Müller, Jorge et al.Download PDFPatent Trials and Appeals BoardMay 19, 20202019002008 (P.T.A.B. May. 19, 2020) Copy Citation 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from the Examiner’s decision to reject claims 1–8 and 15–19.1 Claims 9 and 10 are canceled, and claims 11–14 are withdrawn from consideration.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. Appeal 2019-002008 Application 14/400,981 2 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); Appeal 2019-002008 Application 14/400,981 3 (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 Appeal 2019-002008 Application 14/400,981 4 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; Appeal 2019-002008 Application 14/400,981 5 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). Appeal 2019-002008 Application 14/400,981 6 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). Appeal 2019-002008 Application 14/400,981 7 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 Appeal 2019-002008 Application 14/400,981 8 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. Appeal 2019-002008 Application 14/400,981 9 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. Appeal 2019-002008 Application 14/400,981 10 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. Appeal 2019-002008 Application 14/400,981 11 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 Copy with citationCopy as parenthetical citation