Doerr, Martin et al.

Patent Trials and Appeals Board

Oct 16, 2019

13638038 - (D) (P.T.A.B. Oct. 16, 2019)

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.
13/638,038 09/28/2012 Martin Doerr 2012-086 3095
27569 7590 10/16/2019
PAUL AND PAUL
1717 Arch Street Three Logan Square
SUITE 3740
PHILADELPHIA, PA 19103
EXAMINER
HOWELL, MARC C
ART UNIT PAPER NUMBER
1774
NOTIFICATION DATE DELIVERY MODE
10/16/2019 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):
INFO@PAULANDPAUL.COM
claire@paulandpaul.com
fpanna@paulandpaul.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARTIN DOERR, WOLFGANG WORNER, STEFAN GERL,
CLEMENS SCHMITT, and PETER WAGNER
____________

Appeal 2017-011496
Application 13/638,038
Technology Center 1700
____________

Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and MICHAEL P.
COLAIANNI, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL1

The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1–6, 8–19, and 21.3 An oral hearing was held on
October 1, 2019, before this Board panel.
We AFFIRM.

1 This Decision includes citations to the following documents: Specification filed
Sept. 28, 2012 (“Spec.”); Final Office Action dated Nov. 3, 2016 (“Final”); Appeal
Brief filed Mar. 12, 2017 (“Appeal Br.”); Examiner’s Answer dated July 13, 2017
(“Ans.”); and Reply Brief filed Sept. 13, 2017 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. The Appellant, and the real party in interest, is Maschinenfabrik Gustav
Eirich GmbH & Co. KG. Appeal Br. 1.
3 We have jurisdiction under 35 U.S.C. § 6(b).
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The invention relates to a mixing device having a wear-resistant lining.
Spec. 1:5–6. According to the Specification, “[s]uch mixing devices generally have
a [cylindrical] container rotatable about a mixer axis for receiving material to be
mixed, with a discharge opening . . . arranged in the centre of the bottom[,] . . . a
mixing tool arranged in the interior of the container and a closure cover for closing
the discharge opening.” Id. at 1:7–13. An embodiment of the inventive mixing
container and wear-resistant lining is depicted in Figure 5, reproduced below. Id. at
10:12.
Figure 5 is a plan view of a mixing container. Id. The mixing container
includes container wall 10 lined with releasably-connected wearing surfaces 11,
and wearing plates comprising main lining portions 27 and wearing element 28. Id.
at 10:14–16. The Specification discloses that during “operation the greatest wear of
the wear-resistant lining occurs in the proximity of the discharge opening.” Id. at
11:20–21. Therefore, “wearing element 28 is releasably fixed on the mixing
container bottom,” id. at 10:27–28, to facilitate its replacement while allowing
continued use of main lining portions 27, see id. at 11:22–24. The closure cover for
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the discharge opening comprises main lining portion 31 and a releasably-connected
“wearing element 33, wherein the wearing element 33 embraces the inner region of
the wear resistant lining of the closure cover.” Id. at 11:29–32, 12:9–10.
Independent claims 1 and 12 are representative of the appealed claims, and
are reproduced below.
1. A mixing device comprising a container rotatable about a
container axis for receiving material to be mixed, in the bottom of
which is arranged a discharge opening (14), a mixing tool (2) arranged
in the interior of the container and a closure cover for closing the
discharge opening, wherein the container bottom is provided with a
wear-resistant lining at the side towards the container interior,
characterised in that the wear-resistant lining comprises a main lining
portion (31) and a replaceable wearing element (28), wherein the
wearing element (28) is arranged closer to the container axis than the
main lining portion (31).
12. A wear-resistant lining adapted to be mounted for use in a
mixing device, the mixing device comprising a container rotatable
about a container axis for receiving material to be mixed, wherein a
discharge opening (14) is arranged in the container bottom, a mixing
tool (2) arranged in the interior of the container and a closure cover
for closing the discharge opening (14), wherein the container bottom
is to be provided with the wear-resistant lining at the side towards the
container interior, characterised in that the wear-resistant lining
comprises a main lining portion (31) and a wearing element (28),
wherein the wearing element (28) is arranged closer to the container
axis than the main lining portion (31).
Appeal Br. 23, 25 (Claims Appendix).

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The Examiner relies on the following references as evidence of
unpatentability of the appealed claims:
Name Reference Date
Resk US 3,059,679 Oct. 23, 1962
Christen US 4,785,967 Nov. 22, 1988
Eirich US 4,854,715 Aug. 8, 1989
Bianchi EP 1990086 A1 Nov. 12, 2008

The Examiner maintains the following grounds of rejection (Ans. 3–9):4
1. claims 12 and 13 under 35 U.S.C. § 102(b) as anticipated by Bianchi;
2. claims 1, 3–6, 12, and 15 under 35 U.S.C. § 103(a) as unpatentable
over Eirich in view of Bianchi;
3. claims 2, 11, 13, and 14 under 35 U.S.C. § 103(a) as unpatentable
over Eirich in view of Bianchi and Christen;
4. claims 8–10 under 35 U.S.C. § 103(a) as unpatentable over Eirich in
view of Bianchi and Resk; and
5. claims 16–19 and 21 under 35 U.S.C. § 103(a) as unpatentable over
Eirich in view of Bianchi, Christen, and Resk.
Rejection under 35 U.S.C. § 102(b)
The Examiner rejected claims 12 and 13 under 35 U.S.C. § 102(b) as
anticipated by Bianchi. Final 4–5. Claim 12 recites a “wear-resistant lining adapted
to be mounted for use in a mixing device,” the wear-resistant lining including a
main lining portion and a wearing element. See claim 12 supra p. 3. Claim 12

4 The Examiner has withdrawn the final rejections of claims 1, 3–6, and 12 under
35 U.S.C. § 102(b) as anticipated by Eirich and the rejections of claims 2, 11, 13,
and 14 under 35 U.S.C. § 103(a) as unpatentable over Eirich. Ans. 9.
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further requires that the lining is configured such that, when positioned in a mixing
device, the wearing element is arranged closer to the container axis than the main
lining portion. See id. Claim 13 depends from claim 12 and requires that “the
wearing element is of a multi-part nature.” Appeal Br. 25 (Claims Appendix).
Bianchi discloses an inner lining for vessels of mixers or tumblers. Bianchi,
at [57]. Bianchi Figure 1 is reproduced below:
Bianchi Figure 1 is a top view of a vessel comprising an inner lining. Id. ¶ 6.
Vessel 4 has a substantially cylindrical shape. Id. ¶ 7. Bars 5, 6, 7 are welded to the
inner walls, i.e., sides and bottom, of vessel 4. Id. ¶ 8. Plates 1, 2, 3 include one or
more grooves into which at least one of bars 5, 6, 7 can be snap-fitted. Id. Bianchi
discloses that the snap-fit connections enable quick substitution when one of plates
1, 2, 3 is damaged. Id. ¶ 4.
The Examiner found that the “main lining portion” of the claimed “wear-
resistant lining” reads on Bianchi’s plate 3 and the “wearing element” reads on
plates 1, 2. Final 4. The Examiner determined that the claim 12 language relating
to the mixing device is a recitation of intended use that “places no structural
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requirement on the lining itself.” Id. The Examiner found that Bianchi’s lining
would have been capable of use in a mixing device having the features recited in
claim 12. Id. at 4–5.
The Appellant first argues that the Examiner erred in determining that the
claim 12 preamble is a mere statement of intended use. Appeal Br. 12. The
Appellant contends the preamble recites “a mixing device with certain specific
geometric constraints” that “imposes geometric constraints on the wear-resistant
lining.” Id. We need not determine whether the preamble limits the structure of the
lining, because the Appellant has not explained persuasively why the Examiner
erred in finding that “[t]he lining of Bianchi would be perfectly capable of being
used in any mixing device, including the one described in . . . the preamble of
claim 12” (Final 4–5).
In the Reply Brief, the Appellant argues that “[t]he requirement that the
lining work in a mixing vessel with a discharge opening in the bottom requires an
opening in the lining matching the size and shape of the discharge opening. This
feature is not disclosed in Bianchi.” Reply Br. 5. We decline to consider this
argument as the Appellant has not explained why the argument could not have
been made in the Appeal Brief.5 See Cross Med. Prods. Inc. v. Medtronic Sofamor
Danek, Inc., 424 F.3d 1293, 1320–21 n.3 (Fed. Cir. 2005) (it is well established
that arguments not raised in the opening Brief are deemed waived); Ex parte
Borden, 93 USPQ2d 1473, 1477 (Bd. Pat. App. & Int. 2010) (informative)
(“Properly interpreted, the Rules do not require the Board to take up a belated

5 For the same reason, we decline to consider the Appellant’s argument that “the
Examiner’s rejection is based upon the baseless, speculative finding that ‘Bianchi
discloses a wear resistant lining’” (Reply Br. 4) and the Appellant’s arguments in
support of patentability of claims 2 and 14 (id. at 7–8).
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argument that has not been addressed by the Examiner, absent a showing of good
cause.”). Compare Appeal Br. 11–12 (acknowledging the Examiner’s statement on
pages 12–13 of the Final Office Action that “[t]here is no relationship recited
between the lining and any other part of the mixing device aside from the bottom
of the container, for which no geometric requirements are claimed, other than the
presence of an opening somewhere”), with Appeal Br. 12–13 (“Appellants’
Response,” wherein no mention is made of a requirement for a discharge opening
in the lining).6
The Appellant argues that claim 12 requires that both portions of the wear-
resistant lining, i.e., the main lining portion and the wearing element, are
configured for use on the bottom of a mixing device container. See Appeal Br. 12.
The Appellant contends that only one portion of Bianchi’s wear-resistant lining—
plates 1, 2, corresponding to the wearing element— is configured for use on a
container bottom. Id. The Appellant argues the other portion of Bianchi’s lining—
plate 3, corresponding to the main lining portion of the claimed wear-resistant
lining—is designed to cover the container side walls, not the container bottom. Id.
The Appellant’s argument is not persuasive of error in the Examiner’s
finding of anticipation as to claims 12 and 13. Claim 12 does not recite explicitly
that all portions of the wear-resistant lining are configured for use on the container
bottom. See claim 12 supra p. 3. Nor do we find any disclosure in the Specification

6 In any event, this argument is not persuasive because, for example, the Appellant
has not explained why Bianchi’s liner would not have been capable of use in a
container by simply removing plate 1 to accommodate a discharge opening.
Additionally, the Appellant has not identified evidence to support its contention
that the broadest reasonable interpretation of claim 12 requires that the opening in
the lining match the size and shape of the discharge opening.

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that supports a narrow interpretation of claim 12 as limited to a wear-resistant
lining having such configuration. In other words, although claim 12 requires that
the wear-resistant lining is capable of use on the container bottom of a mixing
device, claim 12 does not exclude a wear resistant lining having a portion that is
capable of use on the container walls. Moreover, even if the Appellant were correct
in its assertion that claim 12 requires that both the main lining and wearing element
portions of the wear-resistant lining are capable of use on the container bottom,
Bianchi discloses an embodiment wherein “[p]lates 1, 2, 3 are . . . applied to the
inner bottom and/or to the inner cylindrical wall of vessel 4.” Bianchi ¶ 7
(emphasis added).
In the Reply Brief, the Appellant notes that “the [S]pecification consistently
shows the main lining portion and the replaceable wearing element as both lying
on the horizontal bottom of the mixing container and distinguishes the lining on the
sidewall of the container as the ‘wall wearing plate 11’ or the ‘wearing plate 11
fixed to the container wall 10.’” Reply Br. 3–4. As discussed in the preceding
paragraph, the Appellant has not identified, nor do we find, any disclosure in the
Specification requiring that the wear-resistant lining is positioned solely on the
bottom of the container. To the contrary, the Specification, in describing the
embodiment shown in Figure 5, discloses that wall wearing plates 11 are “arranged
above the bottom by at least the height of the wearing plate . . . compris[ing] the
main lining portions 27 and the wearing element 28.” Spec. 10:15–19. This
language, as well as the Figure 6 illustration of main lining portions 27 extending
toward container wall 10 and positioned under wall wearing plates 11, at least
suggests that the wear resistant lining may cover a portion of the container walls.
See also Spec. 13:22–26 (“Disposed at the radially outer edges of the main lining
portions 39 are tongues 42 which can be passed through suitable openings 43 in the
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container wall 10. In this case the lower edge of the wall wearing plates 11 is
arranged so far above the mixing container bottom that the main lining portions 39
can be pushed through with the tongues 42.”).
In sum, for the reasons discussed above, we are not convinced of reversible
error in the Examiner’s rejection of claims 12 and 13 under 35 U.S.C. § 102(b) as
anticipated by Bianchi. Accordingly, we sustain this ground of rejection.
Rejections under 35 U.S.C. § 103(a)
The Examiner rejected claims 1–6, 8–19, and 21 as unpatentable over the
combination of Eirich and Bianchi (alone or in combination with various
secondary references). Final 5–11; see list of rejections supra p. 4. The Appellant’s
arguments in support of patentability of the rejected claims are directed to
limitations in independent claims 1, 12, and 15. See generally Appeal Br. 16–19,
21. For the reasons discussed below, we do not find these arguments persuasive of
reversible error in the Examiner conclusion of obviousness.
Independent claims 1 and 15 recite a mixing device comprising a container
and a wear-resistant lining. See claim 1 supra p. 3; Appeal Br. 25–26 (Claims
Appendix). Claim 15 differs from claim 1 in that claim 15 requires that the closure
cover is provided with the wear-resistant lining, whereas claim 1 recites that the
container bottom is provided with the wear-resistant lining. The features of the
wear-resistant linings recited in claims 1 and 15 (i.e., the language following the
phrase “characterised in that”) are substantially identical to the features of the
wear-resistant lining recited in claim 12, discussed above in connection with the
rejection under 35 U.S.C. § 102(b).
The Appellant does not dispute the Examiner’s findings that Eirich discloses
a mixing device comprising a container having the features recited in claims 1 and
15: rotatable about a container axis for receiving material to be mixed, a discharge
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opening arranged in the bottom, a mixing tool arranged in the interior, and a
closure cover for closing the discharge opening. See Final 6, 10; Appeal Br. 16–19.
Nor does the Appellant dispute the Examiner’s finding that Eirich discloses that
the container bottom is provided with a wear-resistant lining. See Final 6, 10;
Appeal Br. 16–19. Further, the Appellant acknowledges that
[f]rom Bianchi one of ordinary skill in the art learns to apply a lining
on a continuous container bottom and on the inner walls of the
container, wherein the lining consists of several plates 1, 2, 3 of
different geometrical shapes, namely a circular plate 1, plates 2 with a
shape of a substantially circular sector and substantially rectangular
plates 3.”
Appeal Br. 17.
Independent Claims 1 and 12
As to claim 1, the Appellant argues that the Examiner reversibly erred in
finding that, based on Bianchi’s disclosure that a multi-part lining “allow[s] quick
substitution of portions of the lining when one is damaged without wasting
material” (Final 6, 10–11), one of ordinary skill in the art would have replaced
Eirich’s lining on the container bottom with a multi-part lining comprising a main
lining portion and a wearing element. Appeal Br. 17. The Appellant further argues
that even if the ordinary artisan had combined the teachings of Eirich and Bianchi,
the present invention would not have resulted. Id. The Appellant states that the
rejection of claim 12 is improper for the same reasons argued in support of
patentability of claim 1. See Reply Br. 7. As further discussed below, the
Appellant’s arguments are not persuasive because they are not commensurate in
scope with claim 1.
Claim 1 recites “wherein the container bottom is provided with a wear-
resistant lining[,] . . . the wear-resistant lining compris[ing] a main lining portion . .
. and a replaceable wearing element.” See claim 1 supra p. 3. Like claim 12,
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discussed above in connection with the anticipation rejection, claim 1 does not
require that all portions of the wear-resistant lining are located on the container
bottom. See Final 12 (“[T]he separation of an anti-wear lining between the bottom
of the mixing chamber and the closure of the mixing chamber would read on the
recited main lining portion and wearing element because these structures in the
claims are defined only by their positioning and not the actual structure of the
lining or elements themselves.”). Therefore, we do not find persuasive the
Appellant’s argument that if Eirich’s liner were replaced with a liner having a
structure similar to that of Bianchi’s liner, plate 1 would be present on the closure
cover, which is not part of the container bottom (Reply Br. 5–6).
The Appellant argues that neither Eirich nor Bianchi provides a reason for
the ordinary artisan to apply an anti-wear lining to Eirich’s closure cover. Appeal
Br. 17. The Appellant contends Bianchi discloses a continuous container bottom
and, therefore, does not disclose a closure cover or a wear-resistant lining for a
closure cover, and Eirich discloses a one-part anti-wear lining and does not
disclose that the closure cover is provided with an anti-wear lining. Id. at 16–17.
This argument is not persuasive. As an initial matter, we do not agree that
Eirich teaches only a one-part lining. See Eirich 8:13–14 (“anti-wear linings 23
with which the inside of the mixing container can be covered” (emphasis added)).
Further, the Appellant’s arguments do not address and, therefore, do not identify
error in the Examiner’s findings that Eirich Figure 6 shows an additional layer on
the closure cover, which could be considered an anti-wear layer; and Eirich
teaches that the interior of the mixing chamber may be covered with an anti-wear
lining and, when Eirich’s discharge opening is closed, the interior surface of the
closure cover is part of the interior of the mixing chamber. Final 12; Ans. 11–12.
See generally Appeal Br. 16–19; Reply Br. 5–6.
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In sum, for the reasons stated above, we are not persuaded of reversible error
in the Examiner’s rejection of independent claims 1 and 12, or of claims 3–6 which
depend from claim 1, as obvious over Eirich and Bianchi.
Independent Claim 15
Claim 15 recites
wherein the closure cover is provided with a wear-resistant lining at
the side towards the container interior, characterised in that the wear-
resistant lining comprises a main lining portion (31) and a replaceable
wearing element (28), wherein the wearing element (28) is arranged
closer to the container axis than the main lining portion.
Appeal Br. 25–26 (Claims Appendix). As to claim 15, the Appellant argues that
even if the ordinary artisan had applied Bianchi’s plate 1 to Eirich’s closure cover,
the claimed invention would not have resulted because the applied prior art fails to
disclose or suggest providing the closure cover with a wear-resistant lining
comprising a main lining portion and a wearing element arranged as recited in
claim 15.
This argument is not persuasive. Similar to claims 1 and 12, claim 15 does
not require that all portions of the wear-resistant lining are located on the closure
cover. Nor does claim 15 require a distinct wear-resistant liner for each of the
container bottom and the closure cover. Thus, the Appellant has not shown error in
the Examiner’s determination that modifying Eirich to include a multi-part liner
based on the teachings of Bianchi would have resulted in a wear-resistant lining, a
first portion of which (e.g., a main lining portion similar to Bianchi’s plates 2) is
provided on Eirich’s container bottom, and a second portion of which (e.g., a
replaceable wearing element portion similar to Bianchi’s plate 1) is provided on
the closure cover. See Final 10–11; Ans. 12.
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Separate Rejections of Claims 2, 8–11, 13, 14, 16–19, and 21
We also have considered the arguments advanced by the Appellant in
support of patentability of independent claims 1, 12, and 15 to the extent applicable
to the separate rejections of the dependent claims, and have considered the
arguments advanced by the Appellant in traversing the subsequently-withdrawn
rejection of claims 2, 11, 13, and 14 under 35 U.S.C. § 103(a) as unpatentable over
Eirich, to the extent applicable to the rejection of these claims based on the
combination of Eirich, Bianchi, and Christen. We are not persuaded of reversible
error in the separate rejections of the dependent claims for the reasons stated in the
Final Office Action, the Answer, and above with respect to the independent claims.

CONCLUSION
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
12, 13 102(b) Bianchi 12, 13
1, 3–6, 12, 15 103(a) Eirich, Bianchi 1, 3–6, 12,
15

2, 11, 13, 14 103(a) Eirich, Bianchi,
Christen
2, 11, 13,
14

8–10 103(a) Eirich, Bianchi, Resk 8–10
16–19, 21 103(a) Eirich, Bianchi,
Christen, Resk
16–19, 21
Overall
Outcome
1–6, 8–19,
21

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