Ex Parte Feichtinger et alDownload PDFPatent Trials and Appeals BoardMay 30, 201914351866 - (D) (P.T.A.B. May. 30, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/351,866 04/14/2014 20350 7590 06/03/2019 KILPATRICK TOWNSEND & STOCKTONLLP Mailstop: IP Docketing - 22 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 Klaus Feichtinger 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 80164-00SOOOUS-904446 1098 EXAMINER SHAFI, LEITH S ART UNIT PAPER NUMBER 1744 NOTIFICATION DATE DELIVERY MODE 06/03/2019 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): ipefiling@kilpatricktownsend.com KTSDocketing2@kilpatrick.foundationip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KLAUS FEICHTINGER and MANFRED HACKL Appeal2018-005965 Application 14/351,866 Technology Center 1700 Before CATHERINE Q. TIMM, JEFFREYR. SNAY, and DEBRA L. DENNETT, Administrative Patent Judges. DENNETT, Administrative Patent Judge. DECISION ON APPEAL 1 STATEMENT OF THE CASE Appellant2 appeals under 35 U.S.C. § 134(a) from a rejection of claims 2-16. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 In our Decision, we refer to the Specification filed April 14, 2014 ("Spec."); the Non-Final Office Action dated June 30, 2017 ("Non-Final Act."); the Appeal Brief filed December 27, 2017 ("App. Br."); the Examiner's Answer dated March 22, 2018 ("Ans."); and the Reply Brief filed May 22, 2018 ("Reply Br."). 2 Appellant is the Applicant, EREMA Engineering Recycling Maschinen und Anlagen Gesellschaft M.B.H., identified as the real party in interest. App. Br. 3. Appeal2018-005965 Application 14/3 51,866 The claims are directed to apparatuses for processing plastic material. Claim 16, reproduced below from the Claims Appendix of the Appeal Brief, illustrates the claimed subject matter: 16. An apparatus for treatment of plastic material, the apparatus comprising: a container configured to hold the plastic material for initial treatment, wherein the container comprises a sidewall having an outlet aperture configured to pass initially treated plastic material from the container; a mixing and/or comminution implement configured to rotate about an axis of rotation so as to initially treat the plastic material in the container by at least one of mixing, heating, and comminuting the plastic material; and a conveyor, compnsmg: a housing comprising an intake aperture configured to receive the initially treated plastic material from the output aperture of the container, and a screw in the housing, wherein the screw is configured to rotate within the housing to further treat the initially treated plastic material by at least one of plastifying and agglomerating the initially treated plastic material and to convey the initially treated plastic material away from the intake aperture in a first direction, wherein an imaginary continuation of a central longitudinal axis of the screw infinitely extending in a direction opposite the first direction, does not intersect the axis of rotation of the mixing and/ or comminution implement, wherein the screw is configured to rotate in a clockwise direction when viewed in the first direction, and wherein, when a leading edge of the mixing and/or comminution implement is nearest the outlet aperture of the container, a motion vector describing the motion of the portion 2 Appeal2018-005965 Application 14/3 51,866 of the leading edge nearest the outlet aperture has a vector component which has a direction opposite the direction of conveying of the conveyor. REFERENCES The Examiner relies on the following prior art in rejecting the claims on appeal: Bacher et al. US 6,719,454 Bl ("Bacher '454") Bacher et al. US 6,883,953 Bl ("Bacher '953") Bacher et al. US 7,309,224 B2 ("Bacher '224") Magni et al. EP 1 273 412 Al ("Magni") REJECTIONS Apr. 13, 2004 Apr. 26, 2005 Dec. 18, 2007 Jan. 8,2003 The Examiner maintains the following rejections3: Rejection 1. Claims 3-6, 10, 11, 13, 15, and 16 under 35 U.S.C. § I02(b)4 as anticipated by Magni. Non-Final Act. 3---6. Rejection 2. Claims 2, 7, 9, and 12 under 35 U.S.C. § I03(a) as obvious over Magni in view of Bacher '224. Id. at 6-9. Rejection 3. Claim 8 under 35 U.S.C. § I03(a) as obvious over Magni in view of Bacher '953. Id. at 9. Rejection 4. Claim 14 under 35 U.S.C. § I03(a) as obvious over Magni in view of Bacher '953 and Bacher '454. Id. at 9-10. 3 In the Answer, the Examiner withdrew the rejection of claim 12 under 35 U.S.C. § 112(b) as indefinite. Ans. 17-18. 4 Because this application claims priority to a foreign application filed before the March 16, 2013, effective date of the America Invents Act, we refer to the pre-AIA version of the statute. 3 Appeal2018-005965 Application 14/3 51,866 Rejection 5. Claims 4--16 on the ground of nonstatutory double patenting over claims 8-18, 26, and 28 of co-pending Application No. 14/351,869 (the "'869 Application"). Id. at 10-13. OPINION Rejection 1. In arguing against the Examiner's rejection of claims 3- 6, 10, 11, 13, 15, and 16 as anticipated by Magni, Appellant argues for patentability of claims 3---6, 10, 11, 13, 15, and 16 as a group. App. Br. 10- 13. We select the sole independent claim, claim 16, as representative of the group. 37 C.F.R. § 4I.37(c)(l)(iv). Claims 3---6, 10, 11, 13, and 15 stand or fall with claim 16. The Examiner finds that Magni teaches each element of claim 16. Non-Final Act. 3--4. The Examiner notes that claim 16 is an apparatus claim, and that limitations directed to the capabilities or intended use of the apparatus are given patentable weight to the extent that such capabilities or intended uses effects the structure of the claimed apparatus. Id. at 4. Appellant argues that the Non-Final Office Action refers to Magni Figures 2 and 4 as teaching "when the mixing and/or comminution implement is nearest the aperture, a motion vector describing the motion of the portion of the leading edge nearest the outlet aperture has a vector component which has a direction opposite the direction of conveying of the conveyor," but these figures do not support the Examiner's finding that Magni teaches what is claimed. App. Br. 11-12. We disagree for the reasons that follow. Magni' s Figures 2 and 4 are reproduced below: 4 Appeal2018-005965 Application 14/3 51,866 Magni Figure 2 is a schematic top view of the container and part of the devices in Magni's invention. Magni ,r 12. Vertical container 15 is provided with stirring element 2 fitted rotatably on the base of container 1 and provided with blades 3. Magni ,r 13. Blades 3a are fitted stationary on the wall and collaborate with blades 3 to stir and disintegrate thermoplastic material and soften it without melting it. Magni ,r 13. Means 4 for feeding a filler to container 1 is on the side of container 1, and means 5 collects the final material (softened polymeric base with filler added from container 1). Magni ,r 13. Means 5 is composed of an extruder provided with screw Sa and means for filtering, degassing, etc. Magni ,r 14. Extruder 5 is positioned tangentially to container 1 and communicates with it through opening 19. Magni ,r 15. Magni Figure 4 is a schematic view of a detail of the outlet of the filler feed in the stirring container. Magni ,r 12. Outlet 12 of screw 10 is located in the lower portion of container 1 where the thermoplastic material has been softened by the disintegrating and stirring action performed by 5 Labels to elements are presented in bold font, regardless of their presentation in the original document. 5 Appeal2018-005965 Application 14/3 51,866 blades 3 and 3a. Magni ,r 18. Outlet 12 is protected by screen 13 positioned upstream of outlet 12 in relation to the movement of the material, indicated by arrow R. Magni ,r 19. Appellant argues that the Examiner fails to provide any evidence that Magni Figure 4 is a top view. App. Br. 12. Appellant further argues that the Examiner characterizes the direction of conveyance of the material in extruder 5 to the left in Magni Figure 2, but provides no evidence in support. Id.; Reply Br. 4--5. Appellant contends, therefore, that Figures 2 and 4 cannot teach "wherein, when a leading edge of the m1xmg and/ or comminution implement is nearest the outlet aperture of the container, a motion vector describing the motion of the portion of the leading edge nearest the outlet aperture has a vector component which has a direction opposite the direction of conveying of the conveyor," as recited in claim 16. App. Br. 12-13. In the Reply Brief, Appellant argues that the device of Magni illustrated in Figure 4 is not the same device as illustrated in Magni Figure 2 because shield 13 is shown in Figure 4 but not in Figure 2. Reply Br. 4. Appellant's arguments are unpersuasive of reversible error by the Examiner. Magni describes the figures to be to a single embodiment and states that Figure 4 is a schematic view of a detail of the outlet of the filler feed in the stirring container. Magni ,r,r 12, 14. The Examiner's finding that one of ordinary skill in the art at the time of the invention would have considered Figures 2 and 4 together is reasonable. In addition, claim 16 is drawn to an apparatus; but only the container, mixing and/or comminution element, and conveyor are affirmatively claimed limitations. See App. Br. 4 ( Claims App 'x ). "[ A Jpparatus claims cover what a device is, not what a 6 Appeal2018-005965 Application 14/3 51,866 device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches aH the structural limitations of the claim. !Lr parte l11fashcun 1 2 USPQ2d 1647 (BP AI 1987). 1\-Ioreover, "a prior art reference may anticipate ... an apparatus claim ... if the reference discloses an apparatus that is reasonably capable of operating so as to meet the claim limitations, even if it does not meet the claim limitations in all modes of operation." ParkerVision, Inc. v. Qualcomm Inc., 903 F.3d 1354, 1361 (Fed. Cir. 2018). For the reasons above, we sustain the rejection of clairn 16 as an ti cipated bv l\fagn i. ,./ <.., Rejections 2--4. The Examiner finds claims 2, 7, 9, and 12 obvious over Magni in view of Bacher '224, claim 8 obvious over Magni in view of Bacher '953, and claim 14 obvious over Magni in view of Bacher '953 and Bacher '454. Non-Final Act. 6-10. For each of these rejections, Appellant relies on its arguments for patentability of claim 16 over Magni, stating that the additional references do not remedy the deficiencies of Magni. App. Br. 13-15. Because Appellant fails to identify deficiencies in Magni' s disclosure, we sustain Rejections 2--4. Rejection 5. The Examiner provisionally rejects claims 4--16 on the ground of nonstatutory double patenting as being unpatentable over claims 8-18, 26, and 28 of co-pending Application No. 14/351,869 (the "'869 Application"). Non-Final Act. 10-13. We summarily sustain this rejection because Appellant does not dispute it. Ex parte Frye, 94 USPQ2d 1072, 7 Appeal2018-005965 Application 14/3 51,866 1075 (BPAI 2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to identify the alleged error in the examiner's rejections."). DECISION For the above reasons, we affirm the Examiner's rejection of claims 2-16. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 8 Copy with citationCopy as parenthetical citation