11145636 (B.P.A.I. Jan. 29, 2009)

Ex Parte Powell

Board of Patent Appeals and InterferencesJan 29, 2009

11145636 (B.P.A.I. Jan. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte DUANE POWELL ____________ Appeal 2008-3942 Application 11/145,636 Technology Center 1700 ____________ Decided: January 29, 2009 ____________ Before EDWARD C. KIMLIN, BRADLEY R. GARRIS,1 and TERRY J. OWENS, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING The Appellant requests reconsideration of our decision (Decision mailed Sept. 24, 2008) to affirm the Examiner’s rejection of claim 7 over U.S. 4,159,929 to Grotheer (Request 1). 1 APJ Garris has been substituted on the panel for APJ Waltz, the author of our Decision, who has retired. Appeal 2008-3942 Application 11/145,636 The Appellant argues that we erred in considering the Examiner to have stated that a static mixer comprising openings in the wall of a cone was known and available in the art, and that the Appellant had not disputed the Examiner’s statement (Request 3). In our Decision we state (pp. 6-7): [W]e determine that the Examiner has stated that the claimed “cone” static mixer is one of many static mixers known and available in the art (Final Office Action dated Nov. 30, 2006, p. 8). On this record, Appellant has not disputed the Examiner’s statement. Therefore, we determine that the use of any known static mixer available in the art, such as a perforated cone, for its well known function of creating turbulence and promoting the reaction in the process of Grotheer (see FF(3))[ ]2 would have been obvious to one of ordinary skill in this art, yielding no more than would have been expected. See KSR, 127 S. Ct. at 1740 and 1742. What the Examiner states on the page of the Final Office Action referred to in the above excerpt from our Decision is: The required “cone” in Applicant’s claims is only an exemplified or preferred static mixer, other forms of static mixer, such as the static mixer as mentioned in Grotheer or the “filling pieces”, i.e., packings, as disclosed in DE ‘893[ ]3 would produce the same results for the process of producing sodium hypochlorite. Thus, in order to show that the claimed “cone” is patentable, criticality or unexpected result[s] must be shown for the use of the claimed “cone”. In the Appeal Brief the Appellant argues (Br. 6): 2 Factual Finding 3 (FF 3) is: “Grotheer teaches that the in-line static mixers operate under turbulent conditions to ensure good contact between the reactants, exemplifying the mixer as a horizontal chamber (col. 5, ll. 44-48; see the sole Figure)” (Decision 5). 3 In our Decision we reversed a rejection of claim 7 over DE 512863 (Decision 7-8). 2 Appeal 2008-3942 Application 11/145,636 [T]he Examiner admits that the reference lacks a static mixer as defined in the claim, yet asserts that without a showing of criticality or unexpected results, the use of a particular type of static mixer would achieve the same effect in the process of Grotheer ‘929.[ ]4 In view of the Examiner’s admission, the rejection fails to make a prima facie case of obviousness requiring Applicant rebuttal, such as by showing unexpected results. Thus, in our Decision we erred in stating that “the Examiner has stated that the claimed ‘cone’ static mixer is one of many static mixers known and available in the art (Final Office Action dated Nov. 30, 2006, p. 8)”, and that the Appellant did not dispute the Examiner’s statement. In the Examiner’s Answer the Examiner states that “[e]ven if in the event that the cone with openings in its walls was a new type of static mixer, there was still no evidence on record to show that the use of such new static mixer would provide any unexpected results or improvement over the known static mixer as shown in the applied references” (Ans. 8-9). That statement indicates that the Examiner actually did not have knowledge that a static mixer comprising openings in the wall of a cone was known in the art. We therefore grant the Appellant’s request for rehearing and, accordingly, reverse the Examiner’s rejection of claim 7 over Grotheer. 4 The Examiner’s statement referred to by the Appellant is: “For claim 7, Grotheer ‘929 does not disclose that the static mixer is a cone, however, without a showing of criticality or unexpected results, the use of a particular type of static mixer is not seen as a patentable difference because any static mixer would achieve the same effect in the process of Grotheer ‘929” (Final Office Action dated Nov. 30, 2006, p. 3). 3 Appeal 2008-3942 Application 11/145,636 GRANTED ssl GEORGE LAWRENCE BOLLER SUITE 316 17199 N LAUREL PARK DR LIVONIA, MI 48152 4