Ex Parte Gerl et al

Patent Trials and Appeals Board

Mar 21, 2019

14004700 - (D) (P.T.A.B. Mar. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/004,700
27569 7590
PAUL AND PAUL
FILING DATE
09/12/2013
03/25/2019
1717 Arch Street Three Logan Square
SUITE 3740
PHILADELPHIA, PA 19103
FIRST NAMED INVENTOR
Stefan Gerl
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.
2013-105 1097
EXAMINER
INSLER, ELIZABETH
ART UNIT PAPER NUMBER
1774
NOTIFICATION DATE DELIVERY MODE
03/25/2019 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):
INFO@PAULANDPAUL.COM
claire@paulandpaul.com
fpanna@paulandpaul.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEP AN GERL and CHRISTINA KLEIN
Appeal2017-005362
Application 14/004, 700
Technology Center 1700
Before TERRY J. OWENS, MONTE T. SQUIRE, and BRIAND. RANGE,
Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 14 and 20-36. We have jurisdiction. 35 U.S.C.
§ 6(b ). An oral hearing was held March 14, 2019. 2
We AFFIRM-IN-PART.
1 According to Appellants, the real party in interest is Maschinenfabrik
Gustav Eirich GmbH & Co. KG. Appeal Br. 1.
2 A written transcript of the oral hearing will be entered into the record when
the transcript is made available.
Appeal2017-005362
Application 14/004,700
STATEMENT OF THE CASE3
Appellants describe the invention as relating to a method and tool for
granulating or agglomerating. Spec. 1 :3--4. The Specification describes
granulating as producing "a granulated material, i.e. a granular and easily
pourable solid ... from one or more ingredients." Id. at 1 :6-8. The
Specification describes agglomerating as shifting particles' size range "to
larger sizes, so constituting the opposite of comminution." Id. at 1 : 8-9. The
tool seeks to achieve faster granulating or agglomerating with finer
granulated material and with higher yield. Id. at 1 :26-31. During oral
argument, Appellants' counsel explained that the invention could be used,
for example, for making pharmaceutical or fertilizer products.
Claim 14, reproduced below with formatting modified for readability
and emphasis added to certain key recitations, is the only independent claim
on appeal and is illustrative of the claimed subject matter:
14. Method for granulating or agglomerating,
in which the ingredients to be granulated or to be
agglomerated are introduced into a container and mixed with a
tool,
characterised in that a granulating and/ or agglomerating
device includes a container and a granulating and/ or
agglomerating tool arranged in the container,
the granulating and/or agglomerating tool having
a fastening shaft and
a substantially disk-shaped element with a
diameter d which is fastened thereto
3 In this Decision, we refer to the Final Office Action dated December 15,
2015 ("Final Act."), the Appeal Brief filed June 27, 2016 ("Appeal Br."), the
Examiner's Answer dated December 12, 2016 ("Ans."), and the Reply Brief
filed February 13, 2017 ("Reply Br.").
2
Appeal2017-005362
Application 14/004,700
and has an upper surface, a lower surface
and a circumferential surface connecting the
upper and the lower surface,
Appeal Br. 20 (Claims App.).
the circumferential surface exhibiting
a plurality of essentially V-shaped
grooves running parallel to the axis of
the shaft,
the lower surface of the tool having
at least one swirl element which
protrudes beyond the lower surface
in the axial direction.
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Mosher
Buse
Funder et al. ("Funder")
Nakai et al. ("Nakai")
Downing et al. ("Downing")
us 1,483,551
us 3,746,467
us 5,620,251
US 2005/0257644 Al
GB 1507722
REJECTIONS
The following rejections are before us on appeal:
Feb. 12, 1924
July 17, 1973
Apr. 15, 1997
Nov. 24, 2005
Apr. 19, 1978
Rejection 1. Claims 14, 20, and 21 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Ans. 2.
Rejection 2. Claims 14 and 20-364 under 35 U.S.C. § 112, second
paragraph, as being indefinite. Id. at 2.
4 The Answer refers to claims 14--36 (Ans. 2), but claims 15-19 are not on
appeal.
3
Appeal2017-005362
Application 14/004,700
Rejection 3. Claims 14, 20-23, 27-29, and 32-35 under 35 U.S.C.
§ 103 as obvious over Downing in view ofNakai and Buse. Id. at 3---6.
Rejection 4. Claims 24--26 under 35 U.S.C. § 103 as obvious over
Downing in view ofNakai and Buse, and further in view of Mosher. Id. at
7-8.
Rejection 5. Claims 30, 31, and 36 under 35 U.S.C. § 103 as obvious
over Downing in view of Nakai and Buse, and further in view of Funder. Id.
at 8-9.
ANALYSIS
Rejection 1. The Examiner rejects claims 14, 20, and 21 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement. Ans. 2. In particular, the Examiner states that
"[t]he [S]pecification fails to adequately describe what element is a swirl
element in claims 14, 20 and 21." Id.
The written description requirement of 35 U.S.C. § 112 requires that
the disclosure of the application relied upon "reasonably convey[] to those
skilled in the art that the inventor had possession of the claimed subject
matter as of the filing date." Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010) (en bane). The written description inquiry is a
question of fact. Id.
Here, the Specification describes a tool having multiple swirl elements
and describes where the swirl elements are placed (i.e., they may have "the
same angular spacing in a circumferential direction"). Appeal Br. 4; Spec.
3:35--4:6; Fig. 7; March 15, 2016, Amendment to Specification. The
preponderance of the evidence would, therefore, reasonably convey to a
4
Appeal2017-005362
Application 14/004,700
person having ordinary skill in the art that Appellants possessed the swirl
element recited by claims 14, 20, and 21. We do not sustain this rejection.
Rejection 2. The Examiner rejects claims 14 and 20-36 under
35 U.S.C. § 112, second paragraph, as being indefinite. Ans. 2. During
prosecution, "'[a] claim is indefinite when it contains words or phrases
whose meaning is unclear."' Ex parte McAward, Appeal 2015-006416,
2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (quoting In re Packard,
751 F.3d 1307, 1314 (Fed. Cir. 2014) (per curium)).
The Examiner first rejects claims 14, 20, and 21 because it is unclear
what is meant by the limitation "swirl element." Ans. 2. The Examiner
finds that "the drawings do not show the features and one of ordinary skill in
the art would not be reasonably apprised of the scope of the invention." Id.
Appellants argue that a swirl element is an element "having a specific
functional effect which contributes to the agglomeration or granulation result
obtained by the invention." Reply Br. 1. Appellants cite other patents that
have "swirl elements" and argue that the term "swirl element" is well
understood by those of ordinary skill in the art. Appeal Br. 4.
While the issue is close, we agree with Appellants that a person of
ordinary skill in the art, given the context provided by the Specification,
would have understood claim 14' s recited "swirl element" as being an
element that causes a swirling action in the material being processed. The
Specification as a whole relates to granulating or agglomerating smaller
particles into larger particles. See, e.g., Spec. 1 :6-9. The recited apparatus
allows manipulation of the particles so the granulating or agglomerating can
occur efficiently. Id. at 1 :32--4:6. The Specification is best understood as
teaching that the swirl elements protrude below the tool into what can be any
5
Appeal2017-005362
Application 14/004,700
container (id. at 4: 19--23) in order to cause a swirling action in the material
that brings the material into the tool (id. at 3:35--4:6). Because the "swirl
element" recitation is not unclear, we do not sustain the Examiner's
indefiniteness rejections based on this recitation.
The Examiner also makes indefiniteness rejections with regard to
claims 20 ("the same angular spacing"), 21 ("the swirl elements" lacking
antecedent basis and "the same angular spacing"), 24 ("the groove wall"), 24
("preferably"), and 25 ("preferably"). Ans. 2-3. We do not sustain the
rejection of claim 21 because none of the terms the Examiner identifies as
indefinite ("the swirl elements" and "the same angular spacing") appear in
claim 21. We summarily sustain the remainder of these rejections because
Appellants do not substantively dispute them. Appeal Br. 7.
Rejections 3, 4, and 5. The Examiner rejects claims 14, 20-23, 27-
29, and 32-35 under 35 U.S.C. § 103 as obvious over Downing in view of
Nakai and Buse. Ans. 3---6. The Examiner also applies the Mosher reference
to claims 24--26 and also applies the Buse reference to claims 30, 31, and 36.
Id. at 7-9.
The Examiner finds that Downing teaches the method of independent
claim 14 but "does not explicitly disclose the lower surface of the tool
having at least one swirl element." Ans. 4. The Examiner finds that Buse
teaches an impeller with a swirl element. Id. The Examiner determines it
would have been obvious to add Buse' s swirl elements to Downing because
both teach agitating impellers and because the swirl elements define flow
passages:
It would have been obvious to one of ordinary skill in the art at
the time of the invention to use the swirl elements of Buse with
the apparatus of Downing. One of ordinary skill in the art
6
Appeal2017-005362
Application 14/004,700
would reasonably expect such a combination to be suitable
given that both references teach agitating impellers. One of
ordinary skill in the art would be motivated to use the swirl
elements because they define the usual flow passages from the
inlet to the outer ends allowing for the radial discharge of fluid
from the impeller cavity and high head and efficiency (Buse
column 2, lines 29-37; column 3, lines 16-23).
Id. at 4--5.
Appellants argue that the combination of Downing and Buse does not
render use of a swirl element in Downing obvious and this reconstruction is
"hind sight-guided." Appeal Br. 13-15. Appellants further argue that the
references do not motivate adding a swirl element to Downing. Id. at 15.
We agree that, on the present record, the Examiner has not adequately
explained why a person of skill in the art would have had reason to add the
Buse swirl elements to Downing. Downing is directed to agitating molten
metal and exposing the metal to reactants. Downing 1: 15-22. The disc
element of Downing appears to be a mixing element rather than an impeller.
Id. at 1:50-79 (referring to "rotating agitating member"); Figs. 1, 2. As
Appellants emphasize, the element of Buse that the Examiner equates to a
"swirling element" are passages within the Buse impeller. Ans. 14; Buse
2 :22-24 ("A plurality of arcuate vanes 34 are disposed in the cavity
20 .... "); Figs. 1, 2. Accordingly, the Examiner's rationale of adding
Buse' s elements ( elements within an impeller) to Downing ( which lacks an
impeller) because they "define the usual flow passages" does not provide
adequate reason for the Examiner's proposed combination.
We, therefore, do not sustain the Examiner's rejection of claim 14.
Because the Examiner's treatment of the dependent claims does not cure this
error, we also do not sustain the rejection of those claims.
7
Appeal2017-005362
Application 14/004,700
DECISION
For the above reasons, we reverse the Examiner's written description
rejection, indefiniteness rejection based on "swirl element," indefiniteness
rejection of claim 21 ("the swirl elements" and "the same angular spacing"),
and obviousness rejections. We affirm the Examiner's indefiniteness
rejection with regard to claims 20 ("the same angular spacing"), 24 ("the
groove wall"), 24 ("preferably"), and 25 ("preferably").
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
8