Ex parte Boeye

Board of Patent Appeals and Interferences

Oct 18, 2001

08906586 (B.P.A.I. Oct. 18, 2001)

Two amendments subsequent to the final rejection have1
been submitted. The first (Paper No. 10), filed August 30,
1999, sought to cancel non-elected claims 9-24. The second
(Paper No. 15), filed November 11, 1999, sought to amend claim
1 by adding the word “uniformly” in line 5 thereof. Both
The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ISABELLE BOEYE
_____________
Appeal No. 2000-1653
Application No. 08/906,586
______________
ON BRIEF
_______________
Before COHEN, STAAB, and McQUADE, Administrative Patent
Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection
of claims 1-8, all the claims currently pending in the
application.1
Appeal No. 2000-1653
Application No. 08/906,586
amendments have been entered. See Paper Nos. 11 and 16.
2
The claims on appeal are drawn to an in-line mixing
apparatus for the substantially continuous preparation of
liquid mixtures, and are reproduced in the appendix to
appellant’s brief.
The references applied in the final rejection are:
Johnston 5,165,440 Nov. 24,
1992
Arvidson et al. (Arvidson) 5,494,112 Feb. 27,
1996
Claims 1-8 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Johnston in view of Arvidson.
The Examiner’s Position
With respect to claim 1, the sole independent claim on
appeal, the examiner considers that Johnston discloses the
claimed invention generally as claimed, including a first
tubular chamber 2 and a second tubular chamber 18, except for
a flow regulator comprising an adjustable output pump and flow
meter for regulating the amount of component material
introduced in the first chamber via inlet 14. The examiner
takes the position, however, that it would have been obvious
to provide an adjustable output pump and flow meter in
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Application No. 08/906,586
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Johnston upstream of inlet 14 in view of Arvidson’s showing of
flow meters 64 and 124 and pumps 62 and 118.
Among the limitations of claim 1 argued by appellant as
patentably distinguishing over the combined teachings of
Johnston and Arvidson is the requirement of claim 1 for “means
within said first chamber for uniformly mixing materials
introduced therein with a carrier fluid flowing therethrough.”
The examiner’s views with respect to this limitation are found
on pages 3-4 of the answer and read as follows:
Applicant’s argument is that Johnston does not
contain uniform mixing means in the first stage.
However, a review of applicant’s specification (page
5, lines 14-16) shows that applicant’s first stage
device does not provide perfectly uniform mixing
either. The second stage is used “to increase
mixing of the components in the first stage”. It
could technically be argued that depending on how
strictly the word “uniformly” is defined that the
amendment after-final (which merely added the word
“uniformly”) should not have been entered because it
does not describe applicant’s device. However, a
view that “uniformly” means mostly, substantially,
or desirably uniform rather than absolutely
perfectly uniform was the view taken by the examiner
in deciding to enter the amendment. In the same
manner that applicant’s device uses a second stage
to improve mixing, Johnston uses a second stage to
improve the mixing of the first stage (column 4,
lines 16-28). Therefore, it should be clear that
“uniformly” cannot reasonably be applied to
applicant’s device any more than to Johnston.
Appeal No. 2000-1653
Application No. 08/906,586
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Discussion
In proceedings before it, the PTO will give words in a
claim their ordinary and accustomed meaning absent an intent
in the specification to use them in a more limited or
different sense. See In re Barr, 444 F.2d 588, 597, 170 USPQ
330, 339 (CCPA 1971); Envirotech Corp. v. Al George, Inc., 730
F.2d 753, 759, 221 USPQ 473, 477 (Fed. Cir. 1984), and Nike,
Inc. v. Wolverine World Wide, 43 F.3d 644, 646-47, 33 USPQ2d
1038, 1039-40 (Fed. Cir. 1994). Here, it appears that the
only appearance of the word “uniformly” in this case is in
claim 1 in the limitation “means within said first chamber for
uniformly mixing materials introduced therein with a carrier
fluid flowing therethrough” (emphasis added), the word
“uniformly” having been introduced into the claim upon entry
of the second amendment (Paper No. 15) subsequent to the final
rejection. Under these circumstances, we presume that the
meaning of the adverb “uniformly” corresponds to the ordinary
and accustomed definition of the adjective “uniform,” e.g.,
“1.a. Always the same: UNVARYING . . . b. Being without
Appeal No. 2000-1653
Application No. 08/906,586
Webster’s II New Riverside University Dictionary,2
copyright © 1984 by Houghton Mifflin Co.
5
variation or fluctuation: CONSISTENT.”2
With reference to Figure 1 of Johnston, element 2, which
is the element the examiner equates to the claimed “first
tubular chamber,” comprises a polymer filament or thread
producing apparatus having an inner pipe 4 perforated with a
number of holes 6 and wrapped with a very fine wire mesh, and
an outer pipe 12 covering the perforated pipe to provide an
annulus therebetween (column 3, lines 38-45). An inlet 8 is
provided at the end of the apparatus for the introduction of
solvent and an inlet 14 is provided in the sidewall of the
outer pipe for the introduction of viscous polymer (column 3,
lines 45-47). Johnston’s process is carried out by
introducing the solvent through inlet 8 into the inner pipe 4.
At the same time, a high molecular weight polymer is pumped
into the annulus between pipes 12 and 4 through inlet 14. The
polymer pumped into the annulus is forced by high pressure
differential through the fine mesh in openings of the
perforated inner pipe and into the flowing stream of solvent
(column 3, line 62, through column 4, line 6). Johnston
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6
describes the results as follows:
The polymer forced through the mesh forms fine
filaments or threads which are also pulled by the
flowing solvent. Because of the number of
perforations and size of the mesh, thousands of fine
threads of polymer enter the flowing solvent. The
solvent passes through inner pipe 42 at a sufficient
flow rate that the threads of polymer are wrapped
around each other or woven so that the mixture of
polymer and solvent leaving apparatus 40 is a woven
matrix of fine polymer threads in the solvent.
In the first stage of the process as described,
there may not be totally efficient formation of fine
polymer threads. Thus, a small portion of the
polymer may not form a thread as it passes through
the fine wire mesh, either because it is not
sufficiently wetted by the solvent or is not pulled
by the solvent flow or because of other problems in
the flow mechanism. These portions of polymer which
do not thread will form small sized balls of
polymer. The second stage of the process which is
carried out in the shear strain
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apparatus [18] provides a means to help pull or elongate
these balls of polymer to reduce their number and to also
help continue the mixing of the polymer threads and the
solvent. [Col. 4, lines 6-28, emphasis added.]
In that Johnston’s first stage apparatus 2 may not be
totally efficient in forming fine threads of polymer, such
that polymer in the form of small balls also may be present in
the flow of fine threads and solvent that exits the first
stage apparatus, the examiner’s determination that Johnston’s
first stage apparatus 2 includes means that correspond to the
claimed means for “uniformly mixing” material is not well
taken, especially when the word “uniformly” is given its
ordinary and accustomed meaning, as must be done here in the
absence of any indication in appellant’s specification that
the term “uniformly” is being used in a more limited or
different sense. Simply put, there is no evidence to support
the examiner’s contention that Johnston’s first stage
apparatus includes means which meet this claim limitation.
Hence, even if the Johnston apparatus is modified in the
manner proposed by the examiner, the claimed subject matter
would not result. Accordingly, the examiner’s
§ 103 rejection of the claim 1 is not well taken.
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8
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In light of the foregoing, the standing § 103 rejection
of claim 1, as well as claims 2-8 that depend therefrom,
cannot be sustained.
Remand to the Examiner
Pursuant to 37 CFR § 1.196(a), this case is remanded to
the examiner for consideration of the following matters.
A review of appellant’s disclosure indicates that carrier
fluid and size components are “combined” and “mixed together”
within the first mixing stage device 20 to ensure “good
mixing” (page 5, lines 1-10). The second stage hydrolyzer 40
may additionally be provided with conventional mixing elements
“to increase mixing” of the components “blended” in the first
stage (page 5, lines 11-16). A second mixing device, or third
stage, 60 may also be provided downstream of the second stage
hydrolyzer “to provide additional blending” of the components
(page 5, 20-23). Additional descriptions of the “mixing” and
“blending” functions of the first, second, and third stages
are found on pages 6-9 of the specification.
The test for determining compliance with the written
description requirement found in the first paragraph of 35
U.S.C. § 112, first paragraph, is whether the disclosure of
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Application No. 08/906,586
10
the application as originally filed reasonably conveys to the
artisan that the inventor had possession at that time of the
later claimed subject matter, rather than the presence or
absence of literal support in the specification for the claim
language. In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089,
1096 (Fed. Cir. 1983). Claim limitations which are urged to
be inherent in the disclosure must be shown as having clear
support from the necessary and only reasonable construction to
be given the disclosure by one skilled in the art. Kennecott
Corp. v. Kyocera Int'l, Inc., 835 F.2d 1419, 1423, 5 USPQ2d
1194, 1198 (Fed. Cir. 1987), cert. denied, 486 U.S. 1008
(1988).
This case is remanded to the examiner for consideration
of whether appellant’s original disclosure provides
descriptive support within the meaning of the first paragraph
of 35 U.S.C.
§ 112 for the requirement of claim 1, added by amendment, that
the first stage chamber has means within it for uniformly
mixing materials introduced therein with a carrier fluid
flowing therethrough.
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Application No. 08/906,586
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Summary
The rejection of claims 1-8 under 35 U.S.C. § 103 as
being unpatentable over Johnston in view of Arvidson is
reversed.
Pursuant to 37 CFR § 1.196(a), this case is remanded to
the examiner for consideration of the matter noted above.
The decision of the examiner is reversed.
This application, by virtue of its “special” status
requires immediate action. See Manual of Patent Examining
Procedure (MPEP) § 708.01 (7 Ed., Rev. 1, Feb. 2000). It isth
important that the Board be informed promptly of any action
affecting the appeal in this case.
REVERSED and REMANDED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
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Application No. 08/906,586
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JOHN P. McQUADE )
Administrative Patent Judge )
LJS:hh
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