Ex Parte Hiemer

Patent Trial and Appeal Board

Apr 9, 2018

12850420 (P.T.A.B. Apr. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/850,420 08/04/2010
20350 7590 04/11/2018
KILPATRICK TOWNSEND & STOCKTONLLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
Andreas Hiemer
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.
66234-079200US-788686 9816
EXAMINER
LEE, CHEE-CHONG
ART UNIT PAPER NUMBER
3752
NOTIFICATION DATE DELIVERY MODE
04/11/2018 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 ANDREAS HIEMER
Appeal2016-003803 1
Application 12/850,4202
Technology Center 3700
Before KENNETH G. SCHOPPER, BRADLEY B. BAY AT, and
AMEE A. SHAH, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims
1-16. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Our decision references the Appeal Brief ("Appeal Br.," filed July 20,
2015) andReplyBrief("ReplyBr.," filed Feb. 18, 2016), and the
Examiner's Answer ("Ans.," mailed Jan. 5, 2016) and Final Office Action
("Final Act.," mailed Feb. 24, 2015). The record includes a transcript of the
oral hearing held March 19, 2018.
2 According to Appellant, the real party in interest is Sulzer Mixpac AG.
Appeal Br. 3.
Appeal 2016-003803
Application 12/850,420
BACKGROUND
According to Appellant, "[ t ]he invention relates to a static spray mixer
for the mixing and spraying of at least two flowable components." Sub.
Spec. i12.
ILLUSTRATIVE CLAIM
Claim 1 is the only independent claim on appeal recites:
1. A static spray mixer for the mixing and spraying of at least
two flowable components, the static spray mixer comprising: a
tubular, one-piece mixer housing which extends in the direction
of a longitudinal axis (A) up to a distal end which has an outlet
opening for the components, having at least one mixing element
arranged in the mixer housing for the mixing of the components
and the at least one mixing element being completely
accommodated in the mixer housing as well as having an
atomization sleeve which has an inner surface which surrounds
the mixer housing in its end region, wherein the atomization
sleeve has an inlet for a pressurized atomization medium,
characterized in that a plurality of grooves, defined by a space
between the mixer housing and the atomization sleeve, are
provided in the inner surface of the atomization sleeve which
respectively extend in the direction of the longitudinal axis (A)
and through which the atomization medium can flow from the
inlet of the atomization sleeve to the distal end of the mixer
housing.
REJECTIONS
1. The Examiner rejects claims 1-10, 13, 14, and 16 under 35 U.S.C.
§ 103(a) as unpatentable over Anderson. 3
2. The Examiner rejects claims 11 and 12 under 35 U.S.C. § 103(a) as
unpatentable over Anderson in view of Miura. 4
3 Anderson, US 6,951,310, iss. Oct. 4, 2005.
4 Miura et al., US 3,893,654, iss. July 8, 1975.
2
Appeal 2016-003803
Application 12/850,420
3. The Examiner rejects claim 15 under 35 U.S.C. § 103(a) as unpatentable
over Anderson in view of Homer. 5
DISCUSSION
With respect to claim 1, the Examiner finds that Anderson discloses a
static spray mixer including a tubular, one-piece mixer housing 16, mixing
elements 12 and 32, and an atomization sleeve 77. Final Act. 3 (citing
Anderson Figs. 13, 14). The Examiner also finds that portion "31 of 12 is
completely accepted in, and completely fills, the space provided by the
mixer housing 16," and thus, Anderson discloses that at least one mixing
element is completely accommodated in the mixer housing. Id. The
Examiner also finds that Anderson's device includes "a plurality of grooves
40 defined by a space between the mixer housing and the atomization sleeve,
[which] are provided in the outer surface of the mixer housing," and the
Examiner concludes it would have been obvious to include these grooves on
the inner surface of the atomization sleeve as required by claim 1. Id. at 3-
4.
As discussed below, we are persuaded of reversible error in the
rejection of claim 1 because the Examiner has not identified a mixing
element in Anderson that is completely accommodated in the mixer housing
identified by the Examiner.
As noted above, the Examiner finds that Anderson discloses a one-
piece mixer housing 16 and mixing elements 12 and 32, and the Examiner
finds that the mixing element is completely accommodated within the mixer
housing because element "31 of [tube] 12 is completely accepted in, and
5 Homer, US 4,093,188, iss. June 6, 1978.
3
Appeal 2016-003803
Application 12/850,420
completely fills, the space provided by the mixer housing 16." Final Act. 3.
Further, the Examiner finds:
The entire tube (12) is completely accommodated (i.e. accepted)
in the mixer housing (16) based on the Examiner's interpretation
of "accommodated in," which allows for part of a body being
accepted into something to mean that the entire body is accepted
into the thing, even though the entire body is not completely
"enclosed within" thing. In other words, accommodated (i.e.
accepted) into means something different from "enclosed
within" as argued by the Applicant.
Ans. 18.
We determine the scope of the claims in patent applications not solely
on the basis of the claim language, but upon giving claims "their broadest
reasonable interpretation consistent with the specification" and "in light of
the specification as it would be interpreted by one of ordinary skill in the
art." In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004 ). Here, we find that the Examiner's interpretation of the claim to
require only that a portion of the mixing element is "accepted" into the
mixer housing is not consistent with the broadest reasonable interpretation of
claim 1. Assuming, arguendo, that we agreed with the Examiner that
"accommodated" means "accepted," the claim additionally requires that the
mixing element is completely accepted into the mixer housing, i.e., that the
entirety of the mixing element is accepted into the mixer housing. The
Examiner appears to take the position that because the mixer housing is
completely filled, the mixing element is completely accepted within the
mixer housing. We find that this interpretation is inconsistent with the plain
meaning of the claim and with the Specification before us, each of which
supports the interpretation that the mixer housing must allow for the entirety
of the mixing element to be inserted therein. See, e.g. Spec. Fig. 1 (showing
4
Appeal 2016-003803
Application 12/850,420
the entirety of mixing element 3 within the mixer housing 2). Thus, we find
that even if accommodated were interpreted to mean accepted, the Examiner
has not identified any mixing element in Anderson that is entirely accepted
within the mixer housing identified by the Examiner. In fact, it is only a
small, reduced diameter portion of tube 12 in Anderson that may be inserted
into element 16. Accordingly, the Examiner has not shown that the art of
record teaches or otherwise makes obvious all of the requirements of claim
1, and thus, we do not sustain the rejection of claim 1.
Regarding to the dependent claims on appeal, it is not readily apparent
on the record before us that the art relied upon by the Examiner cures the
deficiency found above with respect to the rejection of independent claim 1.
Accordingly, we also do not sustain the rejection of claims 2-16 for the
reasons discussed above.
CONCLUSION
We REVERSE the rejections of claims 1-16.
REVERSED
5