Ex Parte Cromm et al

Patent Trial and Appeal Board

Jul 28, 2014

11977629 (P.T.A.B. Jul. 28, 2014)

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been canceled while claims 7‒9 have been withdrawn.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