Ex Parte Strecker

Patent Trial and Appeal Board

Jan 30, 2013

11244915 (P.T.A.B. Jan. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte TIMOTHY D. STRECKER
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Appeal 2010-004989
Application 11/244,915
Technology Center 3700
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Before GAY ANN SPAHN, MICHAEL C. ASTORINO, and
WILLIAM A. CAPP, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/244,915

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STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 16, 34-38, 40, and 42-53. Claims 1-15 and 18-33
have been cancelled and claim 39 has been withdrawn from consideration.
Claims 17 and 41 are objected to as being dependent upon a rejected base
claim. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
Claimed Subject Matter
Claims 34, 35, 36, and 37 are the independent claims on appeal.
Claim 34, reproduced below, is illustrative of the subject matter on appeal.
34. A method of dispensing a viscoelastic
liquid from a dispensing apparatus, comprising the
steps of:
introducing a first component viscoelastic
liquid to a first feed screw disposed within a
chamber;
introducing a second component viscoelastic
liquid to a second feed screw disposed within the
chamber; and
rotating the first and second feed screws a
pre-selected amount, to mix the first and second
component viscoelastic liquids forming a
viscoelastic liquid product and to dispense a
measured amount of the viscoelastic liquid product
directly from the dispensing apparatus.

Rejections
The following Examiner’s rejections are before us for review.
Claims 16, 36, 38, 40, 42, 45, and 46 are rejected under 35 U.S.C.
§ 102(e) as anticipated by Suto (US 6,211,267 B1, iss. Apr. 3, 2001).
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Claims 34, 35, and 47-53 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Laghi (US 5,328,459, iss. Jul. 12, 1994) and Suto.
Claims 37, 43, and 44 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Suto.
OPINION
The rejections of claims 16, 36, 38, 40, 42, 45, and 46 as anticipated by Suto
and claims 43 and 44 as unpatentable over Suto
Independent claim 36 recites a “dispensing apparatus” including “a
dispenser tip mounted to the bottom portion of a chamber.” Br., Claims
Appendix. The Examiner finds that Suto’s discharge port 10 and barrel 12
corresponds to the claimed dispenser tip and chamber, respectively. Ans. 3,
4, 9. The Appellant contends that Suto does not disclose a dispensing tip
mounted to the bottom of a chamber because the discharge port 10 is
integrally formed as part of the barrel 12 and therefore, cannot satisfy the
“mounted to” claim language. Br. 9-10. The Appellant supports this
contention by pointing to Suto’s Figures 1 and 3 which depict the discharge
port 10 and barrel 12 having the same cross-hatching. Id. In response to the
Appellant’s contention, the Examiner provides a dictionary definition of the
term “mounted” which “mean[s] ‘to fix’ or ‘to place’ or ‘to fix securely to a
support’”1 and explains that “[s]ince the dispenser tip of Suto . . . is fixed to
the bottom portion of the chamber, then the claimed limitation is fairly met.”
Ans. 9.
The Appellant’s contention is persuasive. With respect to the
Examiner’s quoted definitions supra, we note that the website

1 The American Heritage® Dictionary of the English Language, Fourth
Edition, copyright © 2000, Houghton Mifflin Company, accessed at
www.thefreedictionary.com.
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TheFreeDictionary.com defines the term “mount” as “6. a. To fix securely to
a support: mount an engine in a car. b. To place or fix on or in the
appropriate support or setting for display or study: mount stamps in an
album; mount cells on a slide” (last visited Jan. 19, 2013). These definitions
suggest that the term “mounted” requires separate structures rather than an
integrally formed structure. In other words, each of the examples of usage
of the word “mount” from TheFreeDictionary.com requires that a first
structure is mounted to a second structure, where the first structure is
separate from the second structure. Indeed, the example in definition 6. a.
requires a first structure “an engine” and a second structure “a car,” and the
examples in definition 6. b. requires a first structure “stamps” and a second
structure “an album” and a first structure “cells” and a second structure “a
slide.” In each of these examples, the first structure is separate from the
second structure. This is consistent with the Appellant’s Specification. For
example, chamber 820 includes portion 824, i.e., a first structure, that can be
mounted to a removable dispenser tip 839, i.e., a second structure, by use of
threaded portions 885 and 949. See Spec. 13, ll. 17-26, figs. 10, 11.
Since Suto’s discharge port 10 and barrel 12 are not disclosed as
separate structures, the Examiner’s finding that the discharge port 10 is
mounted to the bottom portion of the barrel 12 is not supported by a
preponderance of the evidence. Thus, the Examiner’s rejection of
independent claim 36, and claims 16, 38, 40, 42, 45, and 46 which depend
therefrom, cannot be sustained.
Additionally, the Examiner’s rejection of claims 43 and 44 as
unpatentable over Suto relies on the same unsupported finding concerning
the discharge port 10 being mounted to the bottom portion of the barrel 12.
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In other words, the Examiner’s added reasoning for the rejection of claims
43 and 44 does not modify Suto’s arrangement the discharge port 10 and
barrel 12 (see Ans. 6-7) and as such, does not remedy the deficiency of the
Examiner’s unsupported finding. Consequently, the Examiner’s rejection of
claims 43 and 44 is likewise not sustained.

The rejection of claims 34, 35, and 47-53 as unpatentable over
Laghi and Suto
Independent claim 34 is directed to “[a] method of dispensing a
viscoelastic liquid from a dispensing apparatus” and includes, inter alia, the
step of “rotating the first and second feed screws a pre-selected amount, to
mix the first and second component viscoelastic liquids forming a
viscoelastic liquid product and to dispense a measured amount of the
viscoelastic liquid product directly from the dispensing apparatus”
(hereinafter “rotating step”). Br., Claims Appendix (italics added).
The Examiner finds that Laghi discloses a method of dispensing a
viscoelastic liquid from a dispensing apparatus by introducing first and
second component liquids from cylinders 22 into chamber (mixing
manifold) 32 “to mix the first and second component viscoelastic liquids
forming a viscoelastic liquid product and to dispense a measured amount of
the viscoelastic liquid product directly from the dispensing apparatus.” See
Ans. 4-5 (italics added) and Laghi, col. 4, ll. 1-32; see also Laghi, fig. 2.
The Examiner also finds that “Laghi lacks . . . [a] mixing mechanism having
a first and a second feed screw[].” Ans. 5. In fact, Laghi discloses that a
static or dynamic mixer 34 is in fluid communication with mixing manifold
32. Laghi, col. 4, ll. 3-5. To remedy this deficiency with respect to claim
34, the Examiner turns to Suto’s disclosure of an extruder including a motor
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13 that rotates paddles 15, and the Examiner finds that Suto’s paddles 15
correspond to the claimed feed screws. See Ans. 5; Suto, col. 2, ll. 27-37.
Id. The Examiner concludes that:
[i]t would have been obvious to one having ordinary skill
in the art at the time the invention was made to substitute
Laghi’s mixing mechanism with the mixing mechanism of Suto
. . . in order to provide a uniform composition that can be
readily generated by virtue of the fact the combination of
paddles (15) compresses and stretches the material along the
direction of the axles (11) as taught by Suto . . . in (col. 4, ll.
24-31).
Ans. 6 (italics added). It is notable that the Examiner substitutes Suto’s
mixing mechanism for Laghi’s static or dynamic mixer 34.
The Appellant asserts that Suto discloses “continuously rotating the
feed screws to continuously produce an organopolysiloxane gum solution by
using a ball valve to control both the internal pressure and the rate of
material discharged from the extruder at a constant rate” and contends that
Suto does not rotate the first and second feed screws a pre-selected amount
to dispense a measured amount of the viscoelastic liquid product directly
from the dispensing apparatus. See Br. 24-25; see also Br. 20-21 and Suto,
passim. More specifically, Suto discloses that its “[m]otor 13 drives the
twin axles 11, and a ball valve 14 is used to control the amount of the final
product which is discharged from extruder A through the port 10” (Suto, col.
2, ll. 34-36) and “in order to carry out the mixing of a solvent with an
organopolysiloxane gum in a twin screw compounding extruder” ball valve
14 is required (Br. 25). See Suto, Abstract. Accordingly, the substitution of
Suto’s mixing mechanism for Laghi’s mixer 34 would necessarily effect
how the viscoelastic liquid product of Laghi would be dispensed. Therefore,
the Examiner’s reliance solely on Laghi “to dispense a measured amount of
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the viscoelastic liquid product” (Ans. 5 (italics added)) is inadequate as the
Examiner’s reasoning must also include the effect of Suto’s substituted
mixing mechanism on Laghi’s dispensing step.
The Examiner includes the following response to the Appellant’s
arguments:
[a]s disclosed in Figure 4 of Suto. . . first and second feed
screws (15) with a predetermined thread depth, being [sic]
rotated to mix a predetermined amount of the product from
container[s] 1-3 within chamber (12) (note: the depth of the
thread is predesigned to hold/mix a certain amount of fluid as
needed). Since, the predetermined thread depth of Suto . . . is
being used to mix and dispense[] the product within the
chamber, then, the claimed limitation “rotating the first and
second feed screw a preselected amount” is fairly met.
Ans. 12. However, this response does not adequately address the
Appellant’s contention that the Examiner’s proffered substitution would not
have resulted in the “rotating step” of independent claim 34. See Br. 19-25.
Thus, for the foregoing reasons, the Examiner’s rejection of
independent claim 34, and claims 47-53 which depend either directly or
indirectly therefrom, as unpatentable over Laghi and Suto is not sustained.
More specifically, in regards to the Examiner’s rejection of dependent claim
502, which relies on the discovery of optimum or workable ranges as
involving only routine skill in the art and concludes that such an
optimization would have been an obvious modification to one of ordinary
skill in the art (Ans. 6), the rejection fails to explain how the optimization of
the discharge rate of less than or equal to 0.8 milliliters per minute is routine

2 Claim 50 is directed to “[t]he method of claim 48,” and recites “wherein
the measured amount of the viscoelastic liquid product dispensed further
comprises dispensing the viscoelastic liquid product at a rate less than or
equal to 0.8 milliliters per minute.” Br., Claims Appendix.
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skill in the art for the reasons to be discussed infra with respect to the
rejection of claim 37.
Independent claim 35 is directed to “[a] method of dispensing a
viscoelastic liquid from a dispensing apparatus,” and similar to the “rotating
step” of claim 34, recites the step of “co-rotating or counter-rotating the
first and second feed screws a pre-selected amount, to mix the first and
second component viscoelastic liquids to form a viscoelastic liquid product
and to directly dispense a pre-selected volume of the viscoelastic liquid
product from a dispensing tip.” Br., Claims Appendix (italics added). For
the reasons discussed supra with regard to the rejection of independent claim
34, the Examiner’s rejection of independent claim 35 as unpatentable over
Laghi and Suto is not sustained.
The rejection of claim 37 as unpatentable over Suto
Independent claim 37 recites a “dispensing apparatus” including “at
least two feed screws . . . disposed in a chamber . . . wherein a pre-selected
amount of rotation of the at least two feed screws mixes the first and second
component viscoelastic liquids to form a viscoelastic liquid product and the
pre-selected amount of rotation discharges, at a rate less than or equal to 0.8
milliliters per minute.” Br., Claims Appendix.
The Examiner finds Suto discloses everything recited in claim 37
“except that the pre-selected amount of rotation of the at least two feed
screws discharges at a rate less than or equal to 0.9 [sic] milliliters per min.”
Ans. 6. The Examiner concludes that:
[i]t would have been obvious to one having ordinary skill
in the art at the time the invention was made to modify the at
least two feed screws of Suto . . . to discharge the product at a
rate less than or equal to 0.8 milliliters per minute . . . since it
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has been held that where the general conditions of a claim are
disclosed in the prior art, discovering the optimum or workable
ranges involves only routine skill in the art. As per MPEP [§]
2144.05.
Ans. 7. See In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“[W]here the
general conditions of a claim are disclosed in the prior art, it is not inventive
to discover the optimum or workable ranges by routine experimentation.”)
The Appellant contends that the Examiner’s conclusion of
obviousness lacks support because “MPEP §[]2144.05(II) covers
optimization of ranges which requires a result effective variable which
Appellant asserts Examiner has not shown.” Br. 33-34. Indeed, the
Examiner does not determine that Suto includes a result-effective variable.
See In re Antonie, 559 F.2d 618, 620 (CCPA 1977) (finding an exception to
the rule of Aller that the discovery of an optimum value of a variable in a
known process is normally obvious, in the case where a parameter optimized
was not recognized to be a result-effective variable).
However, even if the Examiner determined that Suto includes a result-
effective variable, Aller established two conditions for a conclusion of
obviousness: one, the general conditions of the claim must be disclosed in
the prior art; and two, discovery of the optimum or workable range must be a
matter of routine experimentation for a person of ordinary skill in the art.
Aller at 456. In this case, Suto discloses in Examples 1, 2, and 3, discharge
rates of 100, 120, and 50 Kg/hour, respectively. See Br. 32-33, Suto, col. 5,
l. 57-59, col. 6, ll. 15-17, 41-42. As such, the Examiner’s reasoning is
required, but fails, to address the second condition of Aller by explaining
how the optimization of Suto’s discharge rate from 100, 120, or 50 KG/hour
to less than or equal to 0.8 milliliters per minute would be accomplished by
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routine skill in the art. See also Br. 33. Thus, the Examiner’s rejection of
claim 37 is not sustained.

DECISION
We REVERSE the rejections of claims 16, 34-38, 40, and 42-53.

REVERSED

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