PIERBURG PUMP TECHNOLOGY GMBH

Patent Trials and Appeals Board

Mar 2, 2022

2021002859 (P.T.A.B. Mar. 2, 2022)

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. 15/738,123 12/20/2017 STEPHAN SCHRECKENBERG TS/PIEP 1707 US-PAT 4623 96897 7590 03/02/2022 THOT PATENT POSTFACH 10 17 56 RATINGEN, 40837 GERMANY EXAMINER SOLAK, TIMOTHY P ART UNIT PAPER NUMBER 3746 MAIL DATE DELIVERY MODE 03/02/2022 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 STEPHAN SCHRECKENBERG Appeal 2021-002859 Application 15/738,123 Technology Center 3700 Before BRETT C. MARTIN, BRANDON J. WARNER, and MICHAEL L. WOODS, Administrative Patent Judges. MARTIN, 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 14 and 17-26. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Pierburg Pump Technology GmbH. Appeal Br. 2. Appeal 2021-002859 Application 15/738,123 2 CLAIMED SUBJECT MATTER The claims are directed to a pump housing having a fastening structure. Claim 14, reproduced below, is illustrative of the claimed subject matter: 14. A motor-vehicle electric coolant pump comprising: a pump housing comprising a flow housing part and a separate motor housing part; a spiral flow channel comprising an axial inlet and a tangential outlet; a rotatably supported fluid-conveying element; an electric drive motor configured to drive the rotatably supported fluid-conveying element; and a mounting structure configured to mount the pump housing to a vehicle structure, the mounting structure only being arranged on the flow housing part, wherein, the flow housing part at least partially surrounds the spiral flow channel and at least partially surrounds the rotatably supported fluid-conveying element, the separate motor housing part surrounds the electric drive motor, the mounting structure is formed integrally with the flow housing part, the rotatably supported fluid-conveying element comprises a rotation axis, the mounting structure is arranged in parallel with the rotation axis in a longitudinal direction, and a mechanical fixation of the electric coolant pump to the vehicle structure is effected exclusively via the mounting structure without a further support. Appeal 2021-002859 Application 15/738,123 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Bellis US 5,007,806 Apr. 16, 1991 Hawes US 5,529,462 June 25, 1996 Caudill US 6,200,108 B1 Mar. 13, 2001 Staton US 6,499,964 B2 Dec. 31, 2002 Weigold US 2004/0062664 A1 Apr. 1, 2004 REJECTIONS Claims 14 and 17-24 stand rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. Final Act. 7. Claims 14 and 17-26 stand rejected under 35 U.S.C. 112(b) as indefinite. Final Act. 7. Claims 14, 17-20, 22, and 25 stand rejected under 35 U.S.C. § 103 as being unpatentable over Weigold and Staton. Final Act. 8. Claim 21 stands rejected under 35 U.S.C. § 103 as being unpatentable over Weigold, Staton, and Hawes. Final Act. 12. Claims 23 and 24 stand rejected under 35 U.S.C. § 103 as being unpatentable over Weigold, Staton, and Bellis. Final Act. 13. Claim 26 stands rejected under 35 U.S.C. § 103 as being unpatentable over Weigold, Staton, and Caudill. Final Act. 14. OPINION Issues under § 112 We first note that the Examiner has interpreted the recitation of “fluid- conveying element” in claim 14 and others as implicating means-plus- function interpretation. Final Act. 5. Appellant argues that “[a] Person of Appeal 2021-002859 Application 15/738,123 4 Ordinary Skill in the Art (‘POSITA’) for coolant pumps would immediately recognize that this is a typical example of a device taking its name from the function it performs” and that a “POSITA for coolant pumps would know exactly which structure is required by ‘fluid-conveying element,’” namely an impeller or rotor. Appeal Br. 8-9. The Examiner fails to address this argument and merely restates, in its entirety, the explanation for interpreting the claim term as means-plus-function as stated in the Final Action. We agree with Appellant that one of skill in this art would recognize the claimed “fluid-conveying element” as merely being a generic term for the part that moves fluid without specifically claiming an impeller or rotor (or other device) more akin to other accepted generic terms such as “mechanism,” “assembly,” “member,” or the like. See Appeal Br. 8. Accordingly, this term need not be interpreted as invoking means-plus-function analysis. The Examiner rejects the claims as lacking written description support due to the reciting of a negative limitation in the form of “without a further support.” Final Act. 7. We fail to see how this limitation lacks written description support when the claims and Specification describe this limitation as a fixation “effected exclusively via the mounting structure.” Claim 14 is even somewhat redundant in describing the exclusive manner of fixation as being “without a further support.” When something is referred to as “exclusive,” it explicitly means that no other device or apparatus performs the “exclusive” function. In claim 14, “without a further support” is actually redundant of the exclusive arrangement already recited. In this context, they mean the same thing. Appellant has expressed a willingness to remove the claim language at issue and we leave it to Appellant to do so, or not, but we do not sustain the Examiner’s rejection. We likewise do not sustain the Appeal 2021-002859 Application 15/738,123 5 indefiniteness rejection based on the same passage for the reasons stated above. Regarding claim 20, Appellant states that the offending language was proposed to be deleted via an amendment that was not entered by the Examiner and that “Appellant remains open to deleting said wording.” Appeal Br. 12. Appellant does not otherwise argue this rejection. Accordingly, we summarily affirm the undisputed rejection, with the understanding that Appellant can amend the language as proposed. Obviousness Regarding the tangential outlet allegedly found in Weigold, we note that the Examiner’s rejection, though not specifically stating so, appears to rely on inherency. Appellant is correct that “Weigold does not anywhere specifically teach or suggest the required tangential outlet via motor housing 30,” and does not “use the word ‘tangential’, or any variant thereof, together with ‘outlet.’” Reply Br. 7. We do not pass judgment on whether the Examiner is correct that Schreckenberg adequately evidences that Weigold does, in fact, teach a spiral flow with a tangential outlet.2 Ans. 23 (citing US 2013/0309084 (“Schreckenberg”)). We do note that Appellant has raised the issue that “Weigold could, for example, have a radial outlet.” Appeal Br. 14. Given that Weigold is silent in describing either a spiral flow or a tangential outlet, the Examiner is essentially stating that Weigold inherently 2 Appellant takes issue with the Examiner’s use of Schreckenberg for the first time in the Answer and asserts that this should have been submitted as a new ground of rejection. Reply Br. 7. We note that the proper course of action to challenge whether the Examiner improperly introduced a new ground of rejection is by petition and not by appeal. Because Appellant did not petition this matter, the contention as to the impropriety of the inclusion of Schreckenberg, at least for purposes of this appeal, has been waived. Appeal 2021-002859 Application 15/738,123 6 teaches these claim recitations. In order for the Examiner to rely on inherency, the Examiner must establish that the reference necessarily teaches the use of a tangential outlet. The Examiner has asserted that one of skill in the art would recognize Weigold as teaching the tangential outlet given the disclosure of Schreckenberg, but from Appellant’s assertion that Weigold could use a radial outlet, we are left with an unrebutted statement by Appellant that Weigold does not necessarily teach a tangential outlet. Without more explanation by the Examiner on this point in stating how one of skill in the art would understand Weigold as only operating as disclosed in Schreckenberg, we are left with a situation where a preponderance of the evidence does not support that Weigold necessarily teaches a tangential outlet (as would be needed to support inherency), because it may alternatively include an axial outlet. As to the combination of Staton’s flow housing part 56/52 with the pump of Weigold, we note that the Examiner states, in no uncertain terms, that “there are no ‘divergent interpretations’” as to “which part is the required flow housing part in Staton,” and that “the simple combination is only replacing the flow housing part 18 of Weigold et al. with flow housing part 56/52 disclosed by Staton et al.” Ans. 24-25. Given that the Examiner’s rejection is merely a simple substitution of Weigold’s housing 18 with Staton’s housing 56/52, we must agree with Appellant that such a “simple” substitution results in a combination in which “no outlet whatsoever exists.” Appeal Br. 13 (emphasis removed). As Appellant clearly shows, a portion of Weigold’s housing 18 forms parts of chamber 30 and the opposing, unlabeled chamber. Id. We agree with Appellant that the combination as stated by the Examiner “would result in a pump which does Appeal 2021-002859 Application 15/738,123 7 not work because it has no outlet.” Id. The Examiner provides no rebuttal to Appellant’s argument on this point. Seeing as the Examiner’s “simple substitution” removes critical aspects of Weigold’s pump, we cannot sustain the Examiner’s rejection. Because all of the prior art rejections rely on this faulty combination of Staton and Weigold, we likewise do not sustain any of the other prior art rejections. CONCLUSION The Examiner’s indefiniteness rejection of claim 20 is affirmed and the remainder of the rejections are reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 14, 17-24 112(a) Written Description 14, 17-24 14, 17-26 112(b) Indefiniteness 20 14, 17-19, 21-26 14, 17-20, 22, 25 103 Weigold, Staton 14, 17-20, 22, 25 21 103 Weigold, Staton, Hawes 21 23, 24 103 Weigold, Staton, Bellis 23, 24 26 103 Weigold, Staton, Caudill 26 Overall Outcome 20 14, 17-19, 21-26 Appeal 2021-002859 Application 15/738,123 8 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED IN PART