Ex parte Aldridge

Board of Patent Appeals and Interferences

Jun 11, 1998

08237567 (B.P.A.I. Jun. 11, 1998)

Application for patent filed May 3, 1994.1
-1-
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte PAUL K. ALDRIDGE
________________
Appeal No. 96-3615
Application 08/237,5671
________________
ON BRIEF
________________
Before ABRAMS, STAAB and McQUADE, Administrative Patent
Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 4-8, 13-15, 17 and 23-30, and from the
examiner’s refusal to allow claim 31 added by an amendment
Appeal No. 96-3615
Application 08/237,567
In the final rejection (Paper No. 8, mailed May 17,2
1995), the examiner inadvertently included claim 12 as a
rejected claim despite claim 12 having been canceled by a
prior amendment (Paper No. 7, submitted February 6, 1995).
“The term on-line means that the blender does not have3
to be turned off in order to take the measurements to
determine homogeneity and potency.” Specification, page 2.
Our understanding of this German language document is4
derived from a translation prepared on behalf of the Patent
and Trademark Office. A copy of said translation is attached
-2-
filed subsequent to the final rejection. Claims 1-3, 9-12,2
16 and 18-22 have been canceled. No other claims are
currently pending.
Appellant’s invention pertains to an apparatus and method
for mixing compositions of matter and detecting the
homogeneity thereof “on-line.” Independent claims 31 and 25,3
copies of which appear in the appendix to appellant’s brief,
are representative of the claimed apparatus and method,
respectively.
The references of record relied upon by the examiner in
support of rejections under 35 U.S.C. § 102(b) and 35 U.S.C.
§ 103 are:
Fischer 2,514,126 Jul. 4, 1950
Westhof et al. (Westhof) 3,337,403 May 2, 19854
Appeal No. 96-3615
Application 08/237,567
to this opinion.
The examiner has also objected to the drawings under 375
CFR § 1.83(a) for allegedly failing to show every feature of
the invention specified in the claims. Matters within the
examiner’s discretion, such as objections to the drawings, are
not subject to our review. Rather, such matters may be
resolved by petition to the Commissioner under 37 CFR § 1.181.
-3-
(German Patent)
Alonso et al., Powder Coating in a Rotary Mixer with Rocking
Motion, Powder Technology, 1988, pp. 134-141.
Fan et al., Recent Developments in Solids Mixing, Powder
Technology, 1990 pp. 255-287.
The following rejections are before us for review:5
(a) claims 23, 24, 29, 30 under 35 U.S.C. § 112, second
paragraph, as being indefinite;
(b) claims 4, 25, 27, 31 under 35 U.S.C. § 102(b) as
being anticipated by Alonso;
(c) claims 5-8, 13-15, 17, 23, 24, 29 and 30 under 35
U.S.C. § 103 as being unpatentable over Alonso in view of Fan;
(d) claims 5-8, 13-15, 17, 23, 24, 29 and 30 under 35
U.S.C. § 103 as being unpatentable over Alonso in view of
Fischer; and
(e) claims 26 and 28 under 35 U.S.C. § 103 as being
Appeal No. 96-3615
Application 08/237,567
-4-
unpatentable over Westhof in view of Alonso.
The rejections are explained in the examiner’s answer
(Paper No. 15, mailed May 13, 1996).
The opposing viewpoints of appellant are set forth in the
brief (Paper No. 14, filed December 15, 1995).
The 35 U.S.C. § 112, Second Paragraph, Rejection
(rejection (a))
In rejecting claims 23, 24, 29 and 30 under 35 U.S.C. §
112, second paragraph, the examiner alleges that the term
“said arbor,” which appears in various places in claims 23,
24, 29 and 30, lacks proper antecedent basis. For the reasons
stated by appellant on pages 8 and 9 of the brief, the
examiner’s position in this regard is not well taken.
The examiner also considers claim 23 to be unclear
because (answer, page 4):
I. Part (i) of (a) [of claim 23] refers to the
container having [an] aperture.
Part (vi) of (a) [of claim 23] refers to the
container having an aperture. Are the apertures of
parts (i) and (vi) the same apertures or different
ones? How are these apertures related to each
other?
Appeal No. 96-3615
Application 08/237,567
In the interest of further clarifying the claim6
language, appellant may wish to change the language “said
container having an aperture disposed” in subparagraph (a)(vi)
of claim 23 to --said aperture being disposed--.
Similarly, appellant may wish to change “said container has an
aperture disposed” (claim 5, paragraph (c)) to --said aperture
being disposed--, and “means for detecting” (claim 23,
subparagraph (a)(xvii) to --said means for detecting--. In
addition, it appears that “said detection means” in claim 17
should be --said spectroscopic means--, and that “said
aperture” (claim 27, paragraph (b); claim 28, paragraph (b))
should be --said one or more apertures--.
-5-
II. Part (xi) of (a) [of claim 23] refers to
said aperture. What aperture does this refer to?
While we appreciate the examiner’s point, we believe an
artisan would understand, when reading the claim in light of
the specification, that the aperture recited in sub-paragraph
(vi) of
claim 23 is the same aperture as the one recited in paragraph
(i)
thereof.6
In light of the foregoing, we will not sustain the
Appeal No. 96-3615
Application 08/237,567
-6-
standing rejection of claims 23, 24, 29 and 30 under 35 U.S.C.
§ 112, second paragraph.
The 35 U.S.C. § 102(b) Rejection based on Alonso
(rejection (b))
At the outset, consistent with appellant’s specification,
we interpret the detection means called for in paragraph (b)
of claim 31 to comprise the spectroscopic means of paragraph
(c) and the conduction means of paragraph (d), rather than
means separate and distinct from that which is called for in
paragraphs (c) and (d).
Alonso pertains to an apparatus for (1) coating a coarse
granular material with a fine cohesive powder, and (2)
measuring continuously by optical means the fraction of
granular material coated by the fine powder. The mixing is
accomplished by a rotary barrel-type mixer. The measuring
means includes a series of probes which appear to be
continuously submerged in the mixture, each probe including
plastic optical fibers for transmitting light to and from the
mixture. The light reflected by the mixture is sensed by a
remote photosensitive diode. The sensed light signal is
thereafter filtered and rectified to obtain a signal
Appeal No. 96-3615
Application 08/237,567
-7-
proportional to the intensity of the reflected light. The
examiner has implicitly found, and appellant does not dispute,
that the measuring means of Alonso constitutes a spectroscopic
measuring means.
Independent claim 31 calls for the container of the
mixing means to have an aperture, and a pellucid sealing means
for sealing said aperture. Independent claim 27 contains
similar language. In rejecting these claims as being
anticipated by Alonso, the examiner has taken the position
that the glass plate at the end of the probe in Figure 2 of
Alonso meets this limitation. We agree with appellant,
however, that the corresponding aperture in the experimental
set-up of Alonso is the aperture in the right-hand end of the
mixer barrel formed by the cylindrical shaft, and that the
glass plate at the end of the probe clearly does not seal this
aperture. Accordingly, we will not sustain the standing § 102
rejection of independent claims 31 and 27, or claim 4 which
depends from claim 31.
Independent method claim 25 includes the step of
detecting on-line the spectroscopic characteristics of the
mixture during the mixing process, wherein on-line detecting
Appeal No. 96-3615
Application 08/237,567
-8-
“is synchronized with the detecting of the rotational position
of said container by means of a means for detecting rotational
position.” The examiner has taken the position (answer, page
12) that this step is inherent and/or essential in Alonso.
The examiner’s position is not reasonable in that he has
provided no evidence or convincing scientific reasoning in
support thereof, and none is apparent to us. We therefore
will not sustain the standing § 102 rejection of claim 25.
The 35 U.S.C. § 103 Rejection based on Alonso and Fan or
Fischer
(rejections(c) and (d))
Claims 5-8 depend either directly or indirectly from
claim 31 and therefore require, through their dependency, that
the container have an aperture, and that the pellucid sealing
means seal said aperture. Fan is relied upon by the examiner
for its teaching of a V-blender. Fischer is relied upon in a
simpler capacity. While the secondary references indeed
disclose V-blenders, neither of them contain any teaching
which makes up for the deficiency of Alonso with respect to
the aperture and pellucid sealing means limitation discussed
above. Therefore, the standing § 103 rejections of claims 5-8
Appeal No. 96-3615
Application 08/237,567
See the paragraph spanning pages 23 and 24 of the7
brief.
See page 3 of the answer.8
-9-
based on Alonso and either Fan or Fischer cannot be sustained.
Claims 13-15 depend from canceled claim 12. For this
reason, their scope is indeterminate. While we might
speculate, as urged by appellant and as apparently done by7
the examiner , on precisely what subject matter is covered by8
claims 13-15, we are reluctant to do so in light of the
guidance in such matters provided by a predecessor of our
court of review. In re Steele, 305 F.2d 859, 862, 134 USPQ
292, 295 (CCPA 1962) (“Our analysis of the claims indicates
that considerable . . . assumptions as to the scope of such
claims were made by the examiner and the board. We do not
think a rejection under 35 U.S.C. 103 should be based on such
speculation and assumption.”); In re Wilson, 424 F.2d 1382,
1385, 165 USPQ 494, 496 (CCPA 1970) (“If no reasonably
definite meaning can be ascribed to certain terms of the
claim, the subject matter does not become obvious - the claim
becomes indefinite.”). As a result, we are constrained to
reverse the examiner’s rejections of claims 13-15 under 35
Appeal No. 96-3615
Application 08/237,567
-10-
U.S.C. § 103. We add that this reversal is not based on the
merits of the examiner’s rejections. We take no position as
to the pertinence of the applied prior art to the specifics of
these claims.
Independent claim 23 requires, inter alia, a brace
attached to the support for the container and a means for
detecting rotational position attached to said brace.
Independent claim 29 contains similar language. This feature
is not disclosed or suggested by the combined teachings of
Alonso and Fan, or the combined teachings of Alonso and
Fischer. It follows that we cannot sustain the standing § 103
rejections of these claims, or claim 30 which depends from
claim 29, based on Alonso and either Fan or Fischer.
Claim 24 is directed to an apparatus comprising a V-
blender having an aperture, an arbor having a tunnel
therethrough sealing said aperture, means for rotating the V-
blender about said arbor, and detection means including a
spectroscopic means for detecting on-line the homogeneity of
the mixture in the V-blender. The detection means includes
means for conducting radiation to and from the mixture, with
said means for conducting being removably inserted in the
Appeal No. 96-3615
Application 08/237,567
-11-
tunnel of the arbor.
In rejecting this claim, the examiner asserts that Alonso
discloses everything except that the blender is not a V-
blender. The examiner considers that it would have been
obvious to provide a V-blender in Alonso in view of Fan or
Fischer “since the ‘v’ shaped container is well known and used
in the art of mixing among many other types of containers as
taught by Fan [or Fischer]” (answer, pages 5-6). Implicit in
the rejections is the examiner’s position that the modified
Alonso apparatus would correspond to the claimed subject
matter in all respects.
From our perspective, the examiner’s foundation position
that it would have been obvious to provide a V-blender in
Alonso in view of Fan or Fischer is questionable at the outset
for at least two reasons. First, it is not clear that the
multiple probes of Alonso, which appear to be continuously
submerged in the powder mixture, would function properly in a
V-blender, where they would most likely not be continuously
submerged in the mixture. Second, the examiner has not
advanced any persuasive argument as to whether a V-blender,
Appeal No. 96-3615
Application 08/237,567
-12-
wherein mixing takes place primarily by diffusion (Fan, Table
1), would be a viable alternative for achieving Alonso’s
“ordered mixing” (i.e., coating a coarse granular material
with a fine cohesive powder), where the mechanism for
intermixing the coarse and fine materials is by transferring
fine particles from one coated particle to another by
“collision, friction and shearing” (Alonso, page 137, column
1).
In any event, even if we were to agree with the examiner
that it would have been obvious as a general proposition to
provide a V-blender in Alonso in view of Fan or Fischer, it is
questionable that the subject matter of claim 24 would result.
Alonso states that
actually the dye is not uniformly distributed in the
coated powder; rather a few particles are likely to
be highly coated while a few others are just
starting to be coated. For the time being it is not
possible to measure this distribution and it will be
assumed that most of the particles are coated to the
same extent so that only the mean value of the
distribution will be considered hereafter. [page
137, column 1; emphasis added]
Given this disclosure, it is debatable whether the
photosensitive diodes of Alonso are capable of functioning to
Appeal No. 96-3615
Application 08/237,567
“[H]omogeneity of a pharmaceutical composition refer[s]9
to the distribution of the active drug in the pharmaceutical
composition” (specification of the present application, page
1; emphasis added).
-13-
detect on-line the homogeneity of a mixture, as called for[9]
in the function portion of the means-plus-function limitation
of paragraph (b) of claim 24. Also, it is not seen where the
combined teachings of Alonso and either Fan or Fischer teach
an arbor with a tunnel sealing the aperture of the blender,
with the conduction means being removably inserted in the
tunnel of the arbor, as now claimed. In this regard, we note
that the corresponding aperture in the right hand side of the
barrel of Alonso is neither disclosed as being sealed, nor
required to be sealed since the level of the powder mixture in
the barrel is below the level of the aperture.
In light of the foregoing, the standing § 103 rejections
of claim 24, and claim 17 which depends therefrom, are not
sustainable.
The § 103 Rejection based on Westhof and Alonso
(rejection (e))
Westhof pertains to an apparatus for monitoring the
progress of mixing concrete by a TV camera. The ingredients
Appeal No. 96-3615
Application 08/237,567
-14-
for the concrete are introduced into a mixing chamber and the
mixing process is continuously observed by high resolution TV
camera 13 through window 15 in the mixing chamber. As stated
by Westhof, “[b]y watching the monitor while the mixture is
made, the actual recipe can be qualitatively compared with the
set values” (translation, page 8). In this way, “the mixing
supervisor [can] be confident of maintaining the required
quality standards and hence recognize possible problems before
delivery to the work site” (translation, page 9).
Claim 26 is directed to a method of homogeneously mixing
compositions of matter and detecting on-line the homogeneity
of the mixture which includes the step detecting on-line the
homogeneity and potency of the mixture with spectroscopic
means. Apparatus claim 28 is similarly limited in the sense
that it requires a spectroscopic means for detecting on-line
the homogeneity of the mixture.
In rejecting these claims, the examiner has taken the
position that Westhof discloses everything “except is vague as
to measuring/using a spectroscopic means.” The examiner has
taken the position, however, that it would have been obvious
to one of ordinary skill in the art to modify Westhof to
Appeal No. 96-3615
Application 08/237,567
-15-
incorporate a spectroscopic measuring means therein in view of
Alonso because “measuring spectroscopically the material being
mixed allows for a more effective accurate result” (answer,
page 6).
We fail to perceive any teaching, suggestion, or
incentive in either of the applied references which would have
led one of ordinary skill in the art to modify Westhof to
include spectroscopic measuring means as proposed by the
examiner. There is no indication in Westhof of any particular
problem associated with the use of a TV camera for monitoring
the mixing process. Further, it is not apparent why using a
spectroscopic means like that of Alonso to monitor the
progress of Westhof’s process would allow for more accurate
results, notwithstanding the examiner’s statement to the
contrary. In this respect, the examiner’s position is
speculative. Finally, there is no indication in either of the
references that a measuring means of the type disclosed by
Alonso, which appears to be continuously submerged in the
mixture, would be capable of effectively monitoring a process
like that of Westhof. In this regard, the differences in
structure and manner of operation of the remote camera
Appeal No. 96-3615
Application 08/237,567
-16-
detecting means of Westhof and submerged probes and
photosensitive diodes of Alonso raise significant questions as
to the feasibility of using a detection means of the sort
disclosed by Alonso in Westhof. In short, the disparate
teachings of the applied references lead us to conclude that
the proposed modification is based on the use of impermissible
hindsight rather than on that which is fairly suggested by the
references.
It follows that the standing § 103 rejection of claims 26
and 28 based on Westhof and Alonso cannot be sustained.
New Rejection under 37 CFR § 1.196(b)
Pursuant to our authority under 37 CFR § 1.196(b), we
enter the following new rejection.
Claims 13-15 are rejected under 35 U.S.C. § 112, second
paragraph, for failing to particularly point out and
distinctly claim the subject matter sought to be patented
because they each depend, either directly or indirectly, from
a canceled claim.
Summary
Appeal No. 96-3615
Application 08/237,567
-17-
Each of the standing rejections is reversed. Our
reversal of the standing rejections of claims 13-15 is not
based on the merits of the examiner’s rejections. We take no
position as to the pertinence of the applied prior art to the
specifics of these claims.
A new rejection of claims 13-15 pursuant to 37 CFR
§ 1.196(b) has been made.
The decision of the examiner is reversed.
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR
§ 1.196(b) provides that, “A new ground of rejection shall not
be considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings
Appeal No. 96-3615
Application 08/237,567
-18-
(§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED; 37 CFR § 1.196(b)
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
LAWRENCE J. STAAB ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 96-3615
Application 08/237,567
-19-
Gregg C. Benson
Pfizer Inc.
Eastern Point Road
Groton, CT 06340