Ex Parte Van Brunt et al

Patent Trial and Appeal Board

Aug 1, 2017

12839992 (P.T.A.B. Aug. 1, 2017)

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.
12/839,992 07/20/2010 Nicholas P. Van Brunt V180.12-0021 9296
164 7590 08/03/2017
KINNEY & LANGE, P.A.
THE KINNEY & LANGE BUILDING
312 SOUTH THIRD STREET
MINNEAPOLIS, MN 55415-1002
EXAMINER
PLAKKOOTTAM, DOMINICK L
ART UNIT PAPER NUMBER
3746
NOTIFICATION DATE DELIVERY MODE
08/03/2017 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):
u spatdocket @ kinney .com
smkomarec @ kinney .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NICHOLAS P. VAN BRUNT, JOHN A. KIVISTO, and
THEODORE W. JAGGER
Appeal 2015-000214
Application 12/839,992
Technology Center 3700
Before MICHAEL L. HOELTER, NATHAN A. ENGELS, and
BRENT M. DOUGAL, 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 1—3, 5—14, and 21—27. Br. 2. Claims 4 and 15—20 have
been canceled. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We
AFFIRM.
THE CLAIMED SUBJECT MATTER
The disclosed subject matter relates to “an electronically powered
gaseous fluid pump. It contains unique design features that combine to
minimize its size, weight, power consumption and mechanical vibration.”
Appeal 2015-000214
Application 12/839,992
Spec. 12. Claims 1, 8, and 21 are independent. Claim 1 is illustrative of the
claims on appeal and is reproduced below:
1. An apparatus for pumping and compressing fluids,
comprising:
a compression chamber, the chamber containing at least
one inlet and one outlet, and a plurality of open volumes created
by an inner surface of the compression chamber;
a plurality of pistons within the compression chamber,
each piston containing a body with at least a first diametrically
polarized magnet centered in the body, such that the first magnet
attracts or repels depending on the relative position of the first
magnet;
a plurality of flux paths centered around each of the
pistons, each flux path containing a coil to act as a polarizing
motor stator; and
a second magnet centered within the compression chamber
between two of the plurality of pistons.
REFERENCES RELIED ON BY THE EXAMINER
Simpson
Ikeda
Graf
Togare
Misselhom
US 5,203,172
US 5,630,355
US 2005/0081804 A1
US 2008/0012432 A1
US 7,823,381 B2
Apr. 20, 1993
May 20, 1997
Apr. 21,2005
Jan. 17, 2008
Nov. 2, 2010
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Application 12/839,992
THE REJECTIONS ON APPEAL1
Claims 21—27 are rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite for failing to particularly point out and distinctly claim
the subject matter which applicant regards as the invention.
Claims 1, 3, 5—8, 21 and 25—27 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Graf and Simpson.
Claims 2 and 23 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Graf, Simpson, and Misselhom.
Claims 9, 10, 12, and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Graf, Simpson, and Ikeda.
Claims 11 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Graf, Simpson, Ikeda, and Misselhom.
Claims 13 and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Graf, Simpson, and Togare.
Claim 24 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Graf, Simpson, Misselhom, and Togare.
ANALYSIS
The Examiner’s rejection of claims 21—27 as being indefinite
Although the Examiner withdrew the rejection of claims 1—3, 5, and 6
as being indefinite (see Ans. 13), the Examiner maintained this rejection
with respect to claims 21—27 (see Final Act. 2; Ans. 2—3). Appellants
acknowledge the rejection of claims 21—27 as being indefinite but do not
provide any argument as to why the Examiner’s reasons for the rejection of
1 The Examiner’s rejection of claims 1—3, 5, and 6 under 35 U.S.C. § 112,
second paragraph has been withdrawn. Ans. 13.
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these claims might be misplaced or mistaken. Br. 2—3. Instead, Appellants
state, “[cjlaims 1 and 21 have been amended for clarity.” Br. 3. We elect to
review the Examiner’s reasons for the rejection of claims 21—27 rather than
simply summarily sustain their rejection.
Regarding independent claim 21, the Examiner first states, “[tjhere is
insufficient antecedent basis” for the limitation “the permanent magnet”
found in lines 9—10 of this claim. Final Act. 3. Appellants amended this
claim to now read, “the third permanent magnet” which we are of the
opinion obviates this rejection. The Examiner must likewise agree because
this lack-of-antecedent-basis rejection of claim 21 was not repeated in the
Examiner’s Answer (but such rejection was also not indicated as being
withdrawn either). See Ans. 2—3, 13. Consequently, in view of Appellants’
amendment, we do not sustain this lack-of-antecedent-basis rejection of
claim 21 as stated by the Examiner.
The Examiner also rejected claim 21 as being indefinite because
“there is no mention of how the pistons are moved within the cylinder” and
the pistons are balanced so that they “will not move anywhere without an
external impetus such as a flux path to move said piston.” Final Act. 3; Ans.
2—3. Hence, according to the Examiner, “[clarification is requested.” Final
Act. 3; Ans. 3.
However, claim 21 only recites pistons that are “capable of travel;”
the scope of apparatus claim 21 does not require that the pistons actually
travel. Thus, the Examiner’s concern regarding an “external impetus” “to
move” the piston is not commensurate with the scope of this claim.
Accordingly, we do not sustain the Examiner’s indefinite rejection of claim
21, premised on a lack of external impetus, when this claim is only directed
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to pistons that are “capable of travel.” The Examiner’s rejection of claims
22 and 25—27 also fails because such claims depend, directly or indirectly,
from claim 21 and they themselves were not separately rejected.
The Examiner rejected claim 23 (that depends from claim 21) as
indefinite based on another limitation. Final Act. 3; Ans. 3. This additional
limitation is, “wherein the plurality of pistons are driven by magnetic force
through the cylinder wall” (the cylinder wall being non-magnetic).
According to the Examiner, although the pistons in this limitation are
magnetically driven, “there is no concurrent structure claimed that generates
this magnetic force.” Final Act. 3; Ans. 3. Appellants do not address the
Examiner’s concern and remain silent on this point.
We are instructed by our reviewing court that apparatus claims are not
necessarily indefinite for using functional language. See Halliburton Energy
Servs. v. M—ILLC, 514 F.3d 1244, 1255 (Fed .Cir. 2008). However, the use
of functional language in a claim may “fail ‘to provide a clear-cut indication
of the scope of subject matter embraced by the claim’ and thus can be
indefinite.” Halliburton, 514 F.3d at 1255 {quoting In re Swinehart, 439
F.2d 210, 212—13 (CCPA 1971). In the matter before us, Appellants recite
no structure to indicate just how the pistons might be driven, thereby leaving
this claim open-ended as to what structures might be encompassed by this
claim language. “It is of utmost importance that patents issue with definite
claims that clearly and precisely inform persons skilled in the art of the
boundaries of protected subject matter.” MPEP § 2173. More importantly,
35 U.S.C. § 112, second paragraph, states that the specification “shall
conclude with one or more claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his invention.'1'’
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(Emphasis added). Such clarity or particularity is lacking with respect to
claim 23. Accordingly, we sustain the Examiner’s rejection of claim 23 as
being indefinite. We likewise sustain the Examiner’s rejection of claim 24,
which depends from claim 23 and does not provide further clarification on
this point.
The Examiner’s rejection under Graf and Simpson
Appellants acknowledge that the three independent claims, i.e., claims
1, 8, and 21, “were rejected as unpatentable for obviousness over” Graf and
Simpson. Br. 6. Appellants also argue these three independent claims
together (with the exception that Appellants note that claims 8 and 21 are
directed to “a gaseous fluid pump” whereas claim 1 recites an apparatus “for
pumping and compressing fluids”). Br. 6—10. Further, Appellants do not
dispute the Examiner’s additional reliance on Misselhom, Ikeda, or Togare
regarding the rejection of various dependent claims. Accordingly, we select
claim 1 for review with claims 2, 3, 5—14, and 21—27 standing or falling with
claim 1. See also 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner primarily relies on the teachings of Graf for disclosing
the limitations of claim 1, but acknowledges that Graf “fails to disclose a
second magnet disposed between two of the plurality of pistons” as recited.
Final Act. 5. The Examiner relies on Simpson for such teaching and
references “additional magnet (900) [that] is disposed at the center of a
chamber between two pistons.” Final Act. 5. The Examiner concludes that
it would have been obvious to include this additional magnet in Graf “in
order to provide additional magnetic impetus to move the pistons in Graf’s
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system” as disclosed in Simpson.2 Final Act. 5 (referencing Simpson 6:9—
15).
Appellants reference Paragraph 74 of Graf, arguing that Graf “relates
to fluid pumps that incorporate liquid fuels” whereas “[t]he current
application relates to gaseous fluid pumps.” Br. 7. ft should be noted that
claim 1 is directed to a “fluid” pump (understood to refer to either a gas or a
liquid pump), whereas the preamble of claims 8 and 21 recites “a gaseous
fluid pump.” However, Paragraph 74 of Graf does not address one phase
over another (e.g., a liquid over a gas) but instead teaches that either can be
employed. Graft 74. More specifically, Paragraph 74 of Graf states that,
“diesel or vegetable oil (Diesel principle) or gasoline, natural gas or
hydrogen (Otto principle)” can be used. On this point, the Examiner
references Paragraph 9 of Graf in reply to Appellants’ contention (Ans. 14)
which also states that a gas or a liquid can be used. Hence, Appellants’
argument seeking to distinguish their recited invention from the teachings of
Graf based on this gas/liquid distinction is not persuasive, nor is it
persuasive that the Examiner erred in relying on Graf for such teachings.
Appellants also address Graf’s resilience space 58 between the pistons
and disputes that one skilled in the art would “put a magnet in the resilience
2 The Examiner further states that Paragraphs 77 and 78 of Graf “disclose[]
that a compression spring may be disposed in said resilience space (58)” and
that it is known that “a magnet that repels other magnets, behaves in the
same manner that a compression spring behaves, by providing a repulsive
force.” Ans. 15. In other words, “it would not be unreasonable to include a
magnet in Grafs resilience space in order to provide additional magnetic
impetus to move Grafs magnetic pistons” and that such magnet “would be
akin [to] Graf’s compression spring which would also repel Grafs pistons in
the resilience space.” Ans. 15; see also Ans. 16—17.
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space.” Br. 8. Appellants contend that the Examiner relied on “speculation”
in reaching this conclusion and that installing a magnet in such space “goes
contrary to the explicit teaching of the Graf reference.” Br. 8 (referencing
Graft 78). The Examiner disagrees stating, as above, that this recited
paragraph teaches inserting a compression spring into such space. Ans. 15.
Further, Appellants failed to rebut the Examiner’s finding that a repelling
magnet “behaves in the same manner that a compression spring behaves, by
providing a repulsive force.” Ans. 15. In other words, Appellants do not
explain how the Examiner erred in concluding that it would have been
obvious to include a magnet “in order to provide additional magnetic
impetus to move the pistons.” Final Act. 5 (referencing Simpson 6:9—15).
Accordingly, in view of the teachings of both Graf and Simpson, we do not
find it “speculation” for the Examiner to have concluded that it would have
been obvious to include a magnet in this space, or that doing so would have
been “contrary to the explicit teaching of the Graf reference” as Appellants
assert. Final Act. 5.
Appellants further argue that were a magnet disposed in this space,
“Graf would be unsatisfactory for its intended purpose because the pistons
would not be repelled back to their original position to begin a new cycle”
nor would the stored energy be available. Br. 8. Appellants’ contention on
this point is not persuasive because Appellants do not dispute that Graf
teaches a compression spring in such space for such purposes. Graf 178.
Nor do Appellants explain how including a repelling magnet in such space
(where such magnet “behaves in the same manner that a compression spring
behaves, by providing a repulsive force”) would thwart such purposes. Ans.
15—16. Further, Appellants’ contention that including a magnet in this space
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would render Graf unsatisfactory is not persuasive because Appellants have
not provided any evidence in support of this allegation and it is not
otherwise self-evident from the record. See In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of
evidence.”); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)
(lawyer arguments and conclusory statements which are unsupported by
factual evidence are entitled to little probative value).
Appellants’ further contention regarding the combination of Graf and
Simpson changing “the principle of operation of Graf’ is also not
persuasive. Br. 9. This is because the Examiner relies on Simpson for its
teachings of “an additional magnet (900)” (Final Act. 5) and not because of
how Simpson operates to “tum[] electrical energy into mechanical energy”
as argued by Appellants (Br. 9).
Appellants also contend that the Examiner erred by not including “a
teaching as to why one of skill in the art would combine the references.” Br.
10. However, as stated above, the Examiner referenced “Simpson, column
6, lines 9—15” as providing the motivation for the combination of Graf and
Simpson. Final Act. 5. Additional motivation for such a combination was
also discussed supra with the Examiner concluding, “Simpson’s magnet
could function just as a compression spring would function in Grafs
resilience spaces. Ans. 17 (referencing Simpson 6:9-15 and Graf H 77, 78).
Appellants do not explain how such stated motivation might be in error.
Accordingly, and based on the record presented, we sustain the
Examiner’s rejection of claims 1—3, 5—14, and 21—27 as being obvious over
the combination of Graf and Simpson.
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DECISION
The Examiner’s rejection of claims 21, and its dependent claims 22
and 25—27, as being indefinite is reversed.
The Examiner’s rejection of claim 23, and its dependent claim 24, as
being indefinite, is affirmed.
The Examiner’s art rejections of claims 1—3, 5—14, and 21—27 as
being obvious over variously cited art are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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