Ex Parte Konning et al

Patent Trial and Appeal Board

Feb 16, 2017

12064741 (P.T.A.B. Feb. 16, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/064,741 02/25/2008 Ludwig Konning TKPG-10402/08 2462
25006 7590 02/21/2017
DTNSMORF fr SHOHT T T P
EXAMINER
900 Wilshire Drive BUTLER, MICHAEL E
Suite 300
TROY, MI 48084 ART UNIT PAPER NUMBER
3653
NOTIFICATION DATE DELIVERY MODE
02/21/2017 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):
docket@patlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LUDWIG KONNING, EGBERT BURCHARDT,
OLAF HAGEMEIER, and FRANZ-JOSEF ZURHOVE
Appeal 2014-009093
Application 12/064,741
Technology Center 3600
Before MICHELLE R. OSINSKI, BEVERLY M. BUNTING, and
GORDON D. KINDER, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Ludwig Konning (Appellants)1 appeal under 35 U.S.C. § 134 from the
Examiner’s final decision rejecting claims 1—4 and 6—12, which are all of the
pending claims. An oral hearing was held on January 17, 2017. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Polysius AG as the real party in interest. Appeal Br. 1.
Appeal 2014-009093
Application 12/064,741
THE CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim, is reproduced below and is
representative of the claimed subject matter on appeal.
1. A static-dynamic sifter for sifting (100) charge material
comprising:
a. a static sifter (1) which has a single aerating base (la)
oriented at an angle relative to the vertical, the aerating base
being planar and having a lateral width, a longitudinal length,
and aerating openings (lb) through which sifting gas (2) flows,
b. an inlet opening (3) for delivering the charge material
(9) to the aerating base (la),
c. an outlet opening (4) for the coarse material,
d. a sifting gas inlet located between the inlet opening (3)
and the outlet opening (4), and through which sifting gas (2)
enters into the static-dynamic sifter (100) to flow through the
aerating openings (lb) of the aerating base (la),
e. a dynamic sifter (5) having at least one rotor and located
downstream from the static sifter (1), and
f. at least one outlet opening (6) for the sifting gas |i |2| )i
laden with fine material, characterised in that
the aerating base (la) at the angle relative to vertical
extends substantially across the sifting gas inlet between the inlet
opening (3) and the outlet opening (4) and has a projected
vertical height (li) of the longitudinal length, the lateral width (h)
to projected vertical height (h) having a ratio of at least 0.45.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Hammack
Bolles
Stark
Suessegger ’998
Sussegger ’389
Sussegger ’867
US 2,203,959
US 3,384,233
US 3,426,893
US 5,392,998
US 5,505,389
US 6,845,867 B2
June 11, 1940
May 21, 1968
Feb. 11, 1969
Feb. 28, 1995
Apr. 9, 1996
Jan. 25, 2005
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Application 12/064,741
REJECTIONS
I. Claims 1—4, 9, and 10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sussegger ’389 and Stark. Final Act. 2—\.
II. Claims 1—4, 7, 9, 10, and 12 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Suessegger ’998 and Stark. Id. at 4—6.
III. Claims 6 and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sussegger ’389, Stark, and Sussegger ’867. Id. at
8-9.
IV. Claims 6 and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Suessegger ’998, Stark, and Sussegger ’867. Id. at
6-8.
V. Claim 8 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Sussegger ’389, Stark, andHammack. Id. at 11—12.
VI. Claim 8 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Suessegger ’998, Stark, and Bolles. Id. at 9—11.
VII. Claim 8 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Suessegger ’998, Stark, and Whitby.2 Id. at 12—14.
2 The Examiner identifies Whitby as “2929011” (see Final Act. 12). This
patent number is not associated with any such named inventor in the United
States, and a cursory search did not show the patent number to be associated
with any such named inventor in a foreign jurisdiction. A review of the
prosecution history of the instant application did not provide clarification
regarding the particular patent designated as Whitby and used by the
Examiner in this rejection. However, we do not need to identify and review
the particular patent designated as Whitby for purposes of this decision
because there are no arguments relating to Whitby’s teachings.
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Application 12/064,741
OPINION
Rejection I
The Examiner finds that Siissegger ’389 teaches many of the
limitations of independent claim 1, including, inter alia, an “aerating base
being planar and having a lateral width, longitudinal length, and aerating
openings through which sifting gas flows (16a[,] [F]ig. 1).” Final Act. 2
(emphasis omitted). The Examiner takes the position that Siissegger ’389
“teaches a base with alternating plate and opening sections just like
[A]ppellant[s] teach[] a base with alternating plate[s] and opening sections.”
Ans. 6. More specifically, the Examiner states that “[i]n S[u]sseg[g]er
’389[,] the openings and obstructions alternately run throughout the base
similar to openings and obstructions in [A]ppellant[s’] base as shown in
[A]ppellant[s’] [F]ig. [3].” Id.
The Examiner does not find that Siissegger ’389 teaches the claimed
ratio of lateral width to projected vertical height, but finds that Stark teaches
an “aerating base having a lateral width to projected vertical height ratio of
at least [Oj.45” in that the lateral width of the separator is 8 feet and the
vertical projection of the aerating base must be less than the 17 feet of the
total height of the separator. Final Act 3 4(citing Stark, 4:32-44). The
Examiner further explains that “[t]he aerating base goes nowhere near
spanning bottom to top [of the separator], so it is substantially shorter than
17 feet.” Ans. 9. The Examiner specifically points to the bottom of ducts
54, 56, 58, through which air and solids are passed, as aerating bases. Id. at
10 (citing Stark, 3:17-49).
The Examiner concludes that it would have been obvious to modify
Siissegger ’389 to have the claimed ratio of lateral width to projected
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Application 12/064,741
vertical height of 0.45 “as a wider lateral base provides more area to aerate
and dry large volumes of material enhancing separation as taught by Stark.”
Final Act. 4. The Examiner explains that “one could hold height constant
and alter width design as a way of achieving a larger width[,] and hence[,] a
larger width to height ratio whilst maintaining the same properties of a
particular height,” but “increasing] the flow rate and . . . volume of product”
through the increased width.” Ans. 13.
Only issues and findings of fact contested by Appellants will be
addressed. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential). Appellants argue that claim 1 requires “a single planar
aerating base,” whereas Sussegger ’389 teaches a plurality of “cascade-like
or shutter-like deflectors” 16a. Appeal Br. 6, 8 (citing Sussegger ’389,
3:65—4:9) (emphasis omitted). More particularly, Appellants assert that
“cascade sifter 16 has a plurality of deflectors 16a as illustrated in Figure 2
of S[ii]ssegger [] ’389.” Id. at 8; see also Reply Br. 3^4.
To the extent Appellants are arguing that the plurality of deflectors
identified by the Examiner and comprising element 16a in Sussegger ’389
do not constitute a single aerating base (i.e., one and only one aerating base),
such an argument is not commensurate with the scope of the claim for
nothing in claim 1 precludes multiple elements from collectively constituting
a single “aerating base” so long as the multiple elements meet the other
requirements of the claimed aerating base by (a) being planar, (b) having (i)
a lateral width, (ii) a longitudinal length, and (iii) aerating openings through
which sifting gas flows, and (c) being oriented at an angle relative to the
vertical and extending substantially across the sifting gas inlet between the
inlet opening for delivering charge material and the outlet opening for the
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Application 12/064,741
coarse material.3 Appellants have not asserted that the collective plurality of
deflectors comprising element 16a do not meet the requirements of (a) being
in a single plane, (b)(i)—(ii) having a lateral width and longitudinal length,
and (c) being oriented at an angle relative to vertical and extending across
the sifting gas inlet between the inlet opening and outlet opening.
Appellants, however, do assert that the collective plurality of
deflectors comprising element 16a do not meet the requirement (b)(iii) of
having aerating openings through which sifting gas flows. Appeal Br. 9—10.
In particular, Appellants assert that the Examiner bases the finding that there
are aerating openings in element 16a of Sussegger ’389 on the fact that it is
“shown with dotted lines as are commonly used to represent screens.” Id. at
10. Appellants argue that such a position is in error and would require other
dotted lines shown in Sussegger ’389 to constitute screens “and this would
be nonsensical” in the context of the patent. Id. We are not persuaded by
Appellants’ argument.
The Examiner has pointed out that “[t]he base 16a is identified as a
series of dots and openings representing the obstructive plates for blocking
larger particles and openings for passing smaller particles.” Ans. 3^4. The
disclosure of Sussegger ’389 supports the Examiner’s finding in that “sifter
air (18) flows through the barriers [equipped with cascade-like or shutter­
like deflectors (16a and 166)] in a cross-current fashion . . . [with] discharge
opening 19 for the sifted coarse material fragments . . . [and] the medium
and/or fine material will be sifted through the deflector 166 with the help of
3 We also see nothing in Appellants’ Specification that would preclude
multiple elements from collectively constituting a single “aerating base.”
See, e.g., Spec. 6:17—22.
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the sifter air 18 flowing in a cross-current fashion.” Siissegger ’389, 4:3—8,
30-32).
The burden of proof with respect to the Examiner’s rejection is by a
preponderance of the evidence. In order to satisfy this standard, the
evidence must demonstrate that it is more likely than not that the alleged fact
is the case. See Bosies v. Benedict, 27 F.3d 539, 541—42 (Fed. Cir. 1994)
(the preponderance of the evidence standard requires the finder of fact to
believe that the existence of a fact is more probable than its nonexistence).
We determine that the disclosure of Siissegger ’389 in Figures 1 and 2 and
the accompanying text in column 4 demonstrate that it is more likely than
not that the collective plurality of cascade-like or shutter-like deflectors
comprising element 16a have aerating openings through which sifting gas
flows as found by the Examiner. See Final Act. 2; Ans. 3^4.
Appellants next argue that “Stark fails to disclose a planar aerating
base.” Appeal Br. 11. More particularly, Appellants assert that “wall 28 is
void of any aerating openings, and thus Stark is void of an aerating base.”
Id. (emphasis omitted). The Examiner responds that “the primary references
have holes in their aerating base per the claim limitation,” and that Stark was
used only “to show a teaching of an aerating base having a large width to
height ratio.” Ans. 10. The Examiner maintains that Stark teaches an
aerating base in accordance with the broadest reasonable interpretation of
such a term, considering that “aerate” broadly means “to supply . . . with air”
and Stark supplies air to the particular stream. Id. at 9—10 (citing Webster’s
Collegiate Dictionary 10th ed. (1997)). We agree with the Examiner that the
Examiner need not show Stark teaches an aerating base having aerating
openings through which sifting gas flows as this is taught by the primary
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Application 12/064,741
references. We also determine that the Examiner need not show that Stark
teaches an aerating base that is planar because this is also taught by the
primary references. We further determine that the Examiner’s finding that
Stark discloses an aerating base is supported by a preponderance of the
evidence and supports the Examiner’s legal conclusion of obviousness. See
Ans. 9-11.
Appellants also argue that when considering Stark as a whole, as
required under MPEP § 2142.02, Stark teaches away from the claimed
invention. Appeal Br. 11. More particularly, Appellants assert that “Stark is
void of a separate sifting gas inlet, much less a separate sifting gas inlet
arranged between an inlet opening and an outlet opening” in that “gates 50,
52, 54, and opening 48 define inlet openings for delivering charge material
and sifting gas.” Id. (emphasis omitted). Appellants take the position that
“such a fundamental difference between Stark and [Sussegger ’389] . . .
[means] that one skilled in the art would have no motivation to combine
these references without knowledge of the instant application.” Id.
Appellants also argue that “the sifting method of Stark is drastically different
than the method of the present invention.” Reply Br. 6.
Simply that there are differences between two references is
insufficient to establish that a prima facie case of obviousness is not possible
or that such references teach away from any combination thereof. See In re
Beattie, 91A F.2d 1309, 1312—13 (Fed. Cir. 1992). Merely by pointing out
differences between Sussegger ’389 and Stark, Appellants have not
persuasively explained why the Examiner’s reasoning to provide a wider
lateral base so as to provide more area to aerate and dry large volumes of
material (Final Act. 4) lacks rational underpinnings.
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Application 12/064,741
Appellants also note that “Stark does not even mention any
advantages of the width to height ratio calculated by the Examiner.” It is
irrelevant whether Stark recognizes the advantages of the ratio propounded
by Appellants, so long as the ratio is present and the Examiner has provided
some reasoning having rational underpinnings for utilizing the ratio. See In
re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness
grounds [require] some articulated reason with some rational underpinning
to support the legal conclusion of obviousness.”) (cited with approval in
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). Appellants have
not explained why the Examiner’s stated reasoning to “provide more area to
aerate and dry large volumes of material” (Final Act. 4) lacks rational
underpinnings. Moreover, we note that for the purposes of an obviousness
inquiry, there is no requirement that an artisan’s reasons for making
modification of the prior art be the same as that of the patent applicant. See
In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996) (citing In re Dillon, 919
F.2d 688, 693 (Fed. Cir. 1990) (en banc) (“Although the motivation to
combine here differs from that of the applicant, the motivation in the prior
art to combine the references does not have to be identical to that of the
applicant to establish obviousness.”).
Appellants also argue that their submitted Declaration by Fudwig
Konning (included as Appendix B and hereinafter referred to as “Dec.”)
“provides evidence of unexpected results over the teachings of the cited
prior art.” Appeal Br. 13. More particularly, Appellants point out that prior
art sifters were narrow and tall, but by “‘cutting off area at the bottom of
prior art sifters and transferring such area to the width of the instant sifter,” a
more uniform velocity of charge material is obtained and feeding of the
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Application 12/064,741
charge material is done more efficiently. Id. (citing Dec. 8, 13). Thus,
Appellants assert, the claimed “lateral width to projected vertical height ratio
would provide beneficial results.” Id.
It is well settled that unexpected results must be established by factual
evidence. “Mere argument or conclusory statements in the Specification
does not suffice.” In re De Blauwe, 735 F.2d 699, 705 (Fed. Cir. 1994).
Evidence of unexpected results must be established by clear and convincing
evidence. In re Heyna, 360 F.2d 222, 228 (CCPA 1966) (“It was incumbent
upon appellants to submit clear and convincing evidence to support their
allegation of unexpected property”). Although the Declaration ably explains
that shorter, wider sifters embodying the claimed width to projected vertical
height ratio provides beneficial results, the Declaration fails to state that
these results were at all unexpected. On the contrary, the Declaration seems
to support that the sifting results would have been predictable to, or expected
by, one of ordinary skill in the art. In particular, the mathematical analysis
undertaken and set forth in the Declaration to explain the improved sifting
(see Dec. ]Hf 9—19) shows the state of scientific knowledge regarding sifters.
In sum, we are not persuaded by Appellants’ mere attorney argument
(Appeal Br. 13) regarding the purported unexpected nature of the sifting
results of a shorter, wider sifter. See In re Geisler, 116 F.3d 1465, 1471
(Fed. Cir. 1997) (quoting In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995)
(quoting In re Wood, 582 F.2d 638, 642 (CCPA 1978) (“[Njaked attorney
argument is ‘insufficient to establish unexpected results.’”))).
In addition, we note that, although secondary considerations such as
unexpected results must be taken into account, they do not necessarily
control the obviousness conclusion. See Agrizap, Inc. v. Woodstream Corp.,
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520 F.3d 1337, 1344 (Fed. Cir. 2008); see also Sud-Chemie, Inc. v.
Multisorb Tech., Inc., 554 F.3d 1001, 1009 (Fed. Cir. 2009) (“[EJvidence of
unexpected results and other secondary considerations will not necessarily
overcome a strong prima facie showing of obviousness.”). In this case,
although we give weight to the evidence offered by Appellants in an effort to
prove unexpected results, we conclude that Appellants’ attorney argument
that the sifting results of a shorter, wider sifter are unexpected is not strong
enough evidence to overcome the Examiner’s evidence of obviousness based
on increasing width of the aerating base to match dimensions set forth in the
prior art so as to increase the flow rate and volume of product. See Ans. 13;
see In re Fenton, 451 F.2d 640, 643 (CCPA 1971) (the court balanced the
Patent Office’s case against the strength of appellant’s objective evidence of
non-obviousness); see also Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007) (“given the strength of the prima facie
obviousness showing, the evidence on secondary considerations was
inadequate to overcome a final conclusion that [the claimed subject matter]
would have been obvious.”).
For the foregoing reasons, we sustain the Examiner’s rejection of
independent claim 1 under 35 U.S.C. § 103(a) as unpatentable over
Sussegger ’389 and Stark. We also sustain the rejection of claims 2-4, 9,
and 10 which depend from independent claim 1 and for which Appellants
present no separate arguments or reasoning other than that which we found
unpersuasive in connection with independent claim 1. See Appeal Br. 14.
Rejection II
The Examiner finds that Suessegger ’998 teaches many of the
limitations of independent claim 1, including, inter alia, an “aerating base
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being planar and having a lateral width, longitudinal length, and aerating
openings through which sifting gas flows (19[,] [F]ig. 1).” Final Act. 4. The
Examiner does not find that Suessegger ’998 teaches the claimed ratio of
lateral width to projected vertical height, but again relies on Stark’s
teachings described above and concludes that it would have been obvious to
modify Suessegger ’998 to have the claimed ratio of lateral width to
projected vertical height of 0.45 for the same reasons described above. Final
Act. 6.
Appellants argue that claim 1 requires “a single planar aerating base,”
whereas Suessegger ’998 “shows a plurality of ‘louvre-like baffles 19 and 20
directed obliquely down in the direction of the discharge opening 15.’”
Appeal Br. 11 (citing Suessegger ’998, 3:23—25). We understand Appellants
to be arguing that the plurality of baffles comprising element 19 (identified
by the Examiner as the single aerating base) do not constitute a single
aerating base (i.e., one and only one aerating base).
For reasons like those discussed in our analysis above, we determine
that such an argument is not commensurate with the scope of the claim for
nothing in claim 1 precludes multiple elements from collectively constituting
a single “aerating base” so long as the multiple elements meet the other
requirements of the claimed aerating base by (a) being planar; (b) having (i)
a lateral width, (ii) a longitudinal length, and (iii) aerating openings through
which sifting gas flows; and (c) being oriented at an angle relative to the
vertical and extending substantially across the sifting gas inlet between the
inlet opening for delivering charge material and the outlet opening for the
coarse material.
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Appellants have not persuasively explained how the collective
plurality of louver-like baffles 19 comprising a porous or transmissive
“baffle wall” for lateral flow of sifting air 18 (Suessegger ’998, 3:18—26)
does not meet the requirements of (a) being in a single plane, (b)(i)—(iii)
having a lateral width, longitudinal length, and aerating openings through
which sifting gas flows, and (c) being oriented at an angle relative to vertical
and extending across the sifting gas inlet between the inlet opening and
outlet opening.
For the foregoing reasons, we sustain the Examiner’s rejection of
independent claim 1 under 35 U.S.C. § 103(a) as unpatentable over
Suessegger ’998 and Stark. We also sustain the rejection of claims 2—4, 7, 9,
10, and 12 which depend from independent claim 1 and for which
Appellants present no separate arguments or reasoning other than that which
we found unpersuasive in connection with independent claim 1. See Appeal
Br. 14.
Rejections III—VII
Claims 6 and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sussegger ’389, Stark, and Sussegger ’867. Final Act. 8—
9. Claims 6 and 11 also stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Suessegger ’998, Stark, and Sussegger ’867. Id. at 6—8.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Sussegger ’389, Stark, and Hammack. Id. at 11—12. Claim 8 also stands
rejected under 35 U.S.C. § 103(a) as unpatentable over Suessegger ’998,
Stark, and Bolles. Id. at 9-11. Claim 8 additionally stands rejected under
35 U.S.C. § 103(a) as unpatentable over Suessegger ’998, Stark, and
Whitby. Id. at 9-11.
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Appellants rely on the same arguments relating to the alleged
shortcomings of one of Siissegger ’389 or Suessegger ’998 in combination
with Stark. See Appeal Br. 14. Because we found no such shortcomings in
the combination of either Siissegger ’389 or Suessegger ’998 with Stark as
described hereinabove, we are not persuaded of Examiner error and we
sustain the Examiner’s rejections of claims 6, 8, and 11 under 35 U.S.C.
§ 103(a).
DECISION
The Examiner’s decision to reject claims 1—4 and 6—12 under
35 U.S.C. § 103(a) is affirmed.
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
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