Ex Parte Linne et al

Patent Trial and Appeal Board

Feb 1, 2017

13554650 (P.T.A.B. Feb. 1, 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.
13/554,650 07/20/2012 Volker Linne MF-US155190 7928
22919 7590 02/03/2017
GLOBAL IP COUNSELORS, LLP
David Tarnoff
1233 20TH STREET, NW
Suite 600
WASHINGTON, DC 20036-2680
EXAMINER
HOWELL, MARC C
ART UNIT PAPER NUMBER
1774
NOTIFICATION DATE DELIVERY MODE
02/03/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VOLKER LINNE and SASAN HABIBI-NAINI
Appeal 2015-006102
Application 13/554,650
Technology Center 1700
Before JAMES C. HOUSEL, WESLEY B. DERRICK, and
DEBRA L. DENNETT, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellants2 appeal from the
Examiner’s decision finally rejecting claims 1—3, 5—14, and 16 under 35
U.S.C. § 102(b) as anticipated by, or alternatively under 35 U.S.C. § 103(a)
1 Our decision refers to the Specification (Spec.) filed July 20, 2012,
Appellants’ Appeal Brief (Appeal Br.) filed November 18, 2014, the
Examiner’s Answer (Ans.) mailed April 2, 2015, and Appellants’ Reply
Brief (Reply Br.) filed June 1, 2015.
2 According to Appellants, the real party in interest is Sulzer Mixpac AG.
Appeal Br. 2.
Appeal 2015-006102
Application 13/554,650
as unpatentable over Keller.3 We have jurisdiction over the appeal under 35
U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
“The invention relates to a static mixer including an installation body
for installation into a tubular mixer housing.” Spec. 12. Claim 1,
reproduced below from the Claims Appendix to the Appeal Brief, is
illustrative of the subject matter on appeal.
1. A mixing element for a static mixer for installation into a
tubular mixer housing,
wherein the mixing element has a longitudinal axis along
which a plurality of installation bodies are arranged behind one
another,
wherein a first installation body has a first wall element
which extends in the direction of the longitudinal axis and has a
first side wall and a second side wall which is arranged opposite
the first side wall,
wherein a deflection element is arranged adjacent to the
first wall element of the first installation body and the
deflection element has a deflection surface extending in the
transverse direction to the first wall element of the first
installation body at both sides of the first wall element of the
first installation body,
wherein a first opening is provided in the deflection
surface at the side which faces the first side wall of the first
wall element of the first installation body,
wherein a second and third wall element are arranged
adjacent to the first opening,
wherein the second and third wall elements extend in the
direction of the longitudinal axis and each have an inner wall
3 US 2008/0232191 Al, published September 25, 2008 (“Keller”).
Appellants state, without dispute, that Keller corresponds to EP 1426099 Al,
published June 9, 2004. Appeal Br. 14; Reply Br. 6
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Application 13/554,650
and an outer wall which extend substantially in the direction of
the longitudinal axis and each of the inner walls and outer walls
include an angle between 20° and 160° to the first or second
side walls of the first wall element of the first installation body,
wherein the first opening is arranged between the inner
walls of the second and third wall elements and a second
opening is arranged outside one of the outer walls of the second
or third wall elements,
wherein the second opening is provided in the deflection
surface at the side which faces the second side wall of the first
wall element of the first installation body,
wherein a first wall element of a second installation body
adjoins the second and third wall elements, wherein more than
five installation bodies are connected to one another via a
common bar element, and
wherein all installation bodies of the mixing element are
connected by the common bar element.
ANALYSIS
In both the anticipation and obviousness rejections, the Examiner
finds, and Appellants dispute, that Keller either teaches or suggests a mixing
element having more than five installation bodies, wherein all installation
bodies of the mixing element are connected by a common bar element.
Thus, a dispositive issue before us in this appeal with regard to both the
Examiner’s anticipation and obviousness rejections is whether Appellants
have identified reversible error in these findings. We answer this question in
the affirmative and, therefore, will not sustain the Examiner’s rejections.4
4 Because we find Appellants’ arguments persuasive with regard to the claim
limitations directed to a common bar element connecting more than five
installation bodies together, wherein all installation bodies of the mixing
element are connected by the common bar element, we need not reach
Appellants’ remaining arguments and render no judgment as to their merit.
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Application 13/554,650
The Examiner finds, inter alia, that Keller teaches “more than five
installation bodies are connected to one another via a common bar element.”
Ans. 6, citing Keller, Fig. 17, items 50, 51, 54, 55. The Examiner also finds
that Keller “shows five installation bodies connected using common bar
elements.” Id., citing Keller, Fig. 15, item 47. Moreover, the Examiner
finds “Keller states the longitudinal webs ‘might as well be attached to any
mixing group’ (Keller: paragraph 0065), making clear that any number of
mixing elements could be attached to each other using bar elements,
including numbers greater than five.” Id. The Examiner further finds
“Keller discloses all installation bodies of the mixing element are connected
by means of a common bar element,” in particular “connecting the first six
installation bodies of the mixing element.” Id. (emphasis omitted), citing
Keller, Fig. 15, item 54; see also, Ans. 19-21.
To the extent that Keller does not disclose all of the installation bodies
are connected by the common bar element, the Examiner concludes that
such would have been obvious because Keller teaches “to optimize the layer
formation, longitudinal webs are provided which connect the double guide
walls on the outside.. .the longitudinal webs are attached to the first and
second mixing groups, but they might as well be attached to the third or any
other mixing group.” Id. at 17, citing Keller, | 65. The Examiner finds this
passage clearly indicates the longitudinal webs could be present between any
or all installation bodies and also provides wall layer formation optimization
as the motivation for doing so. Id.
To the contrary, Appellants contend that Keller fails to teach or
suggest more than five installation bodies connected by a common bar
element, nor the common bar element connecting all installation bodies of
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Application 13/554,650
the mixing element. Appeal Br. 11—15; Reply Br. 3—5. Appellants urge that
the Examiner appears to be combining elements from the separate
embodiments of Figures 1,15, and 17. Appeal Br. 12. In addition,
Appellants assert that Keller’s Figure 15 depicts mixing groups 47, 48, 49 as
distinct elements that are not each connected by the webs 54, but that the
units (installation bodies) within mixing groups 47 and 48 are connected. Id.
Further, Appellants urge that web 54 does not run along the length of all
installation bodies, or even in a set of six installation bodies. Id. (“At most,
there are five installation bodies (47a-47e) connected via longitudinal webs
54.”) Moreover, Appellants argue that Keller’s paragraph 65 merely states
that a longitudinal web may be attached to the third mixing group or to any
other mixing group, and not to connect more than five installation bodies.
Id. at 14.
Finally, Appellants contend that the Examiner’s conclusion that it
would have been obvious to connect all the installation bodies of the mixing
element together is based on improper hindsight reasoning. Id. Appellants
urge that not only does Keller not disclose more than five installation bodies
connected by a common bar element, but that the Specification states that
there can only be a maximum of five installation bodies connected in Keller
due to problems in manufacturing and use. Id.
After review of the opposing positions articulated by the Examiner
and Appellants, the applied prior art, and Appellants’ claims and
Specification disclosures, we determine that Appellants’ arguments are
sufficient to identity reversible error in the Examiner’s anticipation and
obviousness rejections. Accordingly, we will not sustain the stated
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Application 13/554,650
rejections for substantially the reasons set forth by Appellants in the Appeal
and Reply Briefs.
We first note that, though the Examiner finds Keller teaches six
installation bodies together, the Examiner does not demonstrate how any of
Keller’s embodiments include a common bar element connecting more than
five installation bodies. Keller’s Figure 15 depicts a common bar element
connecting at most five installation bodies together, e.g., the five installation
bodies of mixing group 47. No common bar element or longitudinal web 54
connects installation bodies 47e and 48a, or installation bodies 49b, 49c,
49d, and 49e. Keller’s Figure 17 depicts even fewer installation bodies
connected by a common bar element, i.e., the three installation bodies of
mixing group 47. Keller’s Figure 1 has no common bar element whatsoever.
In addition, none of these embodiments depicts all installation bodies of the
mixing element being connected by a common bar element.
Keller describes the use of longitudinal webs connecting double guide
walls on the outside “[t]o optimize the layer formation,” which refers to the
formation of the guide and inner walls of the installation bodies. Keller
1 65. Keller further indicates that these longitudinal webs need not be
provided in all mixing groups, that they are attached to the first and second
mixing groups, and notes that “they might as well be attached to the third or
to any other mixing group.” Id. Although the Examiner finds that this
description “indicates that the longitudinal webs could be present between
any or all installation bodies and that one skilled in the art would be
motivated to do so to optimize layer formation” (Ans. 17), we disagree that
this constitutes a teaching or suggestion for connecting mixing groups via a
bar element common to all installation bodies. Keller teaches that the
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Application 13/554,650
longitudinal web may be used to connect the installation bodies within a
mixing group, but not between mixing groups. Thus, Keller teaches that
these longitudinal webs may be used to connect the installation bodies
within any or all of the mixing groups, none of which are taught to contain
more than five installation bodies, and not between mixing groups as the
Examiner finds.
We are persuaded that the Examiner reversibly erred in finding that
Keller either teaches or suggests more than five installation bodies
connected by a common bar element and that all installation bodies of the
mixing element are connected by the common bar element. Under these
circumstances, it cannot be said that Keller anticipates the claimed
invention. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).
Nor can we conclude that the Examiner has met the minimum
threshold of establishing obviousness under 35 U.S.C. § 103(a), as the
Examiner’s conclusion lacks sufficient rational underpinning. In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.”), quoted with approval in KSR, 550 U.S.
at 418.
Accordingly, we reverse the Examiner’s prior art rejections of claims
1—3, 5—14, and 16 under 35 U.S.C. § 102(b), and alternatively under 35
U.S.C. § 103(a), for the reasons given above and presented by Appellants.
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Application 13/554,650
DECISION
Upon consideration of the record, and for the reasons given above and
in the Appeal and Reply Briefs, the decision of the Examiner rejecting
claims 1—3, 5—14, and 16 under 35 U.S.C. § 102(b) as anticipated by, or
alternatively under 35 U.S.C. § 103(a) as unpatentable over, Keller is
reversed.
REVERSED
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