Ex Parte Herter

Board of Patent Appeals and Interferences

Feb 26, 2010

10921658 (B.P.A.I. Feb. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RAINER HERTER
____________

Appeal 2009-002426
Application 10/921,658
Technology Center 1700
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Decided: February 26, 2010
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Before CATHERINE Q. TIMM, LINDA M. GAUDETTE, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1, 3-5, 20, 21, and 23-25. (Final Office
Action, mailed Nov. 19, 2007, 1), the only claims pending in the application.
(Appeal Brief (“App. Br.”), filed May 21, 2008, 1-2.) We have jurisdiction
under 35 U.S.C. § 6(b).
Appeal 2009-002426
Application 10/921,658

We AFFIRM.
The invention is directed to a screw-type extruding machine in which
the mixing and kneading disks are arranged in a manner which reduces
vibratory problems. (See Spec. 2-3 (Summary of the Invention).) Claim 1 is
illustrative and is reproduced from the Claims Appendix to the App. Br.:
1. A screw-type extruding machine, comprising:

at least two parallel, intersecting casing bores;

rotarily drivable screw shafts disposed in the casing bores; and

a plurality of mixing and kneading disks successively disposed on said
screw shafts and interengage in pairs, said mixing and kneading disks being
integrally embodied as kneading blocks, said mixing and kneading disks
having at least one crest and at least one flank, wherein directly successive
mixing and kneading disks make an angle of crest misalignment such that an
integral multiple of the respective angle of crest misalignment is unequal to
360°, each respective mixing and kneading disk being misaligned with
another mixing and kneading disk such that none of the disks are
superimposed when viewed along a defined longitudinal axis, wherein no
defined gaps exist between said one mixing and kneading disk and said
another mixing and kneading disk.

The Examiner maintains (Examiner’s Answer (“Ans.”), mailed Jul. 7,
2008, 3), and Appellant requests review of (App. Br. 15), the following
grounds of rejection:
1. claim 23 under 35 U.S.C. § 102(b) as anticipated by US 5,728,337,
issued Mar. 17, 1998 (“Yoshikawa”);
2. claim 24 under 35 U.S.C. § 103(a) as unpatentable over Yoshikawa
alone or in view of Blach US 4,416,544, issued Nov. 22, 1983 (“Blach”);
and
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3. claims 1, 3-5, 20, 21, and 25 under 35 U.S.C. § 103(a) as
unpatentable over Yoshikawa alone or in view of Blach.
In traversing the third ground of rejection, Appellant presents separate
arguments in support of patentability of claim 25. The remaining claims
stand or fall with claim 1.
ISSUES
With respect to all three grounds of rejection, we consider the
following issue: has Appellant identified error in the Examiner’s finding
that Yoshikawa discloses a plurality of mixing and kneading disks which are
misaligned such that none of the disks are superimposed as required by
independent claims 1, 23 and 25, and dependent claim 24?
Because we answer this question in the negative, we consider a
second issue with respect to the second and third grounds of rejection: has
Appellant identified error in the Examiner’s finding that Yoshikawa
discloses successive mixing and kneading disks which make an angle of
crest misalignment such that an integral multiple of the respective angle of
crest misalignment is unequal to 360º as recited in independent claims 1 and
25, and dependent claim 24?
We also answer this question in the negative.
FINDINGS OF FACT (“FF”)
1. Appellant contends that the Examiner erred in finding that
Yoshikawa teaches or suggests the claim limitations requiring “that each
mixing and kneading disk of one kneading block is misaligned with another
mixing and kneading disk of another kneading block that is located on the
same screw shaft such that none of the disks are superimposed when viewed
along a defined longitudinal axis.” (App. Br. 17 (addressing the first ground
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of rejection); see also, para. bridging 17-18 (as to claim 23) and 19 (as to
claim 24).)1
2. The Examiner maintains that Appellant’s argument is based on
an overly narrow interpretation of the claim term “block” as limited to
exactly five disks. (Ans. 13.)
3. The preambles of claims 1, 23, and 25 read: “A screw-type
extruding machine, comprising:”.
4. Claims 1, 23, and 25 further recite, respectively:
“a plurality of mixing and kneading disks . . . integrally embodied as
kneading blocks . . . , each respective mixing and kneading disk being
misaligned with another mixing and kneading disk such that none of the
disks are superimposed when viewed along a defined longitudinal axis.”
(Claim 1.)
a first kneading block having adjacent first disk-shaped
portions, . . . said first kneading block being connected to said
first screw shaft, each of said first disk-shaped portions having
a contour misaligned with another contour of another of said
first disk-shaped portions;

* * *

a third kneading block having adjacent third disk-shaped
portions, . . . said third kneading block being connected to said
first screw shaft such that said third kneading block is adjacent

1 Although Appellant only raises this argument in connection with the first
and second grounds of rejection (see generally, App. Br. 21-24), we have
nonetheless considered it as part of Appellant’s traversal of the third ground
of rejection, since similar limitations are present in independent claims 1 and
25 (see App. Br. 2 and 13, summarizing the limitations in claims 1 and 25;
Reply Brief (“Rep. Br.”), filed Sep. 2, 2008, 1-2, indicating that the same
arguments apply to all grounds of rejection under 35 U.S.C. § 103(a)).
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said first kneading block, each of said third disk-shaped
portions having a contour misaligned with another contour of
another of said third disk-shaped portions, whereby each first
disk-shaped portion of said first kneading block is not
superimposed to each third disk-shaped portion of said third
kneading block.

(Claim 23.)

a plurality of mixing and kneading disks successively
disposed on said screw shafts and interengage in pairs, said
mixing and kneading disks being integrally embodied as
kneading blocks, . . . each respective mixing and kneading disk
being misaligned with another mixing and kneading disk such
that none of the disks are superimposed when viewed along a
defined longitudinal axis.

(Claim 25.)

5. The Specification does not define a “kneading block” as limited
to a specific number of disks. (Cf. Spec. 1:24-25 and Spec. 4:12-15
(describing examples of kneading blocks containing five successive mixing
and kneading disks).) The Specification generally states that in “known
screw-type extruding machines, several mixing and kneading disks are
successively disposed on a screw shaft, combining to constitute a kneading
block.” (Spec. 1:19-21.)
6. Yoshikawa describes an arrangement of five kneading discs2
30a to 30e in a twin screw extruder. (See generally, Yoshikawa.) The discs
30a to 30e are said to be displaced from one another in the circumferential
direction of the kneading screw 25 such that the angle α by which any two
adjacent kneading discs are displaced ranges from about 18º to about 30º.

2 Yoshikawa uses the spelling “disc” while Appellant uses “disk.”
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(Col. 5, ll. 9-11; col. 7, ll. 25-30.) Yoshikawa discloses comparative test
results from two extrusions in which the angle α of adjacent kneading discs
was adjusted to 60º and to 22.5º, respectively. (Col. 9, ll. 38-50.)
7. The Examiner maintains that the claim 23 “first kneading
block” reads on Yoshikawa’s first disk-shaped portions (30a, 30b) and the
claim 23 “third kneading block” reads on Yoshikawa’s third disk-shaped
portions (30c, 30d). (Ans. para. bridging 12-13.)
8. Appellant does not dispute that Yoshikawa’s discs 30a to 30e
are not superimposed. (Cf. App. Br. 17-18 and Rep. Br. 1-2, arguing that
some of discs 30a to 30e are superimposed with a second set of discs 30f to
30i (Annex A1) or 30a’ to 30e’ (Annex A2) .) Rather, Appellant disagrees
with the Examiner’s characterization of Yoshikawa as disclosing three
kneading blocks, contending that “Figure 5 of Yoshikawa et al. clearly
shows the disk-shaped portions 30a, 30b, 30c and 30d belong to the first
kneading block.” (App. Br. 18; see also, App. Br. 17 (arguing that a second
kneading block is illustrated, though not described in Yoshikawa).)
9. Appellant has not identified, nor do we find, an explicit
statement in Yoshikawa indicating that discs 30a to 30e are part of a single
kneading block. (See generally, App. Br.; Rep. Br.; Yoshikawa.)
10. Appellant also argues that Yoshikawa et al. fails to teach or
suggest that the disk portions of each kneading block are arranged such that
the integral multiple of the crest misalignment of the disk portions is unequal
to 360º. (App. Br. 19 (as to claim 24); see also, App. Br. 21-24 (as to claims
1 and 25).) Appellant does not dispute that Yoshikawa discloses that the
angle of crest misalignment may be 18º to 30º. (Id.) However, Appellant
contends “[t]he teachings of Yoshikawa directs [sic] one of ordinary skill in
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the art toward an angle of crest misalignment that is an integral multiple of
360º” since Yoshikawa’s sole example, an angle of 22.5º, is an integral
multiple of 360º. (App. Br. 19-20; see also, App. Br. 23.)
11. The Examiner contends that within Yoshikawa’s range of 18º to
30º there are a limited number of angles that are integral multiples of 360º,
while there are “an infinite number of other values . . . within the scope of
the claim[s].” (Ans. 5-6 and 14 (as to claim 24); see also, Ans. 7 and 11-12
(as to claims 1 and 25).)
12. Blach is relied on by the Examiner as further evidence that it is
known to offset the angle of crest misalignment by a few degrees from that
which would be an integral multiple of 360º (Ans. 6 (claim 24); Ans. 7
(claim 1); Ans. 12 (claim 25)), and is merely cumulative to the teachings of
Yoshikawa.
CLAIM INTERPRETATION
During examination, claim terms must be given their broadest
reasonable construction consistent with the Specification. In re ICON
Health and Fitness, Inc., 496 F.3d 1374, 1378-79 (Fed. Cir. 2007). “[T]he
fact that the specification describes only a single embodiment, standing
alone, is insufficient to limit otherwise broad claim language.” Howmedica
Osteonics Corp. v. Wright Medical Tech., Inc., 540 F.3d 1337, 1345 (Fed.
Cir. 2008) (citations omitted).
“‘Comprising’ is a term of art used in claim language which means
that the named elements are essential, but other elements may be added and
still form a construct within the scope of the claim.” In re Crish, 393 F.3d
1253, 1257 (Fed. Cir. 2004) (quoting Genentech, Inc. v. Chiron Corp., 112
F.3d 495, 501 (Fed. Cir. 1997)).
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The Examiner’s first ground of rejection is based on an interpretation
of independent claim 23 as requiring only two disks per kneading block (FF
7). Based on our review of the claim language and Specification (see FF 3-
5), we are in agreement with this interpretation.
With respect to all three grounds of rejection, we note that the claims
1, 23, 25 use the introductory term “comprising.” Because the claim
language and Specification do not otherwise limit the number of mixing and
kneading disks in the claimed extruding machines, we interpret these claims
as open to including mixing and kneading disks other than those explicitly
recited. Further, we interpret claim limitations such as “none of the disks are
superimposed when viewed along a defined longitudinal axis” (claims 1 and
25) as pertaining only to the explicitly recited disks. In other words, the
claims do not preclude the presence of additional mixing and kneading disks
which are superimposed.

ANALYSIS
Issue 1: Has Appellant identified error in the Examiner’s finding that
Yoshikawa discloses a plurality of mixing and kneading disks which are
misaligned such that none of the disks are superimposed as required by
independent claims 1, 23, and 25, and dependent claim 24?

Appellant contends that claim 23 cannot be anticipated by Yoshikawa
because some of the illustrated mixing and kneading disks (e.g. disks 30a-
30i of Annex A1) are superimposed when viewed along the longitudinal axis
of screw 25. As explained in our Claim Interpretation above, claim 23 is not
so limited. Rather, we are in agreement with the Examiner that the kneading
blocks of claim 23 read on Yoshikawa’s discs 30a to 30d. (See FF 7.)
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Likewise, based on our Claim Interpretation, we are in agreement with the
Examiner that the claim 1 and 25 “plurality of mixing and kneading disks”
read on Yoshikawa’s discs 30a to 30e. (See Ans. 6-7 (as to claim 1); Ans.
11-12 (as to claim 25).)
Appellant does not dispute that Yoshikawa’s discs 30a to 30e are not
superimposed. (FF 8.) Accordingly, Appellant has not identified error in
the Examiner’s finding that Yoshikawa discloses a plurality of mixing and
kneading disks which are misaligned such that none of the disks are
superimposed as required by independent claims 1, 23 and 25, and
dependent claim 24.
Because this is the sole argument on which Appellant traverses the
first ground of rejection3, we sustain the rejection of claim 23 under 35
U.S.C. § 102(b) as anticipated by Yoshikawa.
Issue 2: Has Appellant identified error in the Examiner’s finding that
Yoshikawa discloses successive mixing and kneading disks which make an
angle of crest misalignment such that an integral multiple of the respective
angle of crest misalignment is unequal to 360° as recited in independent
claims 1 and 25, and dependent claim 24?

A prima facie case of obviousness exists where the prior art and
claimed ranges overlap, as well as in those cases where the claimed range
and the prior art range, though not overlapping, are sufficiently close that
one skilled in the art would have expected them to have the same properties.
See, e.g., In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003); In re
Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997); In re Woodruff, 919 F.2d

3 (See Ans. 12 (noting that claim 23 does not include a limitation requiring
that the integral multiples of the angles of crest misalignment are unequal to
360º).)
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1575, 1578 (Fed. Cir. 1990); Titanium Metals Corp. of Am. v. Banner, 778
F.2d 775, 783 (Fed. Cir. 1985). The “‘normal desire of scientists or artisans
to improve upon what is already generally known provides the motivation to
determine where in a disclosed set of percentage ranges is the optimum
combination of percentages.’” Medichem, S.A. v. Rolabo, S.L., 437 F.3d
1157, 1168 (Fed. Cir. 2006) (quoting Peterson, 315 F.3d at 1330). Cf. In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art's mere
disclosure of more than one alternative does not constitute a teaching away
from any of these alternatives because such disclosure does not criticize,
discredit, or otherwise discourage the solution claimed in the . . .
application.”).
Appellant does not dispute the Examiner’s finding that Yoshikawa’s
disclosed range of 18º to 30º includes “an infinite number” of angles of crest
misalignment which meet the limitations recited in claims 1, 24, and 25 (FF
11). (FF 10.) Rather, Appellant contends that the ordinary artisan would not
have been motivated to select one of these angles because the sole example
disclosed in Yoshikawa is an angle which is an integral multiple of 360º.
(FF 10.)
Appellant’s argument fails to persuade us of error in the Examiner’s
obviousness determination because Appellant has not explained why this
example should be viewed as discouraging the ordinary artisan from
selecting one of the angles of crest misalignment which does meet the
limitations recited in claims 1, 24, and 25.
In sum, Appellant has not identified error in the Examiner’s finding
that Yoshikawa discloses successive mixing and kneading disks which make
an angle of crest misalignment such that an integral multiple of the
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respective angle of crest misalignment is unequal to 360º as recited in
independent claims 1 and 25, and dependent claim 24. Therefore, we sustain
the rejection of claim 24 under 35 U.S.C. § 103(a) as unpatentable over
Yoshikawa alone or in view of Blach, and the rejection of claims 1, 3-5, 20,
21, and 25 under 35 U.S.C. § 103(a) as unpatentable over Yoshikawa alone
or in view of Blach.

CONCLUSION
Appellant has not identified error in the Examiner’s finding of
anticipation or obviousness determinations. The decision of the Examiner
rejecting claims 1, 3-5, 20, 21, and 23-25 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).
AFFIRMED

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