Ex Parte Inoue

Board of Patent Appeals and Interferences

Feb 17, 2009

09767885 (B.P.A.I. Feb. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KIMIO INOUE
____________

Appeal 2009-0242
Application 09/767,885
Technology Center 1700
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Decided:1 February 17, 2009
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Before BRADLEY R. GARRIS, LINDA M. GAUDETTE, and
MARK NAGUMO, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 10-13, the only
claims pending in the Application.2 (Appeal Brief filed July 24, 2007
(“Br.”) 1, § III.) We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

2 An oral hearing was held on February 11, 2009.
Appeal 2009-0242
Application 09/767,885

Independent claim 10 is illustrative of the invention and is reproduced
below:
10. A twin-screw extruder for mixing and dispersing a material to
be kneaded into a product having a desired state of kneading and extruding
the product from a tip end thereof, said extruder comprising:
a barrel having two intercommunicating chambers and an extrusion
opening at a tip end thereof; and
a screw set mounted in each of said chambers so as to not completely
mesh with one another, each of said screw sets comprising:
a rotor segment comprising at least one kneading rotor, said kneading
rotor having a plurality of kneading blades which provide a plurality of tip
clearances different from each other at least in the circumferential direction,
said kneading rotor having a constant sectional shape in the axial direction,
as viewed in a section transverse to the axial direction, except for crest
portions of said kneading blades; and
a screw segment comprising at least one screw blade, said screw
segment, except for crest portions of the screw blades thereof, having the
same sectional shape as said at least one rotor segment comprising at least
one kneading rotor, as viewed in a section transverse to the axial direction,
except for the crest portions of said kneading blades.

The Examiner relies on the following prior art reference to show
unpatentability (Examiner’s Answer mailed Sept. 28, 2007 (“Ans.”) 2,
§ (8)):
Inoue 5,947,593 Sep. 7, 1999
Appellants request review of the sole ground of rejection: claims 10-
13 under 35 U.S.C. § 103(a) as obvious over Inoue.
ISSUE
Have Appellants shown reversible error in the Examiner’s finding that
that the claimed “screw segment” reads on Inoue’s rotor segment 1b?
FINDINGS OF FACT
1. According to Appellants’ Specification,
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Application 09/767,885

a twin-screw extruder is [generally] constructed by
providing a pair of screw sets in a barrel having a
chamber extending from one side to the other side, each
of the screw sets being a combination of kneading
segments, such as kneading rotors and kneading disks,
and screw segments.

(Spec. 1:9-12.)
2. Figure 1A of the Specification shows an embodiment of Appellants’
twin-screw extruder in which
each of the screw sets 1 and 1 comprises two-blade type
screw segments 11 for pushing the material under
kneading out to the opposite side, two-blade type rotor
segments 12 for mixing and dispersing the material under
kneading, and two-blade type kneading disk segments 13
for primarily mixing the material under kneading.

(Spec. 8:13-16.)
3. Inoue discloses a twin-screw kneading apparatus comprising a pair of
screw sets 1 and 1 (col. 4, ll. 40-42), each set 1 having “a screw
segment 1a which pushes the material to be kneaded to the other side
and an integrated type rotor segment 1b which kneads the material to
be kneaded” (col. 5, ll. 9-12). Inoue further discloses that “[t]he rotor
segment 1b has three kneading blades 7, 7 and 7” (col. 5, ll. 21-22).
4. Inoue also refers to rotor segments 1b as “kneading segments” (col. 8,
l. 41). (See Ans. 5.)
5. The Examiner finds that both the claim 10 “rotor segment” and
“screw segment” limitations read on Inoue’s rotor segments 1b. (Ans.
5.) The Examiner concedes that Inoue does not expressly refer to the
rotor segments 1b as “screw segments.” (Ans. 5.) However, the
Examiner contends that because Inoue’s rotor segments 1b have
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Appeal 2009-0242
Application 09/767,885

“spiral angles” (Ans. 5 (citing Inoue col. 3, ll. 25-27)), they “are
within the scope of the [claim 10] term ‘screw segment’” (Ans. 5).
6. Appellants argue that the Examiner erred in interpreting the claim
term “screw segment” as encompassing Inoue’s rotor segments 1b.
(App. Br. 4:3-5.) Appellants rely on the Declarations of Dr. Kimio
Inoue3, one of the named inventors in the present Application, to
establish that one of ordinary skill in the art would understand the
claim terms “screw segment” and “rotor segment” as referring to
specific structural elements which are separate and distinct from one
another. (App. Br., para. bridging 3-4.)
7. Dr. Inoue testified that “‘rotor segment’ is a term of art in the field of
plastic kneaders/extruders” which describes “a structure [used] to
optimize kneading of the type of plastic material to be extruded” (Ex.
1, ¶¶ 6 & 7; see also, Ex. 2, ¶¶ 6 & 7 (discussing the meaning of
“kneading rotor”).)
8. Dr. Inoue also testified that “‘screw segment’ is a term of art in the
field of plastic kneaders/extruders” which describes “a structure
[used] to optimize the axial advancement of plastic material.” (Ex. 1,
¶¶ 8 & 9; Ex. 2, ¶¶ 8 & 9.)
9. According to Dr. Inoue,
while a rotor segment may axially advance the plastic
material during the kneading thereof, and may have a
special configuration, in light of the well understand [sic]
functional and structural distinction in the art between a
rotor segment and a screw segment, those skilled in the

3 Copies of the Inoue Declarations are provided in the Evidence Appendix to
Appellants’ Appeal Brief as Exhibits 1 & 2 (hereinafter “Ex. 1” and “Ex.
2”).
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Appeal 2009-0242
Application 09/767,885

art would not identify an element designed and used as a
rotor segment in an extruder as a “screw segment.”

(Ex. 1, ¶ 10; see also, Ex. 2, ¶¶ 10 & 11.)

PRINCIPLES OF LAW
During examination, claims terms must be given “their broadest
reasonable construction consistent with the specification.” In re Icon Health
and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). The broadest
reasonable interpretation of the claims must also be consistent with the
interpretation that those skilled in the art would reach. In re Cortright, 165
F.3d 1353, 1358 (Fed. Cir. 1999).
Because the meaning of a claim term as understood by persons
of skill in the art is often not immediately apparent, and because
patentees frequently use terms idiosyncratically, the court looks
to “those sources available to the public that show what a
person of skill in the art would have understood disputed claim
language to mean.” Those sources include “the words of the
claims themselves, the remainder of the specification, the
prosecution history, and extrinsic evidence concerning relevant
scientific principles, the meaning of technical terms, and the
state of the art.”

Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005).

ANALYSIS
Resolution of the issue presented in this Appeal turns on interpretation
of the claim 10 term “screw segment.” We are in agreement with Appellants
that the Examiner has applied an overly broad interpretation of this claim
term as encompassing the structure of any segment in Inoue’s screw set, i.e.,
either or both of Inoue’s screw segments 1a and rotor segments 1b.
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Application 09/767,885

Moreover, the Specification supports Appellants’ proposed interpretation of
“screw segment” as describing a specific structure used to advance material
through a kneader/extruder. We agree that one of ordinary skill in the art
would not understand this term as encompassing a “rotor segment” which, as
used in appealed claim 10 and the Specification, describes a separate and
distinct structure used to knead/mix material. This interpretation of the term
“screw segment” is likewise consistent with its use in the applied prior art.
Based on our interpretation of the claim term “screw segment,” we are
in agreement with Appellants that the Examiner’s obviousness determination
is based on an unsupported finding that the “screw segment” of appealed
claim 10 reads on Inoue’s rotor segments 1b. Therefore, we do not sustain
the Examiner’s rejection of claims 10-13 under 35 U.S.C. § 103(a) as
obvious over Inoue.

CONCLUSION
The decision of the Examiner rejecting claims 10-13 is reversed.
REVERSED

tc

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1940 DUKE STREET
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