Ex Parte Key et al

Patent Trial and Appeal BoardMar 30, 2015

11004259 (P.T.A.B. Mar. 30, 2015)

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. 11/004,259 12/03/2004 Matthew Key M03B342 (E223.12-0008) 5907 27367 7590 03/30/2015 WESTMAN CHAMPLIN & KOEHLER, P.A. SUITE 1400 900 SECOND AVENUE SOUTH MINNEAPOLIS, MN 55402 EXAMINER KRAMER, DEVON C ART UNIT PAPER NUMBER 3746 MAIL DATE DELIVERY MODE 03/30/2015 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 MATTHEW KEY, NICHOLAS DANIEL HUTTON, FREDERICK JOHN UNDERWOOD, and PHILLIP NORTH ____________________ Appeal 2012-002277 Application 11/004,259 1 Technology Center 3700 ____________________ Before CHARLES N. GREENHUT, JAMES P. CALVE, and PATRICK R. SCANLON, Administrative Patent Judges. SCANLON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1–10 and 12–19, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is Edwards Limited. Br. 3. Appeal 2012-002277 Application 11/004,259 2 THE INVENTION Appellants’ claimed invention relates to a pumping apparatus. Spec. 1, l. 4. Claims 1 and 13 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter. l. A pumping apparatus comprising: a pump having a sealed chamber formed by two adjacent stator components and a first O-ring seal and a second O-ring seal therebetween; at least one rotor placed within and between the stator components, and forming together with the stator components a moving cavity for evacuating gas from an inlet to an outlet; a conduit for continuously supplying fluid to the chamber in a manner that a first pressure of the fluid is greater than a second pressure of the gas in the moving cavity when the pump is in operation, the conduit comprising a flow impedance for limiting the rate of flow of fluid to the chamber; and means for determining a pressure difference across the flow impedance. 2 REFERENCES The Examiner relies upon the following prior art references: Davey Hoath Merkovsky US 5,770,794 US 5,831,147 US 6,301,319 B1 Jun. 23, 1998 Nov. 3, 1998 Oct. 9, 2001 Durand Upton US 2002/0155014 A1 US 2003/0184018 A1 Oct. 24, 2002 Oct. 2, 2003 2 This is claim 1 as it appears in the Claims Appendix submitted December 22, 2010 with Appellants’ Response to Notification of Non-Compliant Appeal Brief. Appeal 2012-002277 Application 11/004,259 3 REJECTIONS The following rejections are before us on appeal: I. Claims 1–10 and 12–19 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. II. Claims 1–5, 9, 10, 12, and 13–19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Durand, Merkovsky, Upton, and Davey. III. Claims 6–8 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Durand, Merkovsky, Upton, Davey, and Hoath. ANALYSIS Rejection I In the Final Office Action dated April 12, 2010, the Examiner rejected claims 1–10 and 12–19 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Final Act. 2–4. Appellants subsequently submitted a proposed claim amendment in a Pre- Appeal Brief Request for Review, and the Examiner informed Appellants that the proposed amendments would put the application in better form for appeal but a formal Amendment After Final was required for entry of the proposed amendments. Ans. 3. Rather than submitting an Amendment After Final, however, Appellants incorporated the proposed amendments into the Claims Appendix of their Appeal Brief filed November 15, 2010. Id.; Br. 14, 16. On December 22, 2010, Appellants filed an Amendment After Final in response to a Notification of Non-Compliant Appeal Brief. Ans. 4. Regarding the Amendment After Final, the Examiner stated: Appeal 2012-002277 Application 11/004,259 4 [t]he amendments to claims 1 and 13 do not fall under any provision under 37 CFR §41.33(b) or (c) and were filed after the November Appeal Brief. Therefore the Amendment After Final is being treated as having been concurrently filed with the November Appeal Brief and able to be entered under 37 CFR §1.116(b)(2) and 41.33(a). Id. The Examiner consequently withdrew the rejection under 35 U.S.C. § 112, first paragraph, in view of the Amendment After Final. Id. at 5. Rule 41.33 provides, in pertinent part: (a) Amendments filed after the date of filing an appeal pursuant to § 41.31(a)(1) through (a)(3) and prior to the date a brief is filed pursuant to § 41.37 may be admitted as provided in § 1.116 of this title. (b) Amendments filed on or after the date of filing a brief pursuant to § 41.37 may be admitted: (1) To cancel claims, where such cancellation does not affect the scope of any other pending claim in the proceeding, or (2) To rewrite dependent claims into independent form. 37 C.F.R. § 41.33(a), (b). Thus, Rule 41.33(b) permits entry of an amendment filed after the brief, as is the case here, only for limited purposes. Because neither of the enumerated purposes applies in this instance, Rule 41.33(b) does not permit entry of the Amendment After Final. The Examiner has not cited any authority allowing Rule 41.33(b) to be waived such that Appellants’ Amendment After Final could be treated as having been filed concurrently with the Appeal Brief. Accordingly, there is no basis to enter the Amendment After Final under Rule 41.33(a). Furthermore, even if the Amendment After Final could be treated as being submitted concurrently with the Appeal Brief, Rule 41.33(a) would not Appeal 2012-002277 Application 11/004,259 5 provide for its entry because the rule pertains to amendments filed prior to the brief. In view of the above, Appellants’ Amendment After Final was not filed or entered timely. As such, for purposes of this appeal, we consider the rejection of claims 1–10 and 12–19 under 35 U.S.C. § 112, first paragraph, not to have been withdrawn. Accordingly, the rejection of claims 1–10 and 12–19 under 35 U.S.C. § 112, first paragraph, as set forth in the Final Office Action, is summarily sustained. See Manual of Patent Examining Procedure (MPEP) § 1205.02 (8th ed., Rev. 9, Aug. 2012) (“If a ground of rejection stated by the examiner is not addressed in appellant’s brief, that ground of rejection will be summarily sustained by the Board.”). We presume that, should there be further prosecution of this application, the proposed amendments will be submitted properly to overcome this ground of rejection. Rejection II Appellants argue claims 1–5, 9, 10, and 12 as a group (Br. 11) and rely on the same arguments in connection with claims 13–19 (Br. 12). As such, we treat claims 1–5, 9, 10, 12, and 13–19 as argued as a single group and select independent claim 1 as the representative claim in accordance with 37 C.F.R. § 41.37(c)(1)(vii) (2011). Accordingly, claims 2–5, 9, 10, 12, and 13–19 stand or fall with claim 1. The Examiner determines that claim 1 is obvious over the combination of Durand, Merkovsky, Upton, and Davey. Ans. 8–12. Appellants present three arguments against this determination. Br. 6–11. First, Appellants argue that none of the references teach the claim 1 limitation of “a conduit for continuously supplying fluid to the chamber in a Appeal 2012-002277 Application 11/004,259 6 manner that a first pressure of the fluid is greater than a second pressure of the gas in the moving cavity when the pump is in operation.” Id. at 6. In particular, Appellants assert that, as acknowledged by the Examiner, Durand does not disclose a chamber formed by two stator components and two O- ring seals, Merkovsky does not disclose a chamber continuously pressurized during operation, and Upton does not disclose a chamber pressure greater than a gas pressure in a moving cavity. Id. at 6–8. Appellants also assert that Davey fails to disclose a chamber formed by two O-ring seals and that the pressure in the chamber is greater than the pressure in the cavity of a vacuum pump. Id. at 7. The Examiner responds that, in an obviousness rejection, “a claimed invention need not be expressly suggested in any one or all of the references,” and “[t]he test for obviousness is what the combined teachings of the applied references, taken as a whole, would have suggested to those of ordinary skill in the art.” Ans. 19 (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981); In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971)). We agree with the Examiner that these arguments by Appellants are not persuasive. Appellants’ arguments address the references individually and do not address the proposed combination as a whole. One cannot show nonobviousness by attacking references individually where the rejection is based on a combination of references. See Keller, 642 F.2d at 426; In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Second, Appellants argue that “[t]here is no teaching or suggestion in Durand to modify its one-piece sealing gasket into two separate O-ring seals.” Br. 9. Appellants further argue that, unlike Appellants’ claimed Appeal 2012-002277 Application 11/004,259 7 invention, Durand is not concerned with seal deterioration. Id. In response, the Examiner states: All benefits of claimed invention need not be explicitly disclosed in a reference to render [a] claim unpatentable under 35 USC 103. See In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990). The law does not require that references be combined for the reasons contemplated by the inventor as long as some motivation or suggestion to combine them is provided by the prior art taken as a whole. In re Beattie, 974 F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992). Ans. 22. We agree with the Examiner’s position. The fact that Durand may not suggest the proposed modification is not dispositive because the reason to modify a reference does not have to originate from the reference being modified. The rationale for combining references can be gleaned from a variety of sources. See DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1361 (Fed. Cir. 2006) (“The motivation need not be found in the references sought to be combined, but may be found in any number of sources, including common knowledge, the prior art as a whole, or the nature of the problem itself.”). Here, the Examiner concluded it would have been obvious to modify Durand by providing a second O-ring seal and a fluid conduit supplying fluid to a chamber formed between the two O-rings, as taught by Merkovsky, “to provide a light weight seal and a method for testing the seal.” Ans. 9 (citing Merkovsky, 1:54–60; 3:11–22). Thus, we determine that the Examiner has articulated adequate reasoning based on rational underpinnings to explain why one of ordinary skill in the art would have been led to make the proposed modification. Appeal 2012-002277 Application 11/004,259 8 Third, Appellants assert that “Upton teaches away from the modification proposed by [the] Examiner.” Br. 11. In support of this assertion, Appellants argue that Upton discloses keeping the pressure in cavity 64 lower than the pressure in chamber region 30. Id. (citing Upton § 39). Appellants also argue that it “would not be reasonable in terms of design simplicity, cost efficiency, and structural reliability” to make the pressure in Upton’s cavity 64 greater than the pressure in chamber region 30, which is disclosed to range from 1,000 to 10,000 pounds per square inch. Id. (citing Upton § 42). We do not find this assertion persuasive. The Examiner is not proposing to modify Upton by making the pressure in cavity 64 greater than the pressure in chamber region 30. Rather, the Examiner proposes to modify the combination of Durand and Merkovsky to continuously supply fluid to a sealed chamber defined by two O-rings, as taught by Upton. Ans. 11; see also id. at 19 (“[t]he combination of Durand and Merkovsky was combined with the leak detecting mechanism of Upton that continuously supplies a chamber 64 formed by two O-rings with positive pressure”). The Examiner indicates that the fluid in this sealed chamber would be at a higher pressure than the gas in Durand’s pumping chamber because Durand discloses a vacuum pump. Id. at 10. For these reasons, Upton does not “teach away” from the proposed combination. In conclusion, Appellants’ arguments do not apprise us of error in the Examiner’s rejection. Thus, we sustain the rejection of claim 1, and of claims 2–5, 9, 10, 12, and 13–19 grouped therewith, under 35 U.S.C. § 103(a) as unpatentable over Durand, Merkovsky, Upton, and Davey. Appeal 2012-002277 Application 11/004,259 9 Rejection III Appellant advances no separate argument in connection with the rejection of claims 6–8, relying instead on their dependency from claim 1 for patentability. Br. 11–12. As we find no deficiency in the Examiner’s rejection of claim 1 for the reasons discussed above, we also sustain the rejection of claims 6–8 for the same reasons. DECISION We affirm the decision of the Examiner rejecting claims 1–10 and 12– 19. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED