HiVis Pumps AS

Patent Trials and Appeals Board

Jan 29, 2020

15592721 - (D) (P.T.A.B. Jan. 29, 2020)

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.
15/592,721 05/11/2017 Alastair Simpson Veretek-001/PCT-US:RE 6419
21897 7590 01/29/2020
Matthews, Lawson, McCutcheon & Joseph, PLLC
2000 BERING DRIVE
SUITE 700
HOUSTON, TX 77057
EXAMINER
FETSUGA, ROBERT M
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
01/29/2020 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 ALASTAIR SIMPSON
Appeal 2020-000541
Application 15/592,721
Technology Center 3900
Before MICHELLE R. OSINSKI, JILL D. HILL, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 4, 18–20, 22, 24, 25, and 35. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

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 HiVis Pump AS.
Appeal Br. 2.
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BACKGROUND
Independent claims 1 (apparatus) and 35 (method) are pending.
Claim 1, reproduced below with certain limitations italicized, represents the
claimed subject matter:
1. A pump assembly for use with a high viscosity or
multiphase hydrocarbon fluid comprising:
a stator having an internal surface of constant diameter
and one or more stator vanes extending from the internal
surface to a constant stator vane radial height along a length of
the stator; and
a rotor having an external surface of constant diameter
and one or more rotor vanes extending from the external surface
to a constant rotor vane radial height along a length of the rotor,
wherein the one or more stator vanes have an opposite
handed thread with respect to a thread of the one or more rotor
vanes, wherein the stator and rotor cooperate to, on rotation of
the rotor, move the high viscosity or multiphase hydrocarbon
fluid longitudinally between the stator and the rotor, wherein a
radial gap, having a gap width in the range of greater than 0.254
mm to 10 mm, is located between the constant stator vane
radial height and the constant rotor vane radial height along a
length of the pump assembly, wherein the constant rotor vane
radial height is greater than the constant stator vane radial
height, and a ratio of the constant rotor vane radial height to
the constant stator vane radial height has a constant value in
the range of 3.5 to 4.5 along the length of the pump assembly,
a helix formed by the one or more rotor vanes has a mean
lead angle (α) that is greater than 60° but less than 90°, and a
helix formed by the one or more stator vanes has a mean lead
angle (β) that is greater than 60° but less than 90°,
the one or more stator vanes further comprises a stator
vane thickness, and the one or more rotor vane further
comprises a rotor vane thickness, and the stator vane thickness
is greater than the rotor vane thickness along the length of the
pump assembly.
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Support for Appellant’s rotor vane height ratio limitation can be found
in Appellant’s Specification, as follows:
Most preferably a height of the one or more rotor vanes is
greater than a height of the one or more stator vanes. A ratio of
the rotor vane height to stator vane height may be in the range
of 1.1 to 20. Preferably the ratio of the rotor vane height to the
stator vane height is in the range 3.5 to 4.5. In a preferred
embodiment the ratio of the rotor vane height to the 25 stator
vane height is 4.2.
Spec. 4:19–25.
FIG. 9(c) presents the performance curve for a rotor vane
height 24 to stator vane height 26 ratio equal to 4.2.
Surprisingly, the gradient of the water curve and the 5,000 cp
viscosity fluid are equal. With such an arrangement the
performance of the pump assembly 1 is effectively independent
of the viscosity of the fluid being pumped. Extensive testing
has confirmed that this effect is provided when the rotor vane
height 24 to stator vane height 26 ratio is 3.5 to 4.5 and it is
anticipated that this effect will be maintained for even greater
ratio values.
Spec. 11:39–48.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Desgoffe US 551,852 Dec. 24, 1895
McCoskey US 589,532 Sept. 7, 1897
Zalis US 3,841,805 Oct. 15, 1974
Cameron US 5,275,238 Jan. 4, 1994
Simpson WO 99/27256 A1 June 3, 1999
Nistor US 6,041,855 Mar. 28, 2000

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REJECTIONS
I. Claims 1, 2, 4, 19, 20, 22, and 35 stand rejected under 35
U.S.C. 103(a) as unpatentable over Simpson, McCoskey, Desgoffe, and
Cameron. Final Act. 3.
II. Claim 18 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Simpson, McCoskey, Desgoffe, Cameron, and Nistor.
Final Act. 7.
III. Claims 24 and 25 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Simpson, McCoskey, Desgoffe, Cameron, and Zalis.
Final Act. 8.
ANALYSIS
Rejection I
The Examiner finds, inter alia, that Simpson discloses a pump
assembly comprising a stator 11 with a stator vane thread having a constant
radial height and a thickness, and a rotor 10 with a rotor vane thread having
a constant radial height and a thickness that is less than the stator vane
thickness. Final Act. 3–4. The Examiner then finds that Simpson does not
disclose its rotor vane radial height being greater than its stator vane radial
height, or a radial height ratio range of 3.5 to 4.5. Id. at 4. The Examiner
determines, however, that Simpson teaches the selection of vane parameters
being “an obvious design choice which depends upon the desired
performance of the pump.” Id. (citing Simpson 5:8–15 (“performance of a
pump is affected by the cross-sectional area of the threads or grooves, their
pitch or helix angle, and the overall length of the rotor within the stator.
Generally, the greater the cross-section and the steeper the pitch, the greater
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the volume.”)). Similarly, the Examiner contends that selection of “specific
vane heights would have been obvious choices to be made, and would
depend upon the desired pump performance relative to fluid being pumped,
as suggested in Simpson.” Id. (citing Simpson 1:6–14; 11:32–12:8).
We note that while vane radial height may dictate a vane’s cross-
sectional area, which Simpson appreciates effects pump performance, the
“vane parameters” contemplated by Simpson as effecting pump performance
are not relative vane parameters such as the claimed vane radial height ratio.
Regarding vane height specifically, the Examiner finds that
McCoskey teaches that (1) a skilled artisan “would appreciate the
implementation of a rotor vane 18 height that is significantly greater than a
stator vane 3 height” when pumping a fluid vertically, and (2) “the fluid
being pumped, when using a rotor vane height that is greater than the stator
vane height, can contain ‘foreign matter, such as sand or gravel’ without
incurring significant wear on the pump.” Final Act. 4–5 (citing McCoskey
Fig. 2 (showing a rotor vane having a height that appears greater than a
surrounding stator vane), ll. 76–80 (“water containing foreign matter, such
as sand and gravel, can be raised with equal facility and with little or no
wear on the pump.”)); Ans. 18–19.
We note that McCoskey never ties the radial heights of its stator and
rotor vanes, much less the range of relative radial heights thereof, to its
ability to raise water containing foreign matter without wear.
The Examiner next finds that, with respect to the claimed 3.5 to 4.5
ratio of vane radial heights, “the selection of a specific ratio would have
been an obvious choice” depending on “the desired pump performance
relative to fluid being pumped.” Final Act. 5. According to the Examiner,
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Desgoffe evidences that a skilled artisan “would recognize that a 3.5 to 4.5
[vane radial height] ratio has at least been suggested in the context of
pumping a fluid vertically.” Id. (citing Desgoffe Fig. 6). The Examiner
continues that Desgoffe evidences that a skilled artisan “would appreciate
that the condition of the material to be pumped is an important factor . . .
when considering the selection of vane parameters.” Id. (citing Desgoffe
2:91–101 (“The shape, number, and capacity of these threads, which may be
the same or different on the piston and case, may vary almost indefinitely,
the conditions of the material to be elevated being the most important factor
in determining the form most advantageous.”)).
We note that Desgoffe, although stating that the shape of its threads
may differ on its piston and case, and “may vary almost indefinitely,” never
contemplates such ratios or links the material to be elevated with a
thread/vane radial height ratio.
The Examiner lastly contends that “the selection of a specific [vane
height] ratio is considered to be routine optimization of result-effective
variables,” and “the pump performance identified in Simpson is a result that
is ultimately affected by a plurality of variables, such as the cross-sectional
area of the vane threads.” Final Act. 5–6 (citing MPEP § 2144.05(II)).
We note that while Simpson may be considered to address routine
optimization of thread cross-sectional area, it does not address routine
optimization of thread/vane radial height ratios.
Appellant initially contends, apparently to refute the Examiner’s
“design choice” conclusion of obviousness, that the claimed radial height
ratio range of 3.5 to 4.5 is not arbitrary, as evidenced by Fig. 9(c), which
shows that a rotor vane height to stator vane height ratio within the claimed
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range of 3.5 to 4.5 (i.e., 4.2), advantageously and unexpectedly “make[s]
performance of the pump independent of the viscosity of the fluid being
pumped.” Appeal Br. 7–8 (emphasis omitted) (citing the ’800 Patent, Fig.
9(c) and 11:41–48 (“Surprisingly . . . the performance of the pump assembly
1 is effectively independent of the viscosity of the fluid being pumped.
Extensive testing has confirmed that this effect is provided when the rotor
vane height 24 to stator vane height 26 ratio is 3.5 to 4.5.”)).
The Examiner responds that Appellant’s Figs. 9(a)–9(c) fail to
establish that “the attendant viscosity result [is] unexpected,” because it does
not account for other parameters such as the vane clearance/radial gap and
rotational speed, which “would appear to be particularly important
considerations when designing a reversing-thread pump.” Ans. 15.
According to the Examiner, “[t]here is no indication in the ’800 Patent that
the 4.2 ratio of vane heights results of Fig. 9(c) were achieved by testing a
pump that was otherwise identical to, and operated under the same
conditions as, the pump of Figs. 9(a)/9(b).” Id. at 17. Further, it is the
Examiner’s opinion that “the statement in the specification of the ’800
Patent indicating that the performance results illustrated in Fig. 9(c) are
surprising . . . , is not seen as dispositive in establishing those results to also
be unexpected.” Id.
In reply, Appellant explains the results shown in each of Figures 9(a)
to 9(c), and provides a comparison thereof, explaining why Figures 9(a) –
9(c), with relevant portions of the written description, evidence that the
claimed ratio of vane radial heights causes pump performance to be
“beneficially independent of the viscosity of the fluid being pumped.”
Reply Br. 5–6. Further, the ’800 Patent specifically characterizes this result
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as “surprising,” which Appellant contends denotes an unexpected result. Id.
at 6–7. Appellant argues that “[t]he Examiner’s position that ‘surprising’
results are not the same as ‘unexpected’ results . . . is both illogical and
unreasonable.” Id. at 8 (referring to Ans. 17).
Here, Appellant has the better argument. While the Examiner may be
correct that some of the background of the test results shown in Figures 9(a)
– 9(c) are not specifically disclosed, a skilled artisan viewing the test results
and reviewing the relevant written description would understand that
Appellant’s Figures 9(a) – 9(c) evidence that the claimed ratio of vane radial
heights causes pump performance to be beneficially independent of the
viscosity of the fluid. Further, Appellant characterizes such results as
“surprising” in the written description, which informs us that the result was
not expected by Appellant, who we assume is at least one of ordinary skill in
the art.
Regarding Desgoffe, which the Examiner finds suggests a 3.5 to 4.5
vane radial height ratio, Appellant argues that there is nothing in Desgoffe’s
Figure 6 that suggests the claimed 3.5 to 4.5 ratio of constant rotor vane
radial height to constant stator vane radial height along the length of the
pump assembly. Appeal Br. 8. Appellant contends that there is no
indication that Desgoffe’s Figure 6 is drawn to scale, so that “there is no
evidence at all that the specific claimed ratio of 3.5 to 4.5 would have been
gleaned by one of ordinary skill in the art simply by looking at the figure.”
Id. at 9 (citing MPEP § 2125(II) (“[I]t is well established that patent
drawings do not define the precise proportions of the elements and may not
be relied on to show particular sizes if the specification is completely silent
on the issue.” (alteration in original)); Reply Br. 2. Appellant argues,
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regarding Desgoffe’s statement that “[t]he shape, number, and capacity of
these threads . . . may vary almost indefinitely,” that such disclosure fails to
“explain why or give any hint to one of ordinary skill in the art that, the
claimed ratio would have been ‘advantageous’, or even beneficial for a
‘particular material to be elevated’.” Appeal Br. 10 (quoting Desgoffe 2:91–
101) (emphasis added).
In the Answer, the Examiner makes a finding that “Desgoffe discloses
a pump . . . including a ratio of vane heights that falls within the range of 3.5
to 4.5.” Ans. 10. The Examiner appears to be relying on Desgoffe’s Figure
6 for this finding. See Final Act. 6 (“Desgoffe illustrates a ratio of vane
height parameters that appears to be very close to, if not encompassed by,
the specific ratio recited in claim 1.”).
Appellant again has the better argument. “[T]he description of the
article pictured can be relied on, in combination with the drawings, for what
they would reasonably teach one of ordinary skill in the art.” MPEP § 2125
(citing In re Wright, 569 F.2d 1124 (CCPA 1977)). While Desgoffe’s
drawings would teach a skilled artisan that rotor vane radial heights can be
greater than stator vane radial heights, the Examiner speculates about the
exact ratio of the vane radial heights, as evidence by use of the word
“appears” in the Examiner’s finding based on Desgoffe’s Figure 6. See
Final Acts 5; Ans. 11–12. Speculation is not evidence. Thus, the
Examiner’s finding that Desgoffe discloses a pump with a ratio of vane
heights that falls within the range of 3.5 to 4.5 lacks substantial evidence.
The Examiner erred in making this finding.
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The Examiner alternatively argues that the claimed range of vane
height ratio would have been obvious in light of the combined prior art
teachings, because a skilled artisan
would find reason to implement rotor and stator vane height
parameters that define a ratio significantly greater than one[],
and would be free to select the vane height parameters based
upon the specific fluid to be pumped. In making such a
selection, the person of ordinary skill would find no teaching in
the prior art that excludes a vane height ratio in the range of
3.5–4.5. . . . In Desgoffe, the reversing-thread pump not only
forms part of the analogous prior art, but uses a vane height
ratio that appears to be very close to, if not encompassed by, the
3.5–4.5 range recited in claim 1.
Ans. 11–12.
Appellant replies that the Examiner’s contention about the prior art
not excluding the claimed vane radial height ration takes an incorrect
position that “if the prior art doesn’t specifically exclude the claimed range,
then the claimed range would have been obvious,” which is not the legal test
for obviousness. Reply Br. 4.
Appellant next argues that “the claimed vane radial height ratio of 3.5
to 4.5” is not obvious because it is not a result effective variable, because the
prior art references fail to recognize the vane radial height ratio as a
parameter to be manipulated to change pumping results. See Appeal Br. 12–
13.
The Examiner disagrees, arguing that Simpson, Cameron, and
Desgoffe “indicate that the vane parameters directly affect the performance
of the pump,” and Desgoffe shows a vane height ratio that “appears to be in
the range of 3.5 to 4.5.” Ans. 18. “In the [E]xaminer’s view, the burden lies
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with Appellant to show that the claimed ratio range produces an unexpected
result.” Id. (citing MPEP §§ 2142, 2144.05(III)(A)).
The Examiner later responds that “a ratio of vane heights is an
inherent characteristic that is associated with any reversing-thread pump,”
and again contends that Desgoffe’s Figure 6 shows a vane height ratio that
“appears to be in the range of 3.5 to 4.5” while Desgoffe additionally states
that the shape number and capacity of the threads “may be the same or
different on the piston and case” and “may vary almost indefinitely.” Id. at
19 (quoting Desgoffe 2:96–101). The Examiner determines that “the applied
prior art, when considered as a whole, indicates that a reversing-thread pump
having a vane height ratio in the range of 3.5 to 4.5 would have been a
predictable result obtained by combining known pump parameters in a
known way.” Id. (citing MPEP § 2143 (I)(A)). The Examiner further notes
that Desgoffe, alone, is not being relied on to teach a vane radial height ratio
that maintains a constant 3.5 to 4.5 value along a length of the pump,
because McCoskey discloses a constant vane height ratio. Id.
Appellant replies that the prior art must recognize a variable as result
effective before the determination of an optimum range can be characterized
as routine optimization and obvious. Reply Br. 9. Appellant argues that
there is “no factual evidence at all that any of the cited references discusses
vane radial height ratios as achieving some beneficial (recognized) result,
. . . [and thus] ratios of piston vane radial height to cylinder vane radial
height were not known as a result-effective variable,” i.e., “a parameter to be
manipulated to change pumping results.” Id. (emphasis omitted). Even if
the prior art indicates that pump performance (a result) is affected by vane
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parameters generally, none of the references considers “a vane radial height
ratio as one of those parameters.” Id. (emphasis omitted).
Appellant has the better argument. The prior art must recognize a
variable as result effective before the determination of an optimum range can
be characterized as routine optimization and obvious. The variable here is,
specifically, vane height ratio. As explained above, Desgoffe does not
provide support for the Examiner’s finding that the combined prior art
discloses the claimed vane height ratio. Further, the Examiner has provided
evidence that the prior art teaches vane cross section effecting pump
performance, but not specifically vane radial height ratios achieving a
beneficial result. Therefore, the Examiner has not established that the ratio
of piston vane radial height to cylinder vane radial height was known as a
result-effective variable. For this reason, the Examiner has not established
prima facie obviousness.
In addition, the Examiner finds that a rotor vane height greater than a
stator vane height allows pumped fluid to contain foreign matter without
incurring significant wear on the pump, Appellant argues that “[s]imply
teaching a rotor vane height that is greater than the stator vane height does
not explain why, or give any hint to one of ordinary skill in the art that, the
claimed ratio of 3.5 to 4.5 would have been desirable . . . for pumping the
fluid with McCoskey’s device.” Appeal Br. 14; Reply Br. 1.
As set forth above, McCoskey never ties the heights of its stator and
rotor vanes, much less the range of relative radial heights thereof, to its
ability to raise water containing foreign matter without wear. Therefore,
although McCoskey’s rotor and stator vane heights may be constant and its
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rotor vane height may be greater than its stator vane height, McCoskey never
ties this vane height difference to any change in pump performance.
For these reasons, we do not sustain Rejection I.

Rejections II and III
Because the Examiner’s findings and conclusions set forth in
Rejection I are applied to Rejections II and III, and the Examiner does not
assert that either Nistor or Zalis cure the above-noted deficiencies in
Rejection I, we do not sustain Rejection II or Rejection III.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 2, 4, 19,
20, 22, 35
103 Simpson, McCoskey,
Desgoffe, Cameron
1, 2, 4, 19,
20, 22, 35
18 103 Simpson, McCoskey,
Desgoffe, Cameron,
Nistor
18
24, 25 Simpson, McCoskey,
Desgoffe, Cameron,
Zalis
24, 25
Overall
Outcome
1, 2, 4, 18–
20, 22, 24,
25, 35

REVERSED