Ex parte Herr et al.

Board of Patent Appeals and Interferences

Sep 16, 1998

08273767 (B.P.A.I. Sep. 16, 1998)

Application for patent filed July 12, 1994.1
Upon initial study of this case during on brief review,2
a request for oral hearing was discovered appended to the last
page of an appendix to the reply brief (Paper No. 16). At the
request of this panel of the board, Program and Resource
Administrator Craig Feinberg telephoned appellants’
representative Mr. Werner H. Stemer on September 10, 1998 to
inquire as to whether a date for an oral hearing should be
set, or whether the case could be decided on brief. Mr.
Feinberg has informed us that Mr. Stemer authorized a decision
on brief. As a concluding point, we make reference to 37 CFR §
1.194(a) which specifies that an appeal decided without an
oral hearing receives the same consideration by the Board of
Patent Appeals and Interferences as appeals decided after an
oral hearing.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte WOLFGANG HERR,
RALF SIGLING and
HORST SPIELMANN
_____________
Appeal No. 97-3199
Application 08/273,7671
______________
ON BRIEF2
_______________
Before COHEN, FRANKFORT and MCQUADE, Administrative Patent
Appeal No. 97-3199
Application No. 08/273,767
2
Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 4, 6 and 8. Claims 5, 7, and 9 through 11 are
objected to by the examiner as being dependent upon a rejected
base claim, but would be allowable according to the examiner
if rewritten in independent form including all of the
limitations
of the base claim and any intervening claims. These claims
constitute all of the claims in the application.
Appellants’ invention pertains to a combined mixing and
deflection unit. An understanding of the invention can be
derived from a reading of exemplary claim 1, a copy of which
appears in the appendix to the main brief (Paper No. 14).
As evidence of obviousness, the examiner has applied
the documents listed below:
Gilles et al. (Gilles) 3,831,350 Aug. 27, 1974
Knief 4,786,185 Nov. 22, 1988
The following rejections are before us for review.
Claims 2 and 3 stand rejected under 35 U.S.C. § 112,
Appeal No. 97-3199
Application No. 08/273,767
3
second paragraph, as being indefinite.
Claims 1 and 8 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Knief.
Claims 2 and 3 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Knief.
Claims 1, 4, 6, and 8 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Gilles.
The full text of the examiner's rejections and response
to the argument presented by appellants appears in the main
and supplemental answers (Paper Nos. 15 and 17), while the
complete statement of appellants’ argument can be found in the
main and reply briefs (Paper Nos. 14 and 16).
In the main brief (page 8), appellants indicate, relative
to the art rejections, that claims 4, 6, and 8 stand or fall
with independent claim 1, and that claims 2 and 3 are argued
separately and do not stand or fall with claim 1. As to the
rejection under 35 U.S.C. § 112, second paragraph, appellants
state that claim 3 stands or falls with claim 2.
OPINION
In reaching our conclusion on the issues raised in this
Appeal No. 97-3199
Application No. 08/273,767
In our evaluation of the applied patents, we have3
considered all of the disclosure thereof for what it would
have fairly taught one of ordinary skill in the art. See In
re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA 1966).
Additionally, this panel of the board has taken into account
not only the specific teachings, but also the inferences which
one skilled in the art would reasonably have been expected to
draw from the disclosure. See In re Preda 401 F.2d 825, 826,
159 USPQ 342, 344 (CCPA 1968).
4
appeal, this panel of the board has carefully considered
appellants’ specification and claims, the applied patents,3
and the respective viewpoints of appellants and the examiner.
As a consequence of our review, we make the determinations
which follow.
The indefiniteness issue
We reverse the rejection of claims 2 and 3 under 35
U.S.C.
§ 112, second paragraph.
As pointed out by the examiner (main answer, page 4), the
copy of claim 2 in the appendix to the main brief is in error.
Therefore, we refer to this claim as it appears in the
appendix attached to the reply brief (Paper No. 16).
As perceived by the examiner, it is not clear what is
being set forth by the language “each of said openings has an
Appeal No. 97-3199
Application No. 08/273,767
5
area equal to an area of a surface which exactly covers said
respective openings” in claim 2 (lines 3 and 4).
We agree with the examiner that the specified language is
somewhat awkward, or “not elegant” as acknowledged by
appellants (main brief, page 14). Nevertheless, read in light
of the underlying disclosure, we consider the content of claim
2 to be understandable and definite to the extent that the
metes and bounds of the claim coverage is determinate. More
specifically, we view this language of lines 3 and 4 as simply
denoting the area coverage of the openings, a necessary area
for ascertaining the obstruction ratio subsequently set forth
in claim 2. It is for this reason that the rejection must be
reversed.
The anticipation rejection of claims 1 and 8
We affirm the rejection of claim 1 under 35 U.S.C. §
102(b) based upon the Knief patent, as well as the rejection
of claim 8 which stands or falls with claim 1.
Anticipation under 35 U.S.C. 102(b) is established only
when a single prior art reference discloses, either expressly
or under principles of inherency, each and every element of a
Appeal No. 97-3199
Application No. 08/273,767
6
claimed invention. See In re Paulsen, 30 F.3d 1475, 1478-79,
31 USPQ2d 1671, 1675 (Fed. Cir. 1994), In re Spada, 911 F.2d
705, 708,
15 USPQ2d 1655, 1657 (Fed. Cir. 1990), and RCA Corp. v.
Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ
385, 388 (Fed. Cir. 1984). However, the law of anticipation
does not require that the reference teach specifically what an
appellant has disclosed and is claiming but only that the
claims on appeal "read on" something disclosed in the
reference, i.e., all limitations of the claim are found in the
reference. See Kalman v. Kimberly Clark Corp., 713 F.2d 760,
772, 218 USPQ 781, 789 (Fed. Cir. 1983); cert. denied, 465
U.S. 1026 (1984).
In the present case, we find that the mixing and
deflection unit of claim 1 is readable upon the static mixing
apparatus disclosed by Knief. More specifically, as we see it,
the content of claim 1 is addressed by the Knief apparatus,
with its upstream 31, 48 and downstream 50 flow directions, as
disclosed (column 6, lines 54 through 68) and depicted (Figure
1). Of particular importance, is the patentee’s express
indication (column 6, lines 20 through 28) that it is within
Appeal No. 97-3199
Application No. 08/273,767
7
the scope of the invention to have equally sized and spaced
apertures, although such an embodiment is not preferred.
Appellants’ argument (main brief, pages 8 through 12)
does not persuade us that the examiner erred in rejecting
claim 1 as being anticipated by the Knief reference. Like the
examiner (answer, page 8), we do not view the characterization
by appellants of the claimed device as one for deflecting in a
“macroscopic sense” as distinguishing the claimed invention
from the reference apparatus. Neither claim 1, nor the
underlying disclosure, ever address the deflection of a
flowing medium in a macroscopic sense. Further, the argument
relating to back pressure (main brief, pages 9 and 10) fails
to convince us that the combined mixing and deflection unit as
defined in claim 1 does not read on the apparatus taught by
Knief. Appellants, in error, argue before this board (brief,
pages 10 and 11) that the openings formed in the plate of
Knief are clearly not evenly distributed when, as indicated
supra, the patent expressly teaches an even distribution.
Contrary to appellants’ point of view (main brief, page 12 and
reply brief, pages 2 and 3), we determined that the claimed
upstream and downstream flow directions read on the flows 31,
Appeal No. 97-3199
Application No. 08/273,767
8
48 and 50, respectively, depicted (Figure 1) and discussed by
Knief. Accordingly, and again contrary to the view of
appellants (brief, page 12), we find that the subject matter
of claim 1 is anticipated by the Knief teaching.
The obviousness rejection of claims 2 and 3
We affirm the rejection of each of claims 2 and 3 under
35 U.S.C. § 103 founded upon the disclosure of Knief.
Of particular significance to us, in regard to the
content of each of claims 2 and 3, is the explicit teaching by
Knief (column 2, lines 53 through 57) that the ratio of total
aperture flow area to first tubular portion cross-sectional
flow area can be adjusted to optimally minimize the effect on
fluid flow rate. Knief (column 4, line 54 to column 5, line
56) further expressly discusses total flow area of the
apertures. On the basis of the above teachings, this panel of
the board readily perceives that those having ordinary skill
in the art well understood aperture flow area as a result
effective variable. As such, we make the determination, based
upon the Knief teaching considered in its entirety, that
obtaining working obstruction ratios, such as those now
Appeal No. 97-3199
Application No. 08/273,767
9
claimed, predicated upon the area of openings (apertures) and
total guide area would have simply involved the discovery of
optimum values for a result effective variable by one having
ordinary skill in this art. See In re Boesch, 617 F.2d 272,
205 USPQ 215, 219 (CCPA 1980).
Contrary to the argued position of appellants (main
brief, page 13), we concluded, supra, that the determination
of obstruction ratios, as set forth in each of claims 2 and 3,
would have been an obvious matter for one having ordinary
skill in the art when appellants’ invention was made.
The anticipation rejection of claims 1, 4, 6, and 8
We affirm the rejection of claim 1 under 35 U.S.C. §
102(b)
based upon the Gilles document, with the rejection of claims
4, 6, and 8 likewise being affirmed since they stand or fall
with claim 1.
At the outset, it is important to recognize that claim 1
requires, inter alia, a guide “configuration”, with the
Appeal No. 97-3199
Application No. 08/273,767
10
“configuration” having openings therein being evenly
distributed over the guide “configuration”. Based upon
appellants’ underlying disclosure, the broadly claimed guide
“configuration” is readable upon a guide “configuration”, such
as shown in appellants’ Figure 2, wherein “openings” in the
“configuration” are spaces about the trapezoidal guide vanes
16a to 16e and the support pipes 18.
With the above claim analysis in mind, it is at once
apparent to this panel of the board that the combined mixing
and deflecting unit of claim 1 is addressed by the Gilles
document (Figure 3). The Gilles reference reveals, in
particular, a guide “configuration”, as broadly characterized
in claim 1, in the form of slat 10a, for example, which
provides openings therein, i.e., the spaces about the tongues
11 permitting the passage of fluid.
The argument advanced by appellants (main brief, pages 13
and 14) is not persuasive. We are in basic agreement with the
views expressed by the examiner in the answer (page 11)
regarding the Gilles patent. We would only add that, contrary
to the view set forth in the main brief (page 14), the
characterized “voids” between the respective tabs of Gilles
Appeal No. 97-3199
Application No. 08/273,767
11
appear to us to be clearly akin to the “voids” (openings)
about the trapezoidal guide vanes 16a to 16e and support pipes
18 present in the “guide configuration” seen in appellants’
Figure 2. Additionally, unlike appellants (main brief, page
14), we recognize the even distribution of tongues 11 in the
guide configuration of Gilles (Fig. 3) as incorporating an
even distribution of openings thereabout.
In summary, this panel of the board has:
reversed the rejection of claims 2 and 3 under 35 U.S.C.
§ 112, second paragraph, as being indefinite;
affirmed the rejection of claims 1 and 8 under 35 U.S.C.
§ 102(b) as being anticipated by Knief;
affirmed the rejection of claims 2 and 3 under 35 U.S.C.
§ 103 as being unpatentable over Knief; and
affirmed the rejection of claims 1, 4, 6, and 8 under
35 U.S.C. § 102(b) as being anticipated by Gilles.
The decision of the examiner is affirmed.
Appeal No. 97-3199
Application No. 08/273,767
12
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
)
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOHN P. MCQUADE )
Administrative Patent Judge )
Appeal No. 97-3199
Application No. 08/273,767
13
Lerner and Greenberg
P. O. Box 2480
Hollywood, FL 33022-2480
ICC/cam