M¿ller, Jorge et al.

Patent Trials and Appeals Board

May 19, 2020

14400981 - (D) (P.T.A.B. May. 19, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/400,981 11/13/2014 Jorge Müller MF-US155185 1036
22919 7590 05/19/2020
GLOBAL IP COUNSELORS, LLP
David Tarnoff
1233 20TH STREET, NW
Suite 600
WASHINGTON, DC 20036-2680
EXAMINER
GREENLUND, JOSEPH A
ART UNIT PAPER NUMBER
3752
NOTIFICATION DATE DELIVERY MODE
05/19/2020 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):
mailpto@giplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JORGE MÜLLER and RICHARD LAVELANET

Appeal 2019-002008
Application 14/400,981
Technology Center 3700
____________

Before JENNIFER D. BAHR, JOHN C. KERINS, and
ARTHUR M. PESLAK, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1–8 and 15–19.1 Claims 9 and 10 are
canceled, and claims 11–14 are withdrawn from consideration. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 The term “Appellant” is used herein to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Sulzer Mixpac AG as the real party in
interest. Appeal Br. 3.
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Application 14/400,981

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THE CLAIMED SUBJECT MATTER
Appellant’s invention relates to a multicomponent cartridge receiving
flowable components. Claim 1 is illustrative, and is reproduced below:
1. A multicomponent cartridge for receiving flowable
components which are to be applied using a spray process,
comprising:

a first container configured to receive a first component, and
configured to receive a first piston;

a second container configured to receive a second component,
and configured to receive a second piston;

at least one cartridge outlet opening via which the components
are capable of exiting the containers; and

a cartridge passage for compressed air extending along the
containers, the cartridge passage for compressed air having a
cartridge inlet for compressed air and a cartridge outlet for
compressed air, the cartridge outlet for the cartridge passage for
compressed air being configured to connect to a mixer inlet for
compressed air disposed on a mixer separate from a mixer inlet
opening,

the first container, the second container and the cartridge passage
for compressed air being formed in one piece.

THE REJECTIONS
The Examiner rejects:
(i) claims 1–5, 7, 8, and 15–18 under 35 U.S.C. § 103(a) as being
unpatentable over Greter (US 9,056,288 B2, issued June 16, 2015) in view
of Hahnen (US 2003/0209612 A1, published Nov. 13, 2003);
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(ii) claim 6 under 35 U.S.C. § 103(a) as being unpatentable over
Greter in view of Hahnen and Leach (US 7,077,339 B2, issued July 18,
2006); and
(iii) claim 19 under 35 U.S.C. § 103(a) as being unpatentable over
Greter in view of Hahnen and Vukic (US 8,672,193 B2, issued Mar. 18,
2014).

ANALYSIS
Claims 1–5, 7, 8, and 15–18--35 U.S.C. § 103(a)--Greter/Hahnen
Appellant argues the rejected claims as a group, and relies on the
arguments presented for claim 1 for the patentability of the dependent
claims. Appeal Br. 12. We choose claim 1 as representative of the group,
and claims 2–5, 7, 8, and 15–18 stand or fall with claim 1.
The Examiner finds that Greter discloses a multicomponent cartridge
for receiving flowable components, including first and second containers
210, 230, to receive first and second components; first and second pistons;
and a cartridge outlet opening via which the components may exit the
containers. Final Act. 3. The Examiner further finds that Greter discloses a
cartridge passage for gas extending along the containers, in the form of
cartridge 220 disposed between containers 210, 230, and notes that Greter
discloses that the types of flowable components suitable for use in its device
include gaseous components. Id. The Examiner finds that cartridge 220 has
an inlet and an outlet for a gaseous mixture, is configured to connect to a
mixer inlet for the gas, and the gas mixture inlet is separate from the mixer
inlet opening. Id. Greter also discloses, according to the Examiner, that first
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Application 14/400,981

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and second containers 210, 230, and the cartridge passage for gas 220, are
all formed in one piece. Id. at 4.
The Examiner acknowledges that Greter fails to specifically disclose
compressed air as a gaseous component to be supplied from cartridge 220.
Final Act. 4. The Examiner cites to Hahnen as disclosing the use of
compressed air in a mixing apparatus that delivers two flowable materials
from syringe/piston containers, with the compressed air being mixed with
the two flowable materials to discharge the mixed flowable materials in a
spray. Id. The Examiner notes that Hahnen further teaches that the
provision of compressed air in that device also allows for purging and
cleaning of the system. Id. The Examiner concludes that it would have been
obvious to use compressed air as disclosed by Hahnen as the gaseous
component identified generically in Greter, in order to allow for desired
mixing and atomization of a fluid, and also allow the system to clean itself
of residual coagulating material that might remain in the mixing chamber.
Id.
Appellant mainly argues that the Greter device does not use a spray
process, and that, even if modified in view of Hahnen, the resulting structure
would not predictably produce a construction that would apply the flowable
components by a spray process. Appeal Br. 8–11. Indeed, Appellant
affirmatively avers that, “such a structure does not result in a spray process.”
Id. at 12; see also, Reply Br. 5–6.
These arguments are premised on Appellant’s underlying argument
that the claim preamble, which states that the claimed multicomponent
cartridge is “for receiving flowable components which are to be applied
using a spray process,” should be given patentable weight. Appeal Br. 7–8;
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Reply Br. 3–4. Appellant cites to two decisions of the Court of Appeals for
the Federal Circuit, as standing for the general principles that, if the claim
preamble is necessary to give life, meaning, and vitality to the claim, the
preamble is to be considered in the same manner as the remainder of the
claim, and that the preamble can be limiting when elements in the preamble
serve as an antecedent basis for limitations in the claim body. Reply Br. 4,
citing Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1306 (Fed.
Cir. 1999), and Eaton Corp. v. Rockwell Int’l. Corp., 323 F.3d 1332 (Fed.
Cir. 2003). Appellant further argues that, based on a review of the entirety
of the record, both the Examiner and Appellant regard the preamble
language as being a positive limitation in the claim. Reply Br. 3, citing
Corning Glass Works, 868 F.2d 1251, 1257 (Fed. Cir. 1989).
The Examiner maintains that the recitation involving use “in a spray
process” recites only a purpose or intended use of the invention, and is not
regarded as a limitation to be given patentable weight. Ans. 9–10, quoting
MPEP § 2112.01(II).2 The Examiner also takes the position that “the section
of the preamble reciting the spray process does not result in a structural
difference” between the claimed invention and the prior art, adhering to
guidance in that section as to the inquiry to be made during examination. Id.
at 10.3
The Federal Circuit recently reaffirmed, in Arctic Cat Inc. v. GEP
Power Products,4 that, as set forth in Catalina Mktg. Int’l, Inc. v.

2 Misidentified in the Answer as “2111.01(II).”
3 MPEP §2112.01(II) cites, as an example of precedent supporting the
guidance, the case of In re Otto, 312 F.2d 937, 938 (CCPA 1963).
4 919 F.3d 1320, 1327 (Fed. Cir. 2019).
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Coolsavings.com, Inc.,5 the overarching idea in play is that, “[i]n general, a
preamble limits the invention if it recites essential structure or steps, or if it
is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina
Mktg. Int'l, Inc., 289 F.3d at 808 (Fed. Cir. 2002) (quoting Pitney Bowes,
Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)).
“Conversely, a preamble is not limiting ‘where a patentee defines a
structurally complete invention in the claim body and uses the preamble only
to state a purpose or intended use for the invention.’” Id. (quoting Rowe v.
Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)).
That principle is grounded in the statutory distinction, in identifying
the permissible subject matter of a patent claim, between a physical product
(which may be defined in part by its claimed functional capabilities) and
activities that constitute a process (which may include a new “use” of a
known invention). See 35 U.S.C. § 101 (“process” versus “machine,
manufacture, or composition of matter”); 35 U.S.C. § 100(b) (defining
“process”); MasterMine Software, Inc. v. Microsoft Corp., 874 F.3d 1307,
1312–16 (Fed. Cir. 2017) (explaining impermissibility of mixing products
with processes in claims)
Appellant argues that the preamble language in claim 1 provides
antecedent basis for limitations appearing in the claim body and/or is
necessary to give life, meaning, and vitality to the claim. Appeal Br. 8;
Reply Br. 4. Appellant more particularly maintains that:
The body of the claim recites first and second components that
are received in the first and second containers. The first and
second components are two of the flowable components used in
the spray process. Further, the body of the claim requires that

5 289 F.3d 801 (Fed. Cir. 2002).
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the at least one cartridge outlet opening is through which the
components are capable of exiting the containers.
Appeal Br. 8; see also Reply Br. 4.
The Examiner implicitly acknowledges, and we agree, that the
portions of the preamble reciting “a multicomponent cartridge,” and even “a
multicomponent cartridge for receiving flowable components,” are
interrelated with certain structural recitations in the body of the claim,
including the “cartridge outlet opening” identified by Appellant in the
passage quoted above, as well as a “cartridge passage,” a “cartridge inlet,”
and a “cartridge outlet,” such that those portions might be afforded
patentable weight. See. e.g., Ans. 10 (omitting reference to the
multicomponent cartridge, and referencing only the spray process as not
being entitled to patentable weight).
As for the preamble language, “to be applied using a spray process,”
the disconnect is that none of the actual structural limitations in claim 1,
including those highlighted by Appellant, are defined in such a way that the
resulting structure would necessarily involve spraying of the flowable
components. It is notable that the (first and second) flowable components
that Appellant argues “are used in the spray process,” are not even
themselves positively recited in the claim.
We appreciate that, ultimately, Appellant’s disclosed device would
connect the multicomponent cartridge with its attendant structural
limitations recited in claim 1, to an unclaimed spray mixer, and that the
spray mixer would be configured to receive the two flowable components,
mix them together, and introduce compressed air as the flowable
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components exit the spray mixer, to effect the spraying of the mixture.6 See
Spec. 3:15–22; 6:10–21. However, no such structure or functional
limitations invoking such structure appear in claim 1; instead reference is
made only to a cartridge outlet “being configured to connect to a mixer
inlet,” having no particularly claimed structure.
Lastly, we address Appellant’s argument that the entirety of the record
must be taken into account, and that, when it is, the record supports the
position that “to be applied using a spray process” should be regarded as
imposing a positive limitation on claim 1. We view the Examiner’s
concerns regarding the capability of the Greter device to spray the
component mixture produced in its mixing apparatus, as modified by
Hahnen to supply compressed air to the mixing apparatus, as artifacts of the
requirement that the Examining Corps employ compact prosecution
techniques. In other words, the rejection was intended to stand up to review
whether or not the “spray process” language were determined to be a
positive limitation in the claim.
In view of the foregoing, we agree with the Examiner’s position that
the preamble language “to be applied using a spray process,” is nothing

6 Appellant argues, assuming “spraying” is a positive limitation in claim 1,
that “Greter does not disclose a device intended or even capable of spraying
components.” Appeal Br. 9 (emphasis omitted). By the same token, we
note that the structure as recited in claim 1 is itself not capable of spraying
components. Just as Appellant would attach an unclaimed spray mixer
component to the claimed cartridge, Greter discloses that the outlet of its
cartridge “can be provided with fastening means . . . for attachment of a
spray device.” Greter 5:47–49. While this is, of course, a moot point given
our position that the “spray process” limitation is to be afforded no
patentable weight, it serves to highlight what Appellant’s claim 1 does and
does not affirmatively recite.
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more than an intended use of the claimed multicomponent cartridge, and is
not to be afforded any patentable weight.
Even though we construe the preamble language, “to be applied using
a spray process,” to not limit claim 1 in any manner, one of the reasons
advanced by the Examiner for modifying Greter is to “allow for desired
mixing and atomization of a fluid,” which the Examiner also says results in
discharge of the mixed components by spraying. Final Act. 4, 9. As such,
Appellant’s arguments directed to the modification of Greter in view of
Hahnen not resulting in a device capable of spraying a mixture of flowable
components are not entirely moot.
However, the Examiner additionally concludes that the use of
compressed air as taught by Hahnen in the Greter device allows the Greter
system “to self-clean itself of any residual coagulating mixture that might
remain in the mixing chamber.” Final Act. 4. The Examiner reiterates this
basis for proposing to modify Greter several times. See, e.g., Ans. 11, 12.
Appellant does not argue that the modified Greter device would not have
this feature. Appeal Br., passim.; Reply Br., passim.
The only argument presented by Appellant that might have any
bearing on the legitimacy of the Examiner’s proposal to combine Greter and
Hahnen to provide a self-cleaning feature is the assertion that the proposed
modification would render Greter unsatisfactory for its intended purpose.
See Appeal Br. 10–11; Reply Br. 7–8. Appellant maintains, in this respect,
that, “Greter specifically states that the resultant mixed components should
be flowable,” and that, “assuming the result was a spray, the resultant
components would no longer be a flowable mixture.” Id.
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Appellant presents no evidence or sound technical reasoning in
support of the assertion that using compressed air as one of the fluids to be
mixed in Greter would result in a mixture that is not flowable. Greter itself,
as previously noted, advises that the mixed flowable materials may be
sprayed upon attachment of a spray head to its device. Greter 5:47–49. If
anything, the entrainment of compressed air in other flowable components
would seemingly improve the “flowability” of the mixture of components.
Given that Appellant’s position is nothing more than attorney argument
unsupported by evidence, we are not apprised of error on this basis.
Accordingly, we sustain the rejection of claim 1 as being unpatentable
over Greter and Hahnen. Claims 2–5, 7, 8, and 15–18 fall with claim 1.

Claim 6--35 U.S.C. § 103(a)--Greter/Hahnen/Leach
Appellant presents no arguments specific to this ground of rejection,
and instead relies on the arguments advanced relative to claim 1. Appeal
Br. 12. For the reasons presented above, this rejection is sustained.

Claim 19--35 U.S.C. § 103(a)--Greter/Hahnen/Vukic
Appellant presents no arguments specific to this ground of rejection,
and instead relies on the arguments advanced relative to claim 1. Appeal
Br. 12. For the reasons presented above, this rejection is sustained.

DECISION
The rejections of claims 1–8 and 15–19 as being unpatentable are
affirmed.

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CONCLUSION
In summary:

Claims
Rejected
35 U.S.C.
§
Basis Affirmed Reversed
1–5, 7, 8,
15–18
103 Greter, Hahnen 1–5, 7, 8,
15–18

6 103 Greter, Hahnen,
Leach
6
19 103 Greter, Hahnen,
Vukic
19
Overall
Outcome
1–8, 15–19

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED