Ex Parte Wagner

Patent Trial and Appeal Board

Dec 8, 2014

11800092 (P.T.A.B. Dec. 8, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/800,092 05/02/2007 Juergen Wagner 208,163 8715
38137 7590 12/09/2014
ABELMAN, FRAYNE & SCHWAB
666 THIRD AVENUE, 10TH FLOOR
NEW YORK, NY 10017
EXAMINER
LETTMAN, BRYAN MATTHEW
ART UNIT PAPER NUMBER
3746
MAIL DATE DELIVERY MODE
12/09/2014 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 JUERGEN WAGNER
____________

Appeal 2012-010302
Application 11/800,092
Technology Center 3700
____________________

Before: MICHAEL L. HOELTER, TIMOTHY J. GOODSON, and
JAMES J. MAYBERRY, Administrative Patent Judges.

GOODSON, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant Juergen Wagner appeals under 35 U.S.C. § 134(a) from the
rejection of claims 11–20. App. Br. 5. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

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Application 11/800,092

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CLAIMED SUBJECT MATTER
The claims are directed to a drive arrangement for a vacuum pump.
Spec. ¶ 1. Claim 11 illustrates the subject matter on appeal and is
reproduced below:
11. A drive arrangement for a vacuum pump, comprising:
a motor stator;
a motor rotor;
a separation member arranged in a motor gap between
the motor stator and the motor rotor for separating same and
formed as a separation sleeve axially displaceable relative to
both the stator and the rotor; and
at least two guide surfaces that contact an outer surface
of the separation sleeve for supporting the separation sleeve for
a limited axial displacement and for centering the separation
sleeve.

PRIOR ART
The Examiner relies on the following evidence in rejecting the claims
that are the subject of this appeal:
Niemkiewicz US 3,143,676 Aug. 4, 1964
Byrd US 4,877,985 Oct. 31, 1989
Frieden US 5,044,895 Sept. 3, 1991
Obara US 2004/0136842 A1 July 15, 2004
Kaneko US 6,809,442 B2 Oct. 26, 2004
Kimberlin US 6,847,140 B2 Jan. 25, 2005

GROUNDS OF REJECTION
I. Claims 11, 12, and 17 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Niemkiewicz. Ans. 5.
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II. Claims 13 and 15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Niemkiewicz in view of Byrd. Id. at 7.
III. Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Niemkiewicz in view of Byrd and Kaneko. Id.
IV. Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Niemkiewicz in view of Kaneko. Id. at 8.
V. Claim 18 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Niemkiewicz in view of Obara. Id. at 9.
VI. Claim 19 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Niemkiewicz in view of Kimberlin. Id.
VII. Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Niemkiewicz in view of Frieden. Id. at 10.

OPINION
Claims 11–16
In rejecting claim 11, the Examiner finds that the inner surfaces of end
housings 20 in Niemkiewicz correspond to the claimed “at least two guide
surfaces,” and that these surfaces contact an outer surface of Niemkiewicz’s
stator can 28 for supporting the stator can 28 (and permitting limited axial
displacement thereof) and for centering the stator can 28. Ans. 5 (citing
Niemkiewicz, col. 2, ll. 7–11). Appellant challenges this finding, arguing
that it is the O-ring (or gasket) 31 that affects centering and support of the
stator can, not the inner surfaces of end housings 20:
Niemkiewicz explicitly states that the gaskets sealingly engage
the stator can (col. 3, lines 1–3). Accordingly, the inner
surfaces of the housings 20 do not support the separation sleeve
for a limited axial displacement and do not center the same.
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Further, with the friction force acting on the can, no axial
displacement takes place.
App. Br. 10.
The Examiner responds, correctly, that even if the O-ring 31 centers
and supports the stator can 28, so do the inner surfaces of the end housings
20 intermediate the O-rings: “The inner surfaces of the housings (20)
inherently support and center the separation sleeve (28) because the
separation sleeve (28) contacts the inner surfaces of the housings (20) at
points between the seals (31), as shown in Figures 1 and 2.” Ans. 11.
Further, the Examiner correctly finds that the spaces at the ends of the stator
can 28 shown in Figures 1 and 2 of Niemkiewicz would allow for axial
displacement. Id. at 12. The Examiner also notes that Niemkiewicz does
not disclose a friction force sufficient to prevent such axial displacement.
Id.
In Reply, Appellant argues that “Niemkiewicz is directed to insuring a
fixed position of the can,” and that “[w]ith the can (28) being fixedly
attached, no axial displacement can take place.” Reply Br. 3–4. Appellant
bases this argument on Niemkiewicz’s teaching that an advantage of its
design is that “it can better withstand the differential expansion between the
can and the other parts of the motor during operation.” Niemkiewicz, col. 2,
ll. 7–11. Contrary to Appellant’s argument, this disclosure in Niemkiewicz
supports the Examiner’s finding that Niemkiewicz permits limited axial
displacement of the stator can, because one way the stator can 28 would
expand relative to other parts of the motor would be along its axis.
Appellant also argues that it is improper for the Examiner to rely on
Figures 1 and 2 of Niemkiewicz to find that the inner surfaces of the
housings 20 contact the stator can 28. According to Appellant, “the
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drawings alone cannot be relied upon to show particular features.” Reply
Br. 4 (citing Hockerson-Halberstadt, Inc. v. Avia Group Int’l, Inc., 222 F.3d
951, 956 (Fed. Cir. 2000)). This argument mischaracterizes Hockerson,
which reiterated the well-established rule “that patent drawings do not define
the precise proportions of the elements and may not be relied on to show
particular sizes if the specification is completely silent on the issue.”
Hockerson, 222 F.3d at 956. This rule does not mean “that things patent
drawings show clearly are to be disregarded. . . . ‘Description for purposes
of anticipation can be by drawings alone as well as by words.’” In re Mraz,
455 F.2d 1069, 1072 (CCPA 1972) (quoting In re Bager, 47 F.2d 951
(CCPA 1931)). Drawings are evaluated for what they reasonably disclose
and suggest to one of ordinary skill in the art. In re Aslanian, 590 F.2d 911,
914 (CCPA 1979). Here, the Examiner does not rely on Niemkiewicz’s
figures to show a particular size or proportion. Rather, the Examiner finds
that Niemkiewicz’s Figures 1 and 2 show that the inner surfaces of the
housings 20 contact the stator can 28. We find no error in the Examiner’s
use of Niemkiewicz’s drawings to support this finding.
Appellant also presents several arguments why, “considering the
overall structure” of Niemkiewicz, the inner surfaces of the end housings 20
would not touch the stator can 28. Reply Br. 4–8. Appellant does not
explain why these arguments were not presented in the Appeal Brief. See Ex
Parte Borden, 93 U.S.P.Q.2d 1473 (BPAI 2010) (informative).1

1 Addressing the version of the regulations that were effective at the time the
Notice of Appeal in this case was filed, Borden concluded that in the
absence of a showing of good cause, the Board was not required to consider
arguments that could have been presented in the Principal Brief on Appeal,
but were instead presented in the Reply Brief. 93 USPQ2d at 1473.
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Nevertheless, we have considered the new arguments, but they do not
persuade us of Examiner error. For example, Appellant’s argument that
Niemkiewicz’s “[t]apered surface [30] in combination with the compressed
gasket [31] will lead to the effect that the gasket will pour out from the
triangular groove somewhere, preventing the contact between the separation
sleeve [28] and the housing [20]” (Reply Br. 5) is speculative and contrary
to what is shown in Figure 2 of Niemkiewicz.
For the foregoing reasons, we sustain the rejection of claim 11 as
being anticipated by Niemkiewicz. Appellant states that claims 12–16 stand
or fall together with claim 11. App. Br. 8. Thus, we also sustain the
rejections of claims 12–16.

Claims 17–20
Appellant’s argument against the rejection of claim 17 as being
anticipated by Niemkiewicz simply refers back to the arguments directed to
claim 11. Id. at 12. Appellant also states that claims 18–20 stand or fall
with claim 17. Id. at 8. Thus, for the reasons discussed above with respect
to claim 11, we sustain the rejections of claims 17–20.

Similarly, under regulations that became effective on January 23, 2012,
“[a]ny argument raised in the reply brief which was not raised in the appeal
brief, or is not responsive to an argument raised in the examiner’s answer,
including any designated new ground of rejection, will not be considered by
the Board for purposes of the present appeal, unless good cause is shown.”
37 C.F.R. § 41.41(b)(2) (2012).
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DECISION
We AFFIRM the Examiner’s rejections of claims 11–20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

rvb