Ex Parte Keggenhoff et al

Patent Trial and Appeal Board

Aug 9, 2018

12544267 (P.T.A.B. Aug. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/544,267 08/20/2009
157 7590 08/13/2018
Covestro LLC
1 Covestro Circle
PITTSBURGH, PA 15205
FIRST NAMED INVENTOR
Berthold Keggenhoff
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.
P09160/BMS081050 9008
EXAMINER
REIS,RYAN ALEXANDER
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
08/13/2018 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):
US-IPR@covestro.com
laura.finnell@covestro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BERTHOLD KEGGENHOFF, JEFFREY BOLTON,
FRIEDHELM STEFFENS, MARC SEEKAMP, GERHARD RUPPERT,
JURGEN KERN, and THOMAS RUNOWSKI
Appeal2017-007749
Application 12/544,267
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL C. ASTORINO, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants 1 appeal under 35 U.S.C. § 134 from the Examiner's
rejections of claims 1, 2, 8-19, 26-30, 32-36, and 38--41. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART and ENTER a new ground of rejection
pursuant to our authority under 37 C.F.R. § 41.50(b).
1 "The real party in interest is Covestro Deutschland AG." (Appeal Br. 2.)
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Application 12/544,267
STATEMENT OF THE CASE
The Appellants' invention "relates to a method for uniformly dividing
fluid streams into two or more partial fluid streams in chemical
apparatuses." (Spec. 1, 11. 3--4.)
Illustrative Claim
1. A method for dividing a fluid stream into two or more
uniform portions of the stream in a chemical apparatus
compnsmg:
a) passing at least one fluid stream into a distributor device
located in the chemical apparatus comprising:
(i) at least one plate having two or more openings, the
openings being rounded or chamfered on at least one side of the
plate in a manner such that the two or more uniform portions of
the stream form,
and
b) causing the fluid streams formed to exit the distributor
device
wherein the fluid streams are liquid fluid streams in
which at least one substance is present in dissolved and/or
suspended form and the distributor device reduces the
formation of deposits in the chemical apparatus of the
substances dissolved or suspended in the liquid stream, and
wherein the chemical apparatus is an apparatus in which
a chemical reaction or heat transfer takes place and is a reactor,
a tubular heat exchanger or a cylinder column.
Dear
Ardnt
Collins
Yokolgawa
References
us 5,209,259
us 5,899,390
US 2004/0256487 Al
JP 51-1104 7 8
2
May 11, 1993
May4, 1999
Dec. 23, 2004
Sept. 28, 1976
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Application 12/544,267
Rejections
I. The Examiner rejects claims 1, 2, 8, 11, 13-15, 18, 26-30,
32-36, and 38--41 under 35 U.S.C. § 102(b) as anticipated by Collins. (Non-
Final Action 2.)
II. The Examiner rejects claims 1, 2, 9, and 13-16 under 35 U.S.C.
§ 102(b) as anticipated by Arndt. (Non-Final Action 8.)
III. The Examiner rejects claims 1, 2, 8-11, 13-18, 2 7, 2 9, 3 2,
and 33 under 35 U.S.C. § 102(b) as anticipated by Yokolgawa. (Non-Final
Action 10.)
IV. The Examiner rejects claims 26, 28, 30, 34--36, and 38--41
under 35 U.S.C. § 103(a) as unpatentable over Yokolgawa. (Non-Final
Action 17.)
V. The Examiner rejects claims 10 and 17 under 35 U.S.C.
§ 103(a) as unpatentable over Collins and Dear. (Non-Final Action 14.)
VI. The Examiner rejects claims 12 and 19 under 35 U.S.C.
§ 103(a) as unpatentable over Collins and Dear. (Non-Final Action 15.)2
ANALYSIS
Claims 1, 13, 26, and 36 are the independent claims on appeal, with
the rest of the claims on appeal (i.e., claims 2, 8-12, 14--19, 27-30, 32-35,
and 38--41) depending therefrom. (Appeal Br., Claims App.) Independent
claims 1 and 26 recite a "method" involving a "distributor device" that is
"located in [a] chemical apparatus," and independent claims 13 and 36 recite
2 Although the heading for this rejection lists only "Collins," the body of this
rejection discusses Collins "as modified by Dear." (See Non-Final
Action 15-16.)
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Application 12/544,267
a "distributor device" that is "positioned within a chemical apparatus." (Id.)
"Chemical apparatuses within the scope of the invention include any
apparatuses in which chemical reactions or substance or heat transport
processes can take place." (Spec. 4, 11. 24--25.)
Rejection I
The Examiner rejects claims 1, 2, 8, 11, 13-15, 18, 26-30, 32-36, and
38--41 under 35 U.S.C. § 102(b) as anticipated by Collins. (See Non-Final
Action 2.) For the reasons explained below, we sustain this rejection with
respect to claims 1, 2, 8, 11, 13-15, 18, and 27-30; and we do not sustain
this rejection with respect to claims 26, 32-36, and 38--41.
Rejection I - Independent Claims 1 and 13
Independent claims 1 and 13 require the chemical apparatus to be "an
apparatus in which a chemical reaction or heat transfer takes place and is a
reactor, a tubular heat exchanger or a cylinder column." (Appeal Br.,
Claims App.)
The Appellants argue that the Examiner does not establish sufficiently
that Collins discloses "a reactor, a tubular heat exchanger or a cylinder
column" in which "a chemical reaction or heat transfer takes place."
(Appeal Br. 7, italics omitted.) However, the Examiner finds that Collins
"discloses a drug delivery atomizer," that "the atomization of fluids causes a
heat transfer," and that a nozzle assembly 150 "shaped as a cylindrical
column" is shown in Collins's drawings. (Answer 21.) The Appellants do
not challenge these findings by the Examiner.
Thus, we are unpersuaded by the Appellants' arguments; and we
sustain the Examiner's rejection of independent claims 1 and 13 under
35 U.S.C. § 102(b) as anticipated by Collins.
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Rejection I-Independent Claims 26 and 36
Independent claims 26 and 36 require the distributor to comprise a
plate having "openings that are rounded on at least one side of the plate."
(Appeal Br., Claims App.) The Specification provides a definition for the
claim term "rounded." Specifically, "'rounded' in the context of the present
invention means that no edges are created in the region of the entry into an
opening." (Spec. 7, 11. 17-20.)
The Appellants argue that the Examiner does not establish sufficiently
that Collins discloses "rounded" openings when this term is construed in
light of the Specification. (See Appeal Br. 10-11.) The Examiner finds that
Collins discloses openings "which have circular inlets," and, "[ s ]ince the
inlets of the openings of Collins [] are circular, they are considered rounded
about the circumference of the inlet." (Answer 21-22.) The Examiner also
finds that Collins's "openings are rounded (rounded about the central axis of
each opening) such that no edges are created in the region of the entry of the
fluid stream into the opening." (Non-Final Action 8.) However, we agree
with the Appellants that the openings in Collins, supposedly supporting the
Examiner's findings, are not "rounded" as required by the independent
claims 26 and 36.
Thus, we persuaded by the Appellants' argument; and we do not
sustain the Examiner's rejection of independent claims 26 and 36 under
35 U.S.C. § 102(b) as anticipated by Collins.
Rejection I-Dependent Claims 2, 8, 11, 14, 15, 18, and 27-30
These claims depend directly or ultimately from independent claims 1
and 13; and they are not argued separately therefrom. (See Appeal Br. 7.)
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Thus, we sustain the Examiner's rejections of dependent claims 2, 8, 11, 14,
15, 18, and 27-30 under 35 U.S.C. § 102(b) as anticipated by Collins.
Rejection I - Dependent Claims 32 and 33
Claims 32 and 33 depend from independent claims 1 and 13,
respectively, and require the chemical apparatus to be "a reactor or a tubular
heat exchanger." (Appeal Br., Claims App.)
The Appellants argue that the Examiner does not establish sufficiently
that Collins discloses a reactor or a tubular heat exchanger. (See Appeal
Br. 9.) The Examiner finds that Collins discloses "a reactor or a tubular heat
exchanger" in its abstract and Figure 2 (Non-Final Action 6), but does not
elaborate as to why this is so. As indicated above, the Examiner explains
why Collins discloses a cylindrical column (see Answer 21 ), but we see no
similar explanation in the record as to why Collins also discloses a reactor
and/or tubular heat exchanger.
Thus, we are persuaded by the Appellants' argument; and we do not
sustain the Examiner's rejection of dependent claims 32 and 33 under
35 U.S.C. § 102(b) as anticipated by Collins.
Rejection I - Dependent Claims 34, 35, and 38-41
These claims depend directly or ultimately from independent
claims 26 and 36 and are rejected on the same grounds. (See Non-Final
Action 2.) The Examiner's further findings and determinations concerning
these dependent claims (see id. at 3--4) do not compensate for the above-
discussed shortcomings in the rejections of independent claims 26 and 36.
Thus, we do not sustain the Examiner's rejection of dependent
claims 34, 35, and 38--41 under 35 U.S.C. § 102(b) as anticipated by Collins.
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Rejection II
The Examiner rejects claims 1, 2, 9, and 13-16 under 35 U.S.C.
§ 102(b) as anticipated by Arndt. (Non-Final Action 8.) For the reasons
explained below, we sustain this rejection with respect to claims 1, 2, 9,
and 13-16.
Rejection II - Independent claims 1 and 13
As indicated above, independent claims 1 and 13 require the chemical
apparatus to be "an apparatus in which a chemical reaction or heat transfer
takes place and is a reactor, a tubular heat exchanger or a cylinder column."
(Appeal Br., Claims App.) Independent claims 1 and 13 also recite a
"liquid" fluid stream "in which at least one substance is present in dissolved
and/ or suspended form." (J d.)
The Appellants argue that the Examiner does not establish sufficiently
that Ardnt discloses "a cylindrical column" in which "a chemical reaction or
heat transfer takes place," and/or that Ardnt discloses "liquid fluid streams in
which at least on[e] substance is present in dissolved and/or suspended
form." (Appeal Br. 13-14.) However, the Examiner finds that Arndt
discloses "a fuel injector where fuel is also formed using various chemicals
and additives," the Examiner finds that Ardnt shows a "cylindrical column
in the body of the fuel injector," and the Examiner finds that "combustion
fuel contains dissolved particles." (Answer 22.) The Appellants do not
challenge these findings by the Examiner.
Thus, we are unpersuaded by the Appellants' arguments; and we
sustain the Examiner's rejection of independent claims 1 and 13 under
35 U.S.C. § 102(b) as anticipated by Ardnt.
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Rejection II- Dependent Claims 2, 9, and 14-16
These claims depend directly or ultimately from independent claims 1
and 13; and they are not argued separately therefrom. (See Appeal Br. 13.)
Thus, we sustain the Examiner's rejections of dependent claims 2, 9, and
14--16 under 35 U.S.C. § 102(b) as anticipated by Ardnt.
Rejection III
The Examiner rejects claims 1, 2, 8-11, 13-18, 27, 29, 32, and 33
under 35 U.S.C. § 102(b) as anticipated by Yokolgawa. (Non-Final
Action 10.) For the reasons explained below, we sustain this rejection with
respect to claims 1, 2, 8-11, 13-18, 27, 29, 32, and 33.
Rejection III- Independent Claims 1 and 13
As indicated above, independent claims 1 and 13 recites a "liquid"
fluid stream "in which at least one substance is present in dissolved and/or
suspended form." (Appeal Br., Claims App.) Independent claims 1 and 13
also recite that the distributor device "reduces the formation of deposits in
the chemical apparatus" of the dissolved/suspended substances in the liquid
stream( s ). (Id.)
The Appellants argue that Examiner does not establish sufficiently
that Y okolgawa discloses "liquid fluid streams in which at least one
substance is present in dissolved and/or suspended form and the distributor
device reduces the formation of deposits in the chemical apparatus of the
substances dissolved or suspended in the liquid stream." (Appeal Br. 15.)
However, the Examiner finds that Y okolgawa discloses a fluid stream of a
"gas-liquid mixture" in which "gas [is] suspended in the liquid," and the
Examiner finds that "the distributor device of Y okolgawa reduces the
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formation of deposits due to the geometry of the openings." (Answer 23.)
The Appellants do not challenge these findings by the Examiner.
Thus, we are unpersuaded by the Appellants' arguments; and we
sustain the Examiner's rejection of independent claims 1 and 13 under
35 U.S.C. § 102(b) as anticipated by Yokolgawa.
Rejection III - Dependent Claims 2, 8-11, 14-18, 27, 29, 32, and 33
These claims depend directly from independent claims 1 and 13; and
they are not argued separately therefrom. (See Appeal Br. 13.) Thus, we
sustain the rejection of dependent claims 2, 8-11, 14--19, 27, 29, 32, and 33
under 35 U.S.C. § 102(b) as anticipated by Yokolgawa.
Re} ection IV
The Examiner rejects claims 26, 28, 30, 34--36, and 38--41 under
35 U.S.C. § 103(a) as unpatentable over Yokolgawa. (See Non-Final
Action 17 .) As discussed below, we do not sustain this rejection with
respect to claims 26, 28, 30, 34--36, and 38--41.
Rejection IV-Independent Claims 26 and 36
As indicated above, independent claims 26 and 36 require the
distributor device to comprise a plate having "openings." (Appeal Br.,
Claims App.) Independent claims 26 and 30 further require the plate to have
"100 to 5000 openings." (Id.)
The Appellants argue that the Examiner does not establish sufficiently
that it would not have been obvious to make "the plate ofYoko[l]gawa with
100 to 5000 openings." (Appeal Br. 17.) The Examiner maintains that this
modification amounts to "discovering the optimum or workable ranges"
(Non-Final Action 18), a "simple duplication of openings" (Answer 24),
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would "produc[ e] a scaled up version of the device of Y okolgawa" (id.),
and/or would "further divide the fluid stream" (id.). However, the
Appellants assert that Y okolgawa does not "disclose[] anything remotely
approaching 100 openings" (Appeal Br. 17), and Yokolgawa's illustrated
plate appears to have less than forty openings (see Yoko1gawa Fig. 2). The
Examiner does not, on the record before us, direct our attention to any
teachings of higher counts of openings and/or their correlation to optimum
conditions. As such, the Examiner does not adequately explain why one of
ordinary skill in the art would be inclined to embark on the proposed
dramatic duplication of holes and/ or division of fluid streams. 3
Thus, we are persuaded by the Appellants' arguments; and we do not
sustain the Examiner's rejections of independent claims 26 and 36 under
35 U.S.C. § 103(a) as unpatentable over Yokolgawa.
Rejection IV - Dependent Claims 34, 35, and 38-41
These claims depend directly or ultimately from independent
claims 26 and 36, and the Examiner's further findings and determinations
concerning these dependent claims (see Non-Final Action 19--21) do not
compensate for the above-discussed shortcomings in the rejection of
independent claims 26 and 36. Thus, we do not sustain the Examiner's
rejection of dependent claims 34, 35, and 38--41 under 35 U.S.C. § 103(a) as
unpatentable over Y okolgawa.
3 The Examiner cites to In re Aller, 220 F.2d 454 (CCPA 1955) as standing
for the proposition that "discovering the optimum or workable ranges
involves only routine skill in the art." (Non-Final Action 18.) However, this
is only true "where the general conditions of a claim are disclosed in the
prior art." (Aller, 220 F. 2d at 456.).
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Rejection V - Dependent Claims 10 and 17
The Examiner rejects claims 10 and 17 under 35 U.S.C. § 103(a) as
unpatentable over Collins and Dear. (Non-Final Action 14--15.) The
Appellants argue only that "Dear does not cure the deficiencies of Collins
with respect to independent claims 1 and 13, from which claims 10 and 17
depend" (Appeal Br. 16), and, as discussed above, do not consider Collins
deficient in this regard. Thus, we do not sustain the Examiner's rejection of
dependent claims 10 and 17 under 35 U.S.C. § 103(a) as unpatentable over
Collins and Dear.
Rejection VI- Dependent Claims 12 and 19.
The Examiner rejects claims 12 and 19 under 35 U.S.C. § 103(a) as
unpatentable over Collins and Dear. (Non-Final Action 15.) The Appellants
argue only that these claims are "patentable over Collins for the reasons
discussed above with respect to claims 1 and 13" ( Appeal Br. 16), and, as
indicated earlier, we are unpersuaded by the Appellants' arguments in this
regard. Thus, we sustain the Examiner's rejection of dependent claims 12
and 19 under 35 U.S.C. § 103(a) as unpatentable over Collins and Dear.
New Ground of Re} ection
Dependent claims 40 and 41 depend ultimately from independent
claims 26 and 36 which, as indicated above, require the openings to be
"rounded." (Appeal Br., Claims App.) As also indicated above, "'rounded'
in the context of the present invention means that no edges are created in the
region of the entry into an opening." (Spec. 7, 11. 17-19.) However,
dependent claims 40 and 41 recite that "the openings are rounded such that
no edges are created in the region of the entry of the fluid stream into the
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opening." (Appeal Br., Claims App.) As such, dependent claims 40 and 41
do not specify a further limitation of the subject matter claimed.
We therefore enter a new ground of rejection against dependent
claims 40 and 41 under 35 U.S.C. § 112, fourth paragraph, as each being of
improper dependent form for failing to further limit the subject matter of the
claim upon which it depends.
DECISION
We AFFIRM the Examiner's rejection of claims 1, 2, 8, 11, 13-15,
18, and 27-30 under 35 U.S.C. § 102(b) as anticipated by Collins.
We AFFIRM the Examiner's rejection of claims 1, 2, 9, and 13-16
under 35 U.S.C. § 102(b) as anticipated by Arndt.
We AFFIRM the Examiner's rejection of claims 1, 2, 8-11, 13-18,
27, 29, 32, and 33 under 35 U.S.C. § 102(b) as anticipated by Yokolgawa.
We AFFIRM the Examiner's rejection of claims 10 and 17 under
35 U.S.C. § 103(a) as unpatentable over Collins and Dear.
We AFFIRM the Examiner's rejection of claims 12 and 19 under
35 U.S.C. § 103(a) as unpatentable over Collins and Dear.
We REVERSE the Examiner's rejection of claims 26, 32-36, and
38--41 under 35 U.S.C. § 102(b) as anticipated by Collins.
We REVERSE the Examiner's rejection of claims 26, 28, 30, 34--36,
and 38--41 under 35 U.S.C. § 103(a) as unpatentable over Yokolgawa.
We ENTER a new ground of rejection of claims 40 and 41 under
35 U.S.C. § 112, fourth paragraph.
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NON-FINALITY OF DECISION
37 C.F.R. § 4I.50(b) provides "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 4I.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the Examiner, in which
event the prosecution will be remanded to the Examiner.
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
37 C.F.R. § 4I.50(b)
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