Ex Parte Rub et al

Board of Patent Appeals and Interferences

Dec 31, 2008

11120453 (B.P.A.I. Dec. 31, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte THOMAS RUB
and JOHANNES VAN DE BRAAK
__________

Appeal 2008-5939
Application 11/120,453
Technology Center 1700
___________

Decided: December 31, 2008
___________

Before ADRIENE LEPIANE HANLON, PETER F. KRATZ, and
MARK NAGUMO, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from an Examiner’s final
rejection of claims 1-11, all of the claims pending in the application. We
have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART.

Appeal 2008-5939
Application 11/120,453

The following Examiner’s rejections are before us for review:
Claim 1 is rejected under 35 U.S.C. § 103(a) as unpatentable over the
combination of Forrester,1 Hideki,2 and Smythe.3
Claims 2-5 are rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Forrester, Hideki, Smythe, and Nielsen.4
Claims 6 and 9 are rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Forrester and Hideki.
Claims 7, 8, and 10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Forrester, Hideki, and Tada.5
Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Forrester, Hideki, and Murray.6
The subject matter on appeal relates to an apparatus for producing
sandwich composite elements comprising an application apparatus for an
adhesion promoter. The application apparatus comprises at least one feed
line for the adhesion promoter and a rotary table with at least one lateral
outlet orifice.
Claim 1 is representative of the dispositive issue with respect to
appealed apparatus claims 1-5:
1. An apparatus for the production of sandwich composite
elements comprising:

1 US 4,019,938 issued to Forrester on April 26, 1977.
2 JP 53-16783 published February 16, 1978, naming Hideki as the inventor.
In this opinion, we refer to the English translation of this document that is of
record in the Official file of Application 11/120,453.
3 US 4,521,462 issued to Smythe on June 4, 1985.
4 US 6,221,435 B1 issued to Nielsen on April 24, 2001.
5 EP 0 109 224 A2 published May 23, 1984.
6 US 6,130,268 issued to Murray on October 10, 2000.
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Application 11/120,453

a) at least two feed apparatuses for facings to which
b) an application apparatus for an adhesion promoter,
c) an application apparatus for a core layer,
d) a conveying apparatus and
e) a cutting apparatus
are connected one after the other, in which the application
apparatus for adhesion promoter comprises:

1) at least one feed line for the adhesion promoter,
2) a rotary table with
(i) at least one lateral outlet orifice and
(ii) a drive.
Claim 6 is representative of the dispositive issue with respect to
appealed process claims 6-11:
6. A process for the production of sandwich composite
elements with the apparatus of Claim 1 comprising:

a) applying an adhesion promoter to a lower facing,
b) introducing a core material between the facings,
c) conveying the composite to a collection point.
App. Br. 11, Claims Appendix.7
B. ISSUES
The Appellants have limited their arguments for patentability to
apparatus claim 1 and process claim 6. Therefore, the patentability of claims

7 Appeal Brief dated January 30, 2008.
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Application 11/120,453

1-5 stands or falls with claim 1, and the patentability of claims 6-11 stands
or falls with claim 6.
Issue 1: Have the Appellants shown that the Examiner reversibly
erred in finding that Smythe discloses an application apparatus comprising a
rotary table with at least one lateral outlet orifice as required by apparatus
claim 1?
Issue 2: Does claim 6, which depends from claim 1, require that the
recited process be performed using the apparatus of claim 1?
C. FINDINGS OF FACT
The following findings of fact are supported by a preponderance of
the evidence. Additional findings of fact as necessary appear in the Analysis
portion of the opinion.
Smythe
The invention disclosed in Smythe relates to a rotary atomizer for
coating workpieces with a fine layer of liquid material. Smythe 1:7-9.
Smythe Figure 1 illustrates a rotary atomizer according to the
invention. Smythe 2:52-53. Figure 1 is reproduced below:

Smythe Figure 1 depicts a rotary atomizer.
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Application 11/120,453

The rotary atomizer 10 includes an atomizing device 12. The device
12 consists of a mushroom-shaped boss 13 secured to the end of a shaft 14
and in use is rotated at high speed by a motor or turbine. The boss 13 is
unitary with a generally cup-shaped member or bell 15. Smythe 2:58-66.
A row of circumferential holes 16 is formed at the junction of the
outer edge of the head of the boss 13 and a projection on the internal wall of
the bell 15. Smythe 2:67-3:2.
D. PRINCIPLES OF LAW
Patentability may not be based on elements not present in the claims.
In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
The term “comprises” permits the inclusion of steps, elements, or
materials not recited in a claim. In re Baxter, 656 F.2d 679, 686 (CCPA
1981).
E. ANALYSIS
1. Issue 1
The Examiner found that Smythe discloses an apparatus for applying
a coating comprising a rotary table (mushroom-shaped boss 13) and a
plurality of lateral outlet orifices (circumferential holes 16). Ans. 4.8
The Appellants argue that the claimed lateral outlet orifice(s) can be
distinguished from the circumferential holes 16 disclosed in Smythe by the
form of the product discharged therefrom. In particular, the Appellants
argue that “miniscule droplets” are discharged from the claimed lateral
outlet orifice(s). Spec. 6:11-13; App. Br. 5.

8 Examiner’s Answer mailed March 17, 2008.
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Application 11/120,453

On the other hand, the Appellants argue that the Smythe apparatus is a
rotary atomizer that requires gas or air to break up liquid at the outlet 20 into
smaller droplets. App. Br. 4. In operation, the Appellants explain that drips
of liquid from outlet 20 form a spray which “impinges on the outer wall of
the chamber 18 and coalesces into a thin, coherent or quasi-coherent film.”
Smythe 3:34-40; App. Br. 5.
According to Smythe:
This film then travels under the effect of the centripetal forces
through the bores 16 to the discharge edge 17, from where it is
discharged as a uniform spray.

Smythe 3:41-43.
The Appellants’ arguments are not persuasive of reversible error.
First, the claims on appeal neither expressly recite nor implicitly require that
“miniscule droplets” are discharged from the lateral outlet orifice(s).
Furthermore, the Appellants have failed to point to any limitation in the
claims on appeal that excludes a gas supply or a lateral outlet orifice through
which a film, such as the thin, coherent, or quasi-coherent film of Smythe,
travels. Baxter, 656 F.2d at 686.
Therefore, we find that the circumferential holes 16 of the Smythe
apparatus are within the scope of the “at least one lateral outlet orifice”
recited in claim 1.
2. Issue 2
The Appellants argue that neither Forrester nor Hideki discloses or
suggests an applicator comprising a rotary table having at least one lateral
outlet orifice. App. Br. 7. The Examiner agrees. Ans. 3-4. Nonetheless,
the Examiner explains:
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Application 11/120,453

[T]he recitation of “elements with the apparatus of claim 1” is
in the preamble of the claim and does not positively recite in
the body of the claim requiring a rotary table having at least one
lateral outlet orifice, therefore the claims do not require the
features of the claim 1 and is broader than what appellant has
argued.

Ans. 11.
In response, the Appellants contend that this argument is contrary to
the language of claim 6 which recites “A process for the production of
sandwich composite elements with the apparatus of Claim 1 . . . .” App.
Br. 7. The Appellants maintain that this language clearly requires the use of
the apparatus of claim 1 and is not merely descriptive of the process being
claimed. Reply Br. 3.9
The Examiner’s claim construction is erroneous. Claim 6 depends
from claim 1. Section 112, fourth paragraph, requires that “[a] claim in
dependent form shall be construed to incorporate by reference all the
limitations of the claim to which it refers.” Thus, all of the limitations of the
apparatus of claim 1 are incorporated into claim 6 as a matter of law.
The apparatus of claim 1 includes an application apparatus comprising
a rotary table with at least one lateral outlet orifice. The Examiner did not
find that Forrester or Hideki discloses such an application apparatus. Ans.
3-4. As for Tada and Murray, applied in the rejections of dependent process
claims 7, 8, 10, and 11, the Examiner likewise did not find that these
references disclose or suggest an application apparatus as recited in claim 1.
See Ans. 7, 8, 12; see also App. Br. 8 (Tada does not disclose an adhesive
applicator having a rotary table with at least one lateral outlet surface); App.

9 Reply Brief dated May 20, 2008.
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Application 11/120,453

Br. 9 (Murray does not disclose an adhesive applicator having a rotary table
with at least one lateral outlet surface). Therefore, based on the record
before us, we find that the applied prior art does not teach or suggest all of
the limitations of the process claims on appeal.
F. CONCLUSIONS OF LAW
The Appellants have not shown that the Examiner reversibly erred in
finding that Smythe discloses an application apparatus comprising a rotary
table with at least one lateral outlet orifice.
The Examiner reversibly erred in concluding that claim 6 does not
require the recited process to be performed using the apparatus of claim 1.
G. DECISION
The rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Forrester, Hideki, and Smythe is affirmed.
The rejection of claims 2-5 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Forrester, Hideki, Smythe, and Nielsen is affirmed.
The rejection of claims 6 and 9 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Forrester and Hideki is reversed.
The rejection of claims 7, 8, and 10 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Forrester, Hideki, and Tada is
reversed.
The rejection of claim 11 under 35 U.S.C. § 103(a) as unpatentable
over Forrester, Hideki, and Murray is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (2008).

AFFIRMED-IN-PART
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Appeal 2008-5939
Application 11/120,453

PL Initial:
sld

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