex Parte Wood

Board of Patent Appeals and Interferences

Sep 23, 2008

10381021 (B.P.A.I. Sep. 23, 2008)

UNITED STATES PATENT AND
TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NIGEL CHARLES WOOD
____________

Appeal 2008-2647
Application 10/381,021
Technology Center 3700
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Decided: September 23, 2008
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Before HUBERT C. LORIN, DAVID B. WALKER, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1-7. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
We REVERSE.
Appeal 2008-2647
Application 10/381,021
THE INVENTION
The Appellants’ claimed invention is directed to a pumping
arrangement for a paint circulation system including a reciprocating pump,
an AC induction motor, a rotary-to-linear motion converter, an AC
frequency inverter, and a surge eliminator (Specification, 2-3). Claim 1,
reproduced below, is representative of the subject matter of appeal.

1. A pumping arrangement for a paint circulation system
comprising:
a reciprocating pump and an alternating current induction
motor,
a rotary to linear motion converter coupling an output of
the induction motor to a drive input of the pump,
an alternating current frequency inverter controlling said
induction motor,
a switch for reversing rotation of the induction motor at
the ends of the stroke of the reciprocating pump, and,
a surge eliminator communicating with the output side of
said pump to augment the pressure in the circulation system during
stroke reversal of the pump.

THE REJECTION
The Examiner relies upon the following as evidence in support of the
rejection:
Bert US 6,074,170 Jun. 13, 2000
Cornell US 6,089,837 Jul. 18, 2000
Schwartz US 6,175,210 B1 Jan. 16, 2001

Claims 1-7 are rejected under 35 U.S.C. § 103(a) unpatentable over
Bert, Cornell, and Schwartz.

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ISSUES
The issue is whether the Examiner has erred in rejecting claims 1-7
under 35 U.S.C. § 103(a) as unpatentable over Bert, Cornell, and Schwartz.
This issue turns on whether one of ordinary skill in the art would modify
Bert with a surge eliminator as disclosed by Cornell.

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) to be
supported at least by a preponderance of the evidence1:
FF1. Bert discloses that as the pump outlet pressure rises and falls a
controller makes incremental changes to a motor to maintain a substantially
constant pressure at the pump outlet (Bert 6:65-7:11).
FF2. Cornell discloses a pump inlet stabilizer. When the pressure of a fluid
source varies above or below a predetermined pressure range, the pressure
control mechanism sends a signal to a solenoid to readjust pressure in the
gas chamber (Cornell 2:40-44).
FF3. Schwartz discloses pump system using an AC inverter 40 (Fig. 1).

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said

1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Application 10/381,021
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18,
(1966). See also KSR, 127 S.Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” id. at 1739, and discussed circumstances in which a patent might be
determined to be obvious. In particular, the Supreme Court emphasized that
“the principles laid down in Graham reaffirmed the ‘functional approach’ of
Hotchkiss, 11 How. 248.” KSR, 127 S.Ct. at 1739, (citing Graham, 383 U.S.
at 12 (emphasis added)), and reaffirmed principles based on its precedent
that “[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”
The Court also stated “[i]f a person of ordinary skill can implement a
predictable variation, § 103 likely bars its patentability.” Id. at 1740. The
operative question in this “functional approach” is thus “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id.
The Court noted that “[t]o facilitate review, this analysis should be
made explicit.” Id. at 1741 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
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Application 10/381,021
with some rational underpinning to support the legal conclusion of
obviousness”)). However, “the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id.

ANALYSIS
The Appellant argues that the rejection of claims 1-7 under 35 U.S.C.
§ 103(a) as unpatentable over Bert, Cornell, and Schwartz is improper
because there is no motivation to combine the references (Br. 4).
Specifically, the Appellant argues that since Bert has disclosed that control
of a motor maintains a “substantially constant pressure at the pump outlet”
(Br. 4) that pressure fluctuations are not a problem and that one would not
consider a pressure fluctuation attenuator as taught by Cornell as being
necessary in Bert’s device (Br. 5).
In contrast the Examiner has determined that because in Bert “the
instantaneous pressure at the pump outlet falls and rises” it would have been
obvious to use the teachings of Cornell to attenuate the pressure fluctuations
even if they were only very small (Answer 5-6).
We agree with the Appellant. Bert has disclosed that the pump uses
the motor to make incremental changes to maintain a substantially constant
pressure at the pump outlet (FF1). As the pressure at the pump outlet of Bert
is substantially constant, one of ordinary skill in the art would see no reason
to modify the pump outlet as claimed. The Examiner has failed to provide
sufficient articulated reasoning with rational underpinning to support the
legal conclusion of obviousness, since a substantially constant pressure
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already exists in the pump of Bert, and we will not sustain the rejection of
the claim 1 for this reason. As claims 2-7 depend from claim 1, the
rejection of these claims is also not sustained. For the above reasons, the
rejection of claims 1-7 under 35 U.S.C. § 103(a) as unpatentable over Bert,
Cornell, and Schwartz is not sustained.

CONCLUSIONS OF LAW
We conclude that the Appellant has shown that the Examiner
erred in rejecting claims 1-7 under 35 U.S.C. § 103(a) as unpatentable over
Bert, Cornell, and Schwartz.

DECISON
The Examiner’s rejection of claims 1-7 is not sustained.

REVERSED

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Application 10/381,021

LV:

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