Gregory Rue. Logue et al.Download PDFPatent Trials and Appeals BoardJul 30, 201914314838 - (D) (P.T.A.B. Jul. 30, 2019) 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. 14/314,838 06/25/2014 Gregory Rue Logue FMI-US100- DIV2(28851.265) 7954 27104 7590 07/30/2019 FENNEMORE CRAIG, P.C. 1700 Lincoln Street Suite 2400 DENVER, CO 80203 EXAMINER FRANCIS, FAYE ART UNIT PAPER NUMBER 3725 MAIL DATE DELIVERY MODE 07/30/2019 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte GREGORY RUE LOGUE, LARRY GIANNOTTI, GARY G. de GALA, JAMES A. COLE, and DAVID L. COTTRELL ____________________ Appeal 2018-005953 Application 14/314,838 Technology Center 3700 ____________________ Before BRETT C. MARTIN, JILL D. HILL, and PAUL J. KORNICZKY, Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Gregory Rue Logue et al. (“Appellants”)1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 1, 3–6, and 8– 10. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Appellants’ identify the Assignee Climax Molybdenum Company as the real party in interest. Appeal Br. 2. Appeal 2018-005953 Application 14/314,838 2 BACKGROUND Independent claims 1 and 6 are pending. Independent claim 1, reproduced below, illustrates the claimed invention: 1. Apparatus for reducing a particle size of a precursor powder material by fluid energy impact, comprising: a housing defining an interior milling cavity therein having a peripheral wall; a powder feed inlet operatively associated with said housing, said powder feed inlet allowing the precursor powder material to be introduced into the interior milling cavity; a feed gas inlet operatively associated with said powder feed inlet, said feed gas inlet allowing a feed gas to be introduced into the interior milling cavity; a product discharge outlet operatively associated with said housing, said product discharge outlet allowing a milled powder product to be removed from the interior milling cavity; and an oil injection nozzle assembly operatively associated with said product discharge outlet, said oil injection nozzle injecting oil into a particle-laden product stream from said product discharge outlet. REJECTIONS2 Claims 1, 3, 4, 6, 8, and 9 stand rejected under 35 U.S.C. § 102(b) as anticipated by, or in the alternative under 35 U.S.C. § 103(a) as unpatentable over Chickering (US 2004/0118007 A1, pub. June 24, 2004). Final Act. 2. Claims 5 and 10 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Chickering and Haddow (US 4,792,098, iss. Dec. 20, 1988). Final Act. 4. 2 The Examiner has withdrawn the rejections based on Wheeler. Ans. 3. Appeal 2018-005953 Application 14/314,838 3 ANALYSIS Rejection I The Examiner finds that Chickering discloses using “a jet mill to produce powder particles (intended use) wherein the particles [are] blended with another material such as oil [0104] before (as a feed stream [0061]- [0063]) or after jet milling or both [0099]-[0104].” Final Act. 2. Anticipation Claims 1, 3, and 4 Regarding anticipation of claim 1, Appellants argue, inter alia, that the Examiner erred in finding that Chickering discloses an oil injection nozzle assembly as recited in claims 1, 3, and 4. Appeal Br. 17. The Examiner responds that Chickering discloses that “any kind of introduction means can be used (the excipient material can be introduced into the feed stream using essentially any suitable introduction means known in the art in order to provide the excipient feed material at a sufficient pressure to cause the material to flow into the mill.” Ans. 4 (citing Chickering ¶ 62 (stating “excipient material can be introduced [via] . . . any suitable introduction means known in the art” such as “screw or vibratory feed from a closed hopper, a venturi feed from a vented hopper, via a feedstream from one or more other spray drying units . . ., or via a feedstream from one or more jet milling devices. One skilled in the art can readily connect a feed source line using standard techniques . . . .”)). Appellants reply that the Examiner’s “conclusion ignores the specific requirements of the claims in favor of a more generalized concept of what the examiner refers to as an ‘introduction means,’” while claim 1 specifically recites “‘an oil injection nozzle assembly’ that is ‘operatively Appeal 2018-005953 Application 14/314,838 4 associated with’ the ‘product discharge outlet’ of the mill.” Reply Br. 3 (emphasis omitted). “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). An “identical invention must be shown in as complete detail as is contained in the [] claim.” Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989). Also, when express disclosure is missing, and inherency is relied on to establish anticipation, the Examiner must establish that a skilled artisan would recognize that the missing descriptive matter is necessarily present in the reference. See Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). Chickering does not expressly disclose an identical invention shown in as complete detail as is contained in the claim, because “any suitable introduction means known in the art” does not provide a disclosure that is in as complete detail as the claimed “oil injection nozzle assembly.” In addition, the Examiner has not established that a skilled artisan would recognize that an oil injection nozzle assembly is necessarily present in Chickering’s disclosure of “any suitable introduction means known in the art.” For this reason, the Examiner has not established anticipation of claims 1, 3, and 4 based on Chickering. Claims 6, 8, and 9 Independent claim 6 recites, inter alia, “an oil feed inlet operatively associated with said housing, said oil feed inlet allowing an oil to be introduced into the interior milling cavity,” and “being positioned with respect to the interior milling cavity of said housing so that there will be Appeal 2018-005953 Application 14/314,838 5 substantially immediate mixing of the oil with the precursor powder material being ground in the interior milling cavity.” Appeal Br. 37–38 (Claims App’x). Appellants argue, inter alia, that Chickering’s oil feed inlet is not “positioned with respect to the interior milling cavity so that there will be ‘substantially immediate mixing of oil’ with the precursor powder being ground in the milling cavity.” Appeal Br. 20. The Examiner responds that Chickering discloses that its particles, such as oil, are blended with another material “before (as a feed stream [0061]-[0063]) or after jet milling or both [0099]-[0104],” which the Examiner considers to be “substantially immediate mixing.” Ans. 5. Regarding “substantially immediate mixing,” Appellants’ Specification states that it will be desirable to inject or provide the oil 120 to the jet mill 114 so that there will be almost immediate mixing of the oil 120 with the material being ground in the interior milling chamber or cavity (e.g., cavity 38 of Figures 2 and 3). Provision of the oil 120 at points too far “upstream” from the jet mill 114, such as, for example, at a location 172 on the upstream end of distribution manifold 158, may result in fouling of the manifold 158 and gas (i.e., air) lines with excess quantities of oil 120. Spec. ¶ 64. This disclosure informs us that the claimed “substantially immediate mixing” requires more than general mixing that the Examiner infers from Chickering’s blending of excipients before and/or after jet milling. Chickering, therefore, does not disclose an identical invention in as complete detail as is contained in the claim, and the Examiner has not established that “substantially immediate mixing” is necessarily present in Appeal 2018-005953 Application 14/314,838 6 Chickering’s blending after jet milling. For this reason, the Examiner has not established anticipation of claims 6, 8, and 9 based on Chickering. Obviousness Claims 1, 3, and 4 Regarding obviousness, Appellants argue that Chickering’s teachings “are limited to the production and blending of dry powders” and “are insufficient to lead a person having ordinary skill in the art to modify the Chickering apparatus to include the injection of oil.” Appeal Br. 22, 23 (citing Chickering ¶¶ 47–52). According to Appellants, “[w]hile it is true that Chickering mentions that the excipient material may comprise ‘lubricants,’ (¶103), the lubricant examples provided by Chickering in ¶104 are all solids.” Id. at 18. Appellants contend that, although Chickering mentions hydrogenated vegetable oils as a lubricant, “those oils are not used for the same purpose as in the present invention” and “are solids.” Id. at 22, 23–24; Reply Br. 18; Chickering ¶ 104. The Examiner responds that liquid oil is not recited in the rejected claims, and “[t]he crux of the Appellants [argument] . . . is that the [claimed] oil is described as being in liquid form so that it may be atomized into small droplets to ‘provide a substantially even coating on the particles contained in the particle laden product stream’ from the mill,” but the advantage of even coating “has not been captured by the claims that only require an oil injection nozzle.” Ans. 4 (emphasis omitted). The Examiner contends that, thus, “the feature upon which applicant relies (i.e., oil in liquid form) is not recited in the rejected claim(s).” Id. at 4, 5. Appellants reply that, “[i]n construing the term ‘oil’ as referring to oil in a liquid form, Appellants are not reading limitations from the Appeal 2018-005953 Application 14/314,838 7 specification into the claims,” but rather are “explaining the ordinary and customary meaning the term would have had to a person having ordinary skill in the art at the time of the invention.” Reply Br. 4 (citing Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)). Appellants proffer a dictionary definition for oil as “‘[a]ny of various viscous, combustible, water-immiscible liquids that are soluble in certain organic solvents,’” indicating that the definition is “helpful in understanding how a person having ordinary skill in the art would view the term ‘oil.’” Id. at 5 (citing MCGRAW-HILL DICTIONARY OF SCIENTIFIC AND TECHNICAL TERMS, 5th ed.). We are not persuaded by Appellants’ argument, because it is contrary to Appellants’ own contention that hydrogenated vegetable oil is an oil that exists as a solid. Further, Appellants provided their dictionary definition of “oil” as a liquid for the first time in their Reply Brief, preventing the Examiner from having an opportunity for rebuttal. See 37 C.F.R. § 41.41(b)(1). In addition, the purpose of the claimed oil is not recited in the claims, and Chickering therefore need not disclose that its oil has the same purpose or result. Appellants also argue, inter alia, that Chickering does not inject its oil at the claimed location. According to Appellants: “Nowhere does Chickering disclose . . . injection of liquid oil by an oil injection nozzle assembly” that is “‘operatively associated with’ the ‘product discharge outlet’ of the mill that ‘injects oil into the particle-laden product stream’ from the mill.” Appeal Br. 18–19. Rather, Appellants contend, Chickering’s embodiments introduce “excipient material into the feedstream ‘before it flows into the jet mill.’” Appeal Br. 18–19; Reply Br. 3. Appeal 2018-005953 Application 14/314,838 8 The Examiner responds that Chickering discloses that the particles, such as oil, are blended with another material “before (as a feed stream [0061]-[0063]) or after jet milling or both [0099]-[0104].” Ans. 5. Chickering discloses an in-line spray drying and jet milling process that eliminates the need for product collection between spray drying and jet milling. Chickering ¶ 5. Chickering discloses adding or introducing excipients prior to jet milling in many embodiments (id. ¶¶ 9, 13, 14, 19, 20, 34, 36), and then additionally discloses that “blending can be performed before jet milling as an in-line process, after jet milling, or both before and after jet milling” (id. ¶ 61). Chickering then discloses that, in a preferred embodiment, excipient material preferably is added to the feedstream before it flows into the jet mill via “essentially any suitable introduction means known in the art,” including via “screw or vibratory feed from a closed hopper, a venturi feed from a vented hopper, via a feedstream from one or more other spray drying units making the excipient particles.” Id. ¶ 62. Chickering then states that, “[i]n another embodiment, the excipient material is blended with the particles post-jet milling” via “essentially any technique or device suitable for combining the microparticles with one or more other materials (e.g., excipients), preferably to achieve uniformity of blend.” Id. ¶ 63. Chickering, therefore, discloses adding excipients after jet milling, for the purpose of blending, via “essentially any technique or device suitable for combining” the jet milled particles with the excipient. Lubricating excipients are disclosed to include hydrogenated vegetable oils. Id. ¶ 104. Claim 1 recites, specifically, “an oil injection nozzle assembly operatively associated with said product discharge outlet [of milled product], Appeal 2018-005953 Application 14/314,838 9 said oil injection nozzle injecting oil into a particle-laden product stream from said product discharge outlet.” Appeal Br. 36 (Claims App’x). Chickering discloses addition of oil to a milled product via “any suitable technique or device” for blending. The missing finding or conclusion, however, is that “an oil injection nozzle assembly operatively associated with said product discharge outlet” of a jet mill would have been known or obvious, to a skilled artisan, to be a “technique or device suitable for combining” jet milled particles with oil. While this may be true, the Examiner has not supported a finding or conclusion to this end. Without such a properly-supported finding or conclusion that a suitable blending device would have included or rendered obvious an oil injection nozzle assembly as claimed, prima facie obviousness has not been established, and we do not sustain the rejection of claims 1, 3, and 4 as obvious over Chickering. Claims 6, 8, and 9 The Examiner concludes that, if Chickering does not disclose an oil injection nozzle/oil feed inlet to provide substantially immediate mixing of oil and powder, it would have been obvious to a skilled artisan to provide Chickering’s device with a nozzle inlet “to introduce the oil into the device.” Final Act. 3. The Examiner does not provide a rational basis for the stated reason to modify Chickering to include “substantially immediate mixing” of oil into the powder. It is unclear to us how Chickering’s general disclosure of blending hydrogenated vegetable oil after jet milling would provide a skilled artisan with a motivation to provide, specifically, “substantially immediate mixing” as claimed. Given that “substantially immediate mixing” appears to Appeal 2018-005953 Application 14/314,838 10 be described in Appellants Specification to be more than mere blending, the Examiner has not established that “substantially immediate mixing” is necessarily present in Chickering’s blending after jet milling, or would be rendered obvious based on Chickering’s blending disclosure. We, therefore, do not sustain the rejection of claims 6, 8, and 9 based on obviousness over Chickering. Rejection II The Examiner does not find that Haddow cures the deficiencies of Chickering set forth above in our analysis of Rejection I. For the reasons set forth above regarding Rejection I, we do not sustain Rejection II. DECISION We REVERSE the rejection of claims 1, 3, 4, 6, 8, and 9 under 35 U.S.C. § 102(b) as anticipated by, or in the alternative under 35 U.S.C. § 103(a) as unpatentable over Chickering. We REVERSE the rejection of claims 5 and 10 under 35 U.S.C. § 103(a) as unpatentable over Chickering and Haddow. REVERSED Copy with citationCopy as parenthetical citation