Bubb, Alexander et al.

Patent Trials and Appeals Board

Jan 14, 2020

14383622 - (D) (P.T.A.B. Jan. 14, 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.
14/383,622 11/05/2014 Alexander Bubb 2014-091 8813
27569 7590 01/14/2020
PAUL AND PAUL
1717 Arch Street Three Logan Square
SUITE 3740
PHILADELPHIA, PA 19103
EXAMINER
KASTURE, DNYANESH G
ART UNIT PAPER NUMBER
3746
NOTIFICATION DATE DELIVERY MODE
01/14/2020 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):
INFO@PAULANDPAUL.COM
claire@paulandpaul.com
fpanna@paulandpaul.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ALEXANDER BUBB,
JENS KAIBEL, and
TOBIAS VÖLKER

Appeal 2018–0050761
Application 14/383,622
Technology Center 3700
____________

Before MICHAEL L. HOELTER, BRETT C. MARTIN, and
LEE L. STEPINA, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s Final decision to reject claims 1–20, which constitute all the
claims pending in this application. Appellant’s counsel presented Oral

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
“ProMinent GmbH.” Appeal Br. 1.
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argument on December 19, 2019. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to a displacement pump with a
delivery chamber, which is connected to a pressure connection and a suction
connection.” Spec. 1.2 Apparatus claim 1 is the sole independent claim; is
illustrative of the claims on appeal; and, is reproduced below.
1. Displacement pump with a delivery chamber, which is
connected to a pressure connection and a suction connection, a
displacement element determining the volume of the delivery
chamber, said displacement element being able to be moved
back and forth between a first position, in which the delivery
chamber has a smaller volume, and a second position, in which
the delivery chamber has a larger volume, wherein the pressure
connection is connected to the delivery chamber by a pressure
valve and the suction connection is connected to the delivery
chamber by a suction valve, characterised in that with the
pressure valve closed, a backflow channel connects the delivery
chamber and pressure connection, through which medium can
enter the delivery chamber and/or gas can escape from the
delivery chamber, and in that the backflow channel, at its
narrowest point, has a cross-section that is smaller than 0.5
mm2.

2 Appellant’s Specification lacks both paragraph and line numbering. We
thus reference Appellant’s Specification via page number only.
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REFERENCES

Name Reference Date
Audett et al.
(“Audett”)
US 1,151,329 Aug. 24, 1915
Todd US 3,727,635 Apr. 17, 1973
Boticki US 5,261,447 Nov. 16, 1993
Wilmshurst et al.
(“Wilmshurst”)
US 2008/0178948 A1 July 31, 2008
Mueller et al.
(“Mueller”)
US 2011/0247490 A1 Oct. 13, 2011
REJECTIONS
Claims 1, 2, 4, 5, 7, and 19 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Mueller and Todd. Final Act. 2–6.
Claims 1 and 3 are rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Mueller and Boticki. Final Act. 6–7.
Claims 1, 4, 5, 7, 13, 14, and 18 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Mueller, Wilmshurst, and Todd or Boticki.
Final Act. 7–10.
Claims 1, 4–6, 8, 9, 15–17, and 20 are rejected under pre-AIA 35
U.S.C. § 103(a) as unpatentable over Mueller, Audett, and Todd or Boticki.
Final Act. 10–15.
Claims 3 and 10–12 are rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Mueller, Todd, and Boticki. Final Act. 15.

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ANALYSIS
The rejection of claims 1, 2, 4, 5, 7, and 19
as unpatentable over Mueller and Todd
Sole independent claim 1 recites a pump having a pressure connection
(and valve), a suction connection (and valve), and a delivery chamber
interconnecting the pressure and suction connections (and valves). More
specifically, claim 1 recites a pump “characterized in that with the pressure
valve closed, a backflow channel connects the delivery chamber and
pressure connection, through which medium can enter the delivery chamber
and/or gas can escape from the delivery chamber.”
The Examiner primarily relies on Mueller for many of the limitations
recited in claim 1, but acknowledges that “Mueller does not disclose a
backflow channel.” Final Act. 3. The Examiner relies upon “backflow
channel (38)” of Todd for this disclosure. Final Act. 3. The Examiner
reasons that it would have been obvious “to modify the valve seat of Mueller
to incorporate a groove as taught by Todd for the purpose of forming a
backflow channel for assisting the bubble to escape [] or assisting the fluid
medium to enter.” Final Act. 3–4 (referencing Mueller Fig. 1.8 (which
illustrates the degassing of chamber 1) (Mueller ¶ 55)).
Appellant acknowledges “[t]here is a small groove in the seat” of
Todd, but that such groove is not a “backflow channel.”3 Appeal Br. 13.
This is because, when Todd’s device is pressurized, the pressurization lifts
Todd’s ball 36 from lower valve seat 16 to subsequently engage upper
(grooved) valve seat 20. See Todd 4:7–10, 4:32–37, and Figs. 1–3. Todd

3 The Examiner finds “[t]he word ‘backflow’ as claimed does not impart
any added structural limitation to the trickle channel.” Ans. 3.
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teaches that “the steel ball itself forms one wall of the by-pass when the steel
ball is in its upper closed position.” Todd 4:52–58. Thus, as per Todd, “the
discharge from the fitting is restricted to the rate of flow through the by-pass
38 which is a trickle rate.” Todd 5:1–3; see also Appeal Br. 13. Upon
depressurization, Todd’s “steel ball gravitates to its normal lower idle
position” away from seat 20. Todd 5:5–8. Thus, Todd’s by-pass 38 (formed
between ball 36 and upper seat 20) is the sole pathway for water to exit and,
according to Appellant, when thusly formed by the lifting of ball 36, “water
can never flow back into the valve, it must always flow out.” 4 Appeal Br.
14. Consequently, “[t]here is no possibility of backflow in Todd’s sprinkler
valve” and, as a result, “[t]here can be no backflow through the channel” as
recited. Appeal Br. 13.
Indeed, as Todd is understood, any attempt at backflow into Todd’s
device causes ball 36 to fall away from upper seat 20 and seal against lower
un-grooved seat 16. See Todd 5:5–8, and Figs. 1–3. Appellant thus
questions “why one of ordinary skill in the art would consider Todd’s
groove in upper seat 20 to be a ‘backflow channel’” because “[i]t does not
function that way in Todd.” Appeal Br. 14. Appellant contends that in view
of the above, the Examiner has not provided a “prima facie” case of
obviousness. Appeal Br. 14; see also Reply Br. 2 (“[T]he Examiner fails to
provide a reasoned explanation for the combination of Mueller and Todd.”).
To be clear, Appellant argues that “[t]he Examiner’s selective reading of

4 According to Appellant, the Examiner is “arguing that water will flow into
the valve by force of gravity against the pressure of water already inside the
valve” which is being forced out. Appeal Br. 14.
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Mueller only makes sense[] as an illegitimate reconstruction of [A]pplicant’s
own invention.” Reply Br. 3.
As expressed above, the Examiner’s reason to combine Mueller and
Todd is to assist in allowing bubbles to escape. See Final Act. 4. However,
“Mueller’s device already provides a means for preventing the accumulation
of gas.” Appeal Br. 15; see also Mueller ¶¶ 47–55 (describing a slight
oscillation of the diaphragm to degas Mueller’s corresponding delivery
chamber 1) (see Final Act. 3)). The Examiner responds stating “Todd’s
groove modification creates a trickle/leakage which prevents pressure
buildup and obviates the need for a time consuming method of pulsing.”
Ans. 4. The Examiner’s response appears to be missing the point of
Mueller, whose pulsing is designed to remove bubbles “adhering to the inner
surfaces” of Mueller’s chamber. Mueller Abstract, and Fig. 1.1. If, indeed,
the Examiner is obviating the need for a time consuming method of pulsing,
the Examiner does not explain how modifying Mueller with Todd’s groove
would remove bubbles from the interior wall and floor surfaces of Mueller’s
chamber. See Ans. 4.
The Examiner also states, “there is no WATER pressure in the
chamber of Mueller when the pump is not operational (pressure only builds
due to formation of bubbles).” Ans. 3. But this statement wholly obscures
the fact that it is precisely the formation of bubbles within Mueller’s sealed
chamber that displace the liquid therein and increase chamber pressure when
the pump is not operational.
Additionally, the Examiner explains, “[t]he proposed Todd
modification provides a simplification, and therefore is motivation to make
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the modification.”5 Adv. Act. (Advisory Action mailed July 7, 2017,
hereinafter “Adv. Act.”). However, similar to the above, “the Examiner has
not explained why one of ordinary skill in the art would expect that merely
providing a backflow channel (which is not shown by Todd) would meet
Mueller’s objectives of detaching gas bubbles” that adhere to the sides of the
pressure chamber. Appeal Br. 15.
Appellant further discusses the operation of Mueller and Todd
concluding that “a skilled person would never take into consideration a
device as disclosed by Todd” and that “[i]n summary, there is no reason for
a skilled person” to consider Todd. Appeal Br. 17–18; see also Reply Br. 2–
4 (“Mueller teaches against uncontrolled release.”). The Examiner responds,
“the motivation to combine Mueller and Todd does not have to be present in
either reference.” Ans. 5–6.
In view of all the above, Appellant appears to have the better position.
Clearly, Todd’s recess 38 is not a backflow channel, but instead is the main
channel out of the irrigation device. Further, any return (back) flow is not
via recess 38, but instead via the entirety of passage 18 into the valve cage.
See Todd 4:45–52. As such, we agree with Appellant that one skilled in the
art is not likely to view Todd’s channel 38 in the manner depicted by the
Examiner. Further, the Examiner has not explained why one skilled in the
art would have mis-identified Todd’s recess as a backflow channel, and
combined same with Mueller’s oscillating system, which already discloses a

5 The Examiner states that the proposed modification “can stop the pressure
rise in [Mueller’s] chamber in the first place, thus obviating the need for a
time consuming method for preventing accumulation of gas AND obviating
the need for [Mueller’s] pulse emitting process.” Adv. Act. 2; see also Ans.
4.
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degassing system. We are reminded of instructions from our reviewing
court that the Patent Office may not “resort to speculation, unfounded
assumptions or hindsight reconstruction to supply deficiencies in its factual
basis.” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). Here, the
Examiner’s reasons are more likely the result of unfounded assumptions
(water flowing against pressure) or hindsight reconstruction (suggesting a
combination that would not remove bubbles adhering to the chamber’s
sides) in order to achieve structure that might correspond to Appellant’s
backflow channel.
Accordingly, and based on the record presented, the Examiner has not
established that the combination of Mueller and Todd would render the
claimed apparatus obvious. In other words, the Examiner has not provided
sufficient articulated reasoning with rational underpinning to support the
Examiner’s conclusion of obviousness. We do not sustain the Examiner’s
rejection of independent claim 1, and dependent claims 2, 4, 5, 7, and 19, as
unpatentable over Mueller and Todd.
The rejection of claims 1 and 3
as unpatentable over Mueller and Boticki
As already stated, “Mueller does not disclose a backflow channel as
claimed” and, thus, in this rejection, the Examiner relies on Boticki’s
backflow channel 37 for such a disclosure. Final Act. 6. The Examiner’s
reason to combine Mueller with Boticki is a repeat of that stated above, i.e.,
it would have been obvious “to modify the valve seat of Mueller to
incorporate a groove as taught by Boticki for the purpose of forming a
backflow channel for assisting the bubble to escape[] or assisting the fluid
medium to enter.” Final Act. 7. The Examiner further states that the groove
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modification of Boticki “is a vent which inherently provides pressure relief.”
Ans. 6.
Appellant states that Boticki’s “bleed passage is open at all times,
whereas Mueller’s pressure valve is open intermittently.” Appeal Br. 21; see
also, e.g., Mueller 7:27, 7:51–62. In other words, according to Appellant,
“[t]he Examiner fails to consider what one of ordinary skill in the art would
expect to happen if an unrestricted fluid bypass between the pressure line
and the pumping chamber were introduced in Mueller’s metering pump.”
Reply Br. 2.
There is merit to Appellant’s contention. Although Appellant’s own
device discloses a groove open at all times (see Spec. Fig. 3 (groove 13)), if
an always open passage were to be employed in Mueller, such combination
would defeat Mueller’s purpose of precise metering since fluid (i.e., air and
liquid) would be free to flow into and out of Mueller’s metering chamber
based on pressure differences. See Reply Br. 5 (Mueller “seeks to avoid
having a mixture of gas and liquid of unknown proportions escape into the
pressure line.”). In other words, in Mueller and during periods of non-use,
the gas-forming fluid within the chamber creates bubbles that adhere to the
entire inner surface of the transport chamber. See Mueller Abstract, ¶ 3, and
Fig. 1.1. These gaseous bubbles would result in the displacement of liquid
out of the pumping chamber via the always open groove. Of course, such
liquid is also free to flow back into the metering chamber should the bubbles
diminish, but the problem Mueller addresses is the release of only gas from
the chamber, leaving the liquid volume intact.6 See Mueller ¶ 3. As Mueller

6 “[T]he object of the present invention is to create an improved method for
degassing a conveyor chamber.” Mueller ¶ 5.
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states, if “the metering volumes are not immediately output when starting up
the metering pump[, t]he metering process is thus suspended.” Mueller ¶ 3.
An always open groove that permits fluid flow in both directions (i.e.,
Boticki) would disrupt Mueller’s ability to provide precisely metered
amounts of liquid. See Mueller ¶ 36; see also Boticki 6:19–20 (check valve
17 “is closed (but for the bleed orifice 47)” which remains open). Thus, as
expressed by Appellant, “the Examiner has not explained, in the absence of
the present disclosure, why one of ordinary skill in the art would extract the
bleed passage of Boticki and incorporate that feature [into] Mueller.”
Appeal Br. 21 (emphasis added). Accordingly, we are not persuaded that
independent claim 1, and dependent claim 3, are obvious in view of Mueller
and Boticki.
The rejection of claims 1, 4, 5, 7, 13, 14, and 18
as unpatentable over Mueller, Wilmshurst, and Todd or Boticki
Here, the Examiner relies on Wilmshurst for disclosing “a backflow
channel (9),” and posits the same reason for such combination with Mueller
as above (i.e., “for assisting the bubble to escape [] or assisting the fluid
medium to enter”). Final Act. 8. Appellant contends “that one of ordinary
skill in the art would not combine the references in the first place” because
“[t]he only motivation is provided by applicant’s own disclosure.” Appeal
Br. 25. Similar to Boticki above, Wilmshurst describes its always-open
channel 9 as creating a “leaky check valve.” Wilmshurst ¶ 47; see also
Appeal Br. 25. Appellant argues, “[o]ne of ordinary skill in the art would
not find the disclosure of a leaky check valve appropriate for a pump as
described by Mueller.” Appeal Br. 25 (Thereafter addressing Mueller’s
“efficiency.”).
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The Examiner addresses such “efficiency” by focusing on the speed of
the pump (“just because the pump is operating a low speed does not make
the pump inefficient”). Ans. 8. However, Appellant is addressing
“efficiency” in terms of precisely metered flow, not in terms of pump speed
(“the fluid, which has already been transported into the pressure line will
flow back through the pressure valve into the delivery chamber reducing the
efficiency of the pump”). Appeal Br. 26.
For similar reasons discussed above regarding an always open groove
(i.e., Wilmshurst’s “leaky check valve”), we agree with Appellant “that one
of ordinary skill in the art would not combine the references in the first
place.” Appeal Br. 25. In other words, we agree that “[t]he only motivation
is provided by applicant’s own disclosure,” i.e., such combination by the
Examiner is, instead, a result of improper hindsight. Appeal Br. 25.
Accordingly, and based on the record presented, we do not sustain the
Examiner’s rejection of independent claim 1, and dependent claims 4, 5, 7,
13, 14, and 18, as unpatentable over Mueller, Wilmshurst, and Todd or
Boticki.
The rejection of claims 1, 4–6, 8, 9, 15–17, and 20
as unpatentable over Mueller, Audett, and Todd or Boticki
Here, the Examiner relies on Audett for disclosing “backflow channel
(grooves 14a in Figure 4)” and provides the same reason for combination
with Mueller as expressed above (i.e., “for assisting the bubble to escape []
or assisting the fluid medium to enter”). Final Act. 11; see also Ans. 9.
Relying on a similar theme, Appellant contends “[t]here is no motivation to
combine Audett’s oil-burner regulating valve with Mueller’s metering
pump.” Appeal Br. 30. This is because Audett discusses “leakage passages
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14” and “small feed channels or leakage passages 14a” that “affords constant
communication around or through the valve 15a.” Audett 1:90–105.
Appellant contends that “[a]s with the other secondary references
cited by the Examiner,” a skilled person would not employ such a channel in
Mueller’s metering pump “because it would appear to defeat Mueller’s
purpose of avoiding the unregulated passage of gas and fluid through the
metering pump.” Appeal Br. 30. Accordingly, Appellant contends, “one of
ordinary skill in the art would not combine the references” as stated by the
Examiner. Appeal Br. 31. Appellant argues that the Examiner was “guided
solely by applicant’s own disclosure” and, in essence, “reconstructed
applicant’s claimed invention.” Appeal Br. 31.
For the reasons previously expressed, there is merit to Appellant’s
contentions. According, we do not sustain the Examiner’s rejection of
independent claim 1, or dependent claims 4–6, 8, 9, 15–17, and 20, as
unpatentable over Mueller, Audett, and Todd or Boticki.
The rejection of claims 3 and 10–12
as unpatentable over Mueller, Todd, and Boticki
Each dependent claim recites a limitation directed to a certain range of
cross-sectional area of the back-flow channel. Appellant does not contest
the disclosure of such ranges in the cited art, but instead, “[A]pplicant notes
that independent claim 1 from which claims 3, 10, 11 and 12 ultimately
depend, is not obvious in view of Mueller, Boticki and Todd, as argued
above.” Appeal Br. 32 (citing In re Fine, 837 F.2d 1071, 1076 (Fed. Cir.
1988)) (Which states, “[d]ependent claims are nonobvious under section 103
if the independent claims from which they depend are nonobvious.”).
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We do not fault Appellant’s contentions. We reverse the Examiner’s
rejection of claims 3 and 10–12 as being obvious over Mueller, Todd, and
Boticki.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4, 5, 7,
19
103(a) Mueller, Todd 1, 2, 4, 5, 7, 19
1, 3 103(a) Mueller, Boticki 1, 3
1, 4, 5, 7, 13,
14, 18
103(a) Mueller, Wilmshurst,
Todd, Boticki
1, 4, 5, 7, 13,
14, 18
1, 4–6, 8, 9,
15–17, 20
103(a) Mueller, Audett,
Todd, Boticki
1, 4–6, 8, 9,
15–17, 20
3, 10–12 103(a) Mueller, Todd,
Boticki
3, 10–12
Overall
Outcome

REVERSED