Ex Parte Sumimoto

Patent Trial and Appeal Board

Mar 29, 2018

14197364 (P.T.A.B. Mar. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/197,364 03/05/2014
43076 7590 04/02/2018
MARK D. SARALINO (GENERAL)
RENNER, OTTO, BOISSELLE & SKLAR, LLP
1621 EUCLID A VENUE, NINETEENTH FLOOR
CLEVELAND, OH 44115-2191
Shin SUMIMOTO
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.
SMZUPOlllUS 1041
EXAMINER
VERDIER, CHRISTOPHER M
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
04/02/2018 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):
ipdocket@rennerotto.com
PTOL-90A (Rev. 04/07)
UNITED ST ATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHIN SUMIMOTO
Appeal2017-004988
Application 14/197 ,364
Technology Center 3700
Before STEFAN ST AI CO VICI, WILLIAM A. CAPP, and
LEE L. STEP INA, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant 1 seeksourreviewunder35 U.S.C. § 134(a)ofthe final
rejection under35U.S.C.§103(a)ofclaims 1-3 and 5 over Akimoto (US
2008/0118351, pub. May 22, 2008), and of claim 4 over Akimoto and
Schweighofer (EO 2458222 A2, pub. Oct. 27, 2011). We have jurisdiction
under35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies Shimadzu Corp. as the real-party-in-interest. Appeal
Br. 1.
Appeal 2017-004988
Application 14/197 ,364
THE INVENTION
Appellant's invention relates to vacuum pumps with stationary blade
portions. Spec. 1. Claim 1, reproduced below, is illustrative of the subject
matter on appeal.
1. A vacuum pump having an exhaust function portion in
which stationary blade portions nipped by spacers are
respectively arranged between rotating blade portions arranged
in multiple stages, wherein
each of the stationary blade portions is formed by two or
more divided stationary blade portions,
each of the divided stationary blade portions has abutting
ends in both circumferential ends, the stationary blade portion
is formed by abutting the abutting ends of the divided stationary
blade portions with each other,
each of the divided stationary blade portions has an outer
circumferential rim nipped by the spacers, an inner
circumferential rim positioned in a front end on the inner
circumferential side of the stationary blade portion, and a
plurality of stator blades formed between the outer
circumferential rim and the inner circumferential rim, and
in abutting ends of the outer circumferential rims where the
plurality of divided stationary blade portions is abutted with
each other, at least one of the outer circumferential rims has a
cutout forming a gap together with the other facing outer
circumferential rim.
Claim 1
OPINION
Unpatentability of Claims 1-3 and 5
over Akimoto
The Examiner fmds that Akimoto discloses the invention of claim 1
substantially as claimed except that Akimoto's "gap" is on the inner rather
than the outer rim. Final Action 7-9. The Examiner considers modifying
Akimoto to dispose the gap on the outer rim instead of the inner rim to be an
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Application 14/197 ,364
"obvious reversal of parts and an obvious rearrangement of parts," which
constitute a matter of obvious design choice. Id. at 8-9 (citing In re Gazda,
219 F.2d449(CCPA1955), andin re Japikse, 181F.2d1019 (CCPA
1950)).
Appellant traverses the Examiner's rejection by arguing that it would
not have been obvious to relocate the gap from the inner rim to the outer rim
as proposed by the Examiner. Appeal Br. 8-11. Appellant argues that the
proposed modification renders the stator vanes of Akimoto unsatisfactory for
their intended purpose. Id. at 12-14.
In response, the Examiner states that the proposed modification of
Akimoto prevents interference between the outer rim ends and that Akimoto,
as modified, would still operate as a vacuum pump. Ans. 9. In reply,
Appellant argues that the "purpose" that is defeated is preventing collision of
the inner rim ends. Reply Br. 4.
We do not find Appellant's argument persuasive. Essentially,
Appellant forms a circular stationary blade portion 70 by abutting together
two semi-circular blade portions 70A and 70B. Spec. 11. The problem
encountered by Appellant is essentially the same as that encountered by
Akimoto, namely: manufacturing imperfections can cause the combined
circumferential lengths of portions 70A and 70B to exceed the desired
circumference ofblade portion 70. Id. at 13. Such excess circumferential
length can result in overlapping or warping when portions 70A and 70B are
assembled into their abutting relationship. Id. Both Akimoto and Appellant
mitigate this problem of excess circumferential length by cutting a "gap"
into a rim of the blade portions. Id., Akimotoif 42. In order to reduce
excess circumferential length, a fmite number of locations present
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Application 14/197 ,364
themselves for disposing a length reducing "gap:" (1) the inner rim; (2) the
outer rim; and (3) both the inner and outer rim. The difference between
Akimoto and the instant invention is succinctly summarized by the
Examiner as follows:
The difference between [ Akimoto] and appealed claim 1 of the
present application is that [ Akimoto does not] disclose that in
abutting ends of the outer circumferential rims where the
plurality of divided stationary blade portions is abutted with
each other, at least one of the outer circumferential rims has a
cutout forming a gap together with the other facing outer
circumferential rim. Rather, in Akimoto, abutting ends of the
inner circumferential rims where the plurality of divided
stationary blade portions is abutted with each other, at least one
of the inner circumferential rims has a cutout forming a gap S
together with the other facing inner circumferential rim. This
may readily be seen by comparing figures 3 and 4 of the present
application with figures 7 and 8 of Akimoto, noting gap "S" in
figure 8 of Akimoto.
Ans. 5.
The Examiner notes that choosing to locate the gap on either the inner
or outer rim carries with it certain design tradeoffs. Id. at 8. In particular,
the Examiner concedes that locating the gap at the inner rim has an
advantage relating to visual inspection of the assembly. Id. However, the
Examiner states that disposing the gap at the outer rim provides a
countervailing advantage that placing the gap on the outer rim allows for
visual inspection of the abutment at the location of the gap. Id. at 9. The
Examiner takes the position that almost any modification of a prior art
reference can result in certain benefits or features of the prior art reference
no longer being present and that such is not sufficient to disqualify the
rejection. Id.
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The overall thrust of Appellant's case hinges on the following
argument.
if the cutout was reversed or rearranged so as to be on the outer
circumferential rim rather than the inner circumferential rim as
taught in Akimoto, the innerrim ends could still collide with
each other and overlap each other or be warped when
assembled.
Appeal Br. 14. However, Appellant's speculation as to what "could" happen
amounts to unsubstantiated attorney argument. See Invitrogen Corp. v.
ClontechLabs, Inc., 429F.3d 1052, 1068 (Fed. Cir. 2005) (unsubstantiated
attorney argument is no substitute for competent evidence). There is no
actual evidence of record that there is substantial risk of overlap or warpage
at the inner rim where a gap is disposed on the outer rim.
In the Specification, Appellant touts that, by disposing a gap on the
outer rim, "the ends of the circumferential rims 73a of the divided stationary
blade portions 70A and 70B can be suppressed from being overlapped with
each other, or generation ofwarpage can be suppressed." Spec. 22.
Appellant concludes:
Thus, the positioning precision of the stationary blade
portion 70 can be improved, so that the stationary blade
portion 70 can be horizontally arranged. This effect is a unique
and remarkable effect which cannot be obtained from Japanese
Unexamined Patent Application Publication No. 2006-77713
described above.
Id. at 23. Appellant's Specification, however, makes no new or unique
provision for mechanical alignment or even inspection of the abutment point
on the inner rim. See Spec. generally.
Here, the Examiner fmds that relocating the gap from the inner to the
outer rim to be nothing more than a reversal or rearrangement of parts or, in
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Application 14/197 ,364
other words, an obvious design choice. Ans. 6. Where manufacturing
tolerances can create a problem with circumferential length, there are a fmite
number of ways to remove the excess circumferential length, namely, by
placing a gap on either the outer rim, the inner rim, or on both rims.
When there is a design need or market pressure to solve a
problem and there are a fmite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense.
KSR!nt'l Co. v. Teleflex Inc., 550U.S. 398, 421 (2007).
Appellant provides neither evidence nor persuasive technical
reasoning showing that moving the gap to the outer rim produces unexpected
results or some other non-obvious advantage. In particular, apart from
unsubstantiated attorney argument, there is no persuasive evidence that
disposing the gap on Akimoto' s outer rim would result in overlap or
warpage at the inner rim. Although Appellant is correct that Akimoto
indicates that placing the gap on the inner rim alleviates concerns related to
visual inspection of alignment at the inner abutment point, nonetheless, the
Examiner has articulated a countervailing reason for placing the gap on the
outer rim, namely, preventing collision of the outer rim ends. Ans. 8-9 (the
gap at the outer ends is viewable). In any event, in the absence of evidence
of novel or unexpected results, the Examiner is correct in fmding that
relocating the gap from the inner to the outer rim would have been obvious.
See In re Kuhle, 526 F.2d 553, 555(CCPA1975) (location of a spring-
loaded electrical contact an obvious design choice as it provided no novel or
unexpected results).
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Appellant also argues that Akimoto teaches "directly away" from the
proposed combination. Appeal Br. 7. We disagree. At most, by moving the
gap from the inner to the outer rim, Akimoto merely teaches an alternative to
Appellant's invention, however, the "mere disclosure of alternative designs
does not teach away." In re Mouttet, 686 F.3d 1322, 1334 (Fed.Cir. 2012).
Rather, teaching away requires "clear discouragement" from implementing a
technical feature. In re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017).
Appellant has not directed us to any language in Akimoto that amounts to
clear discouragement from disposing the gap on the outer rim.
We sustain the Examiner's unpatentability rejection of claim 1.
Claims 2, 3, and 5
Appellant does not argue for the separate patentability of claims 2, 3,
and 5 apart from arguments presented with respect to claim 1, which we
have previously considered. We sustain the Examiner's rejection of
claims 2, 3, and 5 as unpatentable over Akimoto. See 37 C.F.R.
§ 41.37(c)(iv) (failure to separately argue claims).
Unpatentability of Claim 4
over Akimoto and Schweighhofer
Claim 4 depends from claim 1 and adds the limitation: "wherein a
bending portion bent from the inner circumferential rim is provided in at
least one of end surfaces of the inner circumferential rims where the
plurality of divided stationary blade portions is abutted with each other."
Claims App. Appellant does not argue for the separate patentability of
claim 4 apart from arguments presented with respect to claim 1, which we
have previously considered, coupled with the assertion that Schweighhofer
does not cure the alleged deficiencies of Akimoto. Having not found any
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deficiency in Akimoto, we sustain the Examiner's rejection of claim 4 as
unpatentable over Akimoto and Schweighhofer. 37 C.F.R. § 41.37(c)(iv).
DECISION
The decision of the Examiner to reject claims 1-5 is affirmed.
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
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