Ex Parte Millauer

Board of Patent Appeals and Interferences

Sep 19, 2002

08991572 (B.P.A.I. Sep. 19, 2002)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 32
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte CHRISTIAN MILLAUER
____________
Appeal No. 2002-0139
Application No. 08/991,572
____________
ON BRIEF
____________
Before KRATZ, DELMENDO, and JEFFREY T. SMITH, Administrative Patent
Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's refusal to
allow claims 17-19. The remaining pending claims, namely claims
1-3, 5-10 and 14, have been indicated as allowable by the
examiner.
BACKGROUND
Appellant's invention relates to an apparatus including an
extruder constructed to be useful for changing the wetting agents
of pigments. The extruder comprises, inter alia, a barrel having
Appeal No. 2002-0139
Application No. 08/991,572
Page 2
a supply input and discharge output as well as lateral opening(s)
therein to allow for the escape of a first agent, at least one
screw with helical spaces between adjacent screw threads and
having counter-threads located downstream of the lateral
opening(s), means for rotating the screw, a metering device for
introducing feed materials composed of solids and a first and a
second agent thereto, and a controller for controlling the volume
rates of the above-noted materials introduced via the metering
device and for controlling the speed of rotation of the screw so
as to fill only part of the helical spaces of the screw with the
above-noted feed materials. A further understanding of the
invention can be derived from a reading of claim 17, the sole
independent claim on appeal, which is reproduced below.
17. An apparatus useful for changing the wetting
agent of pigment solids from a first agent that is an
aqueous phase to a second agent that is an oily phase,
comprising
an extruder including:
an extruder barrel having a supply input and a
discharge output,
at least one screw which has screw threads over
its length, and
helical spaces between adjacent screw threads,
said at least one screw being arranged within said
extruder barrel;
at least one metering device for introducing said
solids and said first and second agents into said
extruder at predetermined volume rates;
means for rotating said at least one screw at a
predetermined speed;
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Application No. 08/991,572
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a controller for controlling said predetermined
volume rates and said predetermined speed so as to fill
only part of said helical spaces by said solids and
said first and second agents to segregate said first
agent; and
at least one lateral opening in said extruder
barrel for said first agent to escape;
wherein a portion of said screw downstream of said
at least one lateral opening has a sufficient number of
counter-threads to cause said oily phase containing
said pigment solids to jam.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Higuchi et al. (Higuchi) 4,474,473 Oct. 02, 1984
Wesley et al. (Wesley) 4,789,507 Dec. 06, 1988
Claims 17-19 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Higuchi in view of Wesley.
We refer to the briefs and to the answer for the opposing
viewpoints expressed by appellant and by the examiner concerning
the above-noted rejection.
OPINION
Upon careful review of the entire record including the
respective positions advanced by appellant and the examiner, we
find ourselves in agreement with appellant that the examiner has
failed to carry the burden of establishing a prima facie case of
obviousness. See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1471-
Appeal No. 2002-0139
Application No. 08/991,572
Page 4
1472, 223 USPQ 785, 787-788 (Fed. Cir. 1984). Accordingly, we
will not sustain the examiner's rejection substantially for the
reasons set forth by appellant in the briefs.
"It is well-established that before a conclusion of
obviousness may be made based on a combination of references,
there must have been a reason, suggestion or motivation to lead
an inventor to combine those references." Pro-Mold and Tool Co.
v. Great Lakes Plastics Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626,
1629 (Fed. Cir. 1996). Here, the examiner has not established
any convincing reason, suggestion or motivation for combining the
references as proposed.
The examiner’s position appears to be that it would have
been obvious to one of ordinary skill in the art to modify the
apparatus of Higuchi by employing the controlling system of
Wesley therein so as to allegedly arrive at appellant’s claimed
apparatus. See pages 3-5 of the answer for the examiner’s
complete statement of the rejection. However, the examiner has
not carried the burden of fairly explaining how the teachings of
Wesley are combinable with Higuchi. Wesley is concerned with an
alleged improved melt spinning of friable and thermally sensitive
preceramic particles of organosilicon via the use of a starve
feeding technique for an extruder and a controller useful
Appeal No. 2002-0139
Application No. 08/991,572
Page 5
therefor. Higuchi discloses pigment wet cake processing in an
extrusion apparatus. The examiner has not established that one
of ordinary skill in the art would have been led to modify the
apparatus of Higuchi by employing the controller of Wesley
therein for starve feeding with respect to the disparate
extrusion apparatus of Higuchi so as to arrive at the claimed
invention.
The examiner (answer, page 5) maintains that Wesley’s
teaching of preventing solid plugging via the use of the starve
feeding controller is applicable to Higuchi’s apparatus since
Higuchi is also concerned with plugging at the feed section of
the apparatus. However, that position of the examiner has not
been adequately developed to establish the prima facie
obviousness of such a modification. In this regard, we note that
the plugging problem that is of concern to Higuchi (column 7,
lines 53-60) related to dough formation when a second agent
(organic liquid) was allowed to contact the pigment and first
agent (water) at the feed port whereas the plugging problem
addressed by Wesley (paragraph bridging columns 1 and 2) was the
result of premature heating and cross linking of fine particles
of organosilicon preceramic polymers. The examiner has not
established that one of ordinary skill in the art would have
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Application No. 08/991,572
Page 6
recognized that application of the starve feeding controller of
Wesley to the extrusion apparatus of Higuchi would have been
suggested by the disparate disclosures of those references and
would have met with a reasonable expectation of success in
addressing the significantly different problem discussed by
Higuchi.
On this record, the examiner has not proffered satisfactory
supporting evidence or a convincing rationale that specifically
addresses how the applied references would have taught or
suggested the herein claimed apparatus.
For the foregoing reasons, we find that the examiner has not
established a prima facie case of obviousness. Accordingly, we
will not sustain the § 103 rejection before us.
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Application No. 08/991,572
Page 7
CONCLUSION
The decision of the examiner to reject claims 17-19 under
35 U.S.C. § 103 as being unpatentable over Higuchi in view of
Wesley is reversed.
REVERSED
PETER F. KRATZ )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ROMULO H. DELMENDO ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY T. SMITH )
Administrative Patent Judge )
PFK/sld
Appeal No. 2002-0139
Application No. 08/991,572
Page 8
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