10725127 (B.P.A.I. May. 14, 2012)

Ex Parte Bussey et al

Board of Patent Appeals and InterferencesMay 14, 2012

10725127 (B.P.A.I. May. 14, 2012)

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. 10/725,127 12/01/2003 Harry Bussey JR. 2659 7590 05/14/2012 Francis C. Hand, Esq. c/o Carella, Byrne, Bain, Gilfillan, Cecchi, Stewart & Olstein 6 Becker Farm Road Roseland, NJ 07068 EXAMINER CRAWFORD, GENE O ART UNIT PAPER NUMBER 3651 MAIL DATE DELIVERY MODE 05/14/2012 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 1 ____________________ 2 3 BEFORE THE BOARD OF PATENT APPEALS 4 AND INTERFERENCES 5 ____________________ 6 7 Ex parte HARRY BUSSEY JR. and BUDDY HARRY BUSSEY III 8 ____________________ 9 10 Appeal 2009-014039 11 Application 10/725,127 12 Technology Center 3600 13 ____________________ 14 15 16 Before: LINDA E. HORNER, JAMES P. CALVE, and BRETT C. 17 MARTIN, Administrative Patent Judges. 18 19 MARTIN, Administrative Patent Judge. 20 21 22 DECISION ON APPEAL 23 24 Appeal 2009-014039 Application 10/725,127 2 STATEMENT OF CASE 1 Appellants appeal under 35 U.S.C. § 134 from the Examiner’s 2 decision rejecting claims 1-8. The Examiner rejected claims 1 and 2 under 3 35 U.S.C. § 102(b) as anticipated by Harrison (US 5,744,186, iss. Apr. 28, 4 1998). The Examiner further rejected under 35 U.S.C. § 103(a): claims 3 5 and 7 as unpatentable over Harrison and Hook (US 3,842,971, iss. Oct. 22, 6 1974); claim 4 as unpatentable over Harrison and Whiteman (US 4,328,913, 7 iss. May 11, 1982); claims 5 and 6 as unpatentable over Harrison, Trotter 8 (US 3,702,128, iss. Nov. 7, 1972), and Martin (US 3,041,185, iss. Jun. 26, 9 1962); and claim 8 as unpatentable over Harrison, Trotter, Martin and 10 Whiteman. We have jurisdiction under 35 U.S.C. § 6(b). Because we find a 11 defect in the findings related to the Harrison reference that is dispositive to 12 all rejected claims, we REVERSE. 13 14 THE INVENTION 15 Appellants’ claimed invention “relates to a steam expander for a loose 16 fill material.” Spec. 1, l. 2. Claim 1, reproduced below is representative of 17 the subject matter on appeal. 18 1. A steam expander comprising 19 at least one hopper for supplying expandable loose fill 20 material; 21 at least one housing having an inlet in communication 22 with said hopper to receive a flow of loose fill material 23 therefrom and an outlet for discharging the received loose 24 fill material therefrom; 25 a screw rotatably mounted in said housing for conveying 26 loose fill material received through said inlet towards said 27 outlet; 28 Appeal 2009-014039 Application 10/725,127 3 a steam chamber in communication with said outlet of 1 said housing to receive loose fill material therefrom; and 2 a paddle frame rotatably mounted in said chamber to 3 rotate about a central axis, said paddle frame having at least 4 one scoop mounted on a periphery thereof and extending 5 longitudinally thereof in spaced parallel relation to said 6 central axis, said scoop being disposed in spaced relation to 7 said outlet of said housing for scooping loose fill material 8 delivered into said steam chamber peripherally of said steam 9 chamber. 10 11 12 ISSUE 13 As noted above, although Appellants raise multiple issues on appeal, 14 we deal with only one issue we find dispositive: Does Harrison teach 15 Appellants’ functional aspect(s) relating to “loose fill material” as claimed? 16 17 ANALYSIS 18 Rejection of claims 1 and 2 as anticipated by Harrison 19 Throughout claim 1 (from which claim 2 depends), Appellants use 20 functional language to define various aspects of the invention, namely with 21 respect to elements for processing “loose fill material.” In order to support a 22 proper anticipation rejection, the Examiner must show that Harrison teaches 23 the various claimed functions relating to “loose fill material” or that, inter 24 alia, Harrison’s device is capable of so doing, 25 In this instance, the Examiner has found only that Harrison discloses 26 loose fill material in the form of mash 1.1 Ans. 3-4. As Appellants point 27 1 Tellingly, the Examiner initially refers to the “loose fill material” in relation to Harrison’s hopper 2, but later switches to referring only to Appeal 2009-014039 Application 10/725,127 4 out (App. Br. 5-7), however, Harrison teaches that the mash advances 1 through variable screw feeder 3, which serves to compress the mash against 2 seal member 4 at seal area 5. Harrison Fig. 1 and col. 4:46-53. 3 Harrison’s Figure 1 is reproduced below: 4 5 Harrison’s Figure 1 depicts an elevational view showing the 6 apparatus of Harrison. 7 Accordingly, the mash in Harrison is compressed into a plug against seal 8 member 4 before moving on for further processing throughout the system. 9 Assuming the mash in Harrison can be considered a “loose fill material” 10 upon entry to the system via the hopper, once compressed, the plug of mash 11 is no longer a loose fill material as claimed, so the functional limitations 12 “material” in relation to other instances of the “loose fill material” functional recitation. Appeal 2009-014039 Application 10/725,127 5 throughout the entirety of claim 1 are not met by Harrison’s teaching of 1 processing mash. As one example, the steam chamber does not receive 2 loose fill material from the housing outlet, it receives a compressed mash 3 plug. 4 Had the Examiner believed that the device disclosed in Harrison met 5 the functional limitations of claim 1, the Examiner needed to make a finding 6 (and have a sound basis for doing so) that the elements of Harrison that 7 correspond to the at least one hopper, at least one housing, screw, steam 8 chamber, and paddle frame are capable of performing the respective 9 functional limitations of supplying, receiving discharging, conveying, and 10 receiving expandable loose file material as called for in claim 1. The 11 Examiner, however, has made no such finding that the device in Harrison is 12 capable of performing the various recited functions on loose fill material as 13 claimed, so we do not and cannot make any determination as to the propriety 14 of such a finding at this time. See In re Schreiber, 128 F.3d 1473, 1478 15 (Fed. Cir. 1997) (where the examiner had a sound basis for finding that the 16 prior art was capable of meeting the claimed functional limitations, the 17 burden shifted to Schreiber to show that the prior art structure did not 18 inherently possess the functionally defined limitations of the claimed 19 apparatus). Accordingly, the rejection of claim 1 as anticipated by Harrison 20 suffers from an erroneous finding of fact and cannot be sustained. 21 The remaining rejections in this case rely upon this same erroneous 22 finding with respect to Harrison’s teachings. The rejections with respect to 23 Appeal 2009-014039 Application 10/725,127 6 claims 2-8, therefore, fail for the same reason.2 Further, none of the 1 remaining rejections or prior art references cures the defect in the 2 Examiner’s erroneous finding in relation to the “loose fill material” 3 functional limitations of independent claims 1 and 5. 4 5 CONCLUSION 6 On the record before us, Appellants have shown that the Examiner 7 erred in determining that Harrison’s processing of mash teaches the pertinent 8 functional limitations relating to a “loose fill material” as claimed 9 throughout the entirety of claim 1. Because none of the other rejections or 10 references cited by the Examiner cures this defective finding, we further 11 reverse the rejections of claims 2-8. 12 13 DECISION 14 We REVERSE the Examiner’s decision to reject claims 1-8. 15 16 REVERSED 17 18 mls 19 2 Independent claim 5 also uses functional language to define various aspects of the invention, namely with respect to elements for processing “loose fill material.”