KSB AKTIENGESELLSCHAFT

Patent Trials and Appeals Board

Apr 10, 2020

14901225 - (D) (P.T.A.B. Apr. 10, 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.
14/901,225 12/28/2015 Alexander BOEHM 029303.68522US 8487
23911 7590 04/10/2020
CROWELL & MORING LLP
INTELLECTUAL PROPERTY GROUP
P.O. BOX 14300
WASHINGTON, DC 20044-4300
EXAMINER
KEELING, ALEXANDER W
ART UNIT PAPER NUMBER
1795
NOTIFICATION DATE DELIVERY MODE
04/10/2020 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):
edocket@crowell.com
mloren@crowell.com
tche@crowell.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ALEXANDER BOEHM, KAR-HEINZ KOEFLER,
ALEXANDER PUETTERICH, BERND SCHRAMM, and BJOERN LINDELL

Appeal 2019-003388
Application 14/901,225
Technology Center 1700
____________

Before DONNA M. PRAISS, N. WHITNEY WILSON, and
MERRELL C. CASHION, JR., 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 10–12 and 14–19. We have jurisdiction under
35 U.S.C. § 6(b). An oral hearing was held on April 3, 2020. A transcript of the
hearing will be made part of the record.
We REVERSE.

1 In this Decision, we refer to the Specification filed Dec. 28, 2015 (“Spec.”), the
Final Office Action dated Mar. 5, 2018 (“Final Act.”), the Appeal Brief filed Nov.
30, 2018 (“Appeal Br.”), the Examiner’s Answer dated Jan. 25, 2019 (“Ans.”), and
the Reply Brief filed Mar. 25, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. KSB Aktiengesellschaft is identified as the real party in interest.
Appeal Br. 1.
Appeal 2019-003388
Application 14/901,225

2
STATEMENT OF THE CASE
The subject matter on appeal relates to cathodic protection for inner surfaces
of a component such as a pump or a valve. Appeal Br. 2; Spec. 1:3–12. Claim 10,
the sole independent claim, is illustrative and reproduced from the Claims
Appendix to the Appeal Brief (disputed limitations italicized).
10. A fluid-conducting system with cathodic corrosion
protection, comprising:
at least one of a pump and a valve device configured to at least
one of convey and influence a flow rate and having at least two
connection devices;
at least two flow rate guiding devices having connection means
configured to be connected to the at least two connection devices;
annular anodes configured to be arranged between a first
connection device of the at least two connection devices and a first
connection means of the at least two connection means and between a
second connection device of the at least two connection devices and a
second connection means of the at least two connection means;
at least two reference electrodes; and
a monitoring arrangement electrically connected to the annular
anodes by lines having one or more conductors,
wherein
the at least one of the pump and the valve device includes a
casing with at least two threaded bores,
each of the at least two threaded bores is configured to receive
in an electrically conductive manner one of the at least two reference
electrodes,
the at least two reference electrodes are located on the casing
remote from the annular anodes in a manner which provides
electrical potential balance of an inner surface of the casing, and
an inner diameter of the annular anodes is equal to an inner
diameter of an adjacent one of the at least two flow rate guiding
devices.
Appeal 2019-003388
Application 14/901,225

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ANALYSIS
We review the appealed rejections for error based upon the issues Appellant
identifies, and in light of the arguments and evidence produced 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 and Appellant’s arguments, we
are persuaded of reversible error in the appealed rejections.
The Examiner rejects claims 10–12 and 14–19 as follows. Final Act. 2–11.
Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
10–12, 14–17 103 David,
3 Mueller,4 Beavers,5
Fabricius6
18, 19 103 David, Mueller, Beavers, Fabricius, Stallard7
Because claims 11, 12, and 14–19 depend directly or indirectly from claim
10, we focus our discussion on claim 10, which contains the limitations on which
we base our decision.
We refer to the Examiner’s Final Office Action for a statement of the
rejection of claim 10. Final Act. 2–7.
Appellant contends the Examiner erred in rejecting the claims because the
cited prior art references do not teach or suggest providing cathodic protection to

3 US 3,738,383, issued June 12, 1973.
4 EP 0 598 429 A1, published Nov. 2, 1993 (textual citations herein are to the
English translation of record).
5 US 5,739,424, issued Apr. 14, 1998.
6 WO 2004/029590 A1, published Apr. 8, 2004.
7 US 5,333,913, issued Aug. 2, 1994.
Appeal 2019-003388
Application 14/901,225

4
broad inner surfaces of a component such as a valve using remotely-located
reference electrodes in the valve’s casing. Appeal Br. 10, 12. According to
Appellant, David generally teaches that cathodic protection may be provided to a
metal component while Mueller and Beavers disclose different arrangements for
localized protection against corrosion between pipe flanges using an insert between
the flanges. Id. Appellant asserts that there is no reason to replace Mueller’s entire
cathodic protection arrangements with Beaver’s electrically isolating arrangement
because both Mueller and Beaver achieve the same objective of providing
localized flange-to-flange corrosion protection. Id. at 11. Thus, Appellant
contends that the combined teachings of David, Mueller, and Beavers would not
have resulted in the specific arrangements recited in independent claim 10. Id.
The Examiner responds that David teaches pipes, flanges, and valves are all
subject to corrosion and require cathodic protection, not just pipes. Ans. 12
(quoting David 4:42–47 regarding a sheath covering entire valve and flanges
associated with pipe sections because complete coverage is required where
cathodic protection is needed). Regarding Mueller failing to teach cathodic
protection to inner surfaces of a component, the Examiner responds that
Appellant’s argument is directed to an unclaimed feature that is an intended use or
function. Id. at 12, 15, 17. The Examiner acknowledges that Beavers does not
teach a cathodic protection system, but, rather, uses anodes to prevent corrosion in
pipes. Id. at 13–14. The Examiner determines that Beavers is analogous art to
Mueller and finds that Beavers’ teaching to space sensors outside of electrodes to
minimize errors in sensing the pipe potentials is applicable to Mueller’s cathodic
protection system. Id. at 13–14 (citing Beavers 1:54–57, 2:1–6, Fig. 5), 16.
In the Reply Brief, Appellant maintains that David discloses generally that it
is known to provide cathodic protection at pipe connection flange sections, but
Appeal 2019-003388
Application 14/901,225

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David is silent as to any application of cathodic protection to its non-cathodic
exterior sheath-covered valve. Reply Br. 1–2. According to Appellant, the
Examiner’s quotation from David, read in context, refers to cathodic protection
being needed in certain conditions. Id. at 2. Appellant responds to the Examiner’s
position concerning unclaimed features by asserting that claim 10 requires anodes
at connection flanges and remote electrodes arranged to provide protection over the
inner surface of a valve. Id. at 3–4. Regarding Beavers, Appellant contends that
Beavers does not teach the use of voltage sensors spaced away from the electrodes,
but, rather, maintains a voltage difference across the fluid in an insert that is not
cathodically protecting a wall surface. Id. at 6.
We are persuaded by Appellant’s arguments that the Examiner reversibly
erred in rejecting independent claim 10 as obvious over the combination of David,
Mueller, and Beavers. To establish prima facie obviousness of a claimed invention,
all the claim limitations must be taught or suggested by the prior art. See In re
Royka, 490 F.2d 981, 985 (CCPA 1974). We agree with Appellant that claim 10
requires two reference electrodes located on a casing remote from annular anodes
and “in a manner which provides electrical potential balance of an inner surface of
the casing.” Appeal Br. 10 (quoting claim 10); Reply Br. 3–4. Because the
Examiner’s rejection is based on cathodic protection of inner surfaces of a
component being “an unclaimed feature” (Ans. 12, 15, 17), we agree that the
Examiner has not shown that the combination of David, Mueller, and Beavers
teaches or suggests each limitation of claim 10. Accordingly, we reverse the
Examiner’s rejection of claim 10 over the cited prior art references.
Each of dependent claims 11, 12, and 14–19 requires all of the limitations of
claim 10. The Examiner’s reliance on Fabricius for the rejection of dependent
Appeal 2019-003388
Application 14/901,225

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claims 18 and 19 does not cure the deficiencies discussed above. Accordingly, we
reverse the Examiner’s rejections of claims 10–12 and 14–19.
CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
10–12, 14–17 103 David, Mueller, Beavers, Fabricius 10–12, 14–17
18, 19 103
David, Mueller,
Beavers, Fabricius,
Stallard
18, 19
Overall
Outcome
10–12, 14–19

REVERSED