Ex Parte Yu

Board of Patent Appeals and Interferences

Sep 18, 2009

11041487 (B.P.A.I. Sep. 18, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DEQUAN YU
____________

Appeal 2009-001643
Application 11/041,487
Technology Center 3700
____________

Decided: September 18, 2009
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Before LINDA E. HORNER, JOHN C. KERINS, and
STEFAN STAICOVICI, Administrative Patent Judges.

HORNER, Administrative Patent Judge

DECISION ON APPEAL
Appeal 2009-001643
Application 11/041,487

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STATEMENT OF THE CASE
DeQuan Yu (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s decision rejecting claims 1, 5, and 9-12. Claims 2-4, 7, and
8 have been canceled, and claim 6 has been objected to as being dependent
on a rejected base claim. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).

SUMMARY OF DECISION
We AFFIRM-IN-PART.

THE INVENTION
Appellant’s claimed invention is to a regenerative fuel pump having a
single-sided rotary impeller. Spec. 1, para. 0001. Claim 1, reproduced
below, is representative of the subject matter on appeal.
1. A fuel pump for a motor vehicle, the fuel pump
pressurizing fuel for delivery to an engine, the fuel pump
comprising:
a housing;
a motor situated in the housing and driving a shaft, the
shaft defining a central axis;
a single sided impeller connected to the shaft for rotation
and for axial translation relative to shaft, the impeller having
opposed axially facing surfaces including a body-side surface
and a cover-side surface;
the impeller defining first and second impeller flow
channels formed within the cover-side surface of the impeller
and extending circumferentially around the impeller, the
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impeller further including a plurality of vanes, each of the first
and second impeller flow channels having a portion of the
vanes positioned at least partially therein, the second impeller
flow channel being positioned radially inward of the first
impeller flow channel, the impeller further including a flow
passageway formed radially inwardly from the second impeller
flow channels, the flow passageway extending through the
impeller from the body-side surface to the cover-side surface;
a cover attached to the housing;
the cover having a cover surface defining a cover flow
channel extending circumferentially around the cover, the cover
flow channel receiving fuel from an inlet formed in the cover,
the cover flow channel having a first portion that is at least
partially aligned with the first impeller flow channel and a
second portion that is at least partially aligned with the second
impeller flow channel, the first portion of the cover flow
channel extending around the cover and extending radially
inward to fluidically communicate with the second portion of
the cover flow channel, the second portion of the cover flow
channel extending around the cover and is positioned
substantially radially inward of the first portion of the cover
flow channel such that the entire cover flow channel extends
more than three-hundred and sixty degrees around the cover,
the second portion of the cover flow channel extending radially
inward to fluidically communicate with the flow passageway;
a body defined inside the housing, the body defining an
impeller chamber having a body surface, the impeller chamber
sized to receive the impeller, the body further defining an outlet
passageway positioned to fluidically connect to the flow
passageway of the impeller to receive higher pressure fuel for
delivery to the engine.

Appeal 2009-001643
Application 11/041,487

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THE REJECTION
The Examiner rejected claims 1, 5, and 9-12 under 35 U.S.C. § 103(a)
as being unpatentable over Watanabe (U.S. Patent No. 4,556,363; issued
Dec. 3, 1985) and Tuckey (U.S. Patent No. 6,162,012; issued Dec. 19,
2000).

ISSUES
The Examiner found that Watanabe discloses a fuel pump
substantially as claimed and that the single-sided impeller arrangement of
Tuckey provides for reduced wear, increased pump life and higher output
pressures that would have led one having ordinary skill in the art to modify
Watanabe’s fuel pump to use a single-sided impeller. Ans. 3-4. The
Examiner further found that the use of a clearance of less than or equal to 50
microns (claim 9) and maintaining an axial clearance while pressurizing fuel
to at least 2 bars (claim 10) would have been obvious matters of design
choice. Ans. 4-5. The Examiner further found that Watanabe shows flow
channels having substantially similar widths, as called for in claim 12.
Ans. 7.
Appellant contends that the combined prior art fails to describe a
single-sided impeller that directs flow radially inward along the impeller
cover side along a first and second cover flow channel extending more than
360 degrees around the cover to a flow passage extending radially inward
from the first and second flow channels for passing fluid from the cover side
to the body side. Appellant further contends that there is no suggestion or
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motivation in Watanabe or Tuckey, either implicitly or explicitly, or from
one skilled in the art that suggest combining the references to produce the
limitations of claim 1. Br. 7. Appellant further contends that the advantages
of the particular dimensions recited in claims 9 and 10 are described in
Appellant’s Specification as maintaining sufficient clearance to pressurize
fuel such that the impeller is allowed to translate axially along the shaft to
accommodate pressure variations while at the same time ensuring the ability
of the pump to pressurize fuel to a high pressure of about 2 bar or greater.
Br. 8. Appellant further argues the Examiner erred in finding that Watanabe
discloses impeller flow channels having equal radial widths. Br. 8.
The issues presented by this appeal are:
Has Appellant shown the Examiner erred in finding that the combined
teachings of Watanabe and Tuckey would have resulted in the fuel pump of
claim 1?
Has Appellant shown the Examiner erred in determining that an
adequate reason existed at the time of the invention for combining the
teachings of Watanabe and Tuckey?
Has Appellant shown the Examiner erred in concluding that the
dimensions called for in claims 9 and 10 would have been obvious matters
of design choice?
Has Appellant shown the Examiner erred in finding that Watanabe
discloses impeller flow channels having equal radial widths, as called for in
claim 12?

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FINDINGS OF FACT
We find that the following enumerated findings 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).
1. Watanabe discloses a fuel pump having an impeller 1 disposed in a
pumping chamber defined by a pump cover 2 and an end frame 3.
The impeller 1 is axially movable and co-rotatably mounted on
rotary shaft 4. Watanabe, col. 2, ll. 47-51.
2. Watanabe discloses that impeller 1 has formed on its opposite sides
radially outer grooves 1c adjacent to the periphery of the impeller
and radially inner grooves 1a (cover side), 1b (body side), and that
it also has communicating ports 1d near its center to equalize
pressures in spaces 27 and 28 on opposite side of the impeller and
to discharge fuel. Watanabe, col. 2, ll. 51-60; fig. 1.
3. As shown in Figure 2 of Watanabe, the radially outer grooves 1c
are of greater radial width than the radially inner grooves 1b on
impeller 1. Watanabe, fig. 2.
4. Watanabe discloses that both pump cover 2 and end frame 3 have
arcuately extending grooves serving as an outer flow channel 5
formed thereon in surrounding relation with the radially outer
grooves 1c on the impeller. The outer flow channel 5 is
communicated at one end with a suction port 6 and at the other end
with communicating channels 22a (cover) and 22b (end frame),
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which in turn are connected to inner flow channels 21a (cover) and
21b (end frame). Communicating channel 22b and inner flow
channel 21b are formed on the end frame 3, and communicating
channel 22a and inner flow channel 21a are formed on the pump
cover 2. Watanabe, col. 2, l. 60 – col. 3, l. 6.
5. Watanabe discloses that inner flow channels 21a (cover) and 21b
(end frame) are disposed in facing relation with the radially inner
grooves 1a (cover side) and 1b (end frame side) on the impeller,
and are in the form of arcuately extending grooves, each having a
substantially semi-circular shaped section. The inner flow
channels 21a and 21b are connected at one end to communicating
channels 22a and 22b, respectively, and at the other end to
discharge ports 23a and 23b, respectively. Watanabe, col. 3, ll. 7-
15; figs. 1, 3.
6. Watanabe discloses that the discharge ports 23a and 23b are
opened to the spaces 27 and 28, respectively, which are
communicated to an inner chamber 30 through a plurality of
discharge ports 31 provided around a bearing 7 press fitted into the
end frame 3. Watanabe, col. 3, ll. 33-37. As shown in Figure 1,
space 27 (cover side) communicates with space 28 (end frame
side) via ports 1d in impeller 1. Watanabe, fig. 1.
7. Watanabe discloses that very small gaps are maintained between
the sides of the impeller 1 and the pump cover 2 and the end frame
3. Watanabe, col. 3, ll. 22-25.
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8. Watanabe discloses that “[t]he effects of the present invention can
be obtained by using as a side channel pump a single-sided
impeller having grooves on its one side surface, unlike the impeller
1 having grooves 1a and 1b as shown in FIG. 1.” Watanabe,
col. 5, ll. 42-45.
9. Tuckey discloses that it was known in the art to have a fuel pump
with a single-sided impeller (rotor 26) where the grooves that form
the pumping channel are disposed on the cover side of the
impeller. Tuckey, col. 2, l. 65 - col. 3, l. 4; 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
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(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, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)
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The Supreme Court approved of the principle in Sakraida v. Ag Pro,
Inc., 425 U.S. 273, 282 (1976) that “when a patent ‘simply arranges old
elements with each performing the same function it had been known to
perform’ and yields no more that one would expect from such an
arrangement, the combination is obvious.” KSR, 550 U.S. at 417. This
principle applies when the old elements in the prior art perform the same
function as the now claimed structures. See In re Kuhle, 526 F.2d 553, 555
(CCPA 1975) (use of claimed feature solves no stated problem and presents
no unexpected result and “would be an obvious matter of design choice
within the skill of the art”). However, when the claimed structure performs
differently from the prior art, a finding of obvious design choice is
precluded. In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992) (finding of obvious
design choice precluded when claimed structure and the function it performs
are different from the prior art).

ANALYSIS
Appellant argues claims 1, 5, 6, and 11 as a group. Br. 9. We select
claim 1 as representative, and claims 5, 6, and 11 stand or fall with claim 1.
37 C.F.R. § 41.37(c)(1)(vii) (2008). We address claims 9, 10, and 12
separately from claim 1, infra.
Claim 1
Appellant argues that the flow channels shown in Figure 3 of
Watanabe are formed on the end frame 3 and not on the cover 2. Br. 4.
Appellant further argues that Watanabe and Tuckey, either individually or in
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combination, fail to describe a single-sided impeller that directs flow radially
inward along the impeller cover side along a first and second cover flow
channel extending more than 360 degrees around the cover to a flow passage
extending radially inward from the first and second flow channels for
passing fluid from the cover side to the body side. Br. 7. While we agree
that Figure 3 of Watanabe shows the flow channels on the end frame 3,
Watanabe discloses that pump cover 2 has the same flow channels as end
frame 3 including an outer flow channel 5 (first portion of the cover flow
channel) connected on one end to a suction port 6 and connected on its other
end to a communicating channel 22a, which is connected to an inner flow
channel 21a (second portion of the cover flow channel), which is connected
to discharge port 23a, such that the flow channel on the pump cover 2
extends more than 360 degrees around the cover and the second portion of
the cover flow channel extends radially inward to fluidically communicate
with a flow passageway extending through the impeller from the cover-side
surface to the body-side surface (Facts 1, 2, 4-6).
Appellant further contends that Watanabe “fails to describe a single-
sided impeller that directs fluid flow radially inward along the cover side to
a flow passage formed radially inward from the first and second impeller
flow channels for directing fluid to a flow channel so that fluid may pass
from the cover side to the body side.” Br. 5. We disagree with this
contention. First, although Watanabe discloses in the embodiment of
Figure 1 a two-sided impeller, the fluid flow between the cover and the
cover-side of the impeller in that embodiment is such that fluid entering
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from suction port 6 flows radially inward along a flow channel in the cover
(5, 22a, 21a) to a flow passage (23a, 27) formed radially inward from the
first and second impeller flow channels (1c, 1a) for directing fluid to a flow
channel (1d) so that fluid may pass from the cover side to the body side of
the impeller (Facts 1, 2, 4-6). Second, Watanabe further discloses that “[t]he
effects of the present invention can be obtained by using as a side channel
pump a single-sided impeller having grooves on its one side surface, unlike
the impeller 1 having grooves 1a and 1b as shown in FIG. 1” (Fact 8). As
such, Watanabe suggests implementing the invention using a single-sided
impeller, which leaves a person having ordinary skill in the art with two
finite identified, predictable solutions, viz, (1) using grooves on the cover-
side of the impeller with a corresponding flow channel in the cover, or (2)
using grooves on the body-side of the impeller with a corresponding flow
channel in the end frame. See KSR, 550 U.S. at 421 (“When there is a
design need or market pressure to solve a problem and there are a finite
number of identified, predictable solutions, a person of ordinary skill has
good reason to pursue the known options within his or her technical grasp. If
this leads to the anticipated success, it is likely the product not of innovation
but of ordinary skill and common sense.”).
Appellant argues that there is no suggestion or motivation to combine
Tuckey and Watanabe to lead to the fuel pump of claim 1. Br. 6. We
disagree. First, as noted supra, Watanabe suggests modifying its two-sided
impeller to use a single-sided impeller (Fact 8). Second, Tuckey discloses
that it was known in the art to have a fuel pump with a single-sided impeller
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where the grooves that form the pumping channel are disposed on the cover
side of the impeller (Fact 9). As such, based on the teaching from Tuckey
that it was known to use a single-sided impeller having grooves on the
cover-side of the impeller with a corresponding flow channel on the cover,
and based on the suggestion in Watanabe to implement its impeller grooves
and corresponding flow channel on a single side of the impeller, it would
have been obvious to one having ordinary skill in the art to have
implemented Watanabe’s fuel pump using only its impeller grooves (1c, 1a)
and its corresponding flow channel on the cover 2 of Watanabe. As such,
Appellant has not persuaded us of error in the Examiner’s rejection of
claim 1, and claims 5, 6, and 11 fall with claim 1.
Claims 9 and 10
Claim 9 depends from claim 1 and recites that the impeller maintains
an axial clearance between the cover-side surface and the cover surface that
is less than or equal to 50 micron by sizing the area of the cover-side surface
of the impeller that is exposed to fuel in relation to the area of the body-side
surface of the impeller that is exposed to fuel. Claim 10 also depends from
claim 1 and recites that the impeller maintains an axial clearance between
the cover-side surface and the cover surface that is sufficient to pressurize
fuel to at least 2 bar by sizing the area of the cover-side surface of the
impeller that is exposed to fuel in relation to the area of the body-side
surface of the impeller that is exposed to fuel. Appellant argues that the
claimed axial clearance must be maintained “to ensure the ability of the
pump to pressurize fuel to a high pressure. Br. 8.
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We agree with the Examiner’s finding that it was well known in the
art of fuel pumps to operate at pressures greater than 2 bar. Ans. 7, citing
Tuckey, fig. 14. Further, although Watanabe does not disclose the exact
axial clearance between the impeller and the cover, Watanabe discloses that
very small gaps are maintained between the sides of the impeller 1 and the
pump cover 2 and the end frame 3 (Fact 7). Thus, we agree with the
Examiner’s conclusion that the claimed axial clearances are merely the
result of applying ordinary skill to achieve the known objective of
pressurizing fuel to pressures of 2 bar or greater. Appellant has not
persuaded us by the arguments presented that the Examiner erred in reaching
a conclusion of obviousness as to claims 9 and 10.
Claim 12
Claim 12 depends from claim 1 and calls for the first and second
impeller flow channels to have “substantially equal radial widths.” The
Examiner found that “Watanabe clearly shows flow channels having
substantially similar widths.” Ans. 7. Claim 12, however, does not recite
“substantially similar” widths; rather, it calls for flow channels having
“substantially equal radial widths.” As shown in Figure 2 of Watanabe, the
radially outer grooves 1c are of greater radial width than the radially inner
grooves 1b on impeller 1 (Fact 3). As such, Appellant has persuaded us that
the Examiner’s conclusion of obviousness of claim 12 is based on an
erroneous underlying finding of fact.

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CONCLUSIONS
Appellant failed to show the Examiner erred in finding that the
combined teachings of Watanabe and Tuckey would have resulted in the fuel
pump of claim 1.
Appellant also failed to show the Examiner erred in determining that
an adequate reason existed at the time of the invention for combining the
teachings of Watanabe and Tuckey.
Appellant also failed to show the Examiner erred in concluding that
the dimensions called for in claims 9 and 10 would have been obvious
matters of design choice.
Appellant has shown the Examiner erred in finding that Watanabe
discloses impeller flow channels having equal radial widths, as called for in
claim 12.
DECISION
We AFFIRM the decision of the Examiner to reject claims 1, 5, 6, and
9-11, and we REVERSE the decision of the Examiner to reject claim 12.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED -IN-PART

Vsh
Appeal 2009-001643
Application 11/041,487

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