Bubb, Alexander et al.Download PDFPatent Trials and Appeals BoardJan 14, 202014383622 - (D) (P.T.A.B. Jan. 14, 2020) Copy Citation 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. Appeal 2018-005076 Application 14/383,622 2 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. Appeal 2018-005076 Application 14/383,622 3 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. Appeal 2018-005076 Application 14/383,622 4 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. Appeal 2018-005076 Application 14/383,622 5 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. Appeal 2018-005076 Application 14/383,622 6 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 Appeal 2018-005076 Application 14/383,622 7 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. Appeal 2018-005076 Application 14/383,622 8 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 Appeal 2018-005076 Application 14/383,622 9 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. Appeal 2018-005076 Application 14/383,622 10 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.”). Appeal 2018-005076 Application 14/383,622 11 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 Appeal 2018-005076 Application 14/383,622 12 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.”). Appeal 2018-005076 Application 14/383,622 13 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 Copy with citationCopy as parenthetical citation