Roger BOTTOMFIELD

Patent Trials and Appeals Board

Aug 3, 2021

2020006698 (P.T.A.B. Aug. 3, 2021)

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.
15/340,804 11/01/2016 Roger L. BOTTOMFIELD 0219.0005 CON 3777
84278 7590 08/03/2021
PATENT LAW GROUP: Atkins and Associates P.C.
123 W. Chandler Heights Road, Unit 12535
Chandler, AZ 85248
EXAMINER
LAMBERT, WAYNE A
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
08/03/2021 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):
main@plgaz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROGER L. BOTTOMFIELD
Appeal 2020-006698
Application 15/340,804
Technology Center 3700
Before JENNIFER D. BAHR, CARL M. DEFRANCO, and
LEE L. STEPINA, Administrative Patent Judges.

DEFRANCO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 21–24, 26–28, 32–37, 39–41, 43, and
46–48. Claims 1–20, 25, 29–31, 38, 42, 44, and 45 are canceled. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm in part.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the inventor as the real party in
interest. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The claimed subject matter relates to a cap assembly for a turbo-
molecular pump used in the manufacture of semiconductor wafers. Spec.
¶¶ 3–7. Of the claims on appeal, claims 21, 28, and 34 are independent.
Claims 21 and 34 recite limitations directed to a “vent channel” for the cap
assembly, and claim 28 recites a limitation directed to an “o-ring” for the
cap assembly. Claims 21 and 28, reproduced below, are illustrative of the
claimed subject matter.
21. A turbo-molecular pump, comprising:
a rotor;
a turbine mounted to the rotor and including a recess
opposite the rotor;
a bolt attached to the rotor through an opening of the
turbine and including a portion of the bolt disposed in the
recess; and
a cap disposed over the recess, wherein the cap includes
a vent channel formed through the cap.

28. A turbo-molecular pump, comprising:
a rotor;
a turbine mounted to the rotor and including a recess
oriented away from the rotor, wherein the recess comprises a
bottom surface and a side surface within the recess;
a cap disposed over the recess; and
an o-ring compressed between the cap and the side
surface of the recess.

Appeal Br. 17–18 (Claims App.) (emphases added).
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EXAMINER’S REJECTIONS
Claims 21–24, 26, 34–37, 39, and 41 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Kabasawa (US 6,755,611 B1, issued June 29,
2004) and Eckel (US 4,256,435, issued Mar. 17, 1981). Final Act. 4–7.
Claims 27 and 40 stand rejected under 35 U.S.C. § 103 as
unpatentable over Kabasawa, Eckel, and Shrader (US 3,877,546,
issued Apr. 15, 1975). Final Act. 7–8.
Claims 28, 33, 43, 46, and 47 stand rejected under 35 U.S.C. § 103 as
unpatentable over Kabasawa, Shrader and Ohtachi (US 2011/0103934 A1,
published May 5, 2011). Final Act. 8–10.
Claim 32 stands rejected under 35 U.S.C. § 103 as unpatentable over
Kabasawa, Shrader, Ohtachi, and Eckel. Final Act. 11.
Claim 48 stands rejected under 35 U.S.C. § 103 as unpatentable over
Kabasawa, Shrader, Ohtachi, and Kaiser (US 3,613,936, issued Oct. 19,
1971). Final Act. 11–12.
ANALYSIS
A. Obviousness Over Kabasawa and Eckel (Claims 21–24, 26, 34–37,
39, and 41)

We begin with independent claim 21. The Examiner finds that
Kabasawa discloses all the claim elements, except for the “wherein” clause
reciting that “the cap includes a vent channel formed through the cap.” Final
Act. 4. For that limitation, the Examiner points to Eckel’s teaching of a
wind turbine that has a cap member 14 provided with vents 136. Id.; see
also Eckel, Fig. 2). With that teaching in mind, the Examiner determines
that one skilled in the art would have deemed it obvious “to modify the
turbo-molecular pump of Kabasawa wherein the cap (i.e. of Kabasawa)
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includes a vent channel (i.e. as taught by Eckel) formed through the cap (i.e.
of Kabasawa), so as to dissipate heat transmitted by the turbine rotor of
Kabasawa.” Id. at 4–5 (citing Eckel, 3:24–26) (emphasis added). The
Examiner advances essentially the same findings and rationale in rejecting
claim 34, which recites limitations similar to claim 21. See id. at 5–6.
We find error in the Examiner’s reason for combining the teachings of
Kabasawa and Eckel. As Appellant correctly notes, the reason given by the
Examiner—to dissipate heat from Kabasawa’s turbine components—lacks
rational underpinning to support a conclusion of obviousness. Appeal
Br. 10; Reply Br. 1–2. That is because the Examiner fails to establish by
preponderant evidence that any components in Kabasawa’s recess 91
require, or would benefit from, heat dissipation. Rather, the evidence
supports Appellant’s position that only the opposite end (i.e., the bottom
end) of Kabasawa’s turbine pump, which actually houses heat-generating
components, such as motor 30, electro-magnets 21, 32, 34, and rotor shaft
bearings 39, would benefit from a heat-dissipating vented cap. See
Kabasawa, 4:13–64, 5:15–17, Fig. 1.
Indeed, the bottom end of Kabasawa’s pump where the heat-
generating components are housed more closely corresponds to the tail
end 14 of Eckel’s turbine, which the Examiner relies on for a vented cap. In
contrast, the top end of Kabasawa’s pump having boss portion 90 more
closely resembles nose end 12 of Eckel’s turbine, which is unvented. That is
because, similar to the top end of Kabasawa, the nose end of Eckel’s turbine
is the entry point for incoming air. So, although Eckel may teach providing
a vented cap along the end of a turbine where heat-generating components
are housed, nowhere do we discern that Eckel teaches providing a vented
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cap along the end of a turbine where incoming air is suppled. Thus, we
reject the notion that one skilled in the art would have been led to include a
vented cap over the empty recess of Kabasawa’s turbine pump. As such, we
do not sustain the Examiner’s rejection of claim 21 or claims 22–24 and 26
depending therefrom.
Independent claim 34 recites similar limitations to claim 21. In
rejecting claim 34, the Examiner relies on the same flawed reasoning to
combine Kabasawa and Eckel as discussed above with respect to claim 21.
See Final Act. 5–6. Thus, we do not sustain the rejection of independent
claim 34 or claims 35–37, 39, and 41 depending therefrom.
B. Obviousness Over Kabasawa, Eckel, and Shrader (Claims 27 and 40)
Claims 27 and 40 depend, respectively, from claims 21 and 34. The
Examiner’s addition of Shrader does not cure the deficiency discussed above
with respect to the Examiner’s combination of Kabasawa and Eckel. Thus,
for the same reasons discussed above, we do not sustain the Examiner’s
rejection of dependent claims 27 and 40.
C. Obvious Over Kabasawa, Shrader, and Ohtachi (Claims 28, 33, 43,
46, and 47) and Kaiser (Claim 48)

1. Claims 28, 33, and 46–48
Appellant argues independent claim 28 together with dependent
claims 33 and 46–48. See Appeal Br. 11–14. We select claim 28 as
representative, with dependent claims 33 and 46–48 standing or falling
therewith. See 37 C.F.R. § 41.37(c)(1)(iv).
In rejecting claim 28, the Examiner finds that Kabasawa discloses all
the claim elements, except for the recited “o-ring compressed between the
cap and the side surface of the recess.” Final Act. 8–9. For that limitation,
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the Examiner points to Shrader’s teaching of providing o-ring 95 for sealing
cap 89 within the recess of molecular rotor pump 79. Id. at 9; see Shrader,
2:61–3:4, Fig. 1. But because Shrader depicts the o-ring as being
compressed underneath the cap, as opposed to being “compressed between
the cap and the side surface of the recess,” as recited by claim 28, the
Examiner turns to Ohtachi’s for the additional teaching of positioning an
o-ring seal between the side surface of the cap and recess rather than
between the bottom surface of the cap and recess. See Final Act. 9 (citing
Ohtachi, Figs. 1, 4). With those teachings in mind, the Examiner determines
that one skilled in the art would have deemed it obvious to modify the turbo-
molecular pump of Kabasawa with an o-ring, as taught by Shrader,
compressed between Kabasawa’s cap (i.e., boss portion 90) and the side
surface of Kabasawa’s recess 92, as taught by Ohtachi, so as to provide a
seal for the cap Kabasawa’s molecular pump. Id. at 9–10 (citing Shrader,
3:2–4; Ohtachi ¶ 163, Fig. 4).
Appellant counters that, although one skilled in the art applying
Shrader’s teaching to Kabasawa might be motivated to place an o-ring seal
between the bottom surface of boss portion 90 (i.e., the claimed “cap”) and
the top surface of Kabasawa’s rotor 60, they would not be motivated to place
that seal between engagement projection 92 of the boss portion 90 and the
side surface of recess 91. Appeal Br. 13. According to Appellant, only if
the o-ring seal is placed between the bottom surface of Kabasawa’s boss
portion 90 and the top surface of Kabasawa’s rotor 60, as taught by Shrader,
is there “a natural mechanism already included to compress the o-ring and
create a seal, i.e., tightening down Kabasawa’s bolt 93.” Id. But if the
o-ring seal was placed around engagement projection 92 in Kabasawa,
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Appellant explains, “[t]he o-ring would interfere with inserting engagement
projection 92 into engagement groove 91, whereas with the o-ring used as
annular seal 95 in Shrader there is no interference.” Id.
We are not persuaded by Appellant’s arguments. Appellant fails to
fully appreciate the Examiner’s reliance on both Shrader and Ohtachi for
modifying Kabasawa’s cap to include an o-ring seal around the engagement
projection 92 within recess 91. As the Examiner notes, the benefit of
Ohtachi is to show that seals may be interposed between interlocking
vertical surfaces of a cap assembly just as easily as they may be interposed
between interlocking horizontal surfaces of a cap assembly. See Ans. 6.
Here, Appellant does not inform us of any criticality about the placement of
an o-ring seal between the interacting surfaces of the cap and rotor, be they
vertical or horizontal surfaces. See Appeal Br. 13–14. Although Appellant
is correct that Kabasawa’s bolt 93 would apply a compressive force to an
o-ring positioned underneath Kabasawa’s boss portion 90 as taught by
Shrader, one skilled in the art also would understand from Ohtachi that
compression of an o-ring seal may just as easily be achieved from the mere
assembly of tailor-fitted parts, which necessarily are sealed in order to
maintain the pump under vacuum. See Ans. 7 (annotating Ohtachi’s Fig. 4
to identify the compressed, elliptical state of o-ring seal between side
surfaces of parts 2, 3 of vacuum pump 1). Thus, modifying Kabasawa’s
boss portion 90 to include an o-ring compressed between the vertical side
surfaces of the cap and recess, as taught by the combined teachings of
Shrader and Ohtachi, amounts to nothing more than the use of a known
technique to yield a predictable result. Because we are not apprised of error
in the Examiner’s findings and reasoning with respect to the teachings of
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Shrader and Ohtachi as applied to Kabasawa’s cap, we sustain the
Examiner’s obviousness rejection of independent claim 28, as well as
dependent claims 33 and 46–48 falling therewith.
2. Claim 43
Claim 43, which depends from claim 28, recites that “the cap includes
a plate member comprising a cutout formed in the plate member.” Appeal
Br. 20. In rejecting the claim, the Examiner finds that a single element in
Kabasawa—boss portion 90—corresponds to both the recited “cap” and the
recited “plate member.” Final Act. 10 (“[T]he cap (i.e. 90 of Kabasawa)
includes a plate member (i.e. 90 of Kabasawa) comprising a cutout (i.e.
interior of 100 as seen in figure 6, Kabasawa) formed in the plate member
(i.e. 90 of Kabasawa).”). But nowhere does the Examiner identify which
aspect of Kabasawa’s boss portion 90 corresponds to the cap and which
aspect of the boss portion corresponds to the plate member (and cutout). See
Final Act 10; Ans. 8. Instead, we are left to speculate. This is especially
troubling where the Specification defines the plate member as a separate
structure attached to the cap member so as to form an assembly of parts for
compressing the o-ring seal (see, e.g., Spec. 7–14, 32–34, Figs. 7–9), which
Kabasawa clearly lacks. Thus, without more, we cannot sustain the
Examiner’s obviousness rejection of claim 43.
D. Obviousness Over Kabasawa, Shrader, Ohtachi, and Eckel
(Claim 32)

Claim 32, which depends from claim 28, recites the additional
limitation of “a vent channel formed through the cap.” Similar to the
rejection of claim 21 discussed above, the Examiner points to Eckel for
teaching this limitation. Final Act. 11. But the Examiner relies on the same
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flawed reasoning to combine the teachings of Kabasawa and Eckel as
discussed above with respect to claim 21. See id. Thus, for the same
reasons we do not sustain the Examiner’s rejection of independent claim 21,
we do not sustain the rejection of claim 32.
CONCLUSION
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
21–24, 26,
34–37, 39,
41
103 Kabasawa, Eckel 21–24, 26,
34–37, 39,
41
27, 40 103 Kabasawa, Eckel
Shrader
27, 40
28, 33, 43,
46, 47
103 Kabasawa, Shrader
Ohtachi
28, 33,
46, 47
43
32 103 Kabasawa, Eckel,
Shrader, Ohtachi
32
48 103 Kabasawa, Shrader,
Ohtachi, Kaiser
48
Overall
Outcome
28, 33,
46–48
21–24, 26,
27, 32,
34–37,
39–41, 43
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED IN PART