Sulzer Mixpac AG

Patent Trials and Appeals Board

May 18, 2020

2019001894 (P.T.A.B. May. 18, 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.
15/434,778 02/16/2017 Ralf SEIFER MF-US155217A 7546
22919 7590 05/18/2020
GLOBAL IP COUNSELORS, LLP
David Tarnoff
1233 20TH STREET, NW
Suite 600
WASHINGTON, DC 20036-2680
EXAMINER
GRUBY, RANDALL A
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
05/18/2020 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 RALF SEIFER and MANFRED OBRIST

Appeal 2019-001894
Application 15/434,778
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 10.1 We have jurisdiction
under 35 U.S.C. § 6(b). A telephonic oral hearing was held on May 6, 2020,
with Joseph F. Arand, Esq., appearing on behalf of Appellant.
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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THE CLAIMED SUBJECT MATTER
Appellant’s invention relates to a cartridge for receiving at least two
flowable components. Claim 1 is illustrative, and is reproduced below:
1. A cartridge configured to receive at least two flowable
components comprising:

a first storage chamber configured to receive a first
component, the first storage chamber having a first inner wall
extending between a filling end of the cartridge and a discharge
end of the cartridge, the first storage chamber further having a
first filling opening arranged at the filling end, the first storage
chamber being further configured to receive a first piston through
the first filling opening to sealingly close the first storage
chamber;

a second storage chamber connected to the first storage
chamber by a connection web, the second storage chamber being
configured to receive a second component and having a second
inner wall extending between the filling end and the discharge
end, the second storage chamber having a second filling opening
arranged at the filling end and being further configured to receive
a second piston through the second filling opening to sealingly
close the second storage chamber; and

a component outlet arranged at the discharge end,

the first and second inner walls each having a peripheral
bead disposed in a region of the first and second storage
chambers having the first and second filling openings, the
peripheral bead of the first inner wall partially extending in a
circumferential direction on the first inner wall and the peripheral
bead of the second inner wall partially extending in a
circumferential direction on the second inner wall so that the
peripheral beads of the first and second inner walls are
configured to hold the first and second pistons inside the first and
second storage chambers respectively, and so that the first inner
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wall has an unbeaded first connection section and the second
inner wall has an unbeaded second connection section, the
connection web being arranged between the first and second
connection sections,

the unbeaded first and second connection sections are
disposed in the first and second storage chambers, respectively,
the unbeaded first connection section comprising a first
boundary of the connection web, and the unbeaded second
connection section comprising a second boundary of the
connection web.

THE REJECTION
The Examiner rejects claims 1–8 and 10 under 35 U.S.C. § 103(a) as
being unpatentable over Brugner (US 2005/0051576 A1, published Mar. 10,
2005) in view of Skwarek (US 5,531,703, issued July 2, 1996) and Keller
(EP 0 688 727 A1, published Dec. 27, 1995).2
A rejection of claims 1–10 under 35 U.S.C. § 112, second paragraph,
based on indefiniteness, is withdrawn by the Examiner on Appeal. See Final
Act. 3; Ans. 3.
The Examiner indicates that claim 9 is directed to allowable subject
matter, and would be allowable if rewritten in independent form, and if
rewritten to overcome the § 112, second paragraph, rejection, as well as an
unspecified “associated double patenting rejection.” Final Act. 7–8. We
note that the § 112, second paragraph, rejection is withdrawn, and that the
Final Action contains no double patenting rejection, which we assume might

2 The heading for this ground of rejection identifies only claims 1, 2, and 4–
8 as being subject to the rejection, whereas the detailed grounds include
rationale for rejecting claims 3 and 10 as well. We thus regard the
discrepancy in the heading as being a clerical error.
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have been intended to relate to US 9,611,074, which issued in the parent
application to the instant application on appeal.

ANALYSIS
Appellant argues claims 1–8 and 10 as a group, and presents no
separate arguments for the patentability of claims 2–8 and 10 apart from
independent claim 1. We take claim 1 as representative of the group, and
claims 2–8 and 10 stand or fall with claim 1.
The Examiner finds that Brugner discloses a cartridge configured to
receive at least two flowable components, the cartridge having first and
second storage chambers with first and second inner walls extending
between filling and discharge ends of the cartridge, and having first and
second filling openings disposed at the filling end. Final Act. 4. The
Examiner acknowledges that first storage chamber is not specifically
disclosed as being configured to receive a piston through a first filling
opening to sealingly close the first storage chamber; nor that the first and
second inner walls of the first and second storage chambers have a
peripheral bead disposed in the region of the first and second filling
openings. Id.
As for the capability of either of the storage chambers to receive a
piston through a filling opening, the Examiner determines the claim
language reciting this characteristic is in the nature of an intended use that
does not differentiate the claimed apparatus from the structure relied upon in
Brugner. Final Act. 4–5. Appellant does not argue against this position.
Appeal Br., passim.; Reply Br., passim.
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The Examiner turns to Skwarek as disclosing the use of a peripheral
bead disposed in a region of a filling opening of a single storage chamber in
a cartridge, and as disclosing that the storage chamber is configured to
receive a piston therein to sealingly close the storage chamber. Final Act. 5.
The Examiner additionally finds that the peripheral bead partially extends in
a circumferential direction on the inner wall of the storage chamber, with the
inner wall also having an unbeaded section, and that the bead operates to
hold the piston inside the storage chamber. Id. The Examiner concludes
that it would have been obvious to modify each of the chambers of Brugner
in view of the teachings of Skwarek to provide a guiding means in the form
of a peripheral bead extending partially around the circumference of the
inner walls of the chamber to retain a piston inside each chamber. Id. The
Examiner points out that the connection web in Brugner will, in the resulting
modified structure, inherently be arranged between unbeaded connection
sections of the chambers. Id.
The Examiner additionally cites to Keller in connection with a
“particular orientation of the peripheral beads each [sic., in] each of the
chambers of Brugner.” Final Act. 5. Although we do not find language in
claim 1 referring to any particular orientation of peripheral beads, we
understand the Examiner to be applying the teachings of Keller to illustrate
how the peripheral beads disclosed by Skwarek would obviously be
positioned in a two storage chamber cartridge, whereas Skwarek discloses a
cartridge having only one chamber. The Examiner concludes that the
orientation/positioning disclosed by Keller would have been obvious to
employ in the Brugner cartridge as modified by Skwarek, in that Brugner
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and Skwarek as combined do not explicitly require or define a particular
orientation of the peripheral beads. Id.
Appellant first argues that the combination of Skwarek and Brugner
fails to disclose “the specific orientation of the peripheral beads, and thus the
unbeaded portion.” Appeal Br. 11. As noted above, notwithstanding that
the Examiner makes reference to orientation of the peripheral beads, we see
no limitation in claim 1 requiring any specific orientation of the beaded and
unbeaded portions. Skwarek discloses beads, and, once Brugner is modified
to include such beads, Brugner will have beaded and unbeaded portions of
the inner walls of its storage chambers.
Appellant next argues that, even assuming the combination of
Brugner, Skwarek, and Keller would result in a peripheral bead that partially
extends in a circumferential direction,
there is simply no suggestion of the unbeaded first and second
connection sections being disposed in the first and second
storage chambers, respectively, the unbeaded first connection
section comprising a first boundary of the connection web, and
the unbeaded second connection section comprising a second
boundary of the connection web, as required by independent
claim 1 of this application.
Appeal Br. 11. Appellant elaborates, maintaining that:
Even assuming that housings 1 and 2 in Brugner were modified
to be connected as shown in Keller, there is simply no disclosure
that an unbeaded portion of S[k]warek would form a first
boundary of the connection web in a first storage chamber and a
second boundary of the connection web in a second storage
chamber.
Id.
Claim 1 requires that the first and second storage chambers be
connected to one another by a connection web. Appeal Br. 15 (Claims
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App’x.). The claimed connection web is recited, from a structural
standpoint, as having first and second unbeaded connection sections of the
inner walls of the first and second storage chambers form first and second
boundaries of the connection web, and that the connection web is arranged
between the first and second connection sections. Id. No other structural
characteristics or limitations for the connection web appear in claim 1. Id.
The first and second connection sections are, as presaged in the preceding
sentence, defined only as unbeaded portions of the first and second inner
walls of the first and second storage chambers. Id.
The Examiner provides, in response to Appellant’s arguments, and in
light of the claim limitations which we discuss above, an annotated version
of Figure 3 of Keller, identifying the location of unbeaded sections of the
inner walls of two storage chambers, which correspond to the claimed
unbeaded connection sections. Ans. 5. The Examiner’s annotations identify
how these sections form first and second boundaries of the connection web
therein. Ans. 5. The annotated figure is reproduced below:

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Depicted above is an Examiner-annotated version of Figure 3 of Keller,
which is a cross-sectional view through a cartridge having two storage
chambers. The Examiner explains that the unbeaded surfaces of the inner
walls of the chambers form a boundary, or limit or extent, of a connection
web connecting the first and second chambers.
Appellant responds that, “the Examiner indicates a small bridge
between [the] two cartridges as a connection web and indicates [that] the
inner surfaces of the cartridges with no projections as unbeaded portions that
form a ‘boundary’ of the connection web.” Reply Br. 7. Appellant argues
that “the inner surfaces of the cartridges with no projections are far greater
tha[n] the limits of the small bridge. These portions of the inner surface
clearly do no[t] fix or limit the small bridge.”3 Id. Appellant restates this as,
“the area of the inner surface of Keller with no projections is far greater than
the size of the bridge.” Id. at 8.
We believe Appellant misstates the Examiner’s position that only the
“small bridge between [the] two cartridges” is regarded as being the
connection web. Instead, it can be seen from the arrows in the figure
reproduced above that the Examiner regards the unbeaded, facing inner
walls of the first and second storage chambers as first and second connection
sections that are part of the connection web, and serve as first and second
boundaries for that connection web, the connection web being arranged
between the connection sections. Appellant does not address this position,

3 Appellant’s arguments are directed to an Appellant-annotated version of
Figure 6 of Keller, provided on page 7 of the Reply Brief, which is identical
in all material respects to Figure 3 of Keller, used by the Examiner, in terms
of the arguments advanced.
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and we note that the structural limitations imposed on the connection web in
claim 1 do not preclude such an interpretation.
Further, even if Appellant is correct that only the “small bridge”
extending between the two cartridges in Keller may properly be regarded as
being responsive to the claimed “connection web,” the unbeaded portions of
the inner walls of the chambers in Keller still serve as first and second
boundaries at the left and right sides (in the orientations of Figures 3 and 6)
of that component. The “small bridge” is also arranged between those
unbeaded portions, as required by claim 1. The “boundary” language
appearing in claim 14 does not require that material forming the connection
web extend between the two storage chambers over the full extent of
unbeaded connection sections as it does, for example, in Appellant’s
“exemplary embodiment in Fig. 2,” which embodiment illustrates a cartridge
molded as a rectangular block. Appeal Br. 10. Appellant’s arguments to the
effect that the unbeaded portions of the inner walls in Keller extend to a
much greater extent than does the “small bridge,” suggest to us that
Appellant erroneously believes the subject matter of claim 1 to be limited in
this or a similar manner.
Appellant additionally argues that the grounds for rejection lack
articulated reasoning with some rational underpinning in terms of combining
the references in a manner that would result in an unbeaded connection
section comprising a boundary of a connection web, nor is there any

4 Claim 1 recites, “the unbeaded first connection section comprising a first
boundary of the connection web, and the unbeaded second connection
section comprising a second boundary of the connection web,” without
reference to the connection web and/or boundaries extending along the
entire extent of the connection sections.
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reasoning to modify Brugner in the manner proposed. Appeal Br. 12.
Appellant continues by explaining how its invention came into being, to
solve certain manufacturing problems with injection molding, and
subsequent forced demolding and insertion of the pistons into the storage
chambers. Id. Appellant maintains that Skwarek does not face these
problems, and thus provides no motivation to form unbeaded sections as
claimed. Id.
A reason to combine or modify the prior art may be found explicitly
or implicitly in “any need or problem known in the field of endeavor at the
time of invention and addressed by the patent,” and the background
knowledge, creativity, and common sense of the person of ordinary skill.
Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328–29 (Fed. Cir.
2009). Thus, it is not necessary that the prior art suggest the combination to
achieve the same advantage or result discovered by an applicant. In re
Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006). Here, the Examiner proposes to
introduce pistons into the storage chambers of Brugner, and to include
beaded portions on the inner walls of the chambers in order to retain the
pistons therein, as taught by Skwarek. Final Act. 5. Because there is no
requirement that the articulated reason to combine the prior art address the
same problem as the claimed invention, the Examiner’s reasoning is
appropriate and supported by rational underpinnings.
Appellant additionally argues that, because all of the claimed features
are allegedly not taught or suggested by the prior art, and the Examiner
allegedly provides no reasoning in support of the proposed modification of
Brugner, the rejection is based on the use of impermissible hindsight
reconstruction. Appeal Br. 12. As discussed above, we do not see where the
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prior art lacks the claimed features, and the Examiner does provide
reasoning as to why the prior art renders the subject matter of claim 1
obvious.
Appellant’s Reply Brief also reiterates several of the arguments
presented in the Appeal Brief. Reply Br. 3–6. Appellant additionally
challenges, for the first time, the Examiner’s reason to include the teachings
of Keller in the proposed modification, namely that, because Brugner and
Skwarek are silent with respect to the particular orientation of the peripheral
beads proposed to be added to Brugner, the orientation of beaded sections
disclosed by Keller would have obviously been used in modifying Brugner
in view of Skwarek. Reply Br. 3–4; see also, Final Act. 6. Appellant
maintains that this reasoning is “mere conjecture and conclusory statements
not supported by any evidence.” Reply Br. 3. Appellant maintains that
“’[s]ilence’ with respect to the orientation of a portion with no projections is
clearly not reasoning to orient the portion with no projections in a particular
location.” Id.
This reasoning appeared at page 6 of the Final Action, and Appellant
did not present any argument challenging the reasoning in its Appeal Brief.
Section 41.41(b)(2) of Title 37 of the Code of Federal Regulations provides
that an argument made for the first time in a Reply Brief that is not
responsive to an argument raised in the Examiner’s Answer is not to be
considered for the purposes of the present appeal, unless good cause is
shown by an appellant as to why the argument was not previously presented.
Appellant does not provide any statement as to why good cause exists for
not having made this argument in the Appeal Brief, and, therefore, we
decline to consider it in this appeal.
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In a separate subsection of the Reply Brief, Appellant maintains that
“there is no explanation of why one of ordinary skill would have combined
the references because there is no evidence presented. The Examiner simply
concludes that the combination would have resulted in the claimed
invention.” Reply Br. 4. The Examiner presents evidence in the form of the
devices disclosed in Brugner, Skwarek, and Keller, and provides reasoning
as to why it would have been obvious to modify Brugner in view of the
teachings of the other two references. We fail to understand what Appellant
has in mind when stating that “there is no evidence presented.”
Appellant expands on the “improper hindsight” argument cursorily
presented at page 12 of the Appeal Brief. Reply Br. 4–6. Appellant
maintains that “[t]he only reasoning [for combining the references] is
disclosed in the present specification.” Id. at 4. Appellant then reiterates
that its invention resulted from a realization that certain manufacturing steps,
when a two-chamber cartridge is produced by injection molding, give rise to
problems when a piston-retaining bead is molded in the side walls of the
storage chambers, mainly in terms of forced demolding and subsequent
insertion of a piston into the storage chambers. Id. at 4–6. Appellant again
explains why, in its view, none of the cited prior art faces these same issues.
Id.
As discussed, supra, the reason or reasons articulated by the Examiner
in reaching the conclusion of obviousness need not be, and are not, in the
present appeal, the same reasons that Appellant discloses as underlying the
creation of its invention. Since the Examiner cites to reasons disclosed in
the prior art, and does not rely on reasons found only in Appellant’s
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application, we disagree with Appellant that the rejection is based on the use
of improper hindsight.
Appellant next argues that beads 14 in Keller do not extend
circumferentially along a periphery of its storage chambers, and that they are
formed after inserting the pistons. Reply Br. 6. Appellant states that,
therefore, “there is simply no reasoning in . . . Keller to orient the
projections as claimed in claim 1.” Id. Not only do we disagree that the
beads in Keller do not extend circumferentially along at least a small portion
of the periphery, the Keller reference itself shows the projections (beads)
oriented in a manner consistent with the limitations in claim 1.
The Reply Brief concludes with a section taking issue with the
Examiner’s interpretation of Keller in terms of its disclosure of a connecting
web having unbeaded connection sections as two boundaries thereof. Reply
Br. 6–7. These arguments are addressed above in connection with the
Examiner-annotated version of Figure 3 of Keller. As above, the arguments
do not apprise us of Examiner error in the rejection.
The rejection of claim 1 as being unpatentable over Brugner,
Skwarek, and Keller is sustained. Claims 2–8 and 10 fall with claim 1.

DECISION
The rejection of claims 1–8 and 10 as being unpatentable is affirmed.

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–8, 10 103 Brugner, Skwarek,
Keller
1–8, 10

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