Olivier Maniere

Patent Trials and Appeals Board

Jan 31, 2020

13382177 - (D) (P.T.A.B. Jan. 31, 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.
13/382,177 01/04/2012 Olivier Maniere 10777 US 5740
28006 7590 01/31/2020
LKGLOBAL | Lorenz & Kopf, LLP (Solenis)
7010 E. Cochise Rd.
Scottsdale, AZ 85253
EXAMINER
HOWELL, MARC C
ART UNIT PAPER NUMBER
1774
NOTIFICATION DATE DELIVERY MODE
01/31/2020 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):
solenispatent@lkglobal.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte OLIVIER MANIERE

Appeal 2019-002443
Application 13/382,177
Technology Center 1700
____________

Before KAREN M. HASTINGS, JULIA HEANEY, and
MICHAEL G. McMANUS, Administrative Patent Judges.

McMANUS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of the
Examiner’s decision to reject claims 1–8, 10–13, and 15–18. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Solenis
Technologies, L.P. Appeal Br. 3.
Appeal 2019-002443
Application 13/382,177

2
CLAIMED SUBJECT MATTER

The present application generally relates to an apparatus, system and
method for emulsifying oil and water. Specification dated Jan. 4, 2012
(“Spec.”) ¶ 2. The disclosed apparatus, system and method are taught to be
“useful for preparing aqueous emulsions of sizing agents for internal sizing
or surface sizing of paper and paperboard.” Id. The Specification teaches to
prepare the desired emulsions “by feeding water through a venturi apparatus
at relatively high pressure and introducing the sizing agent at the venturi
suction inlet.” Id. ¶ 14. Figure 3 of the Specification shows a venturi
apparatus taught to be useful in practicing the disclosed method.

Figure 3 is a cross-sectional view of a venturi apparatus 50 including first
inlet 48 for the continuous phase, continuous phase nozzle 66, suction inlet
52 for the dispersed phase, conical mixing chamber 80, and mixed phase
nozzle 60. Spec. ¶¶ 33–35.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below with certain limitations bolded for emphasis:

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1. A system for emulsifying oil in water or water in oil that-
comprises
a venturi apparatus (50) having:
a first inlet ( 48) for introducing a continuous phase stream,
a channel (56) for receiving the continuous phase stream
having both a smaller diameter than the first inlet and a
conical section (58),
a continuous phase nozzle (66) positioned downstream of the
channel for receiving the continuous phase stream,
a conical mixing chamber (80) that tapers in diameter
wherein the widest diameter is where the channel meets the
mixing chamber to a narrower diameter where the mixing
chamber meets a mixed phase nozzle and wherein the mixing
chamber is positioned downstream of the continuous phase
nozzle;
a second inlet for introducing a dispersed phase to the venturi
apparatus (50) and mixing chamber (80); wherein an
emulsion is formed between the continuous phase and
dispersed phase in the mixing chamber (80) and the emulsion
fed to the mixed phase nozzle (60) and to a discharge diffuser,
characterized in that the ratio of the diameter of the mixed
phase nozzle to the diameter of the continuous phase
nozzle is greater than 1:1 and less than 4:1; and wherein
the median particle size of the resulting emulsion droplet is
less than about 2 microns.
Appeal Br. 15 (Claims App.) (emphasis added).

Appeal 2019-002443
Application 13/382,177

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REFERENCES
The Examiner relies upon the following prior art:
Name Reference Date
Best US 1,540,592 June 2, 1925
Ciuti et al. (“Ciuti”) US 4,026,817 May 31, 1977
Von Berg US 5,403,522 Apr. 4, 1995
Hicks et al. (“Hicks”) US, 5,989,446 Nov. 23, 1999
Dilts et al. (“Dilts”) US 2003/0205167 A1 Nov. 6, 2003
Lott US 2005/0058020 Al Mar. 17, 2005
Moreira Campos
(“Campos”)
US 2008/0267006 Al Oct. 30, 2008

REJECTIONS
The Examiner maintains the following rejections:
1. Claims 1–7 are rejected under pre-AIA 35 U.S.C. § 112, ¶ 2, as
being indefinite for failing to particularly point out and distinctly
claim the subject matter which the applicant regards as the
invention. Final Action dated Nov. 17, 2017 (“Final Act.”), 2.
2. Claims 1, 2, and 4–7 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Campos in view of Ciuti and
further in view of Lott. Id. at 3–7.
3. Claim 3 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Campos in view of Ciuti and further in view
of Lott and Von Berg. Id. at 8.
4. Claims 8, 10–13, 15, and 16 are rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Ciuti in view of Dilts
and further in view of Lott and Best. Id. at 8–13.
5. Claims 17 and 18 are rejected under pre-AIA 35 U.S.C. § 103(a)
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Application 13/382,177

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as being unpatentable over Ciuti in view of Dilts and further in
view of Lott, Best, and Hicks. Id. at 13–17.
DISCUSSION
Rejection 1. The Examiner rejects claims 1–7 as indefinite. Final
Act. 2. The Examiner determines that there is insufficient antecedent basis
for the second occurrence of the term “a mixed phase nozzle” in claim 1.
Appellant sought to cure any indefiniteness by amendment filed subsequent
to the Final Rejection.2 See Response Pursuant to 37 CFR § 1.116 and After
Final Consideration Pilot 2.0 (AFCP 2.0), dated Jan. 16, 2018 (“Response
After Final Action”). The Examiner declined to enter such amendment on
February 9, 2018. The Appellant does not address this rejection in its briefs.
Accordingly, we summarily affirm the rejection on this basis. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2012); see also Manual of Patent Examining Procedure
(MPEP) § 1205.02 (8th ed., Rev. 7) (“If a ground of rejection stated by the
examiner is not addressed in the appellant’s brief, that ground of rejection
will be summarily sustained by the Board.”).

Rejection 2. The Examiner rejects claims 1, 2, and 4–7 as obvious
over Campos in view of Ciuti and further in view of Lott. Final Act. 3–7. In
support of the rejection, the Examiner finds that Campos teaches a system

2 In the proposed amendment, Appellant sought, inter alia, to change the
second reference to “a mixed phase nozzle” to “the mixed phase nozzle” in
claim 1. See Response After Final Action 2. The claims Appellant lists in
the Claims Appendix include this proposed amendment as though it were
entered by the Examiner. See Appeal Br. 15 (Claims App.). We were
unable to locate any record of such amendment being entered.
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for emulsifying oil in water (or water in oil) that includes a venturi
apparatus. Campos teaches a venturi apparatus having a continuous phase
nozzle (tube 1) and “a conical mixing chamber (conical section of
decompressor 2) that tapers in diameter wherein the widest diameter is
where the channel meets the mixing chamber (where tube 1 meets
decompressor 2).” Id. at 4. Figure 2 of Campos is reproduced below.

Figure 2 of Campos depicts a mixing device including injection tube 1,
decompressor 2, and inlet 6. Campos ¶ 15. The Examiner finds that
Campos is silent as to the ratio of the diameter of the mixed phase nozzle
(narrow portion of decompressor 2) to the diameter of the continuous phase
nozzle (nozzle of injection tube 1). Final Act. 4–5.
The Examiner additionally finds that Lott teaches a venturi apparatus
having a continuous phase nozzle (inner nozzle 52 having diameter D1) and
a mixed phase nozzle (throat 62 having diameter D2). Id. at 5. The
Examiner further finds that Lott teaches that the ratio of the diameter of the
mixed phase nozzle to the diameter of the continuous phase nozzle is greater
than 1:1 and less than 4:1. Id. (citing Lott ¶ 29). Figure 4 of Lott is
reproduced below.
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Figure 4 of Lott depicts a portion of a mixing device including inner nozzle
52 (diameter D1), and outer, mixed phase, nozzle 60 (diameter D2). Lott ¶
29.
The Examiner determines that one of ordinary skill in the art would
have had reason to “provide[] the apparatus of Campos with the dimensions
(and therefore the ratio) of Lott for the purpose of producing satisfactory
results as determined by the flow rate (Lott, paragraph 0029).” Final Act. 5.
Appellant argues that the rejections of independent claims 1, 8, and 17
are in error. Appeal Br. 10. Appellant argues the independent claims as a
group. Id. at 10–13. Appellant further argues that the rejections of the
dependent claims should be reversed for the same reasons as the independent
claims. Id. at 13–14. We select claim 1 as representative. See 37 C.F.R. §
41.37(c)(1)(iv) (“When multiple claims subject to the same ground of
rejection are argued as a group or subgroup by appellant, the Board may
select a single claim from the group or subgroup and may decide the appeal
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as to the ground of rejection with respect to the group or subgroup on the
basis of the selected claim alone.”)
Appellant argues that the rejection is erroneous in two respects. First,
Appellant argues that “Lott does not [] disclose, teach, or even suggest
inclusion of the narrowest portion of decompressor 2 of Campos and thus
would not suggest to a POSITA to apply the ratio of diameters . . . of its
device to the diameters of the decompressor 2 and the tube 1 of Campos.”
Appeal Br. 10. Appellant argues that “throat 62 [of Lott] corresponds to the
conical section of decompressor 2 of Campos (albeit not conical) as a
mixing chamber and not the narrowest portion of decompressor 2 of
Campos.” Id. at 11 (emphasis omitted).
In the Answer, the Examiner cites Lott’s teaching that “mixing is at a
maximum adjacent the lower end of nozzle 52.” Answer 21 (citing Lott
¶ 29). The Examiner finds that this disclosure indicates that the conical
section 60 of Lott serves as a mixing chamber. Id.
Appellant disputes such finding. Reply Br. 3. In its Reply Brief,
Appellant further argues that “[i]n Figure 2 of Campos . . . the ‘mixing
chamber’ analog is seen just upstream of the decompressor 2, where the
fluids from the first inlet 5 and the second inlet 6 first meet.” Reply Brief
dated Jan. 31, 2019 (“Reply Br.”), 2. Appellant cites to Lott’s statement that
structure 60 is an “outer nozzle.” Id.; Lott ¶ 28. Appellant argues that the
Examiner errs in finding that outer nozzle 60 is a mixing chamber. Reply
Br. 3. Appellant cites to Lott’s teaching of a “mixing chamber 71,” id.; Lott
¶ 29, that is slightly downstream of the conical area and concludes that the
mixing chamber of Lott is not analogous to that of Campos. Appellant
argues that “[i]f [structure] 71 is the mixing chamber of Lott, there is no
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outlet. It follows there is no structure analogous to the decompressor 2 of
Campos and the mixed phase nozzle 60 of the current claims.” Reply Br. 3
(emphasis omitted). Accordingly, Appellant reasons, “there is no motivation
outside the current disclosure that would make the person of ordinary skill
apply the references the way the Examiner has in the Final Rejection.” Id. at
4.
We find the Examiner’s reasoning to be persuasive. The lower end of
Lott’s nozzle 52 is located within conical section 60. Lott teaches that
mixing is at a “maximum” at such location. It is reasonable for the
Examiner to find that a person of ordinary skill in the art would have
regarded such area as a mixing chamber. Accordingly, Appellant has not
shown error in the Examiner’s stated reason to combine the teachings of
Campos and Lott so as to achieve the stated ratio of the diameter of the
mixed phase nozzle to the diameter of the continuous phase nozzle.
For its second argument, Appellant contends that, even if one of skill
in the art would have had reason to modify Campos so as to incorporate
Lott’s teaching regarding the ratio of the diameters of the nozzles, the
proposed combination “would have rendered the device of Campos
unsatisfactory for its intended purpose.” Appeal Br. 12.
Appellant argues that Lott teaches “that both the diameter D1 and the
length of the throat 62 are dependent on the dimensions of the diameter D2.”
Id. (referring to Lott ¶ 29). Appellant further argues that the “lower
diverging ring 58, having an increasing diameter, extends from the length of
the throat 62.” Id. at 13. Appellant argues that modification of the
decompressor 2 of Campos with the dimensional restrictions described
above for the throat 62 of Lott would result in a) the length of the
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decompressor being too short to connect with the helical tube 3 and b) the
lower diverging ring 58 extending from the throat 62 of Lott having a cross-
section not equal to the cross-section of helical tube 3. Id.
These arguments are not persuasive. The Examiner relies on Lott
only for teachings regarding the diameter of nozzles, not for any teaching
regarding the length of the throat or the shape of the diverging section.
Answer 23 (“Only the diameters from Lott are being applied to analogous
structures of Campos.”). Further, “[t]he test for obviousness is not whether
the features of a secondary reference may be bodily incorporated into the
structure of the primary reference,” In re Keller, 642 F.2d 413, 425 (CCPA
1981), but rather whether “a skilled artisan would have been motivated to
combine the teachings of the prior art references to achieve the claimed
invention,” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir.
2007). Further, the Board “can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Thus, neither the length of the throat section nor the structure of the
lower diverging ring are part of the Examiner’s hypothetical combination;
nor has it been shown that the Examiner’s proposed modification of the
Campos device would have rendered it unsatisfactory for its intended
purpose.
In view of the foregoing, we determine that Appellant has not shown
error with respect to the reversal of independent claim 1 or dependent claims
2 and 4–7.

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Rejections 3–5. The Examiner rejects claims 3, 8, 10–13, and 15–18
as obvious over various references as stated above. See Final Act. 8–17.
Appellant’s arguments applicable to independent claims 8 and 17 are
addressed above. Appellant further argues that the rejection of all dependent
claims should be reversed for the same reasons advanced with respect to the
independent claims discussed above. Appeal Br. 13–14. As we have not
found such arguments persuasive, we determine that Appellant has failed to
show error with regard to rejections of the dependent claims at issue.
Further, we note that the rejections of claims 8, 10–13, and 15–18 do not
rely upon the teachings of the Campos reference. Accordingly, Appellant’s
arguments regarding Campos are not relevant to the rejections of these
claims and do not show error therein.

CONCLUSION

The Examiner’s rejections are affirmed.
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–7 112, ¶ 2 Indefiniteness 1–7
1, 2, 4–7 103(a) Campos, Ciuti,
Lott
1, 2, 4–7
3 103(a) Campos, Ciuti,
Lott, Von Berg
3
8, 10–13,
15, 16
103(a) Ciuti, Dilts, Lott,
Best
8, 10–13,
15, 16

17, 18 103(a) Ciuti, Dilts, Lott,
Best, Hicks
17, 18
Overall
Outcome
1–8, 10–13,
15–18

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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