Ex Parte Temme et al

Patent Trial and Appeal Board

May 24, 2018

13677420 (P.T.A.B. May. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/677,420 11115/2012
157 7590 05/29/2018
Covestro LLC
1 Covestro Circle
PITTSBURGH, PA 15205
FIRST NAMED INVENTOR
Bodo Temme
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
BMS121005 5804
EXAMINER
ZALASKY, KATHERINE M
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
05/29/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
veronica. thompson@covestro.com
US-IPR@covestro.com
laura.finnell@covestro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BODO TEMME, STEP AN WERSHOFEN, THOMAS KNAUF,
RICHARD ADAMSON, WOLFGANG PAURA, BERND FRUHEN,
SUSAN DADD, and RALF ESSER1
Appeal 2016-008565
Application 13/677 ,420
Technology Center 1700
Before ROMULO H. DELMENDO, CHRISTOPHER L. OGDEN, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-5 and 13-18. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 The Appellants are the Applicants, Bayer MaterialScience LLC and Bayer
Intellectual Property GmbH. According to the Appellants, the real parties in
interest are Covestro LLC and Covestro Deutschland AG. App. Br. 2.
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Application 13/677,420
BACKGROUND
The subject matter on appeal relates to a device for separating two
immiscible phases. E.g., Spec. 1 :3-5; Claim 1. Claim 1 is reproduced
below from page 13 (Claims Appendix) of the Appeal Brief:
1. A device configured to separate a two-phase liquid reaction
mixture from a chemical process into an organic phase and an
aqueous phase comprising:
a) at least one vessel configured to receive a two-phase liquid
reaction mixture from a chemical process,
b) at least one pipe configured to supply the two-phase liquid
reaction mixture to the vessel,
c) at least one pipe configured to discharge the organic phase
and at least one pipe configured to discharge the aqueous
phase from the vessel, and
d) at least one means for observing the vessel's contents during
phase separation comprising:
(i) a transparent disk composed of sapphire or mica on the
disk's side that faces the phases to be separated.
REJECTIONS ON APPEAL
The claims stand rejected under 35 U.S.C. § 103(a) as follows:
1. Claims 1, 2, and 13-18 over Snyder (US 2011/0139689 Al,
published June 16, 2011) and Dickson (US 6,740,241 Bl, issued May 25,
2004);
2. Claims 3-5 over Snyder, Dickson, and Canty Process Technology
("Vision Without Limits")2 or Aruga (US 5,779,848, issued July 14, 1998);
2 Consistent with the nomenclature of the Appellants and the Examiner, we
refer to this reference as "Canty." The Appellants do not dispute the prior
art status of Canty or any other reference relied on by the Examiner.
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3. Claims 1, 3-5, and 13-18 over GB 455,325 3 (dated Oct. 19, 1936)
and Canty or Aruga.
ANALYSIS
After review of the cited evidence and the opposing positions of the
Appellants and the Examiner, we determine that the Appellants have not
identified reversible error in the Examiner's rejections. Accordingly, we
affirm the rejections for reasons set forth below, in the Final Action, and in
the Examiner's Answer. See generally Final Act. 2-10; Ans. 2-11.
Rejections 1 and 2
Concerning claim 1, the Examiner finds that Snyder discloses "a
device for liquid separation" that "includes a vessel capable of receiving a
feed," an inlet at the top of the vessel, and an outlet at the bottom of the
vessel. Ans. 3. The Examiner acknowledges that Snyder does not explicitly
teach the supply pipe or the discharge pipe, but the Examiner finds that,
because Snyder's vessel is a "preparative chromatography column, it will
inherently have at least one inlet pipe and at least one outlet pipe." Id. The
Examiner further finds that Snyder's vessel "includes a transparent material"
that "may be formed from sapphire glass," and that "the purpose of the
transparent material ... is to allow for monitoring of the packing of the
column." Id.
The Examiner acknowledges that a difference between Snyder's
apparatus and the apparatus of claim 1 is that Snyder "does not disclose that
there are at least two discharge pipes for discharging fluids from the
3 Consistent with the nomenclature of the Appellants and the Examiner, we
refer to this reference as "British."
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column." Ans. 3. However, the Examiner finds that Dickson discloses a
chromatography column that includes a valve assembly with three ports: a
first port for receiving a slurry fluid, a second port for removing used slurry
fluid, and a third port for the mobile phase. Id. at 3--4; Dickson at 4:35--41.
The Examiner determines:
It would have been obvious to one having ordinary skill in the art
at the time of the invention to incorporate valve assemblies on
the top and bottom of the column of Snyder that include at least
three ports for conveying different fluids, as disclosed by
Dickson, since doing so provides the column with means to pack
and unpack the column and since this type of valve assembly
allows for the column to be packed slowly so as to avoid waste.
Ans. 4.
With respect to the various "configured to" recitations of claim 1, the
Examiner determines that they are functional recitations that "do not affect
the structure of the device" and therefore are not limiting in the context of
the apparatus of claim 1. Ans. 2-3. The Examiner finds that "the structure
of modified Snyder" includes all of the recited structural elements of claim
1, and that it would be "inherently capable" of performing the functional
recitations of claim 1. Id. at 9-10.
In view of those determinations, the Examiner concludes that the
subject matter of claim 1 would have been obvious in view of the cited prior
art. Id. at 2--4, 9-10.
The Appellants do not meaningfully dispute the Examiner's
determination that the apparatus of Snyder as modified by Dickson
comprises every structural element required by claim 1. See App. Br. 6-9.
Nor do the Appellants dispute the Examiner's findings concerning
motivation to combine Snyder and Dickson. See id. Instead, the Appellants
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argue that the Examiner erred in failing to adequately consider the
"configured to" recitations of claim 1. See id.; see also Reply Br. 1-3.
The Appellants' arguments are not persuasive. As is clear from the
case law cited by the Appellants, see App. Br. 7-9, a functional recitation in
an apparatus claim is limiting only to the extent that it implies required
structure, see, e.g., Textron Innovations Inc. v. Am. Eurocopter Corp., 498 F.
App'x 23, 28 (Fed. Cir. 2012) ("In certain circumstances functional
language may be used to add limitations to an apparatus claim.") (citing K-2
Corp. v. Salomon S.A., 191F.3d1356, 1363 (Fed. Cir. 1999) ("[T]he
functional language tells us something about the structural
requirements .... ")); Hewlett-Packard Co. v. Bausch & Lomb Inc., 909
F.2d 1464, 1469 (Fed. Cir. 1990) ("[A]pparatus claims cover what a device
is, not what a device does." (emphasis in original)). Here, the Examiner
expressly finds that the disputed functional limitations do not structurally
distinguish the claimed apparatus over the apparatus of the combined prior
art, and the Examiner further finds that the apparatus of the combined prior
art is structurally capable of performing the recited functions. Ans. 2--4, 9-
10.
Although the Appellants assert that the disputed functional recitations
"are structural features of the claim that must be evaluated and considered in
assessing the patentability of claim 1," App. Br. 8, the Appellants provide no
support for that statement. Cf In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974) ("Attorney's argument in a brief cannot take the place of evidence.");
In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("naked assertions"
without substantive argument typically are not persuasive). In particular, the
Appellants do not identify any structure implied or required by the
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"configured to" limitations. Thus, the Appellants are unable to explain how
any such implied or required structure is missing from the apparatus of the
combined prior art. Additionally, the Appellants do not dispute the
Examiner's determination that the apparatus of the combined prior art is
structurally capable of performing the recited functions.
On this record, we are not persuaded of reversible error in the
Examiner's rejection of claim 1. See In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (explaining that, even if the examiner had failed to make a prima
facie case, the Board would not have erred in framing the issue as one of
reversible error because "it has long been the Board's practice to require an
applicant to identify the alleged error in the examiner's rejections"). The
Appellants do not separately argue claim 2, which depends from claim 1.
Accordingly, it falls with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
Claims 13-18 depend, directly or indirectly, from claim 1. Similar to
the "configured to" recitations of claim 1, the Examiner determines that the
additional recitations of claims 13-18 do not "affect the structure of the
[claimed] device" and instead are directed to the chemicals and
compositions supplied to the apparatus. See Ans. 4, 8 (citing In re Otto, 312
F .2d 93 7 ( CCP A 1963) ("[I]nclusion of the material or article worked upon
by a structure being claimed does not impart patentability to the claims.")).
Although the Appellants assert that "the features of these claims must also
be considered in judging their patentability," as above, the Appellants
identify no structure implied by these claims, the Appellants do not dispute
the Examiner's determination that the apparatus of the combined prior art
meets every claimed structural limitation, and the Appellants do not argue
that the apparatus of the combined prior art would not have been capable of
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being used with the recited compositions. On this record, we are not
persuaded of reversible error in the Examiner's rejection of claims 13-18.
See Jung, 637 F.3d at 1365.
The Appellants argue that the rejection of claims 3-5 (subject to
Rejection 2) should be reversed for the same reasons discussed above with
respect to claim 1. Because we affirm the rejection of claim 1, we likewise
affirm the rejection of claims 3-5.
Rejection 3
Rejection 3 is set forth at pages 6-8 of the Final Action and repeated
at pages 6-7 of the Answer. The Appellants' arguments concerning
Rejection 3 are essentially the same as the arguments discussed above with
respect to Rejections 1 and 2. See App. Br. 10-11. For reasons stated above
and by the Examiner, see Ans. 6-7, 10-11, those arguments are not
persuasive.
The only new argument raised with respect to Rejection 3 is that the
"means for observing the vessel's contents during phase separation"
(emphasis added), recited by claim 1, is placed too low on British's vessel
for an observer to view the actual phase separation, which takes place higher
in British's vessel. See App. Br. 11. That argument is not persuasive
because, as the Examiner explains, claim 1 requires only a "means for
observing the vessel's contents during phase separation" (emphasis added),
and it does not require means for observing the phase separation itself. The
disputed limitation does not require that the means for observing be placed
in any particular location beyond a location that permits "observing the
vessel's contents." See Ans. 11. The phrase "during phase separation"
recited by claim 1 is a temporal limitation, not a limitation concerning the
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placement of the transparent disk. There is no dispute that the vessel of
British includes a sight glass that permits the vessel's contents to be
observed. On this record, we are not persuaded of reversible error in the
Examiner's rejection on that basis.
We affirm the Examiner's rejection of claims 1, 3-5, and 13-18 under
the rationale set forth in Rejection 3.
CONCLUSION
We AFFIRM the Examiner's rejections of claims 1-5 and 13-18
under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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