Ex Parte Cromm et alDownload PDFPatent Trial and Appeal BoardJul 28, 201411977629 (P.T.A.B. Jul. 28, 2014) Copy Citation 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. 11/977,629 10/24/2007 Thomas Cromm 209,117 2696 38137 7590 07/29/2014 ABELMAN, FRAYNE & SCHWAB 666 THIRD AVENUE, 10TH FLOOR NEW YORK, NY 10017 EXAMINER KRAMER, DEVON C ART UNIT PAPER NUMBER 3746 MAIL DATE DELIVERY MODE 07/29/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte THOMAS CROMM and STEFAN KALLENBORN ________________ Appeal 2012-005700 Application 11/977,629 Technology Center 3700 ________________ Before: JOHN C. KERINS, CHARLES N. GREENHUT, and MICHAEL L. HOELTER, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from a final rejection of claims 3‒5, 10, and 11. App. Br. 4. Claims 1, 2, and 6 have been canceled while claims 7‒9 have been withdrawn. App. Br. 4. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM and enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). Appeal 2012-005700 Application 11/977,629 2 THE CLAIMED SUBJECT MATTER The disclosed subject matter “relates to a vacuum pump having at least two stages.” Spec. 1.1 Sole independent claim 11 is representative of the claims on appeal and is reproduced below: 11. A vacuum pump, comprising at least two stages (2, 3); a motor (8) for simultaneously driving pump-active elements of the two stages (2, 3); a transmission unit (7) for transmitting driving power from the motor (8) to the pump-active elements; a gas-sensitive signal sensor (10) located between the two stages (2, 3) for sensing pressure of gas transmittable from one stage (2) to the other stage (3) and for generating a corresponding signal; and control means for reducing a rotational speed of the motor (8) in response to a decrease in pressure of the transmittable gas, the control means having an evaluation unit (12) electrically connectable with the signal sensor (10) for receiving the generated signal and evaluating same and connected with a motor control (9) for transmitting an evaluated signal thereto, the motor control (9) reducing a rotational speed of the motor (8) in response to the evaluated signal indicating a decrease in pressure of the transmittable gas. REFERENCES RELIED ON BY THE EXAMINER Eldridge US 5,921,755 July 13, 1999 Holzemer US 2007/0071610 A1 Mar. 29, 2007 Kawamura 2007/0104587 A1 May 10, 2007 THE REJECTION ON APPEAL Claims 3‒5, 10, and 11 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Eldridge, Holzemer, and Kawamura. Ans. 4. 1 Appellants’ Specification does not provide line or paragraph numbering and accordingly, reference will only be made to the page number. Appeal 2012-005700 Application 11/977,629 3 ANALYSIS The Examiner relies on Eldridge for disclosing a two stage vacuum pump having a motor that drives the two stages and a transmission unit. Ans. 4. The Examiner relies on Holzemer for disclosing a pair of vacuum pumps having a pair of pressure sensors, an evaluation unit 22, and also “adjusting the motor speed based on the pressure change.”2 Ans. 4. The Examiner provides a reason to combine Eldridge and Holzemer but acknowledges that “Eldridge/Holzemer may fail to disclose wherein the single pressure sensor/transducer is between stages the two stages of Eldridge.” Ans. 5. The Examiner finds however, “that Holzemer’s Fig 1 schematically shows sensor 24 between the two stages” and that the claimed location “appears to be a matter of obviousness regarding location of parts.” Ans. 5. The Examiner explains that locating a sensor “between the two stages” as claimed, would have been obvious “since it has been held that rearranging parts of an invention involves only routine skill in the art.” Ans. 5, (referencing In re Japikse, 181 F.2d 1019 (CCPA 1950)). Alternatively, the Examiner relies on the teachings of Kawamura for disclosing “a pressure sensor (inside passage 7) that is between a first and second stage (20 and 40).” Ans. 5. The Examiner reasons that “[p]utting the 2 Holzemer describes motor control system 22 such that “decreasing speeds nv are associated with decreasing inlet pressure values p, i.e. low speed values nv are associated with low inlet pressure values p.” Holzemer para. 10; see also paras. 25 and 28. As such, we understand Holzemer is relied on by the Examiner for disclosing the limitation of “motor control (9) reducing a rotational speed of the motor (8) in response to the evaluated signal indicating a decrease in pressure of the transmittable gas” and also the “control means for reducing a rotational speed of the motor (8)” associated therewith. Appeal 2012-005700 Application 11/977,629 4 sensor between the pump stages also allows the system to have a modular pump/sensor so that installation is easier.” Ans. 5. Appellants do not dispute the two-stage pump taught by Eldridge or the pump control taught by Holzemer, but instead contend that the Examiner erred in asserting that “an arrangement of a pressure sensor between the stages of a multi-stage pump is disclosed in Kawamura.” App. Br. 9‒10. This is because Kawamura (as does Holzemer) “discloses a vacuum pump assembly including two pumps” as contrasted with the claim requirement of “[a] vacuum pump, comprising at least two stages.” App. Br. 10; see also 12. Appellants contend that a two-stage pump is “a pump that has two impellers on the same shaft” and that in both Kawamura and Holzemer, “the sensor is located between two pumps and not two stages, as asserted by the Examiner.” Reply Br. 3; see also 6. In short, Appellants contend that “providing a sensor between two stages of a pump instead of between two pumps is not a mere rearrangement of parts because the operation of the pump is modified.” Reply Br. 4. There is a basis for Appellants’ contentions supra in that Eldridge discloses “a vacuum pump having two piston and cylinder assemblies operatively connected to a common drive shaft.” Eldridge 1:5‒7. On the other hand, both Holzemer and Kawamura disclose a pair of vacuum pumps arranged in series with a sensor between them and with no indication that the two pumps are operated via a common shaft. Holzemer para. 21 and Fig. 1; Kawamura para. 23 and Fig. 1. The Examiner does not adequately explain how a sensor located between two separate, independent pumps, as in Holzemer and Kawamura, makes it obvious to place a sensor between the stages of a single multi-stage pump, as in Eldridge. Accordingly, we do not Appeal 2012-005700 Application 11/977,629 5 agree that the Examiner has fully articulated reasoning such that it is a mere matter of “rearranging parts” to relocate a sensor used in one system and employ it in another (i.e., from Holzemer to Eldridge) or that Kawamura’s “first and second stage (20 and 40)” are actually stages of the same pump and not, instead, components of separate pumps (i.e. pumps 1 and 2 respectively). Ans. 5; Kawamura para. 24. New Ground of Rejection However, we cannot help but notice that Kawamura identifies pump 1 as having “multistage pump rotors 20” and likewise, Kawamura identifies pump 2 as having “multistage pump rotors 40.” Kawamura paras. 29 and 39. Hence, each of the two pumps disclosed in Kawamura are themselves multi-stage pumps. Regarding sensor location, Kawamura illustrates the sensor as located between the two pumps (see Fig. 1) but Kawamura Paragraph 49 also states that “the pressure sensor may be disposed in the rotor casing 43 of the second vacuum pump 2 at a position between the first- stage screw rotors 40a and the second-stage screw rotors 40b” (emphasis added). Hence, Kawamura specifically discloses an alternate location for the sensor as being between the stages of a single multi-stage pump (i.e., pump 2). This disclosure in Kawamura was not relied on by the Examiner but is consistent with the Examiner’s reliance on Kawamura for disclosing a sensor “located between the two stages” as claimed (i.e., “between a first and second stage,” Ans. 5). In other words, the Examiner’s reliance on Eldridge and Holzemer remain as stated and the Examiner’s rejection of claim 11 (and its dependent claims 3‒5 and 10 which are not separately Appeal 2012-005700 Application 11/977,629 6 argued, see App. Br. 14) is only modified to the extent the rationale and facts identified here with respect to Kawamura differ from those initially stated. We are instructed that “[m]ere reliance by the Board on the same type of rejection or the same prior art references relied upon by the [E]xaminer, alone, is insufficient to avoid a new ground of rejection where it propounds new facts and rationales to advance a rejection-none of which were previously raised by the [E]xaminer.” In re Stepan Co., 660 F.3d 1341, 1345 (Fed. Cir. 2011). Accordingly, we enter a new ground of rejection under 35 U.S.C. § 103(a) with respect to claims 3‒5, 10, and 11 as being unpatentable over Eldridge, Holzemer, and Kawamura and we enter this new ground of rejection in order to afford Appellants a fair opportunity to respond. DECISION The Examiner’s rejection of claims 3‒5, 10, and 11 is affirmed, but designated as a New Ground of Rejection in under 37 C.F.R. § 41.50(b). This New Ground of Rejection is entered because it relies on reasons different from and/or additional to those stated by the Examiner and also to provide Appellants a fair opportunity to respond. Further, 37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellants must, WITHIN TWO MONTHS, exercise one of the following options: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . Appeal 2012-005700 Application 11/977,629 7 (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED; 37 C.F.R. § 41.50(b) tkl Copy with citationCopy as parenthetical citation