Ex Parte 5753075 et al

Patent Trial and Appeal Board

Jun 21, 2013

90010403 (P.T.A.B. Jun. 21, 2013)

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.
90/010,403 02/06/2009 5753075 JHN-10-1825 8727
23117 7590 06/21/2013
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
JASTRZAB, KRISANNE MARIE
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
06/21/2013 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 Andritz INC.
Appellant
____________

Appeal 2013-001727
Reexamination Control 90/010,403
Patent U.S. 5,753,075
Technology Center 3900
____________

Before LORA M. GREEN, RICHARD M. LEBOVITZ, and
JEFFREY FREDMAN, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal by the Patent Owner from the Patent
Examiner’s decision to reject claims 1-3 and 18 in ex parte reexamination of
US Patent 5,753,075. The Board’s jurisdiction for this appeal is under 35
U.S.C. § 6(b) and § 134(b). We affirm-in-part.
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I. BACKGROUND
The patent in dispute in this appeal is U.S. Patent 5, 753,075 (“the
‘075 patent”), issued May 19, 1998. The Patent Owner and Real Party in
Interest is Andritz Inc. (Appeal Br. 3, dated February 28, 2012). A request
for ex parte reexamination under 35 U.S.C. §§ 302-307 and
37 C.F.R. § 1.510 of claims 1-3 and 18 of the ‘075 patent was made on
February 6, 2009 by a third party requester (Request for Ex Parte
Reexamination Transmittal Form). An oral hearing took place on March 20,
2013. A transcript of the oral hearing will be entered into the record in due
course.

II. CLAIMS
Claims 1 and 18 are representative claims and read as follows
(underlining and brackets is relative to the original issued claims):
1. A system for producing chemical cellulose pulp from
comminuted fibrous cellulose material, wherein the
comminuted fibrous cellulose material includes wood chips, the
system comprising:
a steaming vessel in which the comminuted fibrous
cellulose material is steamed to remove the air therefrom;
a superatmospheric pressure vertical treatment vessel
having an inlet for a slurry of the comminuted cellulose fibrous
material at a top portion thereof and an outlet at a bottom
portion thereof; and
pressurizing transfer means for pressurizing [a]the slurry
of the comminuted cellulose fibrous material, including the
wood chips, from the steaming vessel and transferring [it] the
pressurized slurry to said treatment vessel inlet, said
pressurizing transfer means consisting of one or more high
pressure slurry pumps located below said top portion of said
treatment vessel.
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18. A method of feeding wood chips to the top of a treatment
vessel comprising the steps of:
(a) steaming the wood chips to remove air therefrom and
to heat the material;
(b) slurrying the wood chips with a cooking liquor to
produce a slurry of liquid and material; and
(c) pressurizing the slurry to a pressure of at least about 5
bar gauge at a location at least thirty feet below the top of the
treatment vessel and transferring pressurized wood chips to the
top of the treatment vessel, said pressurizing step consisting of
acting on the slurry with one or more high pressure slurry
pumps.

III. REJECTIONS
Claims 1-3 and 18 stand rejected by the Examiner under 35 U.S.C.
§ 103(a) as obvious under three different grounds (A, B, and C). Each of the
grounds is addressed below.

III.A. OBVIOUSNESS IN VIEW OF SHERMAN
Claim 1 stands rejected under 35 U.S.C. § 103(a) as obvious in view
of Sherman
1
(Answer 4).
Claim 1 is directed to a system for producing chemical cellulose pulp
from comminuted fibrous cellulose material. The system includes a
steaming vessel, a superatmospheric pressure vertical treatment vessel, and
“pressurizing transfer means for pressurizing the slurry of the comminuted
cellulose fibrous material, including the wood chips, from the steaming
vessel and transferring the pressurized slurry to said treatment vessel inlet.”

1
Michael Ignacy Sherman, EP 0 157 279 (Published October 9, 1985).
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The Examiner found that Sherman describes all the elements of the
claimed invention, including a system for production of paper pulp from
cellulosic residues, such as sawdust, which comprises a steaming vessel
(12), vertical digester vessel (40) which serves as a superatmospheric
pressure vertical treatment vessel, and pump (22) which serves as the
claimed pressuring transfer means (Answer 4) (see Figure 2 of Sherman).
The Examiner found that Sherman does not specifically teach
treatment of cellulosic material which includes wood chips as claimed, but
determined “it would have been obvious to one of ordinary skill in the art
that the structure of Sherman would be fully capable of treating a material
such as that including wood chips because it would pump more readily in
slurry than sawdust.” (Answer 4-5.)
Patent Owner contends that Sherman does not teach or suggest that
wood chips or other large comminuted cellulosic material can be pumped
(Appeal Br. 13.) Patent Owner argues that it “would not have been obvious
to use the structure of Sherman to pulp comminuted cellulosic material
including wood chips.” (Id.) Patent Owner also argues that “Sherman also
does not teach or suggest a system whereby wood chips are steamed to
release air trapped within the cells of the wood chips, as required by claim 1
of the ‘075 patent.” (Id.)
Patent Owner’s arguments do not persuade us that the Examiner erred.
Claim 1 is directed to a system with a steaming vessel, treatment vessel, and
pressuring transfer means. The claim does not require that the actual step of
pumping and steaming wood chips be carried out. Rather, the system must
be capable of these functions. Thus, the issue in this rejection is whether the
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system described in Sherman would be capable of pumping wood chips and
performing steaming. The Examiner found that it was (Answer 8.)
Patent Owner argues that it would not have been obvious to apply
Sherman’s teaching to wood chips, but we do not find this argument
persuasive because the claim does not require that the steps of steaming
wood chips or transferring wood chips from a steaming vessel to treatment
vessel be actually performed.
With regard to the clam limitation of a “pressurizing transfer means
consisting of one or more high pressure slurry pumps,” Patent Owner argues
that the “Examiner also does not point to support for the assertion that wood
chips could be pumped in the same manner as sawdust is pumped in
Sherman.” (Appeal Br. 12.) We do not agree. The Examiner provided
evidence that Sherman’s pump could be used to pump wood chips:
Additionally, the ‘075 patent discloses the preferred use of
“centrifugal high-pressure, helical screw slurry pumps” (see
column 9, lines 58-59) which matches the description of the
type of pump used in Sherman to slurry the sawdust which
states “Pumping can be accomplished utilizing commercially
available fluidizing, high speed, degassing, centrifugal pumps
…” (see page 2, lines 13-16 of Sherman).
(Answer 7-8.)
Patent Owner responded that Sherman’s pump is not a helical
screw slurry pump (Reply Br. 4). This argument is not persuasive.
First, Patent Owner has not provided objective evidence that
Sherman’s pump is not a helical pump, or that the pumps described in
the two cited patents in Sherman are not helical pumps (Sherman, p.
5, ll. 28-35.) Arguments of counsel cannot take the place of evidence
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lacking in the record. Estee Lauder Inc. v. L'Oreal, S.A., 129 F.3d
588, 595 (Fed. Cir. 1997).
Second, the claims are not limited to helical pumps. The ‘075
patent describes a “centrifugal high-pressure, helical screw, slurry
pump” as a preferred embodiment (col. 9, ll. 58-60), but neither the
claims nor the patent specification limit the claimed system to this
type of pumps. Rather, claim 1 requires a “pressurizing transfer
means” which is “consisting of one or more high pressure slurry
pumps located below said top portion of said treatment vessel.”
Interpreting this “means” phrase consistent with 35 U.S.C. § 112,
sixth paragraph, we look to the ‘075 patent specification which
describes a number of different types of pumps that serve this
purpose:
The slurry pumps may be helical screw centrifugal pumps,
double-piston solids pumps, or other similar conventional
pumping devices that are capable of pressurizing a slurry
having a relatively high percentage of solids to (in one or more
stages) a pressure of at least about 5 bar gauge.
(‘075 patent, col. 2, ll. 15-20.) Thus, the “means” phrase is
reasonably interpreted to encompass “conventional pumping devices”
such as the device disclosed by Sherman.
The Examiner also gave further basis for believing that
Sherman’s pump would be capable of pumping wood chips. The
Examiner found that Sherman teaches that “the slurry is maintained at
the same pressure it had when discharged from the pump.” (Answer
9.) For support, the Examiner cited passages at page 7, lines 9-16, of
Sherman which states that “the slurry is maintained, without dilution,
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at substantially the same pressure as it had when discharged from the
pump 22.” (Sherman, p. 7, ll. 13-16.) The Examiner found that
Sherman’s “pump brings the slurry to up to normal treatment pressure
between 600-1200 kPa
[2]
(which equates to 6-12 bar).” (Answer 4;
compare the passage reproduced above from the ‘075 patent where the
pump is said to bring the slurry to a pressure of “at least about 5 bar.”)
Thus, because Sherman’s pump raises the slurry pressure as does the
claimed pump, and in overlapping ranges (6-12 bar versus at least
about 5 bar), the Examiner had a reasonable basis to believe that the
pump described by Sherman meets the claimed limitation of a high
pressure slurry pump.
Patent Owner also argues that Figure 2 of Sherman differs from
the system recited in claim 1 because the pump (22) is upstream of the
steaming vessel (30) and does not transfer the material “from the
steaming vessel ... to said treatment vessel inlet" as recited in claim 1
(Appeal Br. 14). Patent Owner argues that claim 1 requires the pump
to be downstream of the “steaming vessel.” (id.) (“one or more high
pressure slurry pumps located below said top portion of said treatment
vessel”).
However, the Examiner found that steaming vessel is
component (12) of Figure 2, and (12) is upstream of the pump
(Answer 8-9). Patent Owner responds that vessel (12) is a steam

2
See Sherman, p. 6, ll. 28-33 (“The pump 22 brings the slurry up to normal
treatment pressure, which is typically 600-1200 kPa, and the slurry is
maintained at that pressure, and is maintained in the digester 26 for a time
period of about 30-130 minutes.”)
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mixer whose purpose is to produce a slurry and it does not remove air
as required by the claim (Reply Br. 5).
This argument is not persuasive. The ‘075 patent teaches
“chips 20 are introduced to steaming vessel 121 where they are
exposed to steam introduced via conduit 22.” (‘075 patent, col. 8, ll.
38-41.) Sherman also describes introducing steam into steaming
vessel 12 (Sherman, p. 5, lines 10-11), the same function described in
the ‘075 patent. Thus, the Examiner had reasonable basis to conclude
the structures are the same and would perform the same functions.
As for any other arguments made by Patent Owner, we fully adopt the
Examiner’s response, e.g., see page 9 of the Answer.
Patent Owner also contends that the claimed invention met a
long felt and unsolved need (Appeal Br. 16). This argument is not
supported factually. Precedent requires that an applicant “submit
actual evidence of long-felt need, as opposed to argument.” In re
Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006). The mere passage of time
is insufficient. Id. As no objective evidence of a long-felt, unmet,
need was provided by Patent Owner, we find the argument
insufficient to rebut the obviousness rejection.
For the foregoing reasons, we affirm the rejection of claim 1 as
obvious in view of Sherman.

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III.B. OBVIOUSNESS IN VIEW OF SHERMAN AND SWEENEY
Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a) as obvious in
view of Sherman and Sweeney
3
(Answer 5).
Claim 2 recites that the one or more of the pumps of claim 1
comprises “first and second high pressure slurry pumps connected in series.”
The Examiner found that Sherman does not describe slurry pumps in series,
but found that Sweeney described this configuration of pumps (Answer 5).
The Examiner concluded that it “would have been obvious to one of
ordinary skill in the art to utilize at least one other series-connected pump as
taught in Sweeney, in addition to the single pump of Sherman, because it
would ensure effective slurry transport over variety of heights while
maintaining a relatively constant flow rate.” (Id.)
Patent Owner contends that Sweeney does not suggest modifying
Sherman to treat wood chips (Appeal Br. 18). However, as discussed
already, the claims do not require that the system be actually used to treat
wood chips – only that it be capable of this function.
Patent Owner also argues that a “person of ordinary skill in the art
would not have viewed as being relevant or in the same field the Sweeney
coal slurry system and the pulping system shown in Sherman” (Appeal Br.
18).
This argument is not persuasive. Even when prior art is not in the
same endeavor as the claimed invention, it is still analogous prior art if it is
“reasonably pertinent to the particular problem with which the inventor is
involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). “A reference

3
William T. Sweeney et al., U.S. 4,466,759 (August 21, 1984).
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is reasonably pertinent if, even though it may be in a different field from that
of the inventor's endeavor, it is one which, because of the matter with which
it deals, logically would have commended itself to an inventor’s attention in
considering his problem.” In re Clay, 966 F.2d at 659, 660 (Fed. Cir. 1992).
In this case, the Examiner provided a logical reason as to why one of
ordinary skill in the art would have considered Sweeney’s teachings
pertinent to Sherman: “The system of Sweeney addresses the problem of
maintaining operating pressures for slurries during vertical movement, a
problem clearly pertinent to Sherman in delivering the pressurized slurry to
the top of the treatment vessel, and thus is certainly analogous and properly
combinable.” (Answer 8.) Patent Owner has not identified a deficiency in
this reasoning and we find none.
The rejection of claims 2 and 3 as obvious in view of Sherman and
Sweeny is affirmed.

III.C. OBVIOUSNESS IN VIEW OF SHERMAN AND SCHANDROCH
Claim 18 stands rejected under 35 U.S.C. § 103(a) as obvious in view
of Sherman and Schandroch
4
(Answer 6).
Claim 18 is directed to a method of “of feeding wood chips to the top
of a treatment vessel.” The method comprises steps of (a) steaming the
wood chips, (b) slurrying the wood chips, and (c) pressuring the slurry to at
least 5 bar, and transferring to the top of a treatment vessel, where the
“pressurizing step consisting of acting on the slurry with one or more high
pressure slurry pumps.” The pressuring occurs “at a location at least thirty

4
Josef Schandroch et al., U.S. 2,876,098 (March 3, 1959).
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feet below the top of the treatment vessel.” We interpret wood chips to be as
defined as in Exhibit A
5
cited by Patent Owner on page 12, lines 5-15, of the
Appeal Brief.
The Examiner found that Sherman, as discussed for claim 1, describes
the components for performing the steps of claim 18, but “fails to specify
that the cellulosic residues may be wood chips, and the height of Sherman's
digester is not disclosed.” (Answer 6.) However, the Examiner found that
“Schandroch teaches a method and apparatus for digestion of cellulosic
fibrous material, such as wood chips,” with a pump at about the same
location required by claim 18 (id.). The Examiner found it would have been
obvious to have used Sherman’s system for digestion of wood chips as
taught by Schandrock (id.).
Patent Owner contends that the rejection of claim 18 should be
reversed for the same reasons argued for claim 1 (Appeal Br. 18). Patent
Owner contends that Sherman does not disclose or suggest using wood chips
in its system (id. at 11). Rather, Patent Owner argues that Sherman uses
sawdust and wood residues (id.). Patent Owner contends that wood chips
are substantially larger than sawdust (id. at 12) and Sherman’s comments
about the ability of sawdust to be pumped by its system would not apply to
wood chips (id. at 13). To address the dispute between the Examiner and
Patent Owner on whether the subject matter of claim 18 would have been
obvious to one of ordinary skill in the art, we turn to the disclosure in
Sherman.

5
Gary A. Smook, HANDBOOK OF PULP & PAPER TERMINOLOGY, 2nd
ed. (2001).

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Both the Examiner and Patent Owner agree that Sherman utilized
sawdust in its system, not wood chips. It is also undisputed that wood chips
are larger than sawdust particles. Sherman states that “sawdust” is “fine
enough to react like small particles during handling.” (Sherman, p. 1, l. 31
to p. 2, l. 2). Sherman characterizes the “discovery” that sawdust could be
pumped in its system as “unexpected.” (Id. at p. 2, ll. 5-9). Sherman
explained that the “discovery that it is possible to pump medium consistency
(e.g. 10-25%) sawdust slurries is surprising since the fine particles tend to
act as a solid, as opposed to the situation with pulp or the like wherein the
material is more flexible.” (Id. at p. 2, ll. 20-24).
Based on this disclosure, the Examiner states:
Sherman discloses that pumping of sawdust slurries was more
difficult than that of larger particles because the finer
particles clump and act as a solid (see page 2, lines 20-24). This
disclosure regarding particles size in treatment slurries clearly
supports the conclusion of obviousness that Sherman would
reasonably be expected to successfully treat wood chips as well
as sawdust with the disclosed system since pumping of
slurries of larger particles is generally found to be easier
than sawdust slurries.
(Answer 7.) (Emphasis added.)
The Examiner erred. Sherman did not disclose that that pumping
sawdust was more “difficult” than larger particles. Rather, Sherman
contrasted pumping sawdust slurries with pulp, which was said to be more
flexible (Sherman, p. 2, ll. 20-24). In other words, pumping sawdust was
described by Sherman as more difficult than pumping pulp. There is no
evidence that pulp particles are larger than sawdust particles. Moreover,
Sherman did not compare sawdust to pumping larger particles, such as
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wood chips. Sherman states that sawdust reacts differently than wood chips
“during handling,” but did not make this statement in the context of pumping
either as a slurry (Sherman, p. 1, l. 31 to p. 2, l. 4). Although Schandroch
mentions using wood chips in its system, the Examiner did not establish that
Schandroch pumped wood chips (see Reply Brief 6-7).
The Examiner’s basis for finding it obvious to pump wood chips in
Sherman’s system is thus not factually supported by Sherman’s disclosure.
As the Examiner’s rejection is not supported by a preponderance of the
evidence of record, we are compelled to reverse it. The rejection of claim 18
as obvious in view of Sherman and Schandroch is reversed.

IV. SUMMARY
The rejection of claims 1 as obvious in view of Sherman is affirmed.
The rejection of claims 2 and 3 as obvious in view of Sherman and
Sweeney is affirmed.
The rejection of claim 18 as obvious in view of Sherman and
Schandroch is reversed.

TIME PERIOD FOR RESPONSE
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED-IN-PART

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ack

Patent Owner:

NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203

Third Party Requester:

FASTH LAW OFFICES (ROLF FASTH)
26 PINECREST PLAZA
SUITE 2
SOUTHERN PINES, NC 28387-4301