Ex parte Misuraca

Board of Patent Appeals and Interferences

Feb 28, 2002

08786228 (B.P.A.I. Feb. 28, 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and is not binding precedent of the Board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. 18

UNITED STATES PATENT AND TRADEMARK OFFICE

__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ALFONSO M. MISURACA
__________

Appeal No. 1999-2081
Application 08/786,228
__________

HEARD: FEBRUARY 6, 2002
__________

Before PAK, LIEBERMAN, and PAWLIKOWSKI, Administrative
Patent Judges.

PAWLIKOWSKI, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on an appeal from the examiner’s
refusal to allow claims 1-9 and 11.
Claim 1 is representative of the subject matter on
appeal and reads as follows:
1. An assembly for mixing a polymer with water and
activating the polymer, comprising:

a mixing chamber having a first inlet, a second
inlet and an outlet orifice having a peripheral seat at
its distal end, wherein said seat has a cross-section
shaped as a right angled corner;

Appeal No. 1999-2081
Application 08/786,228

2

means for introducing a flow of water to said first
inlet;

means for introducing a flow of water to said first
inlet;

means for introducing a flow of said polymer to said
second inlet;

a plug disposed outside said mixing chamber and
shaped to seal said outlet orifice along said seat; and

means for yieldable biasing said plug against said
outlet orifice peripheral seat;

whereby the flow of the mixed water and polymer
exerts a force against said plug which causes said plug
to move away from said outlet orifice seat against the
force exerted by said biasing means so as to provide a
gap between said plug and said outlet orifice seat which
results in the activation by shearing of polymer passing
through said gap.

In support of the rejection, the examiner relies on
the

following prior art:

Brooks 1,925,787 Sept. 5, 1933
Lavine 2,124,580 July 26, 1938
Robinson 2,817,500 Dec. 24, 1957
Hendrikz 4,199,267 Apr. 22, 1980
Brazelton et al. (Brazelton) 5,135,968 Aug. 4, 1992

Claims 1-9 and 11 stand rejected under 35 U.S.C. §
103 as being unpatentable over the combined disclosures
of Brazelton taken with Robinson, Hendrikz, Brooks, and
Lavine.

Appeal No. 1999-2081
Application 08/786,228

3

We have carefully reviewed the claims, specification
and applied prior art, including all the arguments
advanced by both the examiner and appellants in support
of their respective positions. This review leads us to
conclude that the examiner’s § 103 rejection is not well-
founded. Accordingly, we reverse the examiner’s § 103
rejection for essentially those reasons set forth in the
brief. We add the following for emphasizes and
completeness.
First, we note that the examiner bears the initial
burden of presenting a prima facie case of
unpatentability. In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992).
Appellant acknowledges that the secondary reference
of Lavine teaches a spring loaded ball valve in a
emulsification device. (Brief, page 7). However,
appellant correctly points out that Lavine and the other
applied references lack the recitation of a right angle
corner seat to define an orifice. (Brief, page 8). This
is made evident by a comparison of appellant’s figure
with Figure 8 of Lavine. Specifically, appellant’s seat
30 is different from Lavine’s cup shape member 39 having
centrally disposed opening 40 adaptive to be closed by a
ball valve member 41. We note that the examiner does not
address this difference in his answer. (Answer, pages 3-
5).
Assuming, arguendo, that appellant’s claimed
invention is a combination of old elements, we note that
the fact that elements are old in the art not does not

Appeal No. 1999-2081
Application 08/786,228

4

necessarily mean the invention is obvious, nor is the use
of hindsight permitted. Graham v. John Deere Co., 383
U.S. 1, 37, 148 USPQ 459, 474 (1966). As correctly
pointed out by appellant on pages 7 and 8 of the brief,
the combination of references lacks the requirement that
some teaching, suggestion or incentive derived from the
prior art supports the combination. ACS Hosp. Sys., Inc.
v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929,
933 (Fed. Cir. 1984). In this context, we note that the
examiner has not explained why the references themselves
would have led one of ordinary skill in the art to
combine their teachings as proposed by the examiner.
This is a further deficiency in the examiner’s
presentation. See In re Rinehart, 531 F.2d 1048, 1051,
189 USPQ 143, 147 (CCPA 1976). For example, the examiner
has not provided an explanation of why one of ordinary
skill in the art would have been motivated to substitute
the ball assembly of Lavine for apparatus 22 of
Brazelton, especially in view of the fact that apparatus
22 of Brazelton is concerned with high shear mixing,
whereas the ball valve assembly disclosed in Lavine
concerns emulsification and blending of liquids.
Accordingly, we find that the examiner has not met
his burden of setting forth a prima facie case of
obviousness.
In view of the foregoing, the decision of the
examiner is reversed.
REVERSED

Appeal No. 1999-2081
Application 08/786,228

5

Chung K. Pak )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT Paul Lieberman )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Beverly A. Pawlikowski )
Administrative Patent Judge )

BAP/cam

David L. Davis
Plaza 9 900 Route 9
Woodbridge, NJ 07095