Ex Parte Able et al

Patent Trial and Appeal Board

Aug 15, 2013

11342431 (P.T.A.B. Aug. 15, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte STEPHEN D. ABLE, JANA ABLE, MICHAEL CONTI, and
KERRY G. VONALT
____________________

Appeal 2011-005716
Application 11/342,431
Technology Center 3700
____________________

Before: WILLIAM V. SAINDON, NEIL T. POWELL, and
BEVERLY M. BUNTING, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
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Application 11/342,431
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-3. We have jurisdiction under 35 U.S.C. § 6(b).

The Claimed Subject Matter
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A pump comprising:
a housing defining an inner cavity and having an inlet
port, an outlet port, and a bellows port;
a first valve permitting one-way flow of fluid into the
inner cavity through the inlet port;
a drive rod supported for reciprocal movement within the
inner cavity;
a bellows within the inner cavity and surrounding a
portion of the drive rod, the bellows extending and contracting
in response to the reciprocal movement of the drive rod; and
a second valve interconnected with the drive rod for
reciprocal movement within the inner cavity and permitting
one-way flow of fluid from a first side of the second valve to a
second side of the second valve;
wherein the inner cavity is divided into an inlet portion
on the first side of the second valve, an outlet portion between
the second side of the second valve and an outer surface of the
bellows, and an atmospheric portion within the bellows;
wherein the inlet port is adapted for communication
between the inlet portion and a source of fluid to be pumped,
the outlet port is adapted for communication between the outlet
portion and a receptacle for pumped fluid, and the bellows port
is adapted for communication between the atmospheric portion
and the atmosphere;
wherein the bellows substantially airtightly separates the
outlet portion of the inner cavity from the atmospheric portion;
and
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Application 11/342,431
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wherein air is drawn into and displaced from the
atmospheric portion of the inner cavity in response to respective
extension and contraction of the bellows.

References
The Examiner relies upon the following prior art references:
Luxford
Yamaizumi
Cavanaugh
Takata
US 4,378,119
US 4,436,494
US 5,415,531
US 5,685,923
Mar. 29, 1983
Mar. 13, 1984
May 16, 1995
Nov. 11, 1997

Rejections
I. Claims 1 and 2 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Yamaizumi and Cavanaugh. Ans. 3.
II. Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Yamaizumi, Cavanaugh, and Takata. Ans. 6.

SUMMARY OF DECISION
We REVERSE.

OPINION
Sole independent claim 1 requires a pump having a bellows
surrounding a drive rod. The inner portion of the bellows is exposed to the
atmosphere and the outer portion of the bellows is exposed to the pumped
fluid. See also, e.g., fig. 3 (depicting air going down into bellows 42 and
pumped fluid going up past the bellows and out outlet port 22) .
The Examiner finds that Yamaizumi describes each of the features of
the claimed pump, except the inner portion of the bellows is not exposed to
the atmosphere. Ans. 3-4; see also Yamaizumi, col. 2, ll. 61-65 (the bellows
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Application 11/342,431
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is filled with liquid, typically oil). The Examiner finds that Cavanaugh
describes a pump having such a feature and that it would have been obvious
to incorporate this feature to overcome the problem of liquid foam within the
bellows and to reduce significant internal resistance. Ans. 5; see also
Yamaizumi, col. 1, ll. 46-64 (cited for the foam proposition); Cavanaugh,
col. 8, ll. 8-9 (cited for the internal resistance proposition).
Appellants argue that the proposed modification to Yamaizumi would
render it unsatisfactory for its intended purpose (App. Br. 9; Reply Br. 2)
and that the Cavanaugh bellows are not intended to be used in an
environment such as Yamaizumi’s pump (App. Br. 9-11; Reply Br. 3).
Appellants also point out that Yamaizumi’s design (oil inside the bellows) is
to address the prior art foam problem.1 Reply Br. 2.
As Appellants point out, Yamaizumi purports to solve the foam issue
with its design; the foam problem is thus seen as a problem of the prior art
prior to Yamaizumi. See id. Accordingly, it is not clear to us why the
Examiner believes one of ordinary skill in the art would consider it obvious

1 According to Yamaizumi, the prior art devices pumped paint through the
inside of the bellows, with oil providing a counter-pressure on the outside.
The problem with this, Yamaizumi teaches, is that it is difficult to clean the
paint from inside the bellows after use without complete disassembly, which
would necessitate removal of the oil. Then, upon refilling the oil after
cleaning the bellows, air bubbles (foam) are introduced, which are difficult
to remove and cause performance issues. Thus, Yamaizumi’s invention is to
put the oil inside the bellows, such that it need not be removed when the
pump is disassembled to clean the paint, which is now outside of the bellows
(and easily accessible for cleaning). With the oil inside the bellows, the
bubbles need only be removed upon initial filling of the oil, not every time
the pump needs to be cleaned. See Yamaizumi col. 1, l. 22 to col. 2, l. 2, col.
2, ll. 19-23.
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to remove the oil in this situation, which apparently would not have a foam
issue.
Regarding the Examiner’s alternative reasoning (reducing internal
resistance), we note that while Cavanaugh does describe a pump having a
bellows exposed to the atmosphere (as opposed to filled with oil or fluid),
the Examiner provides no rational underpinnings in support of the proposal
to incorporate such features into Yamaizumi. With respect to the discussion
in Cavanaugh about reducing internal resistance via atmospheric venting of
the bellows (col. 8, ll. 8-9), the context for such a discussion appears to be
merely that having the bellows without such a vent would result in a
vacuum, not that it provides particular benefits, let alone ones useful in the
present context of Yamaizumi. As such, the Examiner’s proposed
modification is not reasonably underpinned by the teachings of Cavanaugh.
To counter Appellants’ arguments with respect to the proposed
modification’s removal of oil from the inside of the bellows (used in
Yamaizumi to provide counter pressure), the Examiner additionally points to
Luxford for the principle that it was known in the art to design bellows to
withstand pressures (Ans. 7), but this fact does not provide rational
underpinning for the modification; it merely shows that such a modification
could be technically feasible. Mere technical feasibility of a proposed
modification does not render such a proposed modification obvious.
In view of the above, we do not sustain the Examiner’s rejection of
claim 1, because it lacks a reason with rational underpinning for venting
Yamaizumi’s bellows to the atmosphere in the manner proposed. The
Examiner’s rejections of claims 2 and 3 are deficient for the same reason,
and the Examiner makes no findings with respect to Takata that cure the
underlying deficiency.
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DECISION
We REVERSE the Examiner’s decision regarding claims 1-3.

REVERSED

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