Sulzer Mixpac AGDownload PDFPatent Trials and Appeals BoardMay 18, 20202019001894 (P.T.A.B. May. 18, 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. 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. Appeal 2019-001894 Application 15/434,778 2 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 Appeal 2019-001894 Application 15/434,778 3 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. Appeal 2019-001894 Application 15/434,778 4 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. Appeal 2019-001894 Application 15/434,778 5 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 Appeal 2019-001894 Application 15/434,778 6 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 Appeal 2019-001894 Application 15/434,778 7 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: Appeal 2019-001894 Application 15/434,778 8 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. Appeal 2019-001894 Application 15/434,778 9 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. Appeal 2019-001894 Application 15/434,778 10 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 Appeal 2019-001894 Application 15/434,778 11 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. Appeal 2019-001894 Application 15/434,778 12 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 Appeal 2019-001894 Application 15/434,778 13 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. Appeal 2019-001894 Application 15/434,778 14 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 Copy with citationCopy as parenthetical citation