Kösters, Heiner et al.

Patent Trials and Appeals Board

Jul 9, 2020

2019005373 (P.T.A.B. Jul. 9, 2020)

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.
14/364,802 06/12/2014 Heiner Kösters GMH/517/PC/US 9375
2543 7590 07/09/2020
ALIX, YALE & RISTAS, LLP
150 TRUMBULL STREET
SIXTH FLOOR
HARTFORD, CT 06103
EXAMINER
SHAO, PHILLIP Y
ART UNIT PAPER NUMBER
1776
NOTIFICATION DATE DELIVERY MODE
07/09/2020 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):
ip@pctlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HEINER KOSTERS and UWE GOTTSCHLICH

Appeal 2019-005373
Application 14/364,802
Technology Center 1700
____________

Before CATHERINE Q. TIMM, MICHAEL P. COLAIANNI, and
DONNA M. PRAISS, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL1

Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–12 and 14–20. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 In this Decision, we refer to the Specification filed June 12, 2014
(“Spec.”), the Final Office Action dated Aug. 2, 2018 (“Final Act.”), the
Appeal Brief filed Feb. 1, 2019 (“Appeal Br.”), and the Examiner’s Answer
dated May 6, 2019 (“Ans.”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Sterling Industry Consult, GmbH as
the real party in interest. Appeal Br. 3.
Appeal 2019-005373
Application 14/364,802

2
STATEMENT OF THE CASE
The invention relates to a device for evacuating a chamber and
purifying entrained foreign substances from the gas extracted from the
chamber. Spec. ¶ 1. According to the Specification, such devices may be
used in chemical vapor deposition processes in which high growth rates
realized with relatively high gas pressures can result in deposition reactions
taking place in all regions of the coating installation, not only on the
substrate. Id. ¶ 2. Claim 1, reproduced below, is illustrative of the subject
matter on appeal (emphasis added).
1. A vacuum coating installation comprising:
a. a vacuum coating processing chamber having an atmosphere
of a gas and solid substances dispersed in said gas;
b. a dry-compression vacuum pump having an inlet and an
outlet, the inlet and the outlet of said dry-compression
vacuum pump being separated from one another by a
plurality of sealing gaps in series, and the inlet being
connected to the vacuum coating processing chamber;
c. an intermediate line which connects to the outlet of the dry-
compression vacuum pump; and
d. a liquid ring vacuum pump having an operating liquid and an
inlet connected to the intermediate line, said liquid ring
vacuum pump absorbing solid substances from the gas
into the operating liquid and replacing the operating
liquid with fresh operating liquid when the operating
liquid has been enriched with absorbed solid substances
during operation of the liquid ring vacuum pump.
Appeal Br. 11 (Claims Appendix).

ANALYSIS
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
Appeal 2019-005373
Application 14/364,802

3
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”)). After considering the
argued claims in light of the case law presented in this Appeal and each of
Appellant’s arguments, we are not persuaded of reversible error in the
appealed rejections.
The Examiner rejects claims 1–12 and 14–20 as follows for the
reasons provided in the Final Office Action. Final Act. 3–9.
Claim(s) 35 U.S.C. § Basis/Reference(s)
1–3, 6, 8, 9, 14–
17, 20 103(a)
FR ’872,3 Harris,4 Shibayama,5
Kuhn6
7, 10, 11 103(a) FR ’872, Harris, Shibayama, Kuhn, Nash7
12 103(a) FR ’872, Harris, Shibayama, Kuhn, Glawion8

Appellant argues the rejection of claim 1 and does not separately
argue the patentability of the remaining claims. Appeal Br. 5–10. In
accordance with 37 C.F.R. § 41.37(c)(1)(iv), and based upon the lack of
arguments directed to the subsidiary rejections, claims 2–12 and 14–20 will
stand or fall together with independent claim 1 from which they depend.

3 FR 1,129,872, published Jan. 28, 1957.
4 US 5,326,383, issued July 5, 1994.
5 US 2004/0173312 A1, published Sept. 9, 2004.
6 US 5,975,857, issued Nov. 2, 1999.
7 US 6,558,131 B1, issued May 6, 2003.
8 US 5,458,862, issued Oct. 17, 1995.
Appeal 2019-005373
Application 14/364,802

4
According to Appellant, Harris does not disclose the liquid ring
vacuum pump required by claim 1. Appeal Br. 7. Appellant argues Harris’s
pump receives air that is “substantially free” from suspended particulate
matter because particulates are removed via an upstream cyclone separator.
Id. Appellant concedes that the incoming airstream to Harris’s pump
includes fine particulate matter, but asserts Harris teaches away from using
the liquid ring vacuum pump required by claim 1 because Harris includes
separating means upstream of the pump and any particulate matter which
might be drawn into the pump is removed by a downstream cyclone
separator. Id. at 7–8 (citing Harris 1:38–45, 2:51–3:5, 4:46–48). Appellant
contends “Harris makes no mention of the pump 2 being used to separate
particulate matter,” and the Examiner uses impermissible hindsight to
attribute structures and functions to Harris that Harris does not disclose. Id.
at 9.
Appellant’s arguments do not persuade us that the Examiner
reversibly erred in rejecting claim 1 as obvious over the cited prior art
references.
Appellant does not dispute the Examiner’s finding (Ans. 15) that
Harris’s Abstract discloses a liquid ring pump that draws in dirt laden air and
the water chamber suspends the fine matter and releases clean air. The
Examiner finds (Ans. 17) that the water chamber and pump work together to
remove the fine matter by entraining the particles in suspension in the water
in order to release air free of fine matter. The Examiner’s finding is
supported by the record. Harris, Abstr. As the Examiner notes (Ans. 16),
Appellant does not direct us to any structural difference between the claimed
Appeal 2019-005373
Application 14/364,802

5
invention and the prior art apart from an intended use of the liquid ring
pump.
Although Appellant asserts that Harris teaches the use of separating
means upstream and downstream of the pump and thus teaches away from
using the pump to “absorb solid substances” as required by claim 1 (Appeal
Br. 7–8), claim 1 does not preclude additional components (Ans. 18). The
Examiner finds Harris’ liquid ring pump encompasses items 2, 8, and 12 in
Harris’s apparatus, and not the upstream cyclone separator (item 18) that
Appellant contends teaches away from the claimed invention. Ans. 18. The
components identified by the Examiner as comprising the claimed liquid
ring pump are thus responsible for removing the finer particulates that
Appellant acknowledges enter Harris’s pump. Thus, the preponderance of
the evidence cited in this Appeal record supports the Examiner’s finding
(Ans. 16–17) that Harris discloses the use of a liquid ring vacuum pump and
that it would have been capable of removing contaminants or particulates.
In sum, Appellant’s arguments are not persuasive of error in the
Examiner’s conclusion that it would have been obvious to modify FR ’872
by substituting FR ’872’s pump with Harris’s liquid ring vacuum pump.
Accordingly, we affirm the Examiner’s rejection of claim 1 under 35 U.S.C.
§ 103 over FR ’872, Harris, Shibayama, and Kuhn.

CONCLUSION
For these reasons, we uphold the Examiner’s rejections of claims 1–
12 and 14–20 under 35 U.S.C. § 103 as obvious over the cited prior art
references.
Appeal 2019-005373
Application 14/364,802

6
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).
In summary:
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 6, 8, 9,
14–17, 20 103(a)
FR ’872, Harris,
Shibayama, Kuhn
1–3, 6, 8, 9,
14–17, 20
7, 10, 11 103(a)
FR ’872, Harris,
Shibayama, Kuhn,
Nash
7, 10, 11
12 103(a)
FR ’872, Harris,
Shibayama, Kuhn,
Glawion
12
Overall
Outcome
1–12, 14–
20

AFFIRMED