Ex parte KING

Board of Patent Appeals and Interferences

Jul 30, 1997

08177243 (B.P.A.I. Jul. 30, 1997)

Application for patent filed January 4, 1994. According1
to appellant, the application is a continuation-in-part of
Application 08/049,977, filed April 19, 1993, abandoned.
1
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(2) is not binding precedent of the Board.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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte LEONARD T. KING

_____________
Appeal No. 96-2501
Application 08/177,2431
______________
ON BRIEF
_______________
Before COHEN, ABRAMS and FRANKFORT, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.
Appeal No. 96-2501
Application 08/177,243
2
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 2 through 7, which are all of the claims
remaining in this application. Claim 1 has been canceled.
Appellant's invention relates to a stationary material
mixing apparatus (i.e., a static mixer) as seen in Figures 7
through 9 of the application drawings. As indicated on page 7
of the specification, the appellant's mixing apparatus comprises
a conduit (31) in the form of a cylinder having a longitudinal
axis (37). Within the cylinder there are provided a plurality
of mixing elements (33-36). As appellant further points out on
page 7 of the specification,
[t]hese elements are characterized as having
no edges or surfaces perpendicular to longi-
tudinal axis 37 and are sized so that no such
elements are in contact with one another
resulting in an open region of travel 96 for
fluids passing through conduit 31 along its
longitudinal axis ideally, each mixing ele-
ment is seated within the conduit at an angle
between approximately 30E to 45E to said
longitudinal axis. Most importantly,
however, the mixing elements are positioned
within the conduit so that at least 75% of
the conduit circumference in any plane is
free of any mixing element. Obviously,
Appeal No. 96-2501
Application 08/177,243
3
various mixing elements are provided with
no points of contact so that there are
absolutely no “crotches” provided in the
present
invention which would otherwise result in
material hangup. In fact, it is a design
objective of the present invention to enable
debris having effective diameters of 75% or
more of the conduit diameter to pass through
the conduit without entrainment.
As is noted on page 4 of the specification, it was a
design priority for appellant to enhance mixing efficiency by
providing an increase in the effective roughness of the interior
wall of the conduit, but to achieve such a result without major
obstruction to the flow of large debris items entrained in a
process or flow system. To that end appellant has sought to
eliminate "dead zones" in the mixing apparatus where fluids, even
in turbulent flow, accumulate and remain virtually unmixed and to
eliminate "crotches" where fibrous material, etc. can gather and
hang-up and encourage clogging or plugging of the mixer when
fibers, clumps and particulates are contained within the fluids
to be mixed.
Appeal No. 96-2501
Application 08/177,243
Our understanding of this foreign language document 2
is based upon a translation prepared for the U.S. Patent and
Trademark Office. A copy of that translation accompanies this
decision.
4
Claim 7, the only independent claim, is representative
of the subject matter on appeal and reads as follows:
7. A stationary material mixing apparatus comprising a
conduit having a length, a substantially circular circumference,
a longitudinal axis through said length and being open at both
ends thereof, said conduit housing a plurality of mixing
elements, said mixing elements having no edges perpendicular to
said longitudinal axis and are sized and positioned within said
conduit such that at any plane passing perpendicularly to said
longitudinal axis, at least 75% of the circumference of said
conduit is free of any mixing element and no mixing elements are
in contact with one another resulting in an open region of travel
for fluids passing through said conduit along its longitudinal
axis.

The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Doom 4,072,296 Feb. 7, 1978
Kao 4,258,782 Mar. 31, 1981
Schulz 24,309 Mar. 2, 1914
(Norwegian Patent)2
Claims 2, 3, 6 and 7 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Doom.
Appeal No. 96-2501
Application 08/177,243
The reply brief filed February 23, 1996 (Paper No. 11) 3
was refused entry by the examiner. See Paper No. 12, mailed
March 26, 1996.
5
Claims 2, 3, 4, 6 and 7 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Schulz.
Claims 2, 6 and 7 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Kao.
Claim 5 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Schulz.
Rather than reiterate the examiner's full statement
of the above-noted rejections and the conflicting viewpoints
advanced by appellant and the examiner regarding those
rejections, we make reference to the examiner's answer (Paper No.
10, mailed January 24, 1996) for the examiner's full reasoning in
support of the rejections, and to appellant's brief (Paper No. 9,
filed October 19, 1995) for appellant's arguments thereagainst.3
OPINION
Appeal No. 96-2501
Application 08/177,243
6
In reaching our decision in this appeal, we have given
careful consideration to appellant's specification and claims, to
the applied prior art references, and to the respective positions
articulated by appellant and the examiner. As a consequence of
our review, we make the determinations which follow.
Turning first to the examiner's rejection of claims 2,
3, 6 and 7 under 35 U.S.C. § 102(b) as being anticipated by Doom
and that of claims 2, 6 and 7 as being anticipated by Kao, we
observe that appellant has argued (brief, pages 6-8) that neither
of these applied references has an arrangement of mixing elements
whereby "no mixing elements are in contact with one another
resulting in an open region of travel for fluids passing through
said conduit along its longitudinal axis," as recited in
independent claim 7 on appeal. The examiner has taken the
position that Doom and Kao are responsive to these limitations in
that the individual mixing elements of the references are not in
physical contact with one another and create an open region of
Appeal No. 96-2501
Application 08/177,243
7
travel for fluids passing through the conduit along some
arbitrary longitudinal axis. In this regard, the examiner notes
that the language of claim 7 does not specify that the
"longitudinal axis" set forth in the independent claim is the
central longitudinal axis of the conduit and that such
longitudinal axis thus "could be an axis near the wall of the
conduit, offset from the center axis of the conduit, or any axis
running lengthwise along the conduit" (answer, page 11).
It has been a long-standing maxim of patent law that,
during examination, "claims in an application are to be given
their broadest reasonable interpretation consistent with the
specification" and, in addition, that the "claim language should
be read in light of the specification as it would be interpreted
by one of ordinary skill in the art" (emphasis added). In re
Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983).
Our Court of review has also informed us that the drawings
included in the application may aid in the interpretation of
claim limitations, in that the "drawings alone may be sufficient
Appeal No. 96-2501
Application 08/177,243
8
to provide the 'written description of the invention' required
by § 112, first paragraph." Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1564, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991). Thus, in
those instances where a visual representation can flesh out
words, as in the present application, drawings can and should be
used like the written specification to provide evidence rele-
vant to claim interpretation and used to interpret what the
inventor intended by the claim terms. Applying these precepts to
the present application, we find that, when the claim language
under consideration is read in light of the present application
disclosure as such would be interpreted by the hypothetical
person possessing ordinary skill in the art, and particularly
when this language is viewed in light of the invention as seen
in Figures 7-9 of the application drawings, the claim language
requiring that "no mixing elements are in contact with one
another resulting in an open region of travel for fluids passing
through said conduit along its longitudinal axis," as recited in
appellant's independent claim 7 defines over the static mixing
apparatus of either Doom or Kao.
Appeal No. 96-2501
Application 08/177,243
9
As is explained in the portion of page 7 of appellant's
specification quoted above, it is critical to appellant's
invention that the mixing elements are sized and positioned
within the conduit such that "no such elements are in contact
with one another resulting in an open region of travel 96 for
fluids passing through conduit 31 along its longitudinal axis"
and that the elements are further provided with no points of
contact "so that there are absolutely no 'crotches' provided in
the present invention which would otherwise result in material
hangup." Thus, from our perspective, one of ordinary skill in
the art would readily understand that appellant's independent
claim 7 defines a mixing apparatus in the form of a conduit of
substantially circular configuration (i.e., a cylinder) having a
central
longitudinal axis (37) and a plurality of mixing elements mounted
within the conduit such that the mixing elements a) have no edges
perpendicular to said longitudinal axis, b) are sized and
positioned within said conduit such that at any plane passing
perpendicularly to said longitudinal axis, at least 75% of the
circumference of said conduit is free of any mixing element and
Appeal No. 96-2501
Application 08/177,243
10
c) have no points of contact with one another and thereby provide
an open region of travel (96) for fluids passing through the
conduit 31 along its longitudinal axis and absolutely no
"crotches" where fibrous material, etc. can gather and hang-up
and encourage clogging or plugging of the mixer when fibers,
clumps and par- ticulates are contained within the fluids to be
mixed, as essentially seen in Figures 7-9 of the application
drawings. In this regard, we note that the examiner's
interpretation of the limitation contained in the last two lines
of claim 7 and of the term "longitudinal axis," in particular, is
contrary to any reasonable understanding of appellant's claimed
subject matter based on the application disclosure and the clear
meaning of "longitudinal axis" as it would be understood by one
of ordinary skill in the art.
In light of the foregoing considerations, it is clear
to us that neither Doom nor Kao teaches or suggests a mixing
apparatus which anticipates that defined in appellant's claim 7
Appeal No. 96-2501
Application 08/177,243
11
on appeal. Both of these references include numerous "crotches"
where fibrous material, etc. can gather and hang-up and encourage
clogging or plugging of the mixer when fibers, clumps and par-
ticulates are contained within the fluids to be mixed, and both
of these references have structures which obstruct the area along
the longitudinal axis of the mixing conduits therein. Thus, both
of these references have mixing elements which are "in contact"
as that terminology would be understood from appellant's
disclosure, and also fail to define "an open region of travel for
fluids passing through said conduit along its longitudinal axis"
(emphasis added), as recited in independent claim 7 on appeal.
Accordingly, the examiner's rejection of claims 2, 3, 6 and 7
under 35 U.S.C. § 102(b) as being anticipated by Doom and that of
claims 2, 6 and 7 as being anticipated by Kao must be reversed.
Next for our consideration are the examiner's
rejections of claims 2, 3, 4, 6 and 7 under 35 U.S.C. § 102(b)
based on Schulz and of claim 5 under 35 U.S.C. § 103 based on
Schulz.
Appeal No. 96-2501
Application 08/177,243
12
For essentially the same reasons as expressed above with regard
to the rejections based on Doom and Kao, we find that the
rejections relying on Schulz must also be reversed. That is,
while
Schulz may disclose an open region of travel for fluids passing
through the conduit along its central longitudinal axis (e.g., in
Figs. 1 and 1b), when the limitation set forth in the last two
lines of appellant's independent claim 7 is given the
interpretation we have expressed above, it is clear that Schulz
has mixing elements which are "in contact with one another," as
that terminology would be understood by one of ordinary skill in
the art from appellant's disclosure, in that Schulz clearly has
numerous "crotches" where fibrous material, etc. can gather and
hang-up and encourage clogging or plugging of the mixer when
fibers, clumps and particulates are contained within the fluids
to be mixed.
In addition, with regard to the examiner's treatment of
dependent claim 6 in each of the § 102(b) rejections on appeal,
we must point out that as explained in the Manual of Patent
Appeal No. 96-2501
Application 08/177,243
13
Examining Procedure (Rev. 2, July 1996) at § 2173.05(g), there is
nothing inherently wrong with defining some part of the invention
in functional terms, and such functional limitations must be
evaluated just like any other limitation of the claim. As for
the examiner's position concerning what might be "conceivable
. . . under some circumstances and/or operating conditions"
(answer, page 12), we must point out that inherency cannot be
established by possibilities or probabilities, but instead, the
disclosure relied upon must be sufficient to show that the
natural result flowing from the teachings of the applied
reference would result in the claimed subject matter. See In re
Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981) and
Hansgirg v. Kemmer, 102 F.2d 212, 214, 40 USPQ 665, 667 (CCPA
1939), cited therein. We find nothing in the disclosure of
Schulz, Doom or Kao which would provide any reasonable
expectation that any mixing apparatus therein has the capability
of passing therethrough solid matter having a diameter of at
least 75% of the diameter of said conduit, as required in
appellant's claim 6 on appeal.
Appeal No. 96-2501
Application 08/177,243
14
To summarize:
The decisions of the examiner rejecting claims 2, 3, 6
and 7 under 35 U.S.C. § 102(b) based on Doom, claims 2, 6 and 7
under 35 U.S.C. § 102(b) based on Kao, and claims 2, 3, 4, 6
and 7 under 35 U.S.C. § 102(b) based on Schulz are reversed. In
addition, the decision of the examiner rejecting claim 5 under
35 U.S.C. § 103 based on Schulz is also reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
Appeal No. 96-2501
Application 08/177,243
15
Malcolm B. Wittenberg
Crosby, Heafey, Roach & May
1999 Harrison Street
Oakland, CA 94612