Ex Parte 7,434,794 et al

Board of Patent Appeals and Interferences

Aug 30, 2012

95001451 - (D) (B.P.A.I. Aug. 30, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,451 09/24/2010 7,434,794 4309.328 7587
7590 08/30/2012
FRANCIS C. HAND ESQ.
C/O CARELLA, BYRNE, BAIN,GILFILLAN,CECCHI,STEWART
5 BECKER FARM ROAD
ROSELAND, NJ 07068
EXAMINER
DIAMOND, ALAN D
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
08/30/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Koch-Glitsch, LP
Requester and Cross-Appellant

v.

Sulzer Chemtech AG
Patent Owner and Appellant
____________

Appeal 2012-007842
Reexamination Control 95/001,451
Patent 7,434,794 B2
Technology Center 3900
____________

Before RICHARD M. LEBOVITZ, JEFFREY B. ROBERTSON, and
RAE LYNN P. GUEST, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2012-007842
Reexamination Control 95/001,451
Patent 7,434,794 B2

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Patent Owner Sulzer Chemtech AG (“Patent Owner”) appeals under
35 U.S.C. §§ 134(b) and 315(a) the Examiner’s decision to reject claims 1-3
and 5-10.1 Third-Party Requester Koch-Glitsch, LP (hereinafter
“Requester”) urges that the Examiner’s decision to reject the claims must be
affirmed.2
Requester cross-appeals under 35 U.S.C. §§ 134(c) and 315(a) the
Examiner’s decision not to adopt the proposed rejection of claim 4.3 Patent
Owner urges the Examiner’s decision not to reject claim 4 must be
affirmed.4
We have jurisdiction under 35 U.S.C. §§ 134(b)-(c) and 315(a)-(b).
We reverse the Examiner’s decision to reject claims 1-3 and 5-10. We
affirm the Examiner’s decision not to reject claim 4.

STATEMENT OF THE CASE
United States Patent 7,434,794 B2 (hereinafter the “‘794 Patent”),
which is the subject of the current inter partes reexamination, issued to
Florian Kehrer and Marc Wehrli on October 14, 2008.

1 See Patent Owner’s Appeal Brief 2 (filed December 20, 2011) (hereinafter
“PO App. Br.”) Examiner’s Answer (mailed February 17, 2012) (hereinafter
“Ans.”); Right of Appeal Notice (mailed October 6, 2011) (hereinafter
“RAN.”).
2 See Requester’s Respondent Brief (filed January 20, 2012) (hereinafter
“Req. Resp. Br.”).
3 See Requester’s Appeal Brief 5 (filed January 4, 2012) (hereinafter “Req.
App. Br.”)
4 Patent Owner’s Respondent Brief (filed January 25, 2012) (hereinafter
“PO Resp. Br.”).
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The ‘794 Patent relates to a mass transfer method using static
packings, and more particularly cross-package packing made of metal fabric.
(Col. 1, ll. 4-7.) According to the ‘794 Patent, contrary to the present school
of thought in the art, the metal fabric packings of the claimed method, which
are unperforated, experienced a decrease in pressure drop at relatively small
liquid loadings when compared to conventional metal fabrics which were
perforated. (Col. 2, ll. 4-19.)
Claims 1 and 4, which are illustrative of the appealed subject matter,
read as follows (underlining shows added subject matter relative to the
original patent claims):
1. A method of mass transfer of a material or heat
comprising the steps of
providing a cross-passage packing having a plurality of
vertically disposed corrugated layers of metal fabric disposed in
parallel relation for a descending flow of liquid thereon, each
said layer having an unperforated surface defining flow
passages disposed in criss-crossing relation to an adjacent layer
and at an angle of less than approximately 100º for a flow of
vapor therethrough; and
loading said packing with liquid at a liquid loading value
selected in accordance with the relationship:
L/a < 10 l/mh
wherein:
L is the specific surface loading in volume units of the
liquid per surface unit of the column cross-section; and
a is the specific surface area of said layers.

4. A method in accordance with claim 1 characterised in
that L/a is less than 0.2 l/mh.

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(PO App. Br., Claims App’x.)

Patent Owner contests the Examiner’s decision to reject the claims as
follows:
I. Claims 1, 2, 5, and 6 under 35 U.S.C. § 102(b) as anticipated by
Chem-Pro/Montz A2 High Efficiency/Low Pressure Drop
Tower Packing Bulletin HV-610 (hereinafter “Chem-Pro/Montz
bulletin”) as evidenced by the Declaration of Roger W. Cusack
executed on January 5, 2011(hereinafter “Cusack Declaration”)
and the Supplemental Declaration of Izak Nieuwoudt executed
on January 6, 2011 (hereinafter “Supplemental Nieuwoudt
Declaration”) (RAN 10-12);
II. Claims 1-3 and 5-10 under 35 U.S.C. § 103(a) as obvious over
the Chem-Pro/Montz bulletin as evidenced by the Cusack
Declaration and the Supplemental Nieuwoudt Declaration
(RAN 12-15); and
III. Claims 7 and 8 under 35 U.S.C. § 103(a) as obvious over the
Chem-Pro/Montz bulletin as evidenced by the Cusack
Declaration and the Supplemental Nieuwoudt Declaration, and
further in view of Parten (EP 0 858 366 B1, published July 26,
2000) (RAN 15-17).

Requester contests the Examiner’s refusal to reject claim 4 under 35
U.S.C. § 103(a) as obvious over:
IV. the Chem-Pro/Montz bulletin as evidenced by the Cusack
Declaration and the Supplemental Nieuwoudt Declaration
(RAN 12, 27; Req. App. Br. 5-11.); and
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V. the Montz product brochure (hereinafter “the Montz brochure”)
as evidenced by the Declaration of Izak Nieuwoudt executed on
September 21, 2010 (hereinafter “Nieuwoudt Declaration”) and
the Declaration of Michael J. Lockett executed on March 11,
2010 (hereinafter the “Lockett Declaration’) (RAN 7-10; Req.
App. Br. 11-13.)

PATENT OWNER’S APPEAL
ISSUES
With respect to Rejections I-III, Patent Owner contends that the
Cusack and Hurd Declarations do not corroborate that the Chem-Pro/Montz
bulletin relied on by the Examiner to reject the claims is prior art. (PO App.
Br. 8.) Specifically, Patent Owner argues that there is no evidence that the
Chem-Pro/Montz bulletin was publically available or distributed prior to the
filing date of the ‘794 Patent. (PO App. Br. 8-9.)
The Examiner and the Requester are both of the position that the
Cusack and Hurd Declarations provide sufficient evidence that the Chem-
Pro Montz bulletin is prior art. (Ans. 10, 20; Req. Resp. Br. 11-13.)
Patent Owner additionally argues that the Chem-Pro/Montz bulletin as
evidenced by the Cusack Declaration fails to disclose metal fabric with
surfaces that are “unperforated” as recited in claim 1. (PO App. Br. 7, 12.)
Both the Examiner and the Requester acknowledge that the Chem-
Pro/Montz bulletin as evidenced by the Cusack Declaration discloses metal
fabrics having perforations, but contend that such disclosure still satisfies the
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requirement that the metal fabrics have “unperforated” layers as recited in
claim 1. (Ans. 11, 17-21; Req. Resp. Br. 7-10, 13, and 14.)

Accordingly, the dispositive issues on appeal are:
(1) Does a preponderance of the evidence support the Examiner’s
determination that the Chem-Pro/Montz bulletin is prior art?
(2) Does the Chem-Pro/Montz bulletin disclose or suggest metal
fabric with surfaces that are “unperforated” as recited in the claims?

DISCUSSION
Issue 1
Initially, we agree with the Examiner that the evidence of record is
sufficient to establish that the Chem-Pro/Montz bulletin was publically
available prior to the filing date of the ‘794 Patent. Requester has provided a
declaration by Roger W. Cusack, an employee of Koch-Glitsch, LP since
1997, who attests to being an engineering project manager for Chem-Pro
Corporation, the supplier of the Montz A2 packing described in the bulletin
at issue. (Cusack Decl. paras. 1, 3, & 4.) Mr. Cusack was a project manager
at the time Chem-Pro Corporation began promoting and selling the Montz
A2 packing in the United States. (Cusack Decl. paras. 3, 4.) Mr. Cusack
avers that the Chem-Pro/Montz bulletin was publically available in the
United States as early as 1982. (Cusack Decl. paras. 4, 5.)
In addition, the Hurd Declaration by Michael B. Hurd, counsel for
Koch-Glitsch in this reexamination proceeding, provides further evidence
that the Chem-Pro/Montz bulletin was publically available prior to
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November 5, 1991. Mr. Hurd testified that the bulletin was cited in the
prosecution of US Pat. 5,063,000, which issued on November 5, 1991, and
the file wrapper of such patent was obtained by the Declarant from a public
source and found to contain the Chem-Pro/Montz bulletin. (Hurd Decl.
para. 2.)
Thus, Patent Owner’s allegations (PO App. Br. 7-9) that the evidence
relied on by the Examiner is insufficient are unsupported by any
countervailing evidence and are unpersuasive. Therefore, the Examiner’s
finding that the Chem-Pro/Montz bulletin was reasonable and adequately
supported by a preponderance of the evidence. In re Swanson, 540 F.3d
1368, 1377 (Fed. Cir. 2008)(“[i]n PTO examinations and reexaminations,
the standard of proof – a preponderance of evidence – is substantially lower
than in a civil case.”) (citation omitted) (emphasis added).

Issue 2
In finding that the Chem-Pro/Montz bulletin discloses unperforated
metal fabric, the Examiner relied on a portion of the ‘794 Patent, which
states that the “metal fabric forms a carrier for the liquid stream which is
unperforated, i.e. largely free of perforations or other openings.” (Col. 1, ll.
64-65; Ans. 17.) In addition, the Examiner relied on examples presented in
the ‘794 Patent, where a fabric packing P2 having 5% perforation
experienced a reduction in pressure loss over a fabric packing P1 having
11% perforation beyond what would have been expected. (Ans. 18-19; col.
3, l. 17 – col. 4, l. 12.) The Examiner stated that because “unperforated” in
the ‘794 Patent, means “largely free of perforations or other openings,”
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metal fabric packing P2 with 5% perforations represented a packing
according to the claimed invention. Based on this example and the
description of “unperforated” in the Specification, the Examiner found that
unperforated metal fabric as recited in the claims included metal fabrics
having 5% perforations. (Ans. 19.) The Examiner then relied upon the
Cusack Declaration in which Mr. Cusack testified that the A2 packing is a
metal fabric packing having perforations less than 1-2% of the solid surface
area of the metal fabric. (Ans. 11) Based on this evidence, the Examiner
stated that the prior art discloses or suggests unperforated metal fabrics as
claimed. (Ans. 11.)
We are of the opinion that the Examiner’s findings are not sufficiently
supported by the evidence of record. Initially, we find the Examiner’s
reliance on the P2 packing example as being representative of unperforated
metal fabrics according to the claimed invention to be improper.
Specifically, the ‘794 Patent refers to comparative measurements carried out
on “fabric packings whose perforation proportions were of different size.”
(Col. 2, ll. 20-22.) As discussed above, the ‘794 Patent then describes
measurements that were performed on two different packings, the P1 and P2
packings, which each have different perforation proportions. (Col. 3, l. 30 –
col. 4, l. 12.) Following the description of the results from the P1 and P2
packings, the ‘794 Patent goes on to disclose: “In the method in accordance
with the invention, the metal fabric forms a carrier for the liquid stream that
is largely free of perforations or of other openings.” (Col. 4, ll. 13-15.)
Thus, while the P1 and P2 packings may have been used to establish the
unexpected nature of the pressure drop results, the ‘794 Patent clearly
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distinguishes between the P1 and P2 packings as comparative examples and
packings according to the invention, in which "one should largely or
completely leave out a perforation in the fabric packing." (See col. 2, ll.20-
28.) Accordingly, the Examiner erred in finding that an unperforated surface
in a metal fabric layer recited in the claims includes a metal fabric layer
having perforations in the amount of 5% or less.
Regarding the Chem-Pro/Montz bulletin, we find insufficient
evidence to support the Examiner’s finding that the packings disclosed
therein include an “unperforated surface” at each of the layers of metal
fabric as that phrase would have been reasonably interpreted by one of
ordinary skill in the art in light of the ‘794 Patent. In this regard, the
Examiner acknowledges that the Chem-Pro/Montz bulletin discloses
packings that include perforations in the metal fabric layer surfaces. (Ans.
20-21; see also Req. Resp. Br., Ex. O, p. 1.) The Examiner additionally
relies on the Cusack Declaration, which states that the Montz packings had
individual sheets or layers that “were generally imperforate but had few
perforations that represented less than 1-2% of the solid surface area of the
sheets.” (Cusack Decl., para. 4.)
However, because the Examiner erred in interpreting the claims to
include metal fabrics having surfaces with perforations in amounts of 5%,
the Examiner lacked proper basis for finding that the Montz packing in the
Chem-Pro/Montz bulletin describes "unperforated" metal fabric as one of
ordinary skill in the art would have understood the term. The ‘794 Patent
specifically distinguished itself over fabrics with perforations (col. 2, ll. 4-
28), and thus would exclude metal fabrics such as those used in the Montz
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packing, which Mr. Cusack acknowledged contained perforations, in the
absence of sufficient evidence that unperforated metal fabrics as understood
in the context of the ‘794 Patent encompass metal fabrics having
perforations in the amounts present in the Chem-Pro/Montz packing. In
particular, there is insufficient evidence to establish that one of ordinary skill
in the art would have understood the Montz packing as being largely devoid
of perforations.
Specifically, the Cusack Declaration’s statements regarding the degree
of perforation in the Montz packing are accorded little weight, as such
statements are conclusory and do not provide the underlying factual basis or
reasoning to explain how the perforation percentage was calculated, let alone
whether such fabric would have been understood to be largely free of
perforations. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1368 (Fed.
Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude
that the lack of factual corroboration warrants discounting the opinions
expressed in the declarations.”) (citations omitted); In re Lindner, 457 F.2d
506, 508 (CCPA 1972) (“[M]ere conclusory statements in the specification
and affidavits are entitled to little weight when the Patent Office questions
the efficacy of those statements.”).
The Examiner does not present any other sufficient evidence or
rationale that Chem-Pro/Montz suggests packings having all of the
limitations recited in the claims. Accordingly, we reverse the Examiner’s
rejections of the claims as anticipated or obvious over the Chem-Pro/Montz
bulletin as evidenced by the Cusack Declaration.
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Regarding Rejection III, claims 7 and 8 depend from claim 1. The
additional cited references fail to remedy the deficiencies in the Examiner’s
position discussed above. Therefore, we also reverse the Examiner’s
decision to reject claims 7 and 8 for the same reasons.

REQUESTER’S APPEAL
Regarding Rejection IV, because we have determined that claim 1 is
not anticipated by or obvious over the prior art of record, we sustain the
Examiner’s decision not to adopt Requester’s proposed rejection of claim 4,
as claim 4 depends from claim 1.
Regarding Rejection V, we initially note that Requester did not appeal
the Examiner’s decision not to adopt the rejection of claim 1 as anticipated
by the same prior art. The Examiner found that the Montz brochure failed to
disclose a “metal fabric” as required by the claims on appeal. (Ans. 7, 8.)
Requester contends that it would have been obvious to have made the
dimpled sheet packings in the Montz brochure (Type B1 and M packings,
the Montz brochure, pages 14-15, 24-29) out of unperforated metal fabric to
achieve the same “self-wetting” effect of small dimples because the Montz
brochure also discloses a metal fabric that is perforated (Type A3, the Montz
brochure, pages 12-13), and because of the “known interchangeability of
metal fabric and dimpled surface texturing in packing construction.” (Req.
App. Br. 12.)
We agree with the Patent Owner, that Requester’s rationale is
unsupported by sufficient evidence. (PO Resp. Br. 10.) The metal fabric
used in the Type A3 packing in the Montz brochure is clearly perforated. (P.
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13, Figure.) We have not been directed to sufficient evidence to support
Requester’s conclusory statements that one of ordinary skill in the art would
have modified the metal fabric disclosed in the Montz brochure to largely or
completely eliminate the perforations when using metal fabric as an
alternative to dimpled metal sheets. “‘[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.’” KSR Int’l. Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007), quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
Accordingly, we affirm the Examiner’s decision not to reject claim 4
over the prior art cited in Rejection V.

CONCLUSION
On this record, a preponderance of the evidence supports the
Examiner’s determination that the Chem-Pro/Montz bulletin is prior art.
However, the Chem-Pro/Montz bulletin fails to disclose or suggest
metal fabric with surfaces that are “unperforated” as recited in the claims.

DECISION
The Examiner’s decision to reject claims 1-3 and 5-10 is reversed.
The Examiner’s decision not to reject claim 4 is affirmed.

In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
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request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c) & (d), respectively. Under
37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a)
of this section, for requesting further rehearing under paragraph (d) of this
section, and for submitting comments under paragraph (c) of this section
may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002 may not be taken “until all parties' rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 7, July 2008).

AFFIRMED-IN-PART

Appeal 2012-007842
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Patent 7,434,794 B2

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rvb

PATENT OWNER:

FRANCIS C. HAND ESQ.
C/O CARELLA, BYRNE
BAIN, GILFILLAN, CECCHI, STEWART
5 BECKER FARM ROAD
ROSELAND, NJ 07068

THIRD-PARTY REQUESTER:

HOVEY WILLIAMS LLP
10801 MASTIN BOULEVARD
SUITE 1000
OVERLAND PARK, KS 66210