Ex Parte Brushwyler et alDownload PDFPatent Trial and Appeal BoardSep 9, 201312334965 (P.T.A.B. Sep. 9, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 12/334,965 12/15/2008 Kevin R. Brushwyler LEC001 P454A 9196 277 7590 09/09/2013 PRICE HENEVELD LLP 695 KENMOOR SE P O BOX 2567 GRAND RAPIDS, MI 49501 EXAMINER JAGAN, MIRELLYS ART UNIT PAPER NUMBER 2856 MAIL DATE DELIVERY MODE 09/09/2013 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 KEVIN R. BRUSHWYLER, JOHN T. HOSS, and OCTAVIO R. LATINO ____________ Appeal 2011-004860 Application 12/334,965 Technology Center 2800 ____________ Before JAMES C. HOUSEL, DONNA M. PRAISS, and KRISTINA M. KALAN, Administrative Patent Judges. KALAN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-004860 Application 12/334,965 2 The named inventors (hereinafter “Appellants”)1 appeal under 35 U.S.C. § 134 from the Examiner’s refusal to allow claims 1-10, all of the claims pending in the above-identified application. We have jurisdiction pursuant to 35 U.S.C. § 6(b). We affirm-in-part. STATEMENT OF THE CASE Appellants’ invention relates to a calorimeter including a combustion vessel and an integrated isothermal fluid reservoir. See generally Spec. [0002]. Claims 1 and 8, the two independent claims on appeal, are reproduced below with certain disputed limitations emphasized: 1. A calorimeter system including an isothermal reservoir comprising: a calorimeter combustion vessel; an outer jacket having a wall, a fluid inlet and a fluid outlet; a heater and a pump associated with said jacket for circulating fluid from said fluid outlet through said heater to said inlet to provide a constant temperature of fluid within said jacket; a thermally insulated bucket positioned within said jacket and having an internal volume for receiving said calorimeter combustion vessel, said bucket having a height less than the height of said jacket such that fluid in said jacket fills said bucket; and a movable cover selectively coupled to said calorimeter combustion vessel and including a seal engaging said bucket for sealing said bucket from said jacket during combustion of a sample within said combustion vessel. 8. A calorimeter including an isothermal reservoir comprising: a combustion vessel; a fluid jacket having an outer wall; a thermally insulated bucket positioned within said jacket and having a height less than that of said jacket and an internal volume for 1 Appellants identify the real party in interest as Leco Corporation. See Appeal Brief filed September 8, 2010 (“App. Br.”) at 2. Appeal 2011-004860 Application 12/334,965 3 receiving said combustion vessel, said bucket including a baffle into which said combustion vessel is positioned during an analysis; an impeller rotatably positioned at a lower end of said baffle for circulating fluid around the exterior of said combustion vessel during an analysis, said impeller coupled to permanent magnets positioned within said bucket; and a magnetic stirrer including permanent magnets positioned within said jacket external to said bucket for actuating said impeller through the magnetic coupling between the respective permanent magnets. App. Br. 15, 16-17 (Claims App’x)). Appellants appeal the following rejections: 1. Claims 1-7 on the grounds of nonstatutory obviousness-type double patenting over claims 1-7 of U.S. Patent No. 7,488,106; 2. Claim 8 on the grounds of nonstatutory obviousness-type double patenting over claim 10 of U.S. Patent No. 7,481,575; 3. Claims 9 and 10 on the grounds of nonstatutory obviousness-type double patenting over claim 10 of U.S. Patent No. 7,481,575 in view of Turner;2 4. Claims 1 and 3 under 35 U.S.C. § 102(b) as anticipated by Bonnard;3 5. Claims 2 and 5-7 under 35 U.S.C. § 103(a) as unpatentable over Bonnard in view of Turner;4 2 U.S. Patent No. 7,288,229, issued October 30, 2007. 3 U.S. Patent No. 4,925,315, issued May 15, 1990. 4 Appellants identify claims 2 and 5-10 as being rejected under 35 U.S.C. § 103(a) as unpatentable over Bonnard in view of Turner (App. Br. 6), however, that is not the rejection as stated in the Final Office Action mailed March 11, 2010. Appeal 2011-004860 Application 12/334,965 4 6. Claims 8-10 under 35 U.S.C. § 103(a) as unpatentable over Pinhack5 in view of Turner and Swift.6 Examiner’s Answer mailed October 29, 2010 (“Ans.”) 4-11. Terminal Disclaimer During prosecution of the application, Appellants filed a Terminal Disclaimer signed on November 23, 2009 that was not entered by the Examiner. The Terminal Disclaimer disclaimed the term of any patent which issues from the present application beyond the life of the first to expire of U.S. Patent Nos. 7,488,106 and 7,481,575. Appellants assert that the Terminal Disclaimer should have been accepted. App. Br. 6-7. Under 35 U.S.C. § 134, we review rejections of claims for propriety. The propriety of the obviousness-type double patenting rejections in this case is not contested. App. Br. 6-7. The question of whether the Examiner impermissibly refused acceptance of the Terminal Disclaimer is a petitionable matter pursuant to 37 C.F.R. § 1.181 rather than an appealable matter. See In re Hengehold, 440 F.2d 1395 (CCPA 1971); In re Deters, 515 F.2d 1152, 1156 (CCPA 1975). Therefore, the Examiner’s rejection of claims 1-10 on the basis of nonstatutory obviousness-type double patenting is dismissed. 5 U.S. Patent No. 6,627,451, issued September 30, 2003. 6 U.S. Patent No. 4,670,404, issued June 2, 1987. Appeal 2011-004860 Application 12/334,965 5 Section 102, Claims 1 and 3 Appellants contend that the Examiner has not established that the structural elements of the Bonnard reference support the Section 102 rejection. App. Br. 7; cf. Ans. 6-7. Appellants argue claims 1 and 3 together. App. Br. 7-10. Therefore, we confine our discussion to claim 1, which we select as representative. Claim 3 stands or falls with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii). “[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “[A]nticipation of a claim under § 102 can be found only if the prior art reference discloses every element of the claim . . . .” In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir. 1984)). “The identical invention must be shown in as complete detail as is contained in the patent claim.” Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989). In order to anticipate under § 102, the prior art reference must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements arranged as in the claim. Net MoneyIn, Inc. v. Verisign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). Appellants argue that Examiner mischaracterizes the structural elements of the Bonnard reference. Specifically, Appellants argue that (1) Bonnard’s element 44, which the Examiner interprets as a combustion vessel, is actually a crucible; (2) Bonnard has no thermally insulated bucket or arrangement of parts as in Appellants’ claim 1; (3) considering the pressure vessel 32 of Bonnard to be a thermally insulated bucket is illogical, Appeal 2011-004860 Application 12/334,965 6 as the water jacket 36 of Bonnard is used to transfer heat from pressure vessel 32; (4) Appellants’ thermally insulated bucket has a height less than the surrounding jacket so that water can rapidly fill the bucket, but fluid in the Bonnard jacket 36 could not fill the pressure vessel 32; and (5) Bonnard does not have a movable cover, such as Appellants’ cover 30, which isolates its water jacket 36 from the surrounding container 16 or tank 10. App. Br. 9-10. Examiner responds that (1) element 44 of Bonnard is indeed a vessel in which combustion occurs; (2) elements 10/36 of Bonnard are the claimed outer jacket; (3) vessel 32 is considered to be thermally insulated; (4) Bonnard’s thermally insulated bucket 32 is positioned within outer jacket 10/36 with an internal volume for receiving vessel 44, vessel 32 having a height less than the height of said outer jacket 10/36 such that fluid in said jacket can fill said vessel 32; and (5) element 34 of Bonnard is a moveable cap that is selectively coupled to said vessel 44 (via 40) and includes a frictional seal engaging bucket 32 for sealing bucket 32 from jacket 10/36. Ans. 12-14. Applying proper claim construction to claim 1, we agree with Appellants that the Examiner erred in finding Bonnard discloses the bucket as claimed. Claim 1 specifies that Appellants’ thermally insulated bucket has a height less than the height of the jacket such that the fluid in said jacket fills said bucket.7 Thus, the height of the thermally insulated bucket is relative to the jacket in such a manner that it causes the fluid in the jacket to 7 This is further illustrated in Appellants’ Fig. 3, such that when the bucket 60 is uncovered, the water level 57 will rapidly fill the bucket 60 with water from the surrounding jacket 70. App. Br. 3, 8. Appeal 2011-004860 Application 12/334,965 7 fill the bucket. The height of the thermally insulated bucket is not merely less than the height of the jacket as if the two were situated side by side on a surface as the Examiner interprets claim 1. See Ans. 6. Even under a broadest reasonable interpretation, the claim language “such that the fluid in said jacket fills said bucket” cannot be ignored since it provides a frame of reference for describing the relative height of the thermally insulated bucket. “A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.” Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005). Examiner argues that jacket 10/36 is a combination of Bonnard’s tank 10 and Bonnard’s water jacket 36. Tank 10 is shown in Bonnard, Fig. 1. Water jacket 36, also shown in Fig. 1, is defined as a “volume between the housing 28 and the exterior of the pressure vessel 32.” Bonnard, Col. 2, lines 25-26. Reproduced below is Fig. 1 from Bonnard: Appeal 2011-004860 Application 12/334,965 8 Fig. 1 is a sectioned side view of an apparatus according to the invention of Bonnard in a stand-by mode. As illustrated in Fig. 1, tank 10 and water jacket 36 are two discrete elements within the apparatus of Bonnard, separated by a number of intervening elements, such as container 16, and housing 28, and unconnected by any physical structure apart from the path of fluid. Id. at Fig. 1. Tank 10 and water jacket 36 of Bonnard have differing heights and differing, variable fluid levels. Tank 10, as shown in Fig. 1, has a height less than the height of the alleged thermally insulated vessel 32. Bonnard also requires that tank 10 “has an overflow 84 which fixes the maximum level of the water in the tank.” Id. at Col. 3, lines 51-53. As shown in Fig. 3 of Bonnard, this maximum level of water in the tank is below the height of the thermally insulated bucket 32. Water jacket 36 has an internal volume that exceeds the “height” of pressure vessel 32.8 However, the water in water jacket 36 is part of a closed path. Bonnard, Col. 4, line 1. Fluid from tank 10 is pumped through a series of pipes into and out of water jacket 36, and then drained out of valve 80. Thus, there is no height denoted by the combination of tank 10 and water jacket 36 such that the fluid therein fills the bucket 32, as required by Appellants’ claim 1. Moreover, the structure of Bonnard is such that the fluid in jacket 10/36 would not fill said bucket 32. Bonnard discloses that: water is pumped from the tank (10) through the valves 24 and 22 along the pipe 66 and into the jacket 36 around the pressure vessel, and through the conduits 8 Appellants agree with Examiner’s finding that “Bonnard’s pressure vessel 32 is less than the height of jacket 36 of Bonnard.” App. Br. 10. Appeal 2011-004860 Application 12/334,965 9 40 and exits via the pipe 54, Col. 3, lines 37-41, in a closed path, Col. 3, line 60 – Col. 4, line 8. After the temperature of the water is monitored, stored and calculated to determine the calorific value of the sample, Col. 4, lines 5- 16,the drain valve 80 is opened and the hot water is drained from the jacket, Col. 4, lines 20-22. Thus the fluid from jacket 10/36 is isolated from the pressure vessel 36 so as to prevent the fluid in jacket 10/36 from filling the bucket 32 as required by claim 1. An anticipatory reference must show all of the limitations of the claims arranged or combined in the same way as recited in the claims, not merely in a particular order. Net MoneyIn, Inc., supra at 1370. On this record, we are constrained to reverse the rejection of claim 1 under 35 U.S.C. § 102(b) because Bonnard does not disclose a “bucket having a height less than the height of said jacket such that fluid in said jacket fills said bucket” as recited in the claim. Section 103, Claims 2 and 5-7 Claims 2 and 5-7 depend from claim 1. The Examiner rejected claims 2 and 5-7 over the combination of Bonnard with Turner, citing Bonnard as teaching all of the limitations of claims 2 and 5-7. Ans. 7. For the reasons explained supra, we find the Examiner erred in determining Bonnard discloses all of the limitations of claim 1 from which claims 2 and 5-7 depend. The Examiner does not provide any other prior art reference besides Bonnard for teaching the claimed bucket. Therefore, we reverse the Appeal 2011-004860 Application 12/334,965 10 rejection of claims 2 and 5-7 under Section 103 for failing to teach or suggest the bucket as claimed in claim 1 and required by claims 2 and 5-7.9 Section 103, Claims 8-10 Regarding claims 8-10, Appellants argue that the combination of Pinhack with Turner and Swift fails to suggest major structural components of the invention or any suggestion as to how to combine the teachings. App. Br. 12. Specifically, Appellants argue that the inner tank of Pinhack is not thermally insulated and “does not, as defined in claims 8-10, have a height less than its surrounding container.” Id. Appellants also argue Pinhack fails to show or suggest a baffle. Id. The Examiner correctly finds that Pinhack’s inner tank is thermally insulated, and has a height less than the height of the container. Ans. 15-16. The Examiner further responds that Pinhack is not relied upon for teaching a baffle. Id. at 16. Appellants rely on their previously made argument that Turner is not able to be combined with Bonnard, but do not specifically assert any inability to combine Turner with Pinhack. App. Br. 12. The Examiner finds that that the agitator system of Turner could be used to circulate (agitate) fluid in a vessel. Ans. 5. Appellants contend that the function of the baffle in Swift “is not to circulate fluid around a combustion vessel nor does it operate in connection with an impeller for circulating fluid around the exterior of a combustion 9 Claim 4 also depends from claim 1. Although the parties dispute whether Claim 4 was in fact rejected by the Examiner in the Final Action, see App. Br. 7 and Ans. 6, our reversal of the rejection of claims 1 and 3 renders this issue moot. Appeal 2011-004860 Application 12/334,965 11 vessel . . . .” App. Br. 12. The Examiner finds that Swift discloses that it is “desirable to use a baffle (124a) with a magnetic stirrer in order to create turbulent flow in a calorimeter fluid” and that it would have been obvious to modify the system of Pinhack and Turner “by adding a baffle to the bucket in order to increase turbulence in the fluid, as suggested by Swift.” Ans. 11. Finally, Appellants argue that there is no need in the references for a flexible coupling between the drive shaft and the stirrers since the drive motors are not mounted exterior to the jacket. App. Br. 13. The Examiner responds that the combination of Pinhack with Turner places the motor exterior to the jacket 6 and the impeller in the jacket 6 (Ans. 16) and that it would have been obvious to select a suitable material for the intended use of an apparatus (id. at 11). On the foregoing record, we find that the Examiner established a factual basis to support the legal conclusion of obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). Appellants have not directed us to any evidence in this record to establish that the Examiner’s rationale for combining the chemical mixer of Turner with the apparatus of Pinhack and the baffle of Swift is not reasonable. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007). Thus, considering Appellants’ arguments in the context of the totality of the record, we find that the preponderance of evidence weighs in favor of obviousness within the meaning of 35 U.S.C. § 103(a). Appeal 2011-004860 Application 12/334,965 12 CONCLUSION The Examiner’s refusal to enter a terminal disclaimer in the application is a petitionable matter, not an appealable matter. The Examiner reversibly erred in rejecting claims 1 and 3 under § 102, and claims 2 and 5- 7 under § 103. The Examiner did not err in rejecting claims 8-10 under § 103. DECISION The Examiner’s rejection of claims 1-10 for obviousness-type double patenting is dismissed because it is not properly before the Board on appeal. The Examiner’s decision rejecting claims 1-7 for obviousness is reversed. The Examiner’s decision rejecting claims 8-10 for obviousness is affirmed. 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-IN-PART bar Copy with citationCopy as parenthetical citation