PAUL WURTH S.A.

Patent Trials and Appeals Board

Apr 6, 2020

14413127 - (D) (P.T.A.B. Apr. 6, 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.
14/413,127 01/06/2015 Pierre Mahowald ETF0668US 5517
23413 7590 04/06/2020
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
EXAMINER
SADLON, JOSEPH
ART UNIT PAPER NUMBER
3638
NOTIFICATION DATE DELIVERY MODE
04/06/2020 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):
usptopatentmail@cantorcolburn.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PIERRE MAHOWALD, BEN MULLER, and LOUIS SCHMIT

Appeal 2019-002991
Application 14/413,127
Technology Center 3600
____________

Before ANTON W. FETTING, MICHAEL C. ASTORINO, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 6–8 and 10–19. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as PAUL
WURTH S.A. Appeal Br. 2.
Appeal 2019-002991
Application 14/413,127

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ILLUSTRATIVE CLAIM
6. An installation for distribution of granular or powder
material via pneumatic transport comprising at least one
dispensing hopper for temporary storage of said granular or
powder material, the dispensing hopper being suited to being,
alternately, pressurized for emptying the dispensing hopper and
depressurized to permit filling thereof, and a device for
depressurizing said dispensing hopper, comprising
- a depressurizing duct connected to said dispensing
hopper,
- a bag filter, having a maximum operating flow rate of a
gas flow, connected to said depressurizing duct, and
- flow control means for controlling the flow rate in said
depressurizing duct through the bag filter,
wherein the bag filter is a filter suited to operating under
pressure, and the flow control means are static control means
without moving elements, disposed in the depressurizing duct
downstream of the bag filter and configured to receive the gas
flow, the flow control means comprising a plate with an orifice
of predetermined cross-section or a de Laval nozzle of a
predetermined cross-section and shape, arranged to permit the
passage of a maximum volumetric flow rate which is less than
or equal to the maximum admissible flow rate for the bag filter.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Schmit
(“Schmit ’166”)
US 5,489,166 Feb. 6, 1996
Schmit et al.
(“Schmit ’356”)
US 5,516,356 May 14, 1996

REJECTION
Claims 6–8 and 10–19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Schmit ’356 and Schmit ’166.
Appeal 2019-002991
Application 14/413,127

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FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
In regard to independent claim 6, the Examiner finds that Schmit ’356
lacks the recited “flow control means” — a limitation that claim 6 describes,
in part, as “static control means without moving elements . . . comprising a
plate with an orifice of predetermined cross-section or a de Laval nozzle of a
predetermined cross-section and shape.” See Final Action 3. The Examiner
further finds that Schmit ’166 discloses a de Laval nozzle. See id. The
Examiner states that it would have been obvious to a person of ordinary skill
in the art, at the time of the invention, to modify Schmit ’356, “by including
the Laval nozzle” of Schmit ’166, “in any location and for any purpose
desired,” “in order to achieve desired flow rates to meet desired performance
characteristics.” Id. at 4.
The primary reference (Schmit ’356) discloses the elements that
would be modified, per the Examiner’s analysis, as follows, wherein the bin
210 corresponds to the claimed “dispensing hopper,” the pressure relief pipe
214 and discharge pipe 226 correspond to the claimed “depressurizing duct,”
and the separator 218 corresponds to the claimed “bag filter”:
This pressure relief pipe 214 is advantageously connected to a
separator 218. A hopper in the lower part of the separator 218
discharges the solid particles captured by the filter into the bin
210 through a discharge pipe 222 fitted with a gas-tight shut-off
valve (not illustrated). The pressure relief gases filtered by the
separator 218 are discharged through a discharge pipe 226 fitted
with a gas-tight isolating valve. This valve 230 is connected to
a device 234 for regulating the pressure controlled by a pressure
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Application 14/413,127

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measuring device 238 which continuously monitors the
pressure prevailing inside the bin 210.
Schmit ’356 col. 5, ll. 1–11. The Examiner explains the reason for
introducing the de Laval nozzle of the secondary reference (Schmit ’166)
into the system disclosed in the primary reference (Schmit ’356):
The combination of references merely requires replacing one
downstream valve — identified in Schmit ’356 as “for
regulating the pressure” — with another flow control valve.
Namely, a Laval nozzle. The primary reference teaches the
exact claimed assembly but with an active flow controller,
which is well known. The secondary reference teaches a
passive well-known Laval nozzle, or “flow controller”. . . . It
is also noted that replacing the actively controlled flow device
of the primary reference with a Laval nozzle as in the secondary
reference would simplify the device by doing away with the
pressure sensors and active controllers for valve (230). As such
the proposed modification would not make the system more
complicated as asserted by the appellant, but rather make it a
simpler design.
Answer 15–16. According to the Examiner, “[a] skilled artisan constricting
[sic, constructing] the device of Schmit ’356 would be reasonably motivated
to substitute a simplified nozzle as taught by Schmit ’166 because a
simplified nozzle would improve reliability of the assembly.” Id. at 17.
Furthermore, “the primary reference of Schmit ’356 would still perform the
exact same function with only an improved valve as above identified,
namely that it is simpler and more reliable.” Id. at 16.
Central to the Examiner’s position is the substitution of Schmit ’356’s
gas-tight isolating valve (element 230) — together with its associated
regulating device (element 234) controlled by pressure measuring device
(element 238) — with the de Laval nozzle of Schmit ’166. The Examiner’s
analysis obscures the differences between the elements at issue — referring
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Application 14/413,127

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to the gas-tight isolating valve (230) of Schmit ’356 as an “active flow
controller” and referring to the de Laval nozzle of Schmit ’166 as “another
flow control valve.” Id. at 15. Yet, the de Laval nozzle is not a valve. As a
form of claim 6’s “flow control means,” it is “static,” “without moving
elements,” and has “a predetermined cross-section and shape” — such that it
cannot close. By contrast, the gas-tight isolating valve (230) can be closed
and opened to whatever extent determined by the regulating device (234)
that is controlled by the pressure measuring device (element 238). See
Schmit ’356 col. 5, ll. 8–11. In view of the interacting operation of these
elements, there is inadequate support for the Examiner’s finding that “the
primary reference of Schmit ’356 would still perform the exact same
function with only an improved valve” (Answer 16), on account of
substituting a de Laval nozzle for the gas-tight isolating valve (230) and its
associated elements. See Appeal Br. 9.
Indeed, as the Appellant argues, the contemplated substitution of prior
art elements would, at least, change the principle of operation of Schmit
’356 — if such substitution would not render the combination inoperable.
Id. (“Schmit ’356 does not teach or suggest controlling flow rate through the
depressurizing duct. The operation of Schmit ’356 merely requires an
isolation valve.”) The Examiner does not explain the basis for combining
such inconsistent prior art teachings, in the manner set forth in the rejection.
See Plas-Pak Indus., Inc. v. Sulzer Mixpac AG, 600 F. App’x 755, 758–59
(Fed. Cir. 2015) (“[R]eplacing the valves and pumps of Fukuta’s system
with the cylindrical cartridges and mixing gun of Morris, which fail to
achieve comparable backflow prevention, . . . fundamentally alters Fukuta’s
‘principle of operation.’ Such a change in a reference’s ‘principle of
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Application 14/413,127

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operation’ is unlikely to motivate a person of ordinary skill to pursue a
combination with that reference.”) (citations omitted) (non-precedential);
McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1354 (Fed. Cir. 2001) (“If
references taken in combination would produce a ‘seemingly inoperative
device,’ we have held that such references teach away from the combination
and thus cannot serve as predicates for a prima facie case of obviousness.”)
(citations omitted); In re Ratti, 270 F.2d 810, 813 (CCPA 1959) (“[T]he
combination of Jepson with Chinnery et al. is not a proper ground for
rejection of the claims here on appeal. This suggested combination of
references would require a substantial reconstruction and redesign of the
elements shown in Chinnery et al. as well as a change in the basic principles
under which the Chinnery et al. construction was designed to operate.”)
Accordingly, we are persuaded of error in the rejection of independent
claim 6 and, for the same or similar reasons, in the rejection of independent
claims 13 and 19. Therefore, we do not sustain the rejection of claims 6–8
and 10–19 under 35 U.S.C. § 103(a).
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
6–8, 10–19 103(a) Schmit ’356,
Schmit ’166
6–8, 10–
19

REVERSED