Ex Parte Britsch

Patent Trial and Appeal Board

Jun 1, 2018

13704080 (P.T.A.B. Jun. 1, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/704,080 12/13/2012
146293 7590 06/05/2018
Kacvinsky Daisak Bluni PLLC - CFH
101 Carnegie Center
Suite 106
Princeton, NJ 08540
FIRST NAMED INVENTOR
Manfred Britsch
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.
1800CA1027 9534
EXAMINER
DAVIS, JASON GREGORY
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
06/05/2018 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):
jchamberlain@kdbfirm.com
docketing@kdbfirm.com
jholland@kdbfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MANFRED BRITSCH
Appeal2017-008483
Application 13/704,080
Technology Center 3700
Before ANNETTE R. REIMERS, JEFFREY A. STEPHENS, and
SEAN P. O'HANLON, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-008483
Application 13/704,080
STATEMENT OF THE CASE 1
Manfred Britsch (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner's decision to reject claims 22-24 under 35 U.S.C. § 112, first
paragraph, for lack of written description and under 35 U.S.C. § 112, second
paragraph, for indefiniteness and to reject under 35 U.S.C. § 103(a): (1)
claims 1-3, 7, 9-12, 15, 18-20, and 22-24 as unpatentable over Skarstad
(US 4,840,535, issued June 20, 1989) and Haentjens (US 4,913,619, issued
Apr. 3, 1990); (2) claims 13, 14, 16, and 17 as unpatentable over Skarstad,
Haentjens, and design choice; and (3) claim 21 as unpatentable over
Skarstad, Haentjens, and Eberhardt (US 4,643,652, issued Feb. 17, 1987).
Claims 4---6 and 8 have been canceled. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM-IN-PART.
1 The Examiner's objection(s) to the drawings and claims are not appealable
matters, but rather are petitionable matters, and thus, are not within the
jurisdiction of the Board. See Final Office Action 6-8 (hereinafter "Final
Act.") (dated Oct. 12, 2016); 37 C.F.R. § 1.181; In re Berger, 279 F.3d 975,
984 (Fed. Cir. 2002); In re Mindick, 371 F.2d 892, 894 (CCPA 1967).
Appellant submitted an Amendment After Final Action proposing
amendments to the claims and to Figure 1 of the drawings. See Amendment
After Final Action, 1-7 (filed Dec. 12, 2016). In the Advisory Action, the
Examiner states that "[fJor purposes of appeal, the proposed amendment(s)"
"will not be entered." Adv. Act. Summary Sheet PTOL-303 (dated Dec. 30,
2016). Accordingly, Appellant's proposed amendments to the claims and to
Figure 1 of the drawings are not before us for review.
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Appeal2017-008483
Application 13/704,080
CLAIMED SUBJECT MATTER
The claimed subject matter relates to a "single-stage, double-flow
centrifugal pump, in particular a cooling water pump for a marine diesel
engine or a ballast water delivery pump on a ship." Spec. i-f 1, Figs. 1, 2.
Claims 1 and 22 are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A double-flow centrifugal pump, comprising:
a pump housing; and
a dual-flow impeller rotationally fixedly arranged on a
rotationally driven shaft, the impeller configured to draw a fluid
from two axial sides from a negative pressure area and delivered
in the radial direction into a positive pressure area,
wherein the negative pressure area is sealed off with
respect to the positive pressure area by at least two axially spaced
sealing gaps formed between the impeller and at least one of the
pump housing and a stationary insert, the at least two axially
spaced sealing gaps each being configured to merge into radial
gaps that border directly on the at least two axially spaced sealing
gaps,
wherein the shaft is mounted only on one side,
wherein the sealing gaps comprise axial gaps extending in
the circumferential direction as well as in the radial direction and
arranged axially between the impeller and the at least one of the
pump housing and the stationary insert, a gap width of which is
less than a radial distance of the impeller to all components that
are arranged at the radial distance to the impeller;
wherein the sealing gaps are arranged between the front
sides of the impeller and the pump housing or the stationary
insert.
3
Appeal2017-008483
Application 13/704,080
Claims 22-24
ANALYSIS
Written Description
The Examiner states that"[ c ]laim 22, lines 6-7 recite 'a radially
outward end of the impeller conforms to a contour of the pump housing"'
and that "the original disclosure does not have support for the term
'conforms"' because "[t]he term does not appear in any of the original
claims or the written description." Final Act. 9. In particular, the Examiner
determines that "the specification has support for the impeller having a
'circular, cylindrical casing contour' however the specification does not state
the impeller 'conforms' to the contour of the housing as claimed." Ans. 2;
see also Final Act. 9. 2
Appellant contends that support for the phrase "radially outward end
of the impeller conform[ ing] to a contour of the pump housing" can be found
at paragraphs 16, 31, and 42 of Appellant's Specification and Figures 1 and
2 of the drawings. See Appeal Br. 3--4; see also Reply Br. 1-2. 3
Compliance with the written description requirement set forth in the
first paragraph of 35 U.S.C. § 112 does not require that the claimed subject
matter be described identically in the Specification, but the disclosure as
originally filed must convey to those skilled in the art that applicant had
invented the subject matter later claimed. In re Kaslow, 707 F.2d 1366,
1375 (Fed. Cir. 1983). The drawings in an application can be relied upon to
show that an inventor was in possession of the claimed invention as of the
2 Examiner's Answer (hereinafter "Ans.") (dated Apr. 28, 2017).
3 Appeal Brief (hereinafter "Appeal Br.") (filed Feb. 28, 2017); Reply Brief
(hereinafter "Reply Br.") (filed May 23, 2017)
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Appeal2017-008483
Application 13/704,080
filing date. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1565 (Fed. Cir.
1991) ("[D]rawings alone may be sufficient to provide the 'written
description of the invention' required by§ 112, first paragraph.").
Paragraphs 16, 31, and 42 of the Specification describe impeller 7 as
having a circularly cylindrical casing contour. See Spec. i-fi-f 16, 31, 42.
However, there is no discussion in any of these paragraphs of the circularly
cylindrical casing contour of impeller 7 "conforming to a contour" of pump
housing 2 let alone "a radially outward end" of impeller 7 "conform[ ing] to a
contour" of pump housing 2, as called for in claim 22. See id.; see also
Appeal Br., Claims App. 4; Ans. 2 ("[T]he specification has support for the
impeller having a 'circular, cylindrical casing contour' however the
specification does not state the impeller 'conforms' to the contour of the
housing as claimed."). Further, "a radially outward end" of impeller 7
"conform[ing] to a contour" of pump housing 2, is not clearly illustrated in
Figures 1and2 of Appellant's' drawings. See Figs. 1, 2.
For these reasons, we sustain the Examiner's rejection of independent
claim 22 and its dependent claims 23 and 24 for lack of written description.
Indefiniteness
Claim 22-24
The Examiner states that"[ c ]laim 22, lines 6-7 recite 'a radially
outward end of the impeller conforms to a contour of the pump housing"'
and that "[t]he scope covered by the term 'conforms' is unclear and
therefore the metes and bounds of the claim are unclear, which renders
claim 22 indefinite." Final Act. 10.
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Appeal2017-008483
Application 13/704,080
Appellant contends that the phrase "radially outward end of the
impeller conform[ing] to a contour of the pump housing" is "sufficiently
described" at paragraphs 16, 31, and 42 of Appellant's Specification and
Figures 1 and 2 of the drawings. See Appeal Br. 3--4; see also Reply Br. 1-
2. 4
As discussed above, paragraphs 16, 31, and 42 of the Specification
describe impeller 7 as having a circularly cylindrical casing contour. See
Spec. i-fi-f 16, 31, 42. However, there is no discussion in any of these
paragraphs of the circularly cylindrical casing contour of impeller 7
"conforming to a contour" of pump housing 2 let alone "a radially outward
end" of impeller 7 "conform[ing] to a contour" of pump housing 2, as called
for in claim 22. See id.; see also Appeal Br., Claims App. 4. Further, "a
radially outward end" of impeller 7 "conform[ing] to a contour" of pump
housing 2, is not clearly illustrated in figures 1 and 2 of Appellant's
drawings. See Figs. 1, 2. Accordingly, we agree with the Examiner that
"[t]he scope covered by the term 'conforms"' in claim 22 "is unclear and
therefore the metes and bounds of the claim are unclear." See Final Act. 10.
For these reasons, we sustain the Examiner's rejection of independent
claim 22 and its dependent claims 23 and 24 for indefiniteness regarding the
phrase "a radially outward end of the impeller conforms to a contour of the
pump housing." The indefiniteness does not impact our consideration of the
rejections under 35 U.S.C. § 103.
4 Appellant presents a single set of arguments to address the Examiner's
written description and indefiniteness rejections. See Appeal Br. 3--4; see also
Reply Br. 1-2.
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Application 13/704,080
The Examiner determines that "[ c ]laim 22, lines 13-14 recite 'a
separate portion of the pump housing' and it is unclear what is meant by
'separate' portion .... The metes and bounds of the term 'separate' are
unclear, which renders the claim indefinite." Final Act. 10.
Paragraph 31 of Appellant's Specification describes "[t]he centrifugal
pump 1 comprises g_ pump housing 2 designed as a spiral housing and with
a suction-side inlet 3 as well as a pressure-side outlet 4." Spec. i-f 31
(emphasis added), Fig. 1. Upon review of Appellant's Specification and
drawings, a skilled artisan would understand that "a separate portion of the
pump housing" refers to a different section of the same pump housing. As
such, a person of ordinary skill in the art would understand the scope of
claim 22 regarding the phrase "a separate portion of the pump housing."
See Appeal Br., Claims App. 4.
For these reasons, we do not sustain the Examiner's rejection of
independent claim 22 and its dependent claims 23 and 24 for indefiniteness
regarding the phrase "a separate portion of the pump housing."
Obviousness over Skarstad and Haenljens
Claims 1-3, 7, 9-12, 15, 18-20, and 22-24
Independent claim 1 is directed to a double-flow centrifugal pump
including at least two axially spaced sealing gaps formed between an
impeller and at least one of a pump housing and a stationary insert, "the at
least two axially spaced sealing gaps each being configured to merge into
radial gaps that border directly on the at least two axially spaced sealing
gaps." See Appeal Br., Claims App. 1. The Examiner finds that Skarstad
discloses the double-flow centrifugal pump of claim 1 substantially as
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Appeal2017-008483
Application 13/704,080
claimed except Skarstad fails to disclose the "sealing gap" and "radial gap"
limitations of claim 1. See Final Act. 11-12. The Examiner looks to
Haentjens for these limitations. See id. at 12-13. In particular, the
Examiner provides the following annotated version of Figure 2 of
Haentjens. See id. at 13.
·p~lt~!'t~Y~· PY~~.:~t;:Jt~ ........ ~~~~¥~¥-~·
ar~~
~·
. .. ; ~
t~~Q~tr~~~·r.· PfC~~~~$tt1
&r·~.,~ -. t~·•
I
i
Figure 2 of Haentjens "is an enlarged fragmentary view of the impeller
mounted within the pump housing from FIG. 1 having the annular wear
resistant inserts." See Haentjens 2:25-27.
The Examiner takes the position that "[a]s seen in the annotated
Figure [2 of Haentjens], the 'axial gap, s' is a part of the sealing gap, which
does merge into the radial gap depicted by the 'radial distance, a.' The
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Appeal2017-008483
Application 13/704,080
'axial gap' is a part of the larger 'sealing gap."' Final Act. 2; see also Ans.
3. As such, the Examiner "maintains that Haentjens does teach the axial
gap merging with the radial gap." Final Act. 2; see also Ans. 3.
Appellant contends that "the alleged 'axial gap, s' and the alleged
'radial distance, a' [in the Examiner's annotated Figure 2 of Haentjens] do
not directly border each other and therefore the 'axial gap, s' does not
merge into the 'radial distance, a."' See Appeal Br. 5---6; see also Reply Br.
4. Appellant further contends that the alleged "sealing gap" in the
Examiner's annotated Figure 2 of Haentjens (1) "is merely the volute
chamber 38, in which the impeller 40 rotates" and (2) "is merely the
space extending radially of the impeller blades 54." See Appeal Br. 6; see
also Reply Br. 4--5.
We agree with the Examiner that Haentjens discloses "axial gap[ s]
('s' in the annotated Figure 2 [of Haentjens])[ i.e., axial gaps 65 between
inserts 62 and 64] extending in the circumferential direction as well as in
the radial direction." See Final Act. 13; see also Haentjens 3:22--4:39, Figs.
1, 2. We further agree with the Examiner that the "identified sealing gap"
in the Examiner's annotated Figure 2 of Haentjens "is the space between
the impeller shroud [56] and housing [30], which is axially between the
blades [54] and housing [30]." See Ans. 3 (emphasis added); see also
Haentjens Figs. 1, 2. However, the Examiner fails to provide sufficient
evidence or technical reasoning to establish that the "identified sealing gap"
is anything more than a "space/gap" between impeller shroud 56 and
housing 30 (i.e., that the "space" serves as a "sealing" space/gap). See
Final Act. 2, 12-14; see also Ans. 3--4; Appeal Br. 5-6; Reply Br. 4--5.
Stated differently, the Examiner fails to establish that "sealing" axial gaps
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Appeal2017-008483
Application 13/704,080
65 between inserts 62 and 64 of Haentjens (i.e., "axial gap, s" in the
Examiner's annotated Figure 2 of Haentjens) are "a part of the larger
'sealing gap"' identified by the Examiner, such that "the 'axial gap, s"'
"merge[ s] into the radial gap depicted by the 'radial distance, a."' See Final
Act. 2, 12-14; see also Ans. 3--4; Appeal Br. 5---6; Reply Br. 4--5; the
Examiner's annotated Figure 2 of Haentjens illustrated above. As such, the
Examiner fails to establish by a preponderance of the evidence that
Haentjens discloses "the at least two axially spaced sealing gaps each being
configured to merge into radial gaps that border directly on the at least two
axially spaced sealing gaps," as called for in claim 1. See Appeal Br.,
Claims App. 1.
Independent claim 22 is directed to a double-flow centrifugal pump
including "radial gaps [that] directly border the sealing gaps." See Appeal
Br., Claims App. 4. The Examiner relies on the same unsupported findings
for claim 22 as those discussed above for claim 1. See Final Act. 11-14.
Thus, the Examiner's findings with respect to Haentjens are deficient for
claim 22 as well.
We further note that the Examiner provides an annotated version of
Skarstad's Figure illustrating the modification of Skarstad in view of
Haentjens as far as the "sealing gap" but not as far as the "radial gaps." See
the Examiner's annotated Figure of Skarstad below; see also Final Act. 14. 5
5 The Examiner's obviousness statement merely addresses the modification of
Skarstad in view of Haentjens as far as the "sealing gap" but not as far as the
"radial gaps." See Final Act. 14
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Application 13/704,080
The Figure of Skarstad "showing a sectional view through the pump casing
of a vertical submersible pump assembly." Skarstad 1 :52-54.
Based on the Examiner's annotated Figure of Skarstad, we agree with
the Examiner that the modified Skarstad device discloses sealing gaps
"arranged between the front sides of the impeller and the pump housing or
stationary insert as annular disks." See Final Act. 14. However, given that
the Examiner fails to establish how Skarstad is being modified by Haentjens
to include "radial gaps," the Examiner's findings that "radial gaps would
extend in the radial direction arranged between the radial end of the end of
the impeller and pump housing" and that "[t]he at least two sealing gaps
would be disposed radially inward from the radial gaps" are merely
conclusory statements. See Final Act. 14; see also Appeal Br., Claims App.
4; KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness").
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Application 13/704,080
Accordingly, for the foregoing reasons, we do not sustain the
Examiner's rejection of independent claims 1 and 22 and their respective
dependent claims 2, 3, 7, 9-12, 15, 18-20, 23, and 24 as unpatentable over
Skarstad and Haentjens.
Obviousness over Skarstad, Haenljens, and design choice
Claims 13, 14, 16, and 17
The Examiner's rejection of claims 13, 14, 16, and 17 as unpatentable
over Skarstad, Haentjens, and design choice is based on the same
unsupported findings and conclusions discussed above with respect to
independent claim 1. See Final Act. 18-20. The Examiner does not rely on
design choice to remedy the deficiencies of Haentjens. Accordingly, for
reasons similar to those discussed above for claim 1, we do not sustain the
Examiner's rejection of claims 13, 14, 16, and 17 as unpatentable over
Skarstad, Haentjens, and design choice.
Obviousness over Skarstad, Haenljens, and Eberhardt
Claim 21
The Examiner's rejection of claim 21 as unpatentable over Skarstad,
Haentjens, and Eberhardt is based on the same unsupported findings and
conclusions discussed above with respect to independent claim 1. See Final
Act. 20-21. The Examiner does not rely on Eberhardt to remedy the
deficiencies of Haentjens. Accordingly, for reasons similar to those
discussed above for claim 1, we do not sustain the Examiner's rejection of
claim 21 as unpatentable over Skarstad, Haentjens, and Eberhardt.
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Application 13/704,080
DECISION
We AFFIRM the decision of the Examiner to reject claims 22-24 for
lack of written description.
We AFFIRM the decision of the Examiner to reject claims 22-24 for
indefiniteness regarding the phrase "a radially outward end of the impeller
conforms to a contour of the pump housing."
We REVERSE the decision of the Examiner to reject claims 22-24
for indefiniteness regarding the phrase "a separate portion of the pump
housing."
We REVERSE the decision of the Examiner to reject claims 1-3, 7,
9-12, 15, 18-20, and 22-24 as unpatentable over Skarstad and Haentjens.
We REVERSE the decision of the Examiner to reject claims 13, 14,
16, and 17 as unpatentable over Skarstad, Haentjens, and design choice.
We REVERSE the decision of the Examiner to reject claim 21 as
unpatentable over Skarstad, Haentjens, and Eberhardt.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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