Taya Kotlyar et al.

Patent Trials and Appeals Board

Apr 29, 2020

13595380 - (D) (P.T.A.B. Apr. 29, 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.
13/595,380 08/27/2012 Taya Kotlyar IRPFS-39 1012
123446 7590 04/29/2020
Ingersoll-Rand Company (Taft JCN)
Taft, Stettinius & Hollister LLP
One Indiana Square
Suite 3500
Indianapolis, IN 46204-2023
EXAMINER
STIMPERT, PHILIP EARL
ART UNIT PAPER NUMBER
3746
NOTIFICATION DATE DELIVERY MODE
04/29/2020 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):
taft-ip-docket@taftlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAYA KOTLYAR, JOEL E. HIGBEE, SCOT C. STRICKER,
JAMES B. CARLING, and PHILLIP EDWARDS

Appeal 2018-004349
Application 13/595,380
Technology Center 3700
Before JOHN C. KERINS, RICHARD H. MARSCHALL, and
FREDERICK C. LANEY, Administrative Patent Judges.
MARSCHALL, Administrative Patent Judge.
DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 4–7, and 10. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Milton
Roy, LLC. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The invention relates to diaphragm metering pumps having degassing
systems. Spec. ¶ 1. Claim 1 is the only independent claim and is
reproduced below:
1. A diaphragm metering pump comprising:
a pump body having a head portion including a suction
side and a discharge side defining a flow path, wherein liquid
follows through the flow path from the suction side to the
discharge side and through an outlet at the discharge side, such
that all of the liquid that flows through the pump passes through
the outlet;
a pump diaphragm actuator;
a valve seat arranged at the discharge side;
a check valve arranged at the valve seat to allow the liquid
to flow through the outlet during a pressure stroke and prevent
the liquid from being ingested through the outlet into the pump
during a suction stroke; and
a degassing system including a check valve actuator
operatively connected to the check valve, the check valve
actuator being selectively activated to unseat the check valve
from the valve seat based on a sensed accumulation of gasses in
the head portion to allow the gases trapped in the head portion to
pass through the same outlet at the discharge side that all of the
liquid flows through.
Appeal Br. 14 (Claims App.).
REJECTIONS ON APPEAL
Appellant appeals from the following rejections:
1. Claims 1 and 10 under 35 U.S.C. § 102(b) as anticipated by Gebauer.2

2 US 5,192,198, issued March 9, 1993 (“Gebauer”).
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2. Claims 1 and 10 under 35 U.S.C. § 103(a) as unpatentable over
Gebauer.
3. Claims 1 and 10 under 35 U.S.C. § 103(a) as unpatentable over
Gebauer and Claude.3
4. Claims 2 and 4–7 under 35 U.S.C. § 103(a) as unpatentable over
Gebauer, Claude, and Jokela.4
ANALYSIS
Rejection of Claims 1 and 10 as Anticipated by Gebauer
We focus on the rejection of claim 1 because Appellant focuses its
arguments on claim 1. See Appeal Br. 6–7. The Examiner finds that
Gebauer expressly discloses most of the limitations of claim 1, including the
claimed pump body (Gebauer’s pump head 10) with an outlet (nozzle 20b), a
pump diaphragm actuator (ram 21), a check valve (poppet ball 40), and a
degassing system with a check valve actuator (button 44). Non-Final Act. 3.
The Examiner also finds that “the actuator is capable of being selectively
actuated to unseat the check valve from the valve seat to allow gases trapped
in the head portion to pass through the outlet due to their buoyancy relative
to the liquid.” Id. at 4. The Examiner construes the limitation “being
selectively activated . . . based on a sensed accumulation of gasses in the
head portion” as functional, and not requiring any structure beyond that
which Gebauer discloses, even though Gebauer does not teach structure for
detecting gas in the pump. Id. The Examiner finds that the claimed sensing

3 US 2004/0062662 A1, published April 1, 2004 (“Claude”).
4 US 5,456,581, issued October 10, 1995 (“Jokela”).
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flows “inherently from the difference in reaction forces from the gases as
opposed to liquids.” Id.
Appellant argues that Gebauer does not anticipate claim 1 because it
“does not discuss the sensing or accumulation of gasses in the head portion
of a pump at all” and therefore does not enable claim 1. Appeal Br. 6.
Appellant also argues that the Examiner erred by finding that a human
operator could sense the gas level and respond by operating the check valve
actuator, when the Specification never describes any action by a human
operator. Id. at 7. Appellant also argues that even if the Examiner’s reliance
on a human operator falls within the scope of the claim, “the claimed
degassing system is not inherent in Gebauer because it does not necessarily
flow from the teachings of Gebauer.” Id.; see also Reply Br. 2–3.
In the Answer, the Examiner finds that the Specification does not
foreclose the possibility of human action. Ans. 8. The Examiner also finds
that any structure “capable of performing the claimed function” meets the
claim limitation. Id. at 8–9. The Examiner finds that gas build-up in pumps
posed well known problems and that, based on “perusing the literature
available” and Claude, these sources support this view, such that Gebauer
inherently discloses and enables the limitation requiring actuation of the
check valve “based on a sensed accumulation of gasses in the head portion.”
Id. at 9.
We agree with Appellant that the Examiner erred in finding that
Gebauer inherently discloses a “check valve actuator being selectively
activated . . . based on a sensed accumulation of gasses in the head portion.”
The Examiner finds that Gebauer’s structure is inherently capable of
performing the claimed functions, but concedes that Gebauer “is silent
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regarding gas accumulation.” Non-Final Act. 4; Ans. 8, 10. Instead,
Gebauer uses its “actuator” to remove paint clogs. Gebauer, 5:27–31.
Although gas may be inherently present in Gebauer’s system, nothing in
Gebauer suggests that Gebauer’s system encounters any gas build-up
problems as the Examiner finds based on “perusing the literature available.”
Ans. 9. The Examiner’s reliance on such literature and Claude to find a
problem never mentioned by Gebauer does not support the Examiner finding
that Gebauer inherently discloses a structure with such a gas build-up
problem. See Reply Br. 2 (“Just because gas buildup is a problem that is
known in the diaphragm pump industry does not mean that each and every
single diaphragm pump in existence suffers from this problem.”). The lack
of any express or inherent disclosure related to gas problems in Gebauer also
undermines the Examiner’s finding that Gebauer inherently discloses
degassing structure capable of meeting the limitations of the claims.
Because the Examiner’s findings of inherency lack an adequate foundation,
we do not sustain the rejection of claim 1 as anticipated by Gebauer.5 Claim
10 depends from claim 1, and we do not sustain the rejection of claim 10 for
the same reasons as claim 1.
Rejection of Claims 1 and 10 as Obvious over Gebauer Alone
The Examiner rejects claims 1 and 10 “as anticipated by or, in the
alternative . . . as obvious over [Gebauer] alone or in view of [Claude].”
Non-Final Act. 3 (emphasis added). The alternative language in the
rejection sets forth three rejections, as listed above: (1) anticipation by

5 We need not reach other issues raised by Appellant, such as the alleged
non-enablement of Gebauer and the propriety of allowing a human operator
to perform claimed functions. See Appeal Br. 6–7.
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Gebauer; (2) obviousness over Gebauer “alone”; and (3) obviousness over
Gebauer and Claude. Id. We do not sustain the second rejection,
obviousness based on Gebauer alone, because the body of the rejection does
not set forth findings and reasoning that support an obviousness rejection
based on Gebauer alone. See id. at 3–5. Instead, when addressing the
obviousness of claim 1, the rejection relies on Claude for its teaching of a
sensor to detect gas in the pump. Id. at 4–5.
Rejection of Claims 1 and 10 as Obvious Based on Gebauer and Claude
We focus on the obviousness rejection of claim 1 because Appellant
focuses its arguments on claim 1. See Appeal Br. 8–10. For this
obviousness rejection, the Examiner finds that “Gebauer does not explicitly
teach structure for or methods of detection of gas in a pump” but that
“Claude teaches . . . a degassing system (28) operative to open the discharge
passage and allow gases trapped in the head portion (16) to escape.” Non-
Final Act. 4. The Examiner also finds that Claude teaches that its degassing
system “may be responsive to gas detection sensors (150, see paragraph 17),
and further teaches that the process of venting gas into the discharge line
‘prevents the pump 10 from air binding or losing prime.’” Id. (internal
quotations omitted). The Examiner determines that it would have been
obvious “to provide a sensor for detecting gas in the pump head of Gebauer
and to activate the actuator of Gebauer to clear that gas from the pump head,
in light of the teachings of Claude, in order to prevent air binding and/or loss
of prime.” Id. at 4–5.
Appellant argues that the Examiner’s “proposed modification of
Gebauer in view of Claude would impermissibly alter the principle of
operation of both devices.” Appeal Br. 8. As to Gebauer, Appellant argues
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that changing Gebauer’s actuator from a paint clog remover to a degasser
changes Gebauer’s principle of operation. Id. As to Claude, Appellant
argues that the rejection is more accurately viewed as based on Claude in
view of Gebauer, and “the entire discharge end of Claude would need to be
modified, and doing so would alter the principle of operation of the device.”
Id. at 8–9. In particular, “Claude discloses a degassing system that bypasses
the discharge check valve” and in the combination the system “would no
longer be a bypass system and would no longer use a valve that is not a
check valve (the flapper [in] the Claude bypass system is not a check valve)
to degas.” Id. at 9. Appellant also relies on a previous statement by the
Examiner during prosecution that proposes omission of Claude’s bypass
elements but retention of their functions suggests that the combination is not
obvious. Id. at 9–10. Appellant argues that Gebauer does not identify any
need to degas its system, only Claude raises that possibility, and therefore if
one looked to Claude, Claude’s “entire solution,” including its bypass
system, would be added to Gebauer. Reply Br. 3–4; see also Appeal Br. 10
(arguing that “the only obvious way for a skilled artisan to modify Gebauer
to include a degassing system based on Claude, would be to transplant the
entire bypass degassing system of Claude over to the pump of Gebauer”).6

6 Appellant does not make this point explicitly, but if Claude’s “bypass
solution” were added to Gebauer, the proposed combination would
apparently no longer disclose liquid flowing through the outlet “such that all
of the liquid that flows through the pump passes through the outlet” as
required by claim 1. Appeal Br. 14 (Claims App.). Appellant implicitly
acknowledges that the Examiner’s proposed combination does not run into
this problem, because it does not propose adding the “bypass” aspects of
Claude to Gebauer. See Appeal Br. 8–10; Non-Final Act. 4–5.
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In the Answer, the Examiner summarizes the prior prosecution
history, and finds that at no time did the Examiner concede that Claude’s
principle of operation would be changed. See Ans. 11–12. The Examiner
finds that such arguments do not properly address the rejection based on a
modification of Gebauer, which does not teach a separate passage for
degassing as in Claude, and therefore the modification does not omit any
such structure from Gebauer. Id. at 12. The Examiner further finds that
Gebauer’s principle of operation is unseating the check valve, and that the
proposed modification does not interfere with this operation. Id. at 14–15.
We are not persuaded that the Examiner erred in the rejection of claim
1 as obvious over Gebauer and Claude. As an initial matter, Appellant does
not contest the Examiner’s findings as to the disclosures of the two
references, and that the proposed combination discloses all of the limitations
of claim 1. See Appeal Br. 8–10. As to the combination itself, we are not
persuaded that the Examiner erred by proposing a combination based on a
modification of Gebauer, rather than the other way around. Id. at 8. The
Examiner need not frame the rejection and the proposed modification in a
combination in the manner most helpful for Appellant, and the rejection on
appeal clearly relies on Gebauer as the primary reference, with modifications
based on Claude’s teachings. Non-Final Act. 4–5; see also In re Mouttet,
686 F.3d 1322, 1333 (Fed. Cir. 2012) (rejecting argument that use of
“primary” or “base” reference label establishes error in rejection).
Appellant’s argument premised on allegedly improper modifications of
Claude by adding Gebauer’s structure fail to address the rejection.
As to whether the Examiner improperly left out Claude’s “bypass”
portion of its degassing system, we disagree with Appellant’s argument.
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The Examiner relies on Claude for limited purposes—a sensor that detects
gas to activate the actuator and clear gas to prevent air binding or loss of
prime. Non-Final Act. 4–5. We are not persuaded that the Examiner erred
by modifying Gebauer with these teachings because of the failure to also
incorporate Claude’s entire “bypass” system. Appellant does not argue
persuasively that the use of a sensor in the manner proposed in the
combination, standing alone, would not provide advantages in Gebauer’s
system that support the proposed combination. See Non-Final Act. 4–5
(citing advantages such as detecting gas and opening valve to clear gas and
“prevent air binding and/or loss of prime”). The possibility that the bypass
structure of Claude provides additional advantages beyond the sensor does
not undermine the use of Claude’s sensor in Gebauer’s system, without
adding the bypass structure. In addition, Claude itself does not state that its
sensor system can only be used with Claude’s bypass structure, or that its
sensor option teaches away from use with a direct, non-bypass approach as
in Gebauer. See Claude ¶ 14 (describing opening of valve 28 to open
passageway 40), ¶ 17 (describing operation of valve 28 “on timed intervals”
using system 200 responsive to gas detection sensors 150).
The Examiner’s proposed modification also preserves Gebauer’s
principle of operation, contrary to Appellant’s argument. Gebauer operates
by moving an actuator to unseat a check valve, which in turn removes clogs.
See Gebauer, 5:24–34. The Examiner’s proposed modification retains this
same functionality. See Non-Final Act. 4–5; Ans. 12; In re Mouttet, 686
F.3d at 1332 (rejecting argument that principle of operation would be
destroyed by combination when modifications did “not affect the overall
principle of operation”).
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We are also not persuaded that the Examiner’s earlier statements
during prosecution that the claim would not have been obvious in light of
Claude suggests that the claim would not have been obvious in light of
Gebauer as modified by Claude. See Appeal Br. 9–10. The reasoning in
previous rejections is not before us on this appeal, and use of Gebauer in the
proposed combination here distinguishes the issues on appeal from those in
any previous rejection based on Claude in combination with other prior art.
Based on the foregoing, we sustain the rejection of claim 1 as obvious
over Gebauer and Claude. Appellant does not raise any additional
arguments as to dependent claim 10, and we therefore sustain the rejection
of claim 10 for the same reasons as claim 1. See Appeal Br. 8–10
Rejection of Claims 2 and 4–7 as Obvious Based on Gebauer, Claude, and
Jokela
Claims 2 and 4 depend from claim 1, and further require the check
valve actuator to be “configured and disposed to act upon the check valve
along an axis substantially parallel to the flow path” (claim 2) or “configured
and disposed to act upon the check valve along an axis that coincides with
the flow path” (claim 4). Appeal Br. 14 (Claims App.). The Examiner finds
that Jokela teaches a metering pump with an actuator 90 that meets these
limitations. Non-Final Act. 5 (citing Jokela, Fig. 2). The Examiner finds
that Jokela’s arrangement “would be predictably effective for selective
actuation of a valve along a flow path, and would be constructable by known
techniques (such as those shown in Gebauer and Jokela).” Id. The
Examiner determines that it would have been obvious “to arrange an
actuator as taught by Jokela relative to the flow paths of Gebauer as an
obvious matter of the mere substitution of one known apparatus for
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unseating a check valve for another.” Id. The Examiner further finds that
Jokela teaches that its solenoid allows for automatic control of its valve, and
determines that it would have been obvious “to provide an actuator as taught
by Jokela to the pump of Gebauer in order to allow for automatic control of
the unseating of the check valve as opposed to the manual control required
by Gebauer alone.” Id. at 5–6.
Appellant argues that Jokela shows its check valve on the inlet side of
the pump and does not teach a degassing system. Appeal Br. 10. Appellant
also argues that modifying Gebauer with Jokela’s teaching to meet the
requirements of claims 2 and 4 would change Gebauer’s principle of
operation. Id. at 11. More specifically, Appellant argues that Gebauer’s
check valve actuator acts perpendicular to the flow path of the pump, which
is “crucial to the operation of Gebauer.” Id. According to Appellant,
Gebauer’s arrangement enables easy access to valve lifter 43 outside of a
flow region, and “[i]t is unclear how Gebauer could be modified to provide a
manual actuator that acts along an axis substantially parallel or coincident to
the flow path.” Id. (citing Gebauer, 5:20–22, 5:32–34, Fig. 5). Appellant
contends that the proposed modifications would “needlessly complicate”
Gebauer’s actuator, and that Gebauer would lead one away from taking such
an approach. Id. at 11–12.
In the Answer, the Examiner further finds that Jokela’s failure to
disclose anything regarding degassing does not address the rejection, which
relies on a combination of Gebauer and Claude to teach the system of claim
1, including the degassing system. Ans. 16. As to changing the orientation
of Gebauer’s actuator so that it is parallel to the flow path, the Examiner
finds that the principle of Gebauer’s operation relates to moving valve body
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(40) away from its seat (41), and that this operation remains the same after
the modifications based on Jokela. Id. at 17. As to the alleged difficulty in
making the modification, the Examiner finds that Jokela teaches how to
create a 90 degree bend in a flow path where the actuator enters, and that
one of skill in the art “would be fully capable of providing such a bend as
part of the proposed substitution.” Id. The Examiner also finds that
Gebauer does not teach away from such modifications because it does not
mention Jokela’s system, much less criticize it. Id. at 17–18.
We are not persuaded that the Examiner erred in the rejection of
claims 2 and 4. Appellant implicitly concedes that the proposed
combination discloses all of the limitations of claims 2 and 4, and we limit
our analysis to whether the Examiner adequately supported the proposed
modification of Gebauer based on Jokela’s teachings. None of Appellant’s
arguments are persuasive. First, Appellant’s arguments as to Jokela’s check
valve location and lack of a degassing system do not apprise us of error in
the rejection because the rejection does not rely on Jokela for these claim
features, and instead relies on the combination of Gebauer and Claude to
teach these limitations. See Non-Final Act. 4–5.
Second, we agree with the Examiner that the proposed modification
does not change Gebauer’s principle of operation. As noted above,
Gebauer’s principle of operation involves moving an actuator to operate a
valve. See Gebauer, 5:24–34. The proposed combination retains this
functionality. Further, Gebauer does not describe the angle at which the
actuator intersects with the flow path as important or central to its operation,
or that operation could not be achieved if the actuator was parallel with the
flow path.
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Third, as to the potential complications in making the modification,
the Examiner made additional findings in the Answer that Appellant did not
contest. See Ans. 17; Reply Br. 3–4. Those findings—that Jokela discloses
structure helpful in making the modification and that one of skill in the art
“would be fully capable of providing such a bend”—provide adequate
foundation for the Examiner’s proposed modification and do not reveal any
“teaching away” from the modification by Gebauer.
Based on the foregoing, we sustain the rejection of claims 2 and 4 as
obvious based on Gebauer, Claude, and Jokela.
Claims 5 and 7
For dependent claims 5 and 7, Appellant relies on the same arguments
as to the rejection of claim 1. See Appeal Br. 12. Accordingly, we sustain
the rejection of claims 5 and 7 for the same reasons that we sustain the
obviousness rejection of claim 1.
DECISION
We reverse the Examiner’s rejection of (1) claims 1 and 10 as
anticipated by Gebauer and (2) as obvious over Gebauer. We affirm the
Examiner’s rejection of (1) claims 1 and 10 as obvious over Gebauer and
Claude, and (2) claims 2 and 4–7 as obvious over Gebauer, Claude, and
Jokela.

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 10 102(b) Gebauer 1, 10
1, 10 103(a) Gebauer 1, 10
1, 10 103(a) Gebauer, Claude 1, 10
2, 4–7 103(a) Gebauer, Claude,
Jokela
2, 4–7
Overall
Outcome
1, 2, 4–7,
10

AFFIRMED