Ex parte Kamiyama et al.

Board of Patent Appeals and Interferences

Dec 20, 1999

08181539 (B.P.A.I. Dec. 20, 1999)

According to the request for a corrected filing receipt filed April 13, 1992 (Paper No. 3) in parent1
Application 07/840,181, the second inventor’s name is YANO HARUHIKO, Haruhiko is the family name. The
request has been annotated to indicate that a corrected filing receipt was processed May 8, 1992. However, the
correction has not been physically entered in the file record . This clerical processing oversight should be corrected
upon return of the ‘539 application to the jurisdiction of the examiner.
Application for patent filed December 27, 1993. According to appellants, this application is a continuation2
of Application 07/840,181, filed February 24, 1992, now abandoned, which is a divisional of Application 07/658,878,
filed February 21, 1991.
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not binding precedent of the Board.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. 31
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MASAFUMI KAMIYAMA, YANO HARUHIKO, 1
MINORU TSUCHIDA and EIJI O’SHIMA
____________
Appeal No. 1996-2015
Application No. 08/181,5392
____________
HEARD: November 1, 1999
____________
Before KIMLIN, WARREN, and SPIEGEL, Administrative Patent Judges.
SPIEGEL, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the examiner's final rejection of claims
20 through 22 and 24 through 33, which are all of the claims pending in this application.
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Claims 28 and 29 are illustrative:
28. An apparatus for suspension polymerization of a monomeric composition
of uniformly sized particles having a narrow distribution, said apparatus comprising:
first retaining means for retaining a disperse phase component comprising a
monomeric composition;
second retaining means for retaining a continuous phase component comprising
a medium;
disperser means for forming a dispersion of said disperse phase component and
said continuous phase component, said disperser means comprising a stationary part
having a first circular surface and a second annular surface surrounding and concentric
with said first surface, a rotating part having a third circular surface confronting said first
surface and a fourth annular surface surrounding and concentric with said third surface
and confronting said second surface, said first surface and said third surface having
substantially the same shape and defining a space therebetween having substantially a
uniform thickness, a uniform shear force generating field being disposed in said space,
said second surface and said fourth surface having substantially the same shape and
defining a gap therebetween in the range of about 1.8 mm or less;
first supplying means for supplying said disperse phase component from said
first retaining means to said shear force generating field at a constant rate;
second supplying means for supplying said continuous phase component from
said second retaining means to said shear force generating field at a constant rate, said
first and second means being independent whereby said disperse phase component and
said continuous phase component contact one another for the first time in said shear
force generating field, and substantially all of said dispersion must pass through said gap
after being dispersed in said shear force generating field;
polymerization means for polymerizing said dispersion; and
means for supplying said dispersion to said polymerization means.
29. An apparatus for suspension polymerization of a monomeric composition
of uniformly sized particles having a narrow distribution comprising:
first retaining means for retaining a disperse phase component comprising a
monomeric composition;
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second retaining means for retaining a continuous phase component comprising
a medium;
disperser means for forming a dispersion of said disperse phase component and
said continuous phase component, said disperser means comprising a stationary part
having an inner surface, a rotating part disposed within said stationary part having an
outer surface, said inner surface and said outer surface having substantially the same
shape and defining a space therebetween having a substantially uniform thickness in the
range of about 0.01 mm to about 5.0 mm, a uniform shear force generating field
disposed in said space;
first supplying means for supplying said disperse phase component from said
first retaining means to said shear force generating field at a constant rate;
second supplying means for supplying said continuous phase component from
said second retaining means to said shear force generating field at a constant rate, said
first and second means being independent whereby said disperse phase component and
said continuous phase component contact one another for the first time in said shear
force generating field;
polymerization means for polymerizing said dispersion; and
means for supplying said dispersion to said polymerization means.
Independent claims 32 and 33 recite the apparati of claims 28 and 29, respectively, except that the
stationary part is changed to a second rotating part.
The examiner relies upon the following references as evidence of obviousness:
China 1,690,668 Nov. 6, 1928
Eppenbach (Eppenbach ‘178) 1,728,178 Sept. 17, 1929
Eppenbach (Eppenbach ‘288) 1,738,288 Dec. 3, 1929
Lee et al. (Lee) 3,488,699 Jan. 6, 1970
ISSUES
Appeal No. 1996-2015
Application No. 08/181,539
By an apparently inadvertent error on the examiner’s part, claims 27, 30 and 31 have not been listed in the3
statement of the rejection on page 3 of the answer. It is quite clear, however, that claims 27, 30 and 31 should be
included in the rejection since these claims were listed in the statement of this rejection on page 2 of the final Office
action mailed September 15, 1994 (Paper No. 21). Moreover, the appellants in their brief have considered claims 27,
30 and 31 to be included in the above noted prior art rejection (e.g., see pages 1 and 9). Under these circumstances,
we also consider claims 27, 30 and 31 to be included in this rejection and further consider the examiner’s
aforementioned error to be harmless.
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Claims 20-22 and 24-33 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Lee in view of China or Eppenbach ‘288 in view of Eppenbach ‘178. We affirm.3
In reaching our decision in this appeal, we have given careful consideration to the appellants’
specification and claims and to the respective positions articulated by the appellants and the examiner.
We make reference to the examiner’s answer (Paper No. 26, mailed
June 13, 1995) for the examiner’s reasoning in support of the rejection and to the appellants’ brief
(Paper No. 25, filed March 15, 1995) for the appellants’ arguments thereagainst.
THE INVENTION
Appellants’ claimed invention is directed to an apparatus for producing micron-sized particles
having a narrow size distribution range by suspension polymerization of a monomeric composition. The
apparatus comprises (a) independent first and second vessels for supplying a disperse phase
component containing the monomeric composition and a continuous phase component comprising a
medium, respectively, through (b) associated independent passageways directly into a uniform shear
force generating field of a disperser where they contact each other for the first time to form a
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dispersion, (c) the disperser, (d) a polymerization reactor and (e) associated means for supplying the
dispersion to the polymerization reactor. The disperser comprises either a stationary part (stator) and a
rotating part (rotor) (claims 28 and 29) or two rotors (claims 32 and 33). The field of shear force
generation may be regarded as lying in a space of specified clearance either between the stator and the
rotor or between the two rotors. The width of the clearance through which the dispersion is discharged
can be adjusted to obtain particles having a desired size and distribution. (See specification, pages 4-
11; brief, pages 2-8.)
OPINION
To establish a prima facie case of obviousness, there must be some suggestion or motivation to
modify the reference or combined reference teachings and a reasonable expectation of success.
Furthermore, the prior art must teach or suggest all the claim limitations. In re Vaeck, 947 F.2d 488,
493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991). This does not mean that the cited prior art references
must specifically suggest making the combination. B.F. Goodrich Co. v. Aircraft Braking Systems
Corp., 72 F.3d 1577, 1582, 37 USPQ2d 1314, 1318 (Fed. Cir. 1996); In re Nilssen, 851 F.2d
1401, 1403, 7 USPQ2d 1500, 1502 (Fed. Cir. 1988). Rather, the test for obviousness is what the
combined teachings of the prior art references as a whole would have suggested to one of ordinary skill
in the art. In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991); In re Keller,
642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).
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Here, Lee describes an apparatus for preparing uniform dispersions of a disperse phase
component (i.e., immiscible material) in a continuous phase component (i.e., carrier liquid), comprising
a first retaining means 12 for the disperse phase component, a second retaining
means 14 for the continuous phase component, a disperser means 40 (i.e., mixer unit), a first
supplying means 28-34-36-42 for supplying the disperse phase component at a constant rate, a
second supplying means 30-34-38-44 for supplying the continuous phase component at a
constant rate, and an outlet port 62 (i.e., means for supplying the dispersion to a polymerization means)
connected directly to any desired process (i.e., polymerization means) (col. 4, lines 65-68; col. 6, line
22 - col. 7, line 45; Fig. 1). Disperser means 40 is any mixer unit which provides rapid and complete
mixing and can be operated on a “demand” basis, preferably a gear pump mixer (col. 6, lines 7-18;
col. 7, lines 63-73; col. 11, line 74 - col. 12, line 1). Thus, Lee differs in failing to disclose the
specifically claimed disperser means (i.e., mixer).
China describes a mill mixer useful in treating suspensions of disperse and continuous phase
liquids with improved efficiency (page 1, lines 1-2, 9-11 and 16-19). The mixer comprises separate
input pipes 142 which feed liquids through hollow shafts 125 and 126 directly to a shear force field
between the working surfaces 149 and 156 of closely adjacent upper and lower rotors 151 and 146
and an output chamber 129 having an outlet 131 (Fig. 1; page 1, line 76 - page 2, line 120; page 4,
lines 41-87). One of the rotors may be stationary or both may rotate in the same or opposite directions
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to produce the shear force field ( page 2, line 120 - page 3, line 3; page 3, lines 14-22). Rotor
variations are illustrated in Figs. 1-8.
Eppenbach ‘288 describes a mill mixer comprising rotating smooth (for emulsifying) or
nonsmooth (for grinding) working surfaces 49, 50, preferably rings or annuli, which are removably
positioned on two rotors 15, 16. The space between the working surfaces is adjustable between about
0.05 to 0.51 mm. Inflow feeds through inlet 44 into region 45 before entering the space between the
grinding surfaces. (Page 1, lines 4-7; page 2, lines 95-109; page 3, lines 28-32, 77-82; page 4, lines
16-31, 91-96.) Eppenbach ‘178 describes a similar mill mixer with grinding disks 19, 22 minutely
spaced apart and positioned on two rotors 17, 20 with inlet 44 for feeding a mixture to be treated.
The grinding disks are provided with depressions which serve as shearing means. The mixture to be
treated is fed either from a region peripherally exterior to the grinding disks or into the interior of the
grinding disks (Page 1, lines 8-28, 76-39; page 2, lines 20-40.)
1. Rejection over Lee in view of China in view of Eppenbach ‘178
According to the examiner, the skilled artisan would have been motivated both to use China’s
mixer in Lee’s apparatus because China’s mixer is not only used for the same purpose of providing a
suspension but also provides a mixer with increased efficiency and to substitute irregular working
surfaces for the smooth working surfaces of China to increase the shear force produced, thereby
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improving homogenization, as suggested by Eppenbach ‘178 (answer, pages 6-7).
Appellants argue this is a hindsight reconstruction of the claimed invention (brief, pages 10-11).
We wish to note that any judgment on obviousness is in a sense necessarily a reconstruction based
upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level
of ordinary skill at the time the invention was made, and does not include knowledge gleaned only from
the applicants’ disclosure, such a reconstruction is proper. In re McLaughlin, 443 F.2d 1392, 1395,
170 USPQ 209, 212 (CCPA 1971). We believe that to be the case here.
Lee explicitly states that other mixers may be used providing they fulfill certain requirements,
e.g., rapid and complete mixing on demand (col. 6, lines 7-18; col. 7, lines 63-73; col. 11, line 74 - col.
12, line 1). Appellants have not argued, let alone established, that China’s mixer cannot fulfill the
requirements of Lee’s mixer. Rather, appellants argue that Lee does not provide a specific working
example using China’s mixer. It is axiomatic that the entire disclosure of a reference must be evaluated
and that a reference is not limited to the disclosure of specific working examples. Moreover, one of
ordinary skill in the art would have reasonably expected the mixer of China to provide more efficient
mixing in view of China’s disclosure that the centrifugal force of his mixer aids in the production of high
velocity shear force (see e.g., page 3, lines 101-110).
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Appellants argue that the combination of China and Lee does not teach or suggest
independently supplying the disperse and continuous phases such that they contact each other for the
first time in a uniform shear force generating field (brief, pages 15-16). We disagree. China’s mixer
comprises separate input pipes 142 which independently feed into separate hollow shafts 125 and 126
such that the two feeds contact each other directly for the first time in the space between the working
surfaces 149 and 156 of adjacent rotors, i.e., in the shear force generating field. Further, the close
adjacency of the working surfaces in China (page 1, lines 12-13; page 2, lines 91-92; Figs. 1-9)
reasonably appears to suggest a uniform shear force generating field. As to the claimed gap and space
ranges recited in claims 24, 28, 29, 30 and 32, we agree with the examiner (answer, pages 5-6) that
the explicit suggestions to use “closely adjacent surfaces” in China (page 1, lines 13-14; page 3, line
104) and a “narrow clearance” or “minute clearance” in Eppenbach ‘178 (page 1, line 25; page 2, lines
76-77) would have suggested the claimed gap limitations to one of ordinary skill in the art. Appellants
have not challenged the examiner’s position that the claimed gap and spacing ranges are conventional in
the art (answer, page 7). As set forth in In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219
(CCPA 1980), it is normally within the skill in the art to optimize a result effective variable. Here, both
China and Eppenbach ‘178 suggest that the amount of clearance between working surfaces combines
with centrifugal forces and/or speed to facilitate homogenization and emulsification. Finally, Figs. 1 and
4 in China reasonably appear to suggest embodiments wherein substantially all of the dispersion formed
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in the shear force generating field pass through a gap at the periphery of the rotors prior to exiting the
mixer.
In regard to the additional claim limitations argued by appellants on page 16 of the brief: The
asperities of claims 20 and 25 (which provide an uneven, rough working surface) and the substantially
smooth working surface(s) of claims 21 and 26 are suggested by the disclosure in Eppenbach ‘178 that
while plain or smooth flat surfaces are satisfactory for many applications, use of depressions on a
working surface to provide supplemental shearing means provides more effective homogenization and
emulsification (page 1, lines 24-28; page 2, lines 26-40) as well as the disclosure of smooth working
surfaces in China (page 2, lines 71-75). Independently controlling the flow of materials into the shear
force generating field as recited in claims 22 and 27 is suggested by the control valves 42-44 of Lee
(col. 6, lines 52-57 and 64-67) and by optional screw valves 158-161 in China (page 2, lines 99-120).
Therefore, we agree with the examiner that all the structural limitations of claims 20-22 and 24-
33 would have been prima facie obvious in view of the combined disclosures of Lee, China and
Eppenbach ‘178.
Where as here, the initial burden of establishing a prima facie case of obviousness is met by the
examiner, the burden of coming forward with evidence or argument shifts to appellants.
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In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). Appellants argue
unexpected results, i.e., the claimed apparatus results in a 2.5 fold decrease in the distribution range of
particles produced (brief, pages 16-19).
Having reviewed the showing in the specification, we agree with the examiner that appellants
have not met their burden of showing unexpected results. First, appellants have not compared the
claimed subject matter with the closest prior art, i.e., the gear pump mixer apparatus of Lee, or
explained why the evidence in the specification based upon a four-blade impeller proves a comparison
of their claimed invention which is closer that than Lee.
In re Baxter Travenol Labs., 952 F.2d 388, 392, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991); In re
De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). Second, it is not enough for
appellants to show that the results for appellants' claimed invention and the comparative examples are
different. Appellants have the burden of showing that the differences are significant and unexpected. In
re Freeman, 474 F.2d 1318, 1324, 177 USPQ 139, 143 (CCPA 1973); In re D'Ancicco, 439 F.2d
1244, 1248, 169 USPQ 303, 306 (CCPA 1971). For example, a four-blade impeller mixer would
not be expected to provide the incremental mixing and, therefore, “perfect” mixing of Lee’s gear pump
mixer (col. 7, lines 33-51). Alternatively, the results may not be unexpected in view of the improved
efficiency in homogenization based upon use of centrifugal force and roughened working surfaces
suggested by China and Eppenbach ‘178, respectively.
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For the above reasons, we determine that appellants have not met their burden of showing
unexpected results. Reevaluating the patentability based on the total record, we determine that the
preponderance of the evidence weighs in favor of obviousness within the meaning of § 103, giving due
consideration to appellants’ arguments and evidence. Accordingly, the rejection of claims 20-22 and
24-33 under 35 U.S.C. § 103 as being unpatentable over Lee in view of China in view of Eppenbach
‘178 is affirmed.
2. Rejection of claims 20-22 and 24-33 over Lee in view of Eppenbach ‘288 in view of
Eppenbach ‘178
According to the examiner, any deficiencies of Lee are met by Eppenbach ‘288 (answer, page
5). We disagree.
All of the independent claims require first and second supply means whereby the disperse and
continuous phase components contact one another for the first time in the uniform shear force
generating field. The examiner admits that Lee does not disclose or suggest a uniform shear force
generating field (answer, page 8, first full para.). Secondly, we agree with appellants (brief, para.
bridging pages 15-16) that the disperse and continuous phase components of Lee first contact each
other prior to the shear force generating field (i.e., in the triangular space above the gears) and that
neither Eppenbach discloses or suggests premixing the two phases before entering the shear force
generating field (i.e., in Eppenbach ‘288 the inlet 44 feeds into region 45 before entering the space
between the grinding surfaces; and, in Eppenbach ‘178 the mixture is fed into the mill). Moreover,
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independent claims 28 and 32 require that substantially all of the dispersion must pass through the
gap defined by the second and fourth surfaces after being dispersed in the uniform shear force
generating field. The examiner first states that the claimed second and fourth surfaces, which define the
recited “gap” 78, corresponded to housing 72 and gear 70 in Lee, respectively, and then refers to col.
7, lines 46-50 in Lee for showing that all the mixing constituents pass through a defined mixing gap
before exiting the mixer (answer, page 4, para. 1). Thus, it appears that the examiner is now equating
mixing zone 76 with the “gap” recited in claims 29 and 32. However, mixing zone 76 is not defined by
the second and fourth surfaces, i.e., by housing 72 and gear 70. Therefore, the examiner’s position is
not well taken. Lastly, the examiner has not pointed out and we do not find where either Eppenbach
‘288 or ‘178 makes up for this deficiency.
Accordingly, we conclude that the examiner has not established a prima facie case of
obviousness and reverse the rejection of claims 20-22 and 24-33 under 35 U.S.C. § 103 over Lee in
view of Eppenbach ‘288 in view of Eppenbach ‘178.
CONCLUSION
To summarize, the decision of the examiner (I) to reject claims 20-22 and 24-33 under
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35 U.S.C. § 103 over Lee in view of China in view of Eppenbach ‘178 is sustained and (II) to reject
claims 20-22 and 24-33 under 35 U.S.C. § 103 over Lee in view of Eppenbach ‘288 in view of
Eppenbach ‘178 is reversed.
No time period for taking any subsequent action in connection with this appeal may be
extended under 37 CFR § 1.136(a).
AFFIRMED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES F. WARREN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CAROL A. SPIEGEL )
Administrative Patent Judge )
CAS/kis
CUSHMAN, DARBY & CUSHMAN
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