Ex Parte MacHarg

Patent Trial and Appeal Board

Sep 17, 2018

13298250 (P.T.A.B. Sep. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/298,250 11/16/2011
22242 7590 09/17/2018
FITCH EVEN TABIN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 2100
CHICAGO, IL 60603-3406
FIRST NAMED INVENTOR
John P. MacHarg
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
9472-103503-US 7452
EXAMINER
MIKUS, JASON
ART UNIT PAPER NUMBER
3745
MAIL DATE DELIVERY MODE
09/17/2018 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 JOHN P. MACHARG
Appeal2018-000641
Application 13/298,250 1
Technology Center 3700
Before LINDA E. HORNER, JEFFREY A. STEPHENS, and
BRENT M. DOUGAL, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's rejections of claims 1, 5-17, and 19-21, which are all of the
pending claims. Non-Final Office Action (April 20, 2016) (hereinafter
"Non-Final Act."). We have jurisdiction under 35 U.S.C. § 6(b ).
1 John P. MacHarg ("Appellant") identifies Ocean Pacific Technologies as
the real party in interest. Appeal Brief (April 20, 2017) (hereinafter "Appeal
Br."), at 3.
Appeal2018-000641
Application 13/298,250
The claimed subject matter relates to "rotary axle piston pumps that
are specifically engineered to operate in plain water applications."
Specification (November 16, 2011 ), as amended on March 24, 2015,
(hereinafter "Spec."), 1. The Examiner rejected all of the pending claims as
obvious over the prior art. Appellant contests these rejections. For the
reasons explained below, we find that the Examiner does not support the
reasoning for modifying the prior art in the manner claimed with rational
underpinnings. As such, we do not sustain the obviousness rejections. The
Examiner also rejected one of the pending claims as being indefinite.
Appellant does not contest this rejection. As such, we summarily sustain
this indefiniteness rejection. Accordingly, we AFFIRM-IN-PART.
CLAIMED SUBJECT MATTER
Claims 1 and 10 are the independent claims. Claim 1 is illustrative of
the subject matter on appeal and is reproduced below with the disputed
claim language shown in italics for emphasis.
1. A rotary axial piston pump comprising:
a housing;
a swash plate, the swash plate having an inclined surface
formed from a ceramic material;
a rotor assembly positioned adjacent the swash plate, the
rotor assembly comprising a metallic rotor-drum having at least
one cylinder bore disposed therein, and having metallic piston(s)
disposed within the respective cylinder bore( s ), the pistons
having a ball-shaped end extending from the cylinder bore(s);
at least one slipper formed from a ceramic material and
interposed between the swash plate and the rotor-drum, the
slipper(s) comprising socket joints for accommodating the piston
ball-shaped end(s) therein, the slipper(s) having a swash plate
interface swface in contact with the swash plate inclined surface
and formed from a ceramic material, and wherein the slipper
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Appeal2018-000641
Application 13/298,250
socket joint comprises a plastic material disposed therein that is
in contact with the piston ball-shaped end;
a stator plate positioned adjacent an end block disposed in
the housing open end; and
a rotor plate interposed between the stator plate and the
rotor-drum;
wherein the stator plate comprises an interface surface in
contact with the rotor plate that is formed from ceramic material,
and wherein the rotor plate comprises an interface surface in
contact with the stator plate that is formed from a ceramic
material.
Appeal Br. 16, Claims Appendix.
Kanamaru et al. ("Kanamaru")
Engel et al. ("Engel")
Olsen et al. ("Olsen")
Ohara et al. ("Ohara")
EVIDENCE
us 4,644,850
us 5,392,693
US 7,963,209 B2
JP S58-172478 A
REJECTIONS
Feb.24, 1987
Feb.28, 1995
June 21, 2011
Nov. 10, 1983
The Non-Final Office Action includes the following rejections:
1. Claim 19 stands rejected under pre-AIA 35 U.S.C. § 112, second
paragraph, as being indefinite.
2. Claims 1 and 5-9 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as unpatentable over Olsen, Ohara, and Kanamaru.
3. Claims 10-17, 19, and 20 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Olsen and Ohara.
4. Claim 21 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Olsen, Ohara, and Engel.
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Appeal2018-000641
Application 13/298,250
ANALYSIS
First Ground: Rejection of claim 19 as indefinite
The Examiner rejected claim 19 as indefinite because it depends from
cancelled claim 18. Non-Final Act. 3. Appellant does not contest the first
ground of rejection. Appeal Br. 8, n.1 (noting this rejection and arguing that
"[t]his formality rejection does not impact the issues presently on appeal").
Thus, we summarily sustain the rejection of claim 19 under 35 U.S.C. § 112,
second paragraph.
Second Ground: Rejection of claims 1 and 5-9 as unpatentable over Olsen,
Ohara, and Kanamaru
The Examiner found that Olsen teaches a rotary axial piston pump
comprising, inter alia, slipper 11 having a socket joint comprising plastic
material 22 disposed therein. Non-Final Act. 4. The Examiner found that
Olsen fails to teach that its swash plate interface surface, stator plate, rotor
plate, and slipper are formed from ceramic material. Id. The Examiner
found that Ohara teaches "a hydraulic machine composed of moving parts
that can be made from ceramic materials." Id. The Examiner found that
"[t]he moving parts that slide with or abut each other are composed of
ceramic materials" to make the components lighter weight and to improve
the sliding characteristics of the abutting parts to reduce wear and avoid
seizure and increase overall service life of the parts. Id. The Examiner
determined that it would have been obvious "to substitute the ceramic
component properties of Ohara for the swash plate interface surface, stator
plate, rotor plate and slipper of Olsen to have the contacting surfaces of
those components made of ceramic materials." Id. at 5. The Examiner
further proposed to modify Olsen to make the pistons and rotor drum of
metal, as taught by Kanamaru, as a substitution of known material
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Application 13/298,250
components in the art. Id. The Examiner further explains that Ohara teaches
that "certain parts of the hydraulic machine may or may not be made of
ceramics" and determines that it would have been obvious to "construct a
hydraulic machine featuring slippers with a plastic material for contact with
the ball-shaped ends of the pistons and sliding components made of ceramics
in order to prevent abrasive wearing and seizure during movement." Id. at 2.
Appellant contends that the rejection of claim 1 should not be
sustained because the proposed combination would result in all of the sliding
components being ceramic such that Olsen's slipper would no longer contain
plastic material in the socket for contact with the piston ball-shaped end, as
called for in claim 1. Appeal Br. 10. Appellant further argues that the
Examiner's proposed retention of Olsen's plastic material element 22, while
modifying of Olsen's slipper socket 11 to be made of ceramic, is based on
impermissible hindsight. Id.
The Examiner responds that Ohara "teaches that all pieces of the
apparatus may be ceramic or only respective pieces may be formed as
ceramics." Ans. 3. The Examiner explains, "Substituting in ceramic for
certain sliding pieces, as Ohara teaches, would not be done based only on the
benefit of hindsight." Id.
The Examiner mischaracterizes the teaching of Ohara. Ohara teaches
obtaining a hydraulic machine in small size and lightweight with high
performance "by forming the total part or adapted part of a member, having
the adapted part between moving members of a piston or the like and a
swash plate or the like, from a ceramic material." Ohara, Abstract.
Specifically, Ohara teaches that the swash plate, on which plural shoes are
slid, the port plate, which slides with a rotating cylinder barrel, pistons,
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Appeal2018-000641
Application 13/298,250
which slide along cylinder holes in the barrel, the shoes, etc. "are all formed
respectively by a ceramic material or only the respective sliding parts are
formed as the ceramics." Id. (emphases added).
Contrary to the Examiner's reading of Ohara as disclosing that "only
respective pieces may be formed as ceramics," Ohara actually teaches that
"the respective sliding parts" of all the recited pieces are formed from a
ceramic material. Ohara specifically teaches that the pistons and the shoes
are sliding parts of the hydraulic machine. As such, Ohara suggests forming
both the piston and the shoe, or at least the sliding surfaces thereof, from a
ceramic material.
It is impermissible within the framework of section 103 to pick
and choose from any one reference only so much of it as will
support a given position, to the exclusion of other parts
necessary to the full appreciation of what such reference fairly
suggests to one of ordinary skill in the art.
In re Wesslau, 353 F.2d 238, 241 (CCPA 1965). Ohara does not mention in
the Abstract other friction-reducing materials, or suggest that fewer than all
the sliding surfaces, or only certain sliding surfaces, could be made of a
ceramic material. 2 The Examiner, by basing the obviousness determination
on a mischaracterization of Ohara's teaching, has not explained adequately
why one having ordinary skill in the art, based on the teaching of Ohara,
would have been led to retain the plastic material element 22 of Olsen's
slipper 11 and replace the remainder of Olsen's slipper 11 with Ohara's
ceramic material.
2 We have before us in the record only the translated Abstract of Ohara. The
Examiner did not rely on, nor provide to the Board, an English-language
translation of the complete Ohara reference. As such, our decision is limited
the translated portion of Ohara on which the Examiner relied.
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Application 13/298,250
For this reason, we do not sustain the rejection of claim 1 and its
dependent claims 5-9 as unpatentable over Olsen, Ohara, and Kanamaru.
Third Ground: Rejection of claims 10-17, 19, and 20 as unpatentable over
Olsen and Ohara
Independent claim 10 recites a slipper having a swash plate interface
surface formed from a ceramic material and a plastic material disposed
within the socket joint of the slipper and in contact with the ball-shaped end
of the piston. Appeal Br. 17-18, Claims Appendix. The Examiner relies on
the same proposed modification to Olsen's slipper to make the swash plate
interface surface of ceramic, as taught by Ohara, while retaining the plastic
material element 22 in the socket joint, as discussed above with reference to
the rejection of claim 1. Non-Final Act. 7. For the same reasons provided
above, we find that the Examiner has not adequately explained why one
having ordinary skill in the art, based on the teaching of Ohara, would have
been led to modify Olsen's slipper in the manner called for in claim 10. As
such, we do not sustain the rejection of independent claim 10 and its
dependent claims 11-17, 19, and 20 as unpatentable over Olsen and Ohara.
Fourth Ground: Rejection of claim 21 as unpatentable over Olsen, Ohara,
and Engel
The Examiner's rejection of claim 21 relies on the same deficient
combination of Olsen and Ohara discussed above. Non-Final Act. 10. The
Examiner does not rely on Engel to cure the deficiencies in the base
combination of Olsen and Ohara. Id. (relying on Engel to teach a plurality
of retainers disposed on top of slippers and interposed between the slippers
and a pressure plate). Accordingly, we do not sustain the rejection of
claim 21 as unpatentable over Olsen, Ohara, and Engel.
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Application 13/298,250
DECISION
The decision of the Examiner rejecting claim 19 under 35 U.S.C.
§ 112, second paragraph, is affirmed.
The decision of the Examiner rejecting claims 1, 5-17, and 19-21
under 35 U.S.C. § 103(a) is reversed.
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)(l )(iv).
AFFIRMED-IN-PART
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