Silvio Giors et al.

Patent Trials and Appeals Board

Aug 19, 2020

2020001273 (P.T.A.B. Aug. 19, 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.
13/576,498 10/22/2012 Silvio Giors 20103662-06 1080
22878 7590 08/19/2020
Agilent Technologies, Inc.
Global IP Operations
5301 Stevens Creek Blvd
Santa Clara, CA 95051
EXAMINER
SEHN, MICHAEL L
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
08/19/2020 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):
Agilentdocketing@cpaglobal.com
ipopsadmin@agilent.foundationip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SILVIO GIORS, GIANLUCA BUCCHERI, and
MAURO NEBIOLO

Appeal 2020-001273
Application 13/576,498
Technology Center 3700
____________

Before CYNTHIA L. MURPHY, KENNETH G. SCHOPFER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–5, 7–16, 18, and 19. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Agilent
Technologies, Inc. Appeal Br. 3.
Appeal 2020-001273
Application 13/576,498

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BACKGROUND
The Specification discloses that “[t]he present teachings relate to a
vacuum pump, and more particularly, a high-vacuum pump comprising one
or more elements made of plastic material, and intended to obtain high
vacuum degrees.” Spec. ¶ 020.

CLAIMS
Claims 1 and 16 are the independent claims on appeal. Claim 1 is
illustrative of the appealed claims and recites:
1. A vacuum pump, comprising:
a vacuum-tight casing;
a suction port;
a discharge port; and
a pumping stage configured for pumping a gas from the
suction port to the discharge port, and comprising a plurality of
pumping elements that cooperate with each other for pumping
the gas through the pumping stage, the pumping elements
comprising:
a stator element, stationary and fastened to the casing; and
a rotor element mounted integral with a rotating shaft, and
the rotating shaft configured to rotate about an axis thereof,
wherein
the pumping stage is selected from the group consisting of
a turbomolecular pumping stage and a molecular drag pumping
stage,
the rotor element is made of an injection moulded plastic
material charged with reinforcing short fibres, and
the reinforcing short fibres are dispersed in a chaotic and
random manner inside the plastic material.
Appeal Br. 27.
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Application 13/576,498

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REJECTIONS
1. The Examiner rejects claims 16, 18, and 19 under 35 U.S.C. § 112,
second paragraph, as indefinite.
2. The Examiner rejects claim 72 under 35 U.S.C. § 112, fourth paragraph,
for failing to further limit the subject matter of the claim upon which it
depends.
3. The Examiner rejects claims 1, 2, 4, 5, 7, 9, 11, and 14 under 35 U.S.C.
§ 103(a) as unpatentable over Stones3 in view of Niwa4 and Okamoto.5,6
4. The Examiner rejects claim 3 under 35 U.S.C. § 103(a) as unpatentable
over Stones in view of Niwa, Okamoto, and Moriwaki.7
5. The Examiner rejects claim 8 under 35 U.S.C. § 103(a) as unpatentable
over Stones in view of Niwa, Okamoto, and Haylock.8
6. The Examiner rejects claim 10 under 35 U.S.C. § 103(a) as unpatentable
over Stones in view of Niwa, Okamoto, and Favre-Felix.9

2 The Examiner has withdrawn the rejection of claims 9–15 under this
heading. Ans. 3.
3 Stones, US 2009/0035123 A1, pub. Feb. 5, 2009.
4 Niwa et al., US 5,525,558, iss. June 11, 1996.
5 Okamoto et al., US 5,202,293, iss. Apr. 13, 1993.
6 Although the Examiner does not list Okamoto in the heading for any of the
art rejections, the rejections of the independent claims each relies on
Okamoto to provide motivation for the modifications proposed. Thus, we
find that the Examiner’s use of Okamoto is critical to the rejections, and
thus, the rejections are more properly viewed as a combination of teachings
including those from Okamoto.
7 Moriwaki et al., US 6,399,695 B1, iss. June 4, 2002.
8 Haylock et al., GB 2420379A, pub. May 24, 2006.
9 Favre-Felix, et al., US 2004/0076510 A1, pub. Apr. 22, 2004.
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7. The Examiner rejects claims 12 and 13 under 35 U.S.C. § 103(a) as
unpatentable over Stones in view of Niwa, Okamoto, and Helmer.10
8. The Examiner rejects claim 15 under 35 U.S.C. § 103(a) as unpatentable
over Stones in view of Niwa, Okamoto, and Englander.11
9. The Examiner rejects claims 16, 18, and 19 under 35 U.S.C. § 103(a) as
unpatentable over Stones in view of Otto,12 Niwa, and Okamoto.
DISCUSSION
35 U.S.C. § 112, Fourth Paragraph
The Examiner finds that claim 7 is an improper dependent claim
because it fails to further limit the claim from which it depends, independent
claim 1. Final Act. 3. Appellant does not address the merits of this rejection
and states that the rejection should be reversed or an Examiner’s amendment
should be entered. Appeal Br. 25. Because Appellant has provided no
argument regarding the merits of the rejection, we summarily sustain it.
35 U.S.C. § 112, Second Paragraph
The Examiner finds that claim 16 is indefinite because the recitation
of “the at least one pumping stage” lacks sufficient antecedent basis because
the claim recites “a pump stage” and not “at least one pumping stage.” Final
Act. 3. Appellant argues that the phrase “the at least one pumping stage”
would be understood to refer back to “the pumping stage” previously recited
in the claim. Appeal Br. 24–25. Appellant asserts that the claim phrase at
issue provides “a reasonable degree of clarity and particularity” in the
context of claim 16. Id. at 25. However, Appellant also notes that this issue

10 Helmer et al., US 2010/0158667 A1, pub. June 24, 2010.
11 Englander et al., WO 2005/052375 A1, pub. June 9, 2005.
12 Otto, US 6,648,619 B2, iss. Nov. 18, 2003.
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Application 13/576,498

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could be solved by an Examiner’s amendment removing the “at least one”
language from the claim. Id.
We agree with the Examiner that the repeated recitation of “a
pumping stage” and “the pumping stage” set forth previously in the claim
creates some confusion as to whether “the at least one pumping stage” refers
to the same thing. Further, we note that
the patent drafter is in the best position to resolve the ambiguity
in the patent claims, and it is highly desirable that patent
examiners demand that applicants do so in appropriate
circumstances so that the patent can be amended during
prosecution rather than attempting to resolve the ambiguity in
litigation.
Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir.
2008). Thus, we sustain the rejection of independent claim 16 as indefinite.
For the same reasons, we sustain the rejection of claims 18 and 19, which
depend from claim 16.
35 U.S.C § 103(a)
Claim 1
We are persuaded by Appellant’s argument that the Examiner has not
established that the art of record teaches or otherwise renders obvious a
vacuum pump possessing every limitation of claim 1.
With respect to claim 1, the Examiner finds that Stones discloses a
vacuum pump as claimed except that Stones “fails to disclose the rotor
element being made of an injection molded plastic material charged with
reinforcing short fibers, the reinforcing short fibers being dispersed in a
chaotic and random manner inside the plastic material.” Final Act. 4.
However, the Examiner finds that “Niwa teaches a plastic material charged
with reinforcing short fibers, the reinforcing short fibers being dispersed in a
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Application 13/576,498

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chaotic and random manner inside the material (Column 4, Lines 42-45;
Column 5, Lines 44-49).” Id. at 5. The Examiner determines that it would
have been obvious to modify Stones to use reinforcing fibers as set forth in
Niwa “for the purpose of making the material easily mixed and preventing
the fibers from becoming entangled, which would deteriorate the
dispersibility of the fibers,” as taught by Okamoto. Id. (citing Okamoto, col.
2, ll. 52–58). Finally, the Examiner finds that the requirement in the claim
that the rotor element is “injection molded” is a product-by-process
limitation. Id. Thus, the Examiner finds that the claim only requires a
structure that is made of plastic and does not require the specific method of
manufacture recited. Id.
Generally, the patentability of a product does not depend on its mode
of manufacture. Thus, where a claim includes such a product-by-process
limitation regarding how a structural element is made, the Examiner need
only show that the resulting structure is obvious to support a rejection under
35 U.S.C. § 103(a). See MPEP § 2113. However, an obviousness
determination may be overcome where the Appellant can show some non-
obvious difference between the claimed product and the prior art relied
upon. Id. As discussed below, we agree with the Appellant that “the term
‘injection molded’ in claim 1 informs the structure of the end product,
including the configuration of fibers within the plastic material, and
particularly when compared to the disclosure of Niwa.” Reply Br. 4.
The Specification discloses an embodiment including a rotor element
“manufactured as a single, monolithic piece, for instance by injection
molding.” Spec. ¶ 810. The Specification further discloses that making a
rotor of long fibers cannot be manufactured as an injection molding
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monolith because “the long [fibers] have to be arranged all along a
preferential direction.” Id. ¶ 820. However, the Specification discloses that
the rotor element can be formed of a monolithic piece by injection molding
if short fibers are used and “arranged in a chaotic and substantially random
way,” which allows for manufacture “in a very inexpensive process.” Id. ¶
830. Thus, the Specification indicates that the combination of injection
molding and short fibers allows for the fibers to be arranged in a chaotic and
random way, in contrast with methods that result in fibers arranged in the
same direction. This supports Appellant’s contention that the method of
manufacture imparts a specific structure to the rotor that allows the short
fibers to be arranged in a chaotic and random way in all dimensions of the
rotor, and not just in a single plane. This is also consistent with Appellant’s
proposed definition of chaotic as “in a state of complete confusion or
disorder,” implying there is no discernible pattern in the arrangement of the
fibers in three dimensions. Reply Br. 4.
Under this understanding of the claim, we agree with Appellant that
the Examiner has not identified any teaching in the art of record with respect
to this rejection that provides a rotor with short fibers that are “dispersed in a
. . . random manner inside [an injection molded] plastic material.” As noted,
the mode of manufacturing, i.e. injecting molding, provides a specific
structure in which the short fibers may be chaotically and randomly
dispersed in three-dimensions. In contrast, the Examiner has only identified
a rotor including short fibers that are arranged in a single plane. See Final
Act. 5; see also Niwa col. 4, ll. 42–45; col. 5, ll. 44–49 (disclosing that the
fibers in Niwa’s material are only randomly arranged in two dimensions).
Accordingly, we do not sustain the Examiner’s rejection of claim 1.
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Claim 16
With respect to claim 16, the Examiner relies on Stones and Niwa in
substantially the same manner as provided in the rejection of claim 1. Final
Act. 9–10. However, claim 16 is a method claim that specifically requires
that a pumping stage element is manufactured using an injection molding
process. Appeal Br. 30. Regarding this requirement, the Examiner relies on
Otto. Final Act. 10.
As discussed above, Niwa discloses only that short fibers are arranged
randomly in a single plane. However, similar to claim 1, one of ordinary
skill in the art would interpret claim 16 to require that the fibers arranged in
“a chaotic and random manner” are so arranged in three dimensions. The
Examiner findings and conclusion of obviousness fail to establish that the
combination of art would have resulted fibers that are so arranged.
Accordingly, we also do sustain the rejection of claim 16.
Claims 2–5, 7–15, 18, and 19
The remaining claims on appeal each depend from the independent
claims. The Examiner does not provide any additional findings or reasoning
with respect to the art of record that cure the deficiency in the rejections of
the independent claims. Thus, we also do not sustain the rejections of claims
2–5, 7–15, 18, and 19
CONCLUSION
We AFFIRM the rejection of claims 16, 18, and 19 under 35 U.S.C.
§ 112, second paragraph. We AFFIRM the rejection of claims 7 under
35 U.S.C. § 112, fourth paragraph. We REVERSE the rejections of claims
1–5, 7–16, 18, and 19 under 35 U.S.C. § 103(a).
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Application 13/576,498

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In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
16, 18, 19 112, second
paragraph
Indefiniteness 16, 18, 19
7 112, fourth
paragraph
Improper
Dependency
7
1, 2, 4, 5, 7,
9, 11, 14
103(a) Stones, Niwa,
Okamoto
1, 2, 4, 5,
7, 9, 11,
14
3 103(a) Stones, Niwa,
Okamoto,
Moriwaki
3
8 103(a) Stones, Niwa,
Okamoto,
Haylock
8
10 103(a) Stones, Niwa,
Okamoto,
Favre-Felix
10
12, 13 103(a) Stones, Niwa,
Okamoto,
Helmer
12, 13
15 103(a) Stones, Niwa,
Okamoto,
Englander
15
16, 18, 19 103(a) Stones, Otto,
Niwa, Okamoto
16, 18,
19
Overall
Outcome
7, 16, 18,
19
1–5, 8–
15

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136 (a). See 37 C.F.R.
§ 1.136 (a)(l)(iv).

AFFIRMED IN PART