GRUNDFOS HOLDING A/S

Patent Trials and Appeals Board

Mar 8, 2021

2019006779 (P.T.A.B. Mar. 8, 2021)

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.
14/345,767 03/19/2014 John Bomholt 7911-209US(GP 2180 US) 6626
570 7590 03/08/2021
PANITCH SCHWARZE BELISARIO & NADEL LLP
TWO COMMERCE SQUARE
2001 MARKET STREET, SUITE 2800
PHILADELPHIA, PA 19103
EXAMINER
DUNN, DARRIN D
ART UNIT PAPER NUMBER
2117
NOTIFICATION DATE DELIVERY MODE
03/08/2021 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):
usptomail@panitchlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN BOMHOLT and NEILS JØRGEN STRØM
____________

Appeal 2019-006779
Application 14/345,767
Technology Center 2100
____________

Before JOHN A. JEFFERY, STEVEN M. AMUNDSON, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Under 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s
decision to reject claims 18, 24–27, 30, and 32–35. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
Grundfos Holding A/S. Appeal Br. 1.
Appeal 2019-006779
Application 14/345,767

2

STATEMENT OF THE CASE
Appellant’s invention is a pump unit with a control device for
controlling a drive motor. The control device communicates with a
programming module that enables choosing and combining input
parameters, operators, and actions to generate a user function of a user
application executed by microprocessor. See Abstract. Claim 18 is
illustrative:
18. A pump unit (2) having an electrical drive motor (5) and a
control device (4) for controlling the drive motor (5), wherein said
control device (4) comprises at least one microprocessor (8) and
storage means (6) configured to store at least one control program
executable by said microprocessor (8), wherein said control device
(4) comprises or communicates with a programming module (7) by
which at least one user application is at least one of created or
modified and stored in said storage means, wherein said
programming module (7) is configured to provide a plurality of
input parameters (13), a plurality of operators (10) and a plurality of
actions (14) for selection as program elements and combined to
generate at least one user function (18) of said user application
which is executed by said microprocessor such that a user is able to
create a user function by selecting at least one of the operators for
combination with at least one of the input parameters and at least
one of the actions, wherein the control device (4) with said
microprocessor (8) and said storage means (6) are located in at least
one electronic housing arranged at said drive motor (5) or in a
housing of said drive motor (5), and said programming module (7) is
arranged in said at least one electronic housing,
at least one of the plurality of input parameters (13) is
provided by at least one sensor arranged in the pump unit, at
least one external sensor, a computing device, a data storage
means, and/or a data network,
the plurality of operators (10) are logic operators, and
the plurality of actions (14) comprise a switching on and
off and/or a speed adjustment of the drive motor,
Appeal 2019-006779
Application 14/345,767

3
wherein the programming module (7) comprises at least
one display (30) configured to show several program elements
which can be chosen and combined for creating the at least one
user function.

THE REJECTIONS
The Examiner rejected claims 18, 24–27, 30, 33, and 34 under
35 U.S.C. § 103 as unpatentable over Sabini (US 2003/0091443 Al;
published May 15, 2003), Lewis (US 5,812,394; issued Sept. 22, 1998), and
Stiles (US 2007/0154322 Al; published July 5, 2007). Final Act. 4–9.2
The Examiner rejected claim 32 under 35 U.S.C. § 103 as
unpatentable over Sabini, Lewis, Stiles, and Valluri (US 2012/0053737 Al;
published Mar. 1, 2012). Final Act. 9.
The Examiner rejected claim 35 under 35 U.S.C. § 103 as
unpatentable over Sabini, Lewis, Stiles, and Beckham (US 8,573,951 Bl;
issued Nov. 5, 2013). Final Act. 9–10.

THE REJECTION OVER SABINI, LEWIS, AND STILES
Regarding independent claim 18, the Examiner finds that Sabini
discloses a pump unit with a control device communicating with a
programming module configured to provide an input parameter, operator,
and action for selection as program elements and combined to generate at
least one user function that is executed by a microprocessor. Final Act. 4–5.
Although the Examiner acknowledges that Sabini does not expressly teach

2 Throughout this opinion, we refer to (1) the Final Rejection mailed
September 7, 2018 (“Final Act.”); (2) the Appeal Brief filed April 5, 2019
(“Appeal Br.”); (3) the Examiner’s Answer mailed July 25, 2019 (“Ans.”);
and (4) the Reply Brief filed September 17, 2019 (“Reply Br.”).
Appeal 2019-006779
Application 14/345,767

4
plural operators and actions such that a user can create a user function by
selecting at least one of the operators for combination with at least one input
parameter and action, the Examiner cites Lewis for teaching this feature in
addition to the recited operator and action particulars. Final Act. 5–7. The
Examiner also acknowledges that the Sabini/Lewis system’s control device
is not located in at least one electronic housing arranged at the pump unit’s
drive motor or in the motor’s housing, but cites Stiles for teaching that
feature in concluding that the claim would have been obvious. Final Act. 6–
7.
Appellant argues that the Examiner’s combination is improper
because Lewis teaches away from the claimed invention. Appeal Br. 4–6;
Reply Br. 1–3. According to Appellant, Lewis expressly criticizes and
designs around systems where control programming is distributed to
particular devices, such as pumps, and instead locates control in a single
system, preferably a personal computer with a true operating system. See id.

ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Sabini, Lewis, and Stiles collectively would have taught or suggested a
pump unit with a control device with a microprocessor and storage means
located in at least one electronic housing arranged at a drive motor, or in the
drive motor’s housing, and a programming module is arranged in the
electronic housing? This issue turns on whether Lewis teaches away from
the claimed invention.

Appeal 2019-006779
Application 14/345,767

5
ANALYSIS
We begin by noting that the Examiner’s findings regarding the
specific disclosures of Sabini, Lewis, and Stiles for teaching the particular
limitations of claim 18 are undisputed. See Final Act. 4–7. Rather, as noted
above, this dispute turns solely on whether Lewis teaches away from the
claimed invention. Therefore, we confine our discussion to that issue.
It is well settled that, in assessing obviousness, a prior art reference
must be considered in its entirety, namely as a whole, including portions that
could lead away from the claimed invention. See Panduit Corp. v. Dennison
Mfg. Co., 810 F.2d 1561, 1568 (Fed. Cir. 1987); see also Manual of Patent
Examining Procedure (MPEP) § 2141.02(VI) (9th ed. rev. 10.2019, June
2020). Therefore, it is improper to ignore parts of a prior art reference that
teach away from the claimed invention, despite other relevant disclosure in
that reference. See Panduit, 810 F.2d at 1568. In other words, merely
relying on only certain portions of a prior art reference is not a license to
ignore other portions of that reference that could teach away from the
claimed invention. See id.
We emphasize this point, for the Examiner states repeatedly in the
Answer that a key passage in Lewis that Appellant contends teaches away
from the claimed invention, namely column 10, lines 33 to 43, was not
relied upon in rejecting claim 18. See Ans. 3–5. Although this inartful
statement raises a legitimate question regarding the extent of the Examiner’s
consideration of the passage in the obviousness determination, the
Examiner’s statement does not mean that the passage was not considered in
that determination which, as noted above, requires considering all portions
Appeal 2019-006779
Application 14/345,767

6
of a prior art reference—including those that could lead away from the
claimed invention. See Panduit, 810 F.2d at 1568.
That the Examiner quotes the key passage in Lewis that allegedly
teaches away from the claimed invention suggests that this disclosure was at
least considered by the Examiner despite not relying on it in the rejection.
In other words, the fact that this passage was not cited or otherwise explicitly
relied upon in the rejection does not mean that it was not considered by the
Examiner in concluding that the claim would have been obvious. To the
extent Appellant contends otherwise (see Appeal Br. 4–6; Reply Br. 1–2),
there is no persuasive evidence on this record to substantiate such a
contention. To the contrary, the Examiner’s quoting Lewis’s column 10,
lines 33 to 43 on page 3 of the Answer suggests that the Examiner at least
considered the passage in the Examiner’s obviousness determination.
Turning to Lewis, we do not find the reference criticizes, discredits, or
otherwise discourages investigation into the invention claimed as required
for teaching away despite Appellant’s arguments to the contrary. See
Norgren Inc. v. Int’l Trade Comm’n, 699 F.3d 1317, 1326 (Fed. Cir. 2012);
see also In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006).
Lewis’s Background section describes the two then-dominant control
systems, namely (1) distributed control systems (DCS), and (2)
programmable logic controllers (PLCs). See Lewis col. 5, l. 9 – col. 8, l. 39.
As Lewis explains, DCS not only reduces a controller’s space requirements,
it also allows controllers to be distributed and placed closer to their
associated field sensors and control devices. Lewis col. 5, ll. 33–36, 45–46.
As a result, not only are control loops physically shorter and less prone to
noise or damage with DCS, individual field controllers can continue to
Appeal 2019-006779
Application 14/345,767

7
operate locally if a communications link is lost. Lewis col. 5, ll. 49–53.
Moreover, a DCS control network typically includes redundant capability to
prevent losing control functionality and information. Lewis col. 5, ll. 53–55.
PLC systems, on the other hand, are distinguished by their need for
integration that requires, among other things, consolidating the PLC and its
I/O subsystems with disparate computers and software packages that
compose the operator interface and development nodes. Lewis col. 6, ll. 31–
37. Notably, a PLC system can commonly include products from 12 or
more vendors, including the PLC manufacturer, unlike a DCS system that is
purchased completely from a DCS vendor. Lewis col. 6, ll. 39–41.
Moreover, a PLC’s I/O hardware is (1) located on an I/O network or bus,
and (2) monitors sensed values that are sent from field transmitters. Lewis
col. 6, ll. 60–65. The controller collects these sensed values from the I/O
hardware. Lewis col. 6, ll. 62–64.
Although DCS and PLC are independent systems, a DCS system can
nevertheless be augmented by PLCs using a communications gateway or
bridge to link information between the systems. See Lewis col. 10, ll. 24–
32. In fact, Lewis notes that one-third to one-half of all DCS installations
are connected to a PLC system via a gateway because engineers employ
separate products to acquire the preferred programming environment for
each type of control need. Lewis col. 6, ll. 33–38.
Lewis cautions, however, that it is inefficient and potentially
dangerous to have the control for a piece of equipment, such as a large pump
skid, spread out among separate systems, and it is preferable to perform both
types of control in a single system without sacrificing the advantages of each
separate environment. Lewis col. 6, ll. 38–43.
Appeal 2019-006779
Application 14/345,767

8
The import of this discussion is spreading out control among separate
systems, namely DCS and PLC systems, is inefficient and potentially
dangerous. See Lewis col. 10, ll. 38–40. Therefore, it is preferable to
perform both types of control, namely control associated with both DCS and
PLC systems, respectively, in a single system, yet retaining each system’s
separate advantages. See Lewis col. 10, ll. 40–43.
Our emphasis underscores that, when considered in context, Lewis’s
criticism in column 10, lines 33 to 43 pertains to the inefficiency and
potential danger of spreading out control among DCS and PLC systems. To
the extent Appellant contends that this criticism also applies to Appellant’s
claimed invention that lacks these systems, such a contention, at best,
overstates Lewis’s critique in this regard.
First, Appellant’s claimed invention does not recite DCS and PLC
systems, let alone one augmenting the other in the manner criticized by
Lewis. Rather, claim 18 recites, in pertinent part, a pump unit having a
control device with a microprocessor and storage means located in at least
one electronic housing arranged at a drive motor, or in the drive motor’s
housing, and a programming module arranged in the electronic housing. To
the extent Appellant contends the claimed invention is somehow equivalent
to a system that is spread out among both DCS and PLC systems, with its
inefficiencies and potential dangers as noted by Lewis in column 10, lines 24
to 43, there is no persuasive evidence on this record to substantiate such a
contention apart from Appellant’s arguments that, without supporting
evidence, have little probative value. See In re Geisler, 116 F.3d 1465, 1470
(Fed. Cir. 1997); see also Enzo Biochem, Inc. v. Gen-Probe, Inc., 424 F.3d
Appeal 2019-006779
Application 14/345,767

9
1276, 1284 (Fed. Cir. 2005) (“Attorney argument is no substitute for
evidence.”).
Second, even assuming, without deciding, that the separate systems
among which control is spread in Lewis’s column 10, lines 38 to 40
somehow include more than DCS and PLC systems connected via a gateway
as Appellant seems to suggest—a fact that has not been substantiated on this
record in any event—Appellant’s claimed invention does not require
spreading control over separate systems, let alone via a gateway. Rather,
claim 18 recites, in pertinent part, a pump unit with a control device with a
microprocessor and storage means located in at least one electronic housing
arranged at a drive motor, or in the drive motor’s housing, and a
programming module arranged in the electronic housing. In short, nothing
in the claim requires separate control systems, let alone spreading control
over those separate control systems, at least in the sense criticized by Lewis
in column 10, lines 33 to 43. To the extent Appellant contends otherwise,
there is no persuasive evidence on this record to substantiate such a
contention.
For the foregoing reasons, then, we do not find Lewis criticizes,
discredits, or otherwise discourages investigation into the invention claimed
as required for teaching away. See Norgren, 699 F.3d at 1326; see also
Kahn, 441 F.3d at 990.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 18, and claims 24–27, 30, 33, and 34 not argued separately with
particularity.

Appeal 2019-006779
Application 14/345,767

10
THE REJECTION OVER SABINI, LEWIS, STILES, AND VALLURI
We also sustain the Examiner’s rejection of claim 32 reciting the
display is a touch screen display and acts as an input device. Despite
Appellant’s arguments to the contrary, we see no error in the Examiner’s
reliance on Valluri for at least suggesting the recited limitations for the
reasons noted above and by the Examiner. Final Act. 9; Ans. 6.
First, Appellant’s arguments regarding Lewis allegedly teaching away
from the claimed invention (Reply Br. 3) are unpersuasive for the reasons
previously discussed. Second, Appellants’ arguments regarding Valluri’s
individual shortcomings regarding centralized control (Appeal Br. 6) do not
show nonobviousness where, as here, the rejection is not based on Valluri
alone, but rather based on the cited references’ collective teachings. See In
re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); accord Ans. 6.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 32.

THE REJECTION OVER SABINI, LEWIS, STILES, AND BECKHAM
We also sustain the Examiner’s rejection of claim 35 reciting the
pump unit is a recirculation pump. Despite Appellant’s arguments to the
contrary, we see no error in the Examiner’s reliance on Beckham for at least
suggesting the recited limitations for the reasons noted above and by the
Examiner. Final Act. 9–10; Ans. 6.
First, Appellant’s arguments regarding Lewis allegedly teaching away
from the claimed invention (Reply Br. 3) are unpersuasive for the reasons
previously discussed. Second, Appellants’ arguments regarding Beckham’s
individual shortcomings regarding allegedly not teaching creating user
Appeal 2019-006779
Application 14/345,767

11
functions by a programming module at a pump (Appeal Br. 6) are not only
not germane to the reason the reference was cited, the Examiner’s rejection
is not based on Beckham alone, but rather based on the cited references’
collective teachings. See Merck, 800 F.2d at 1097; accord Ans. 6.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 32.

CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)
/Basis
Affirmed Reversed
18, 24–
27, 30,
33, 34
103 Sabini,
Lewis, Stiles
18, 24–27,
30, 33, 34

32 103 Sabini,
Lewis,
Stiles,
Valluri
32
35 103 Sabini,
Lewis,
Stiles,
Beckham
35
Overall
Outcome
18, 24–27,
30, 32–35

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED