Richard Henderson et al.

Patent Trials and Appeals Board

Nov 25, 2020

2020002213 (P.T.A.B. Nov. 25, 2020)

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.
14/294,858 06/03/2014 Richard S. Henderson MLCZ 200187US01 7319
27885 7590 11/25/2020
FAY SHARPE LLP
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115
EXAMINER
JARIWALA, CHIRAG
ART UNIT PAPER NUMBER
3746
NOTIFICATION DATE DELIVERY MODE
11/25/2020 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):
uspto@faysharpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RICHARD S. HENDERSON, JON TIPTON,
ANDREW HORSFALL, PETER CORNELIS JETTEN, and
PAUL BOSWORTH
____________________

Appeal 2020-002213
Application 14/294,858
Technology Center 3700
____________________

Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
SEAN P. O’HANLON, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 4–16, and 21. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Pyrotek, Inc. Appeal
Br. 1.
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THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A pump for pumping molten aluminum, said pump
comprised of a metal base defining a pumping chamber, an
impeller comprised of a refractory material resistant to molten
aluminum located in said pumping chamber, a motor mount
adapted to receive a motor, at least one metal post extending
between said base and said motor mount, a metal shaft
extending between said motor and said impeller, at least one
bearing ring comprised of a refractory material disposed
adjacent a radial edge of the impeller and engaging the
impeller, the pumping chamber including an inlet and an outlet,
and a metal riser tube in fluid communication with the outlet
receiving the molten aluminum, wherein said base is comprised
of a plurality of mated steel plates.
EVIDENCE
The prior art relied upon by the Examiner is:
Name Reference Date
Cooper ’496 US 5,944,496 Aug. 31, 1999
Bingham US 6,375,422 B1 Apr. 23, 2002
Greer US 6,439,860 B1 Aug. 27, 2002
Tessien US 7,425,092 B1 Sept. 16, 2008
Morando US 2008/0253905 A1 Oct. 16, 2008
Harris US 2013/0118017 A1 May 16, 2013
Cooper ’914 US 8,714,914 B2 May 6, 2014

3 H.P. Centrifugal Pump for Molten Zinc and Other Molten Metals (2008)
(accessed Nov. 12, 2018), http://www.wempumpsmfg.net/3pump.html
(hereinafter “Wempumps”).

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REJECTIONS2
I. Claims 1, 4–9, 13, and 21 stand rejected under 35 U.S.C. § 103
as unpatentable over Greer, Cooper ’496, Bingham, and
Wempumps.
II. Claims 10 and 12 stand rejected under 35 U.S.C. § 103 as
unpatentable over Greer, Cooper ’496, Bingham, Wempumps,
and Tessien.
III. Claims 11 and 16 stand rejected under 35 U.S.C. § 103 as
unpatentable over Greer, Cooper ’496, Bingham, Wempumps,
and Cooper ’914.
IV. Claims 14 and 15 stand rejected under 35 U.S.C. § 103 as
unpatentable over Greer, Cooper ’496, Bingham, Wempumps,
Morando, and Harris.

2 Subsequent to the Final Action, Appellant amended claim 1 in an attempt
to overcome the rejection of claims 1, 4–16, and 21 under 35 U.S.C.
§ 112(b) as indefinite. See Amdt 2 (Nov. 19, 2019); Final Act. 2 (rejecting
claim 1 because “[t]he phrase ‘may be’ renders the claim indefinite”). The
Examiner entered the Amendment. Advisory Act. 1. However, the
Examiner has not expressly indicated whether this rejection has been
withdrawn. See id.; Ans. 3–12 (not identifying any withdrawn rejections,
but only addressing the rejections under 35 U.S.C. § 103). Thus, inasmuch
as the amendment to claim 1 specifically removes the language to which the
rejection was directed, we infer that the Examiner intended to withdraw the
rejection and decline to address it in our decision, instead leaving it to the
Examiner to clarify whether such a rejection is still appropriate upon return
of jurisdiction of this application to the Examiner.
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OPINION
Rejection I – Obviousness based on Greer, Cooper ’496,
Bingham, and Wempumps
In contesting this rejection, Appellant references certain limitations
recited in independent claim 1, but otherwise presents arguments without
regard to any particular claim. See Appeal Br. 4–8. We select claim 1 as
representative, and claims 4–9, 13, and 21 stand or fall with claim 1. See
37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Greer discloses a pump for molten
aluminum, substantially as claimed (Final Act. 3–4), but fails to disclose,
inter alia, that “the components such as base, posts, shaft and riser [are]
made of metal” (id. at 5).3 The Examiner finds that Bingham discloses
a pump comprising: a metal base (fig. 1/2; 12: pump body;
Col. 6, lines 40–42: pump body made of steel); at least one
metal post (fig. 1/2; 18: support column; Col. 6, lines 40–42:
support column made of steel); a metal shaft (fig. 2; 26: drive
shaft; Col. 6, lines 40–42: drive shaft made of steel) and
wherein said base (12) is comprised of a plurality of mated steel
plates (64: top plate, 58: ring shaped body section, 54: bottom
plate; Col. 7, lines 25–26: plates 64, 58 and 54 made of steel).
Id. (boldface omitted). The Examiner determines that it would have been
obvious to modify Greer’s pump to have steel components “in order to
increase the thermal durability of the molten metal pump.” Id. The
Examiner also finds that, “[a]s evidenced by Wem[pumps] (see highlighted
section on the 2nd page of the provided copy), it was known in the art to
make the submerged parts in molten metal from carbon steel or stainless

3 The Examiner relies on Cooper ’496 for a teaching to add a riser to Greer
to transfer the molten metal from the metallic bath to a desired location.
Final Act. 4–5. Appellant does not contest this aspect of the rejection.
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steel.” Id. at 6 (boldface omitted). The Examiner determines that using steel
for Greer’s molten metal pump components would have been obvious to one
of ordinary skill as a matter of design choice. See id. (explaining that “it has
been held to be within the general skill of a worker in the art to select a
known material on the basis of its suitability for the intended use as a matter
of obvious design choice” (citing In re Leshin, 277 F.2d 197 (CCPA
1960))).
Appellant argues that it would not have been obvious to combine the
teachings of Greer and Bingham because the references are non-analogous
art. Appeal Br. 4. Appellant asserts that “molten metal pumps[, as disclosed
by Appellant and by Greer,] and cryogenic liquid (e.g. oxygen, nitrogen,
argon) pumps[, as disclosed by Bingham,] are not in the same field of
endeavor.” Id.; see also id. at 5 (asserting that “the field of Bingham
(cryogenic pumps) is not remotely related to the problem being addressed by
the present Applicant—emergency pump-out of a molten aluminum
furnace”). Appellant asserts that the large differences in temperature and
density between molten metals and cryogenic liquids require that they “be
handled in an extremely different manner using dissimilar equipment” and
“impart[] many different requirements on the configuration and materials
used to build a corresponding pump.” Id. at 4. According to Appellant, “the
Examiner has erred by alleging the references are anal[o]gous simply
because Bingham and the present invention (or Greer) both pump fluids.”
Id. We are not persuaded by this argument.
Regarding the issue of analogous art, the established precedent of our
reviewing court sets up a two-fold test for determining whether art is
analogous: “(1) whether the art is from the same field of endeavor,
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regardless of the problem addressed and, (2) if the reference is not within the
field of the inventor’s endeavor, whether the reference still is reasonably
pertinent to the particular problem with which the inventor is involved.” In
re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (quoting In re Bigio, 381
F.3d 1320, 1325 (Fed. Cir. 2004)). Here, the Examiner takes the position
that Greer and Bingham are in the same field of endeavor because they
“have essentially the same function and structure: they move fluids by
means of an impeller, submerged in the fluid (liquid), driven by a motor.”
Ans. 5. In this regard, Appellant does not persuasively refute the
Examiner’s position. Although Appellant asserts that “the pump of
Bingham, suited for pumping a cryogenic liquid, would be thoroughly
incapable of pumping molten aluminum” (Reply Br. 3), Appellant does not
set forth any evidence to support this contention. Appellant’s assertion
amounts to nothing more than attorney argument unsupported by evidence
and, thus, is entitled to little, if any, weight. In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974) (An attorney’s arguments in a brief cannot take the place of
evidence.). Consequently, Appellant does not apprise us of error in the
Examiner’s conclusion that Greer and Bingham are analogous art. See
Ans. 5.
Appellant argues that the Examiner’s reasoning for the proposed
modification of Greer’s pump to have steel components is deficient because
“a steel pump in molten aluminum is less durable than a refractory pump.”
Appeal Br. 5 (emphasis omitted); see also id. at 6 (asserting that “steel
dissolves in molten aluminum[, and, thus,] there is no motivation to
substitute steel for ceramic or refractory materials when constructing a
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molten aluminum pump”). Appellant asserts that its “motivation . . . to
select steel was for an emergency pump out situation where the preferred
refractory material cannot be sufficiently preheated for insertion into the
molten metal.” Id. at 5; see also id. (asserting that “immersing a refractory
material that is room temperature into molten aluminum will result in
cracking”). This argument is unpersuasive. Even if substituting the graphite
used in Greer’s pump components for steel would make the pump less
durable (see Appeal Br. 5), our reviewing court has recognized that a given
course of action often has simultaneous advantages and disadvantages, and
this does not necessarily obviate any or all reasons to combine teachings.
See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (if
there are tradeoffs involved regarding features, such things do not
necessarily prevent the proposed combination); Winner Int’l Royalty Corp.
v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the
motivating benefit comes at the expense of another benefit, however, should
not nullify its use as a basis to modify the disclosure of one reference with
the teachings of another. Instead, the benefits, both lost and gained, should
be weighed against one another.”).
Appellant asserts that Wempumps discloses a pump for molten zinc,
and the “use of steel with molten zinc is not relevant to [the] use of steel in
molten aluminum.” Appeal Br. 7. We are not persuaded by this argument.
Wempumps discloses a “3 H.P. CENTRIFUGAL PUMP FOR MOLTEN
ZINC AND OTHER MOLTEN METALS.” Wempumps 1. “The
WEMPump for molten zinc and other molten metals will quickly and safely
empty large or small galvanizing settings, as well as melting and holding
furnaces, transferring the metal to containers or molds of any size or directly
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to an auxiliary setting when available.” Id. In other words, Wempumps
does not disclose that its pump is limited to use with molten zinc. Although
Wempumps does not specifically disclose molten aluminum, this does not
make the reference’s teachings irrelevant to pumps, such as Greer, for
molten aluminum. As discussed above, the Examiner relies on Wempumps
as evidence that it was known in the art to use steel for submerged
components of a molten metal pump. See Final Act. 6. The Examiner
reasons that it would have been an obvious matter of design choice to select
steel for Greer’s molten metal pump components based on its suitability for
the intended use. Id. (citing Leshin, 277 F.2d at 197). In this regard,
Appellant does not persuasively refute the Examiner’s reasoning. We note
that Wempumps discloses that “[t]he pump can be safely handled by one
man in an emergency to take care of pan failure.” Id. In other words,
Wempumps discloses that its steel pump is suitable for use in molten metal
emergency pump out situations, which is consistent with Appellant’s
disclosure. See Spec. ¶ 31 (describing that “[t]he present pump provides
suitable emergency pump out apparatus,” and, “because of its steel
construction[,] it can be readily disposed within molten aluminum and
molten zinc (and other molten metals)”).
Appellant argues that Greer and Cooper ’496 teach away from the
Examiner’s proposed modification of Greer’s pump to have steel
components. See Appeal Br. 5, 8. In particular, Appellant asserts that each
of Greer and Cooper ’496 “teach[es] that a molten aluminum pump should
be constructed with a graphite base. More particularly, these references
suggest that steel does not function as a substitute for graphite in a molten
aluminum environment.” Id. at 5. We are not persuaded by this argument.
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A reference teaches away from a claimed invention or a proposed
modification if “a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant.” In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (quoting In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). Prior art does not teach away
from claimed subject matter merely by disclosing a different solution to a
similar problem unless the prior art also criticizes, discredits, or otherwise
discourages the solution claimed. See In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004). Here, although each of Greer and Cooper ’496 discloses a
molten metal pump having a graphite base (Greer, col. 4, l. 67; Cooper ’496,
col. 4, l. 59), Appellant does not point to, nor do we find, any disclosure in
these references criticizing, discrediting, or otherwise discouraging the use
of steel to make Greer’s pump base, posts, and shaft components, as
proposed by the Examiner in the rejection. Appellant does not identify, nor
do we discern, any disclosure in Greer or Cooper ’496 that steel would not
function at all in a molten aluminum environment, as Appellant urges. See
Appeal Br. 5. It is well established that the disclosure of a particular
embodiment, even a preferred embodiment, in the prior art—absent such
criticizing, discrediting, or otherwise discouraging—is not a teaching away.
See DyStar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1364
(Fed. Cir. 2006) (“We will not read into a reference a teaching away from a
process where no such language exists.”).
Appellant argues that one of ordinary skill in the art would have had
no reasonable expectation of success in combining the references’ teachings,
as proposed by the Examiner. See Appeal Br. 8. This argument is
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unpersuasive because Appellant does not proffer persuasive evidence or
technical reasoning to explain how combining the teachings of Greer,
Cooper ’496, Bingham, and Wempumps in an operable manner would be
beyond the level of ordinary skill in the art. See KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person
of ordinary creativity, not an automaton.”). In other words, we are not
persuaded that successfully combining the teachings of Greer, Cooper ’496,
Paul, Bingham, and Wempumps would be beyond the skill and creativity of
an ordinary artisan.
For the above reasons, Appellant does not apprise us of error in the
Examiner’s conclusion that the subject matter of claim 1 would have been
obvious. Accordingly, we sustain the rejection of claim 1, and of claims
4–9, 13, and 21 falling therewith, under 35 U.S.C. § 103 as unpatentable
over Greer, Cooper ’496, Bingham, and Wempumps.

Rejection II – Obviousness based on Greer, Cooper ’496,
Bingham, Wempumps, and Tessien
In rejecting claim 10, the Examiner finds that Greer discloses “the
pump having bearing rings (21; as seen in fig. 7) and an associated plate
(plate 14 is associated with the top bearing 21 and plate 22 is associated with
the bottom bearing 21),” but “remains silent on an expansion gasket and a
sealing gasket, i.e., multiple seals around the bearing.” Final Act. 8
(boldface omitted). The Examiner finds that Tessien discloses “the pump
wherein (fig. 6) an expansion gasket (seal 613) is used between the radial
edge of bearing ring (611) and the plate (603) [note that Tessien discloses the
use of multiple seals in Col. 10, lines 33–34].” Id. at 9. The Examiner
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determines that it would have been obvious to “provid[e] multiple expansion
gaskets as taught by Tessien between the bearing ring and its plate in Greer
in order to help retain the bearing ring during the temperature changes in the
pump system.” Id. (boldface omitted).
Appellant argues that “Tessien teaches a seal between a drive shaft
and an end cap. There is no mention of an impeller associated bearing ring.
Therefore, Tessien cannot teach a gasket for a non-existent impeller bearing
ring.” Appeal Br. 8–9. We are not persuaded by this argument.
Tessien discloses a cylindrical cavitation chamber for use with
impeller assembly 300. Tessien, col. 10, ll. 13–14. Tessien discloses that
“[e]nd cap 601 includes one or more bearings 609 to insure proper rotation
of impeller spindle 311, and thus impeller 300. End cap 603 preferably
includes at least one bearing 611 and multiple seals 613.” Id., col. 10,
ll. 32–35. The Examiner explains that the “impeller is 300 (see fig. 4) and
[the] bearing ring (611; in fig. 6) is associated with the impeller (300).”
Ans. 12. In this regard, Appellant does not identify error in the Examiner’s
position. Appellant’s bald assertion that “a gasket between a drive shaft and
an end cap . . . does not teach a gasket between a bearing ring and a pump
housing” (Reply Br. 7) does not point out where the Examiner’s articulated
findings and explanation as to the disclosure of Tessien are deficient.
Moreover, Appellant does not specifically address the Examiner’s reasoning
articulated in support of the conclusion of obviousness. See Final Act. 9.
For the above reasons, Appellant does not apprise us of error in the
Examiner’s conclusion that the subject matter of claim 10 would have been
obvious. Accordingly, we sustain the rejection of claim 10, and its
dependent claim 12, for which Appellant does not present separate
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patentability arguments (see Appeal Br. 8–9), under 35 U.S.C. § 103 as
unpatentable over Greer, Cooper ’496, Bingham, Wempumps, and Tessien.

Rejections III and IV – Obviousness based on Greer,
Cooper ’496, Bingham, Wempumps, and one or more of
Cooper ’914, Morando, and Harris
Appellant does not present any additional arguments contesting the
rejections of claims 11 and 14–16, which depend from independent claim 1.
See Appeal Br. 4–9 (presenting arguments only with respect to Rejections I
and II). To the extent Appellant relies on the arguments presented for
patentability of claim 1, Appellant’s arguments do not apprise us of error
with respect to claims 11 and 14–16 for the same reasons discussed above in
connection with Rejection I. Accordingly, we sustain the rejections, under
35 U.S.C. § 103, of claims 11 and 16 as unpatentable over Greer,
Cooper ’496, Bingham, Wempumps, and Cooper ’914, and of claims 14 and
15 as unpatentable over Greer, Cooper ’496, Bingham, Wempumps,
Morando, and Harris.
CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4–9, 13, 21 103 Greer, Cooper ’496,
Bingham, Wempumps
1, 4–9, 13,
21

10, 12 103 Greer, Cooper ’496,
Bingham,
Wempumps, Tessien
10, 12
11, 16 103 Greer, Cooper ’496,
Bingham,
11, 16
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Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
Wempumps,
Cooper ’914
14, 15 103 Greer, Cooper ’496,
Bingham,
Wempumps,
Morando, Harris
14, 15
Overall
Outcome
1, 4–16, 21
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).
AFFIRMED