Ex Parte Jurgens et al

Board of Patent Appeals and Interferences

Jun 29, 2009

10363459 (B.P.A.I. Jun. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THEODOR JURGENS and RUDOLF GEIER
____________

Appeal 2008-006225
Application 10/363,459
Technology Center 1700
____________

Decided:1 June 30, 2009
____________

Before CHUNG K. PAK, CATHERINE Q. TIMM, and
JEFFREY T. SMITH, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's refusal to allow claims 16 through 29, which are all of the

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-006225
Application 10/363,459

pending claims in the above-identified application. We have jurisdiction
pursuant to 35 U.S.C. § 6.
We AFFIRM.
STATEMENT OF THE CASE
According to page 1, lines 1-8, of the Specification:
The invention relates to a procedure for melting polymer
granules on a grate-shaped melting element and subsequently
spinning the melted granules. In addition, the invention relates
to a grate shaped melting element for melting granules, in
particular polymer granules, preferably meant for melt
spinning. Finally, the invention is aimed at a device for melt
spinning.

Details of the appealed subject matter defining Appellants’ invention
are recited in representative claims 16, 24, and 27 reproduced below2:
16. A method of melting a polymer comprising the steps of

conveying a supply of spherical particles of polymer wherein
said particles have a predetermined average diameter (D3):

delivering said supply of particles onto a grate-shaped melting
element having a plurality of openings passing therethrough, each said
opening narrowing conically in a downward direction with a preset
inlet diameter (D1) at an upper end and wherein said average diameter
(D3) of said particles is in the range of 2D3 > D1 > D3;

heating the grate-shaped melting element to melt said particles
passing therethrough; and

2 We limit our findings and conclusions to those claims Appellants have
substantively and separately argued consistent with 37 C.F.R. § 41.37(c)(1)
(vii) (2007).

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collecting the melted polymer in a sump for distribution to at
least one spinneret.

24. A grate-shaped melting element having a plurality of openings
passing therethrough, each said opening narrowing conically in
a downward direction with a preset Inlet diameter (D1) at an
upper end of 4.0 mm for receiving spherical particles of a
predetermined average diameter (D3) wherein 2D3 > Dl > D3.

27. An apparatus for melt spinning polymer granules, said
apparatus comprising

a storage tank for holding a supply of polymer granules having
a preset average diameter (D3),

a first conveying device for conveying the polymer granules
from said storage tank;

at least one spinning location having a pressurized casing for
receiving polymer granules from said conveying device, a metering
valve for metering polymer granules into said casing, a heated grate-
shaped melting element below said metering valve for receiving
polymer granules thereon, said melting element having a plurality of
openings passing therethrough, each said opening narrowing conically
in a downward direction with a preset inlet diameter (D1) at an upper
end for receiving and melting spherical particles of a predetermined
average diameter (D3) therein and wherein 2D3 > D1 > D3, and a sump
below said melting element for receiving the melted polymer; and

a second conveying device downstream from said sump for
supplying the melted polymer to at least one spinneret.

As evidence of unpatentability of the claimed subject matter, the
Examiner proffered the following prior art references:
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Graves US 2,278,875 Apr. 7, 1942
Phipps US 2,898,628 Aug. 11, 1959
Lipscomb GB 719,062 Nov. 24, 1954

The Examiner rejected the claims on appeal as follows3:
1. Claims 16 through 23 and 27 through 29 under 35 U.S.C.
§ 103(a) as unpatentable over the combined disclosures of Graves, Phipps,
and Lipscomb; and
2. Claims 24 through 26 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Lipscomb and Phipps.
Appellants traverse, arguing that the Examiner erred in rejecting the
claims on appeal under 35 U.S.C. § 103 (a) based on the prior art of record.
ISSUES AND CONCLUSIONS
With respect to claims 16 and 17, Appellants contend that the
collective teachings of Graves, Phipps and Lipscomb would not have
suggested to one of ordinary skill in the art to employ a grate-shape melting
element comprising conical openings having an inlet diameter (D1) and
spherical polymer particles having the average diameter (D3) defined in the
following manner: 2D3 > D1 > D3 (App. Br. 8-10). Appellants also contend
that “[t]he Declaration of Andreas Christel is supportive of the invention
disclosed in the specification and recited in claim 16” (App. Br. 10).
Further, Appellants contend that the statements at pages 3 and 4 of the
Specification show criticality of the claimed subject matter (Reply Br. 2-3).

3 The Examiner has withdrawn the § 112, second paragraph, rejection of
claims 27 through 29 set forth in the final Office action dated August 21,
2006 (Ans. 3).
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Thus, the dispositive questions are: Have Appellants identified
reversible error in the Examiner’s determination that the collective teachings
of Graves, Phipps, and Lipscomb would have suggested melting spherical
polymer particles in a grate melting element having the claimed conical
openings, with their inlet diameter (D1) being defined in relation to the
average diameter (D3)of the spherical polymer particles (2D3 > D1 > D3) and
if not, have Appellants demonstrated that the Declaration and the
Specification referred to in the Appeal Brief and the Reply Brief,
respectively are sufficient to rebut the prima facie case of obviousness
established by the Examiner? On this record, we answer these questions in
the negative.
With respect to claim 18, Appellants appear to contend that Graves,
Phipps, and Lipscomb would not have suggested the claimed melting
condition (App. Br. 10-11).
Thus, the dispositive question is: Have Appellants identified
reversible error in the Examiner’s determination that Graves, Phipps, and
Lipscomb would have suggested the melting condition recited in claim 18?
On this record, we answer this question in the negative.
With respect to claim 19, Appellants contend that Graves, Phipps, and
Lipscomb would not have suggested the claimed unmelted residual volume
of the spherical particles of “less than two percent of the initial volume of
said particles” (App. Br. 11-12).
Thus, the dispositive question is: Have Appellants identified
reversible error in the Examiner’s determination that Graves, Phipps, and
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Lipscomb would not have suggested the unmelted residual volume recited in
claim 19? On this record, we answer this question in the negative.
With respect to claim 20, Appellants contend that Graves, Phipps,
and Lipscomb would not have suggested spherical polymer particles having
the claimed moisture content equal to or less than 10 ppm (App. Br. 12).
Thus, the dispositive question is: Have Appellants identified
reversible error in the Examiner’s determination that the collective teachings
of Graves, Phipps, and Lipscomb would have suggested spherical polymer
particles having the claimed moisture content equal to or less than 10 ppm as
required by claim 20? On this record, we answer this question in the
negative.
With respect to claim 21, Appellants contend that Graves, Phipps, and
Lipscomb would not have suggested spherical polymer particles having the
claimed average particle diameter of between 0.5 mm and 2.0 mm (App. Br.
12-13).
Thus, the dispositive question is: Have Appellants identified
reversible error in the Examiner’s determination that the collective teachings
of Graves, Phipps, and Lipscomb would have suggested to one of ordinary
skill in the art to employ spherical polymer particles having the average
particle size recited in claim 21? On this record, we answer this question in
the negative.
With respect to claim 22, Appellants contend that Graves, Phipps, and
Lipscomb would not have suggested to one of ordinary skill in the art to
employ spherical polymer particles having the claimed intrinsic viscosity of
between 0.75 and 1.3 (App. Br. 13).
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Thus, the dispositive question is: Have Appellants identified
reversible error in the Examiner’s determination that one of ordinary skill in
the art would have been led to choose spherical polymer particles having an
appropriate or optimum intrinsic viscosity, such as those claimed, based on
the collective teachings of Graves, Phipps, and Lipscomb? On this record,
we answer this question in the negative.
With respect to claim 23, Appellants rely on the same arguments
raised in connection with claims 16, 17, 19, 20, 21, and 22 (App. Br. 13).
Thus, claim 23 stands or falls together with claims 16, 17, 19, 20, 21, and
22.
With respect to claims 27 through 29, Appellants contend that Graves,
Phipps, and Lipscomb would not have suggested an apparatus comprising a
pressurized casing and a grate-shaped melting element having conical
openings having a diameter defined relative to unknown average diameters
of polymer particles to be used (App. Br. 17-19).
Thus, the dispositive question is: Have Appellants identified
reversible error in the Examiner’s determination that the collective teachings
of Graves, Phipps, and Lipscomb would have suggested an apparatus
comprising a pressurized container (casing) and a grate-shaped melting
element having conical openings having an inlet diameter defined relative to
an unknown average diameter of polymer particles to be used as required by
claims 27 through 29? On this record, we answer this question in the
negative.
With respect to claims 24 through 26, Appellants contend that
Lipscomb and Phipps would not have suggested a grate-shaped melting
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element having a plurality of conical openings having the claimed
dimensions. Specifically, Appellants contend that Lipscomb and Phipps
would not have suggested a grate-shaped melting element having a plurality
of conical openings having the inlet diameter of 4.0mm recited in claim 24
(App. Br. 13-16). Appellants also contend that Lipscomb and Phipps would
not have suggested a grate-shaped melting element having a plurality of
conical openings having an outlet diameter (D2) defined by a function of the
inlet diameter (D1) (i.e., 4D2 < D1 < 6D2) as recited in claim 25 (App. Br.
16). Further, Appellants contend that Lipscomb and Phipps would not have
suggested a grate-shaped melting element having a plurality of conical
openings having an axial length of from 1 to 5 times the inlet diameter as
recited in claim 26 (App. Br. 16-17).
Thus, the dispositive question is: Have Appellants identified
reversible error in the Examiner’s finding that the determination of the
workable or optimum dimensions, such as the dimensions recited in claims
24 through 26, of the cone-shape holes in the melting plate of the type taught
by Lipscomb is well within the ambit of one of ordinary skill in the art? On
this record, we answer this question in the negative.
RELEVANT FACTUAL FINDINGS
1. Graves teaches holding a quantity of solid organic filament-forming
composition in a container 5, conveying gravitationally the solid
composition in the container 5 onto a melting grid 7 which is maintained at a
temperature above the melting point of the composition, delivering the
resulting molten composition in the form of droplets from the melting grid 7
into a small reservoir 11, compressing the molten composition from the
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small reservoir 11 with a gear pump 15 to obtain a bubble-free molten
composition in a reservoir 17, metering the molten composition from the
reservoir 17 with a gear pump 19, filtering the molten composition with a
filter pack 21, and sending the filtered molten composition to a spinneret 23.
(p. 1, col. 2, l. 35 to p. 2, col. 1, l. 4).
2. Graves teaches that the solid organic filament-forming composition
employed includes synthetic polymers, such as linear polyamides, mixed
polyester-polyamides and ethylene polymers, and vinyl polymers, and is
preferably in the form of flakes (p. 1, col. 2, ll. 35-40 and p. 2, col. 2, l. 47 to
p. 3, col. 1, l. 18).
3. Graves exemplifies melting polyhexamethylene adipamide having a
melting point of about 263oC at a temperature of about 280oC (p.2, ll. 56-
60).
4. Appellants do not dispute the Examiner’s finding that Graves employs
an inert atmosphere of nitrogen and exemplifies melting and delivering a
polymer material under 10 pounds of nitrogen pressure. (Compare Ans. 17
with App. Br. 17-19 and Reply Br. 1-4).
5. Graves implicitly teaches and illustrates that its container 5 is the
claimed pressurized casing since it is in fluid communication with a melting
grid and a gear pump 15, which are under high nitrogen pressure (p. 2, ll. 56-
65 and the Fig.).
6. Graves does not mention that its melting grid 7 has a plurality of
conical shaped holes having an inlet diameter defined relative to the average
diameter of spherical polymer particles to be melted.
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7. Lipscomb teaches some of the disadvantages of the melting method of
the type disclosed in Graves as follows (p. 1, ll. 9-34):
This invention relates to the melt spinning of artificial
yarns and filaments from synthetic polymeric materials.
The production of yarns, filaments and ribbons . . . is
commonly carried out by a process which comprises allowing
solid particles of an organic filament-forming composition to
fall from a hopper onto a grid which is heated, the composition
melts on the grid and falls through the interstices to form a pool
of the molten composition from which [the] pool [of] the
molten composition is drawn off to be melt-spun.
The prior art process suffers from the disadvantage that
the rate of extrusion cannot exceed the rate at which the viscous
melt can pass through the grid. . . . A further disadvantage of
the prior process is that the formation and maintenance of a
pool of molten material tends to bring about the degradation of
some of the synthetic polymer materials with which this
invention is concerned.

8. Lipscomb teaches supplying solid particles of filament-forming
materials to a plate containing a multiplicity of apertures to overcome the
above mentioned disadvantages (p. 1, ll. 46-57).
9. Lipscomb teaches (p., 3, ll. 20-37) (emphasis added) that:
The heating plate will usually be of metal and may be designed
in a wide variety of ways. For example, it may take the form of
a simple plate with holes drilled through, a helical spiral, a
series of concentric rings or a cone-shape structure. It is
however essential that the total cross sectional area of the
apertures is sufficient to carry away the molten material formed,
but leaves a sufficient proportion of solid plate for heating the
plate and conducting the heat to the solid particles. In one
simple modification a number of holes are drilled in a plate,
which holes increase in size so that the upper surface of the
plate is reduced substantially to a series of knife edges between
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round holes. The solid material is thereby forced by the piston
into conical recesses leading to the holes.

10. Lipscomb illustrates holes similar to a cone-shape structure and
teaches that the melting temperature used affects the melting rate of polymer
particles (Fig. 1 and p. 5, ll. 83-87).
11. Phipps, like Lipscomb and Graves, teaches melt-spinning artificial
filaments from fiber-forming polymers (col. 1, ll. 15-19).
12. Phipps teaches a melting unit comprising a heater member and a
support which can be funnel-shaped with a single aperture or other shapes,
such as concave or convex, conical and etc. so long as an even flow of the
melt can be delivered (col. 1, l. 63 to col. 2, l. 3).
13. Phipps teaches (col. 2, ll. 9-24) that:
The size, shape, and the spacing between the heater
members can be chosen to suit particular requirements. These
may depend, for example, on the properties of the fibre forming
material such as the viscosity of the melt and the latent heat of
fusion at the operating temperature for a given output; on the
pressure under which the material is fed to the melting unit, and
on the rate of melting required.
The length of the path of the material between the heater
members and the length and volume of the paths thereafter to
the pump must be such that at the maximum melt rate only a
homogeneous melt of the material reaches the intake to the
pumps. A careful choice of dimensions must be made having
regard to prevailing operating conditions and the characteristic
of the material to be converted.

14. Appellants do not dispute the Examiner’s finding that it was well
known at the time of the invention that “many various polymeric materials
are [sic., were] commercially available in various pellet/granule sizes of
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about 1.0 mm . . . in a wide range of molecular weights (i.e., intrinsic
viscosities)” (Compare Ans. 4, with App. Br. 8-19 and Reply Br. 1-4).
15. Appellants do not challenge the Examiner’s official notice that “it is
[sic., was] well known in the art [at the time of the invention] to remove or
reduce materials in the feed materials that aid in the decomposition process
such as entrained oxygen and moisture” (Compare Ans. 4-5 with App. Br. 8-
19 and Reply Br. 1-4).
16. Appellants refer to a Rule 132 Declaration executed by Andreas
Christel in 2006 (App. Br. 10).
17. Appellants assert at page 10 of the Appeal Brief that:
The Declaration of Andreas Christel is that of one skilled
in the art (see page 1 of the Declaration). . . .
The Declaration of Andreas Christel is supportive of the
invention disclosed in the specification and recited in claim 16.

18. Appellants have not adequately explained how and why the
Declaration shows criticality of the claimed subject matter as a whole (App.
Br. 10).
19. Appellants have proffered no factual evidence to support the
criticality of the claimed subject matter. (See generally the Declaration).
20. Appellants argue at pages 2-3 of the Reply Brief that “[t]he original
description at page 3, lines 20 to 27[, and the bridging paragraph of pages 3
and 4 of the Specification] clearly points out the criticality of the spherical
particles relative to the grate-shape melting element.”
21. Appellants have not relied on pages 3 and 4of the Specification in the
Appeal Brief (App. Br. 8-19)
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22. The statements at pages 3 and 4 of the Specification are conclusory in
nature and do not show any factual basis for criticality of the claimed
features.
PRINCIPLES OF LAW
It is well settled that the United States Patent and Trademark Office
(PTO) is obligated to give claim terms their broadest reasonable
interpretation, taking into account any enlightenment by way of definitions
or otherwise found in the specification. In re ICON Health and Fitness, Inc.,
496 F.3d 1374, 1378-79 (Fed. Cir. 2007). This longstanding broadest
reasonable interpretation principle is based on the notion that “during patent
prosecution when claims can be amended, ambiguities should be recognized,
scope and breadth of language explored, and clarification imposed.” In re
Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989). That is, a patent applicant has
the opportunity and responsibility to remove any ambiguity in claim term
meaning by amending the application. “Only in this way can uncertainties
of claim scope be removed, as much as possible, during the administrative
process.” Zletz, 893 F.2d at 321-22. “[A]s applicants may amend claims to
narrow their scope, a broad construction during prosecution creates no
unfairness to the applicant or patentee.” ICON Health, 496 F.3d at 1378-79.
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations, if any. Graham
v. John Deere Co., 383 U.S. 1, 17-18 (1966).
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As stated in KSR Int’l Co., v. Teleflex, Inc., 550 U.S. 398, 417-18
(2007):
“[A]nalysis [of whether the subject matter of a claim would
have been prima facie obvious] need not seek out precise
teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art
would employ.”

See also In re Preda, 401 F.2d 825, 826-27 (CCPA 1968) (“[I]n
considering the disclosure of a reference, it is proper to take into account not
only specific teachings of the reference but also the inferences which one
skilled in the art would reasonably be expected to draw therefrom.”). All of
the disclosures in a prior art reference, including non-preferred
embodiments, “must be evaluated for what they fairly teach one of ordinary
skill in the art.” In re Boe, 355 F.2d 961, 965 (CCPA 1966); See also Merck
& Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In
re Lamberti, 545 F.2d 747, 750 (CCPA 1976) (“‘[T]he fact that a specific
[embodiment] is taught to be preferred is not controlling, since all
disclosures of the prior art, including unpreferred embodiments, must be
considered.’”); In re Fracalossi, 681 F.2d 792, 794 n.1 (CCPA 1982) (A
prior art reference’s disclosure is not limited to its examples.).
When a particular parameter is recognized as a result-effective
variable, i.e., a variable which is known to affect a result or provide a certain
function, the determination of the optimum or workable ranges of such
variable via routine experimentation is well within the ambit of one of
ordinary skill in the art. In re Boesch, 617 F.2d 272, 276 (CCPA 1980)
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(“[D]iscovery of an optimum value of a result effective variable…is
ordinarily within the skill of the art.”); see also In re Peterson, 315 F.3d
1325, 1329-30 (Fed. Cir. 2003) (“The normal desire of scientists or artisans
to improve upon what is already generally known provides the motivation to
determine where in a disclosed set of percentage ranges is the optimum
combination of percentages.”). As our reviewing court stated in In re
Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (internal citations omitted)
stated:
The law is replete with cases in which the difference between
the claimed invention and the prior art is some range or other
variable within the claims. These case have consistently held
that in such a situation, the applicant must show that the
particular range is critical, generally by showing that the
claimed range achieves unexpected results relative to the prior
art range.

A showing of unexpected results may be sufficient to overcome a
prima facie case of obviousness. In re Dillon, 919 F.2d 688, 692-93 (Fed.
Cir. 1990) (internal citations omitted). Our reviewing court has emphasized
repeatedly that "[i]t is well settled that unexpected results must be
established by factual evidence. Mere argument or conclusory statements in
the specification does not suffice." In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984) (quoted with approval in In re Soni, 54 F.3d 746, 750 (Fed.
Cir. 1995)).
All evidence of nonobviousness relied upon by Appellants must be
submitted in the manner required by of 37 C.F.R. § 41.37(c) (1)(ix) (2004).
According to 37 C.F.R. § 41.37(c)(1)(ix) (2004):
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Evidence appendix. An appendix containing copies of any
evidence submitted pursuant to §§ 1.130, 1.131, or 1.132 of this
title or of any other evidence entered by the examiner and relied
upon by appellant in the appeal, along with a statement setting
forth where in the record that evidence was entered in the
record by the examiner. . . .

Moreover, the burden of analyzing and explaining evidence directed to
unexpected results, i.e., criticality, rests with Appellants. In re Klosak, 455
F.2d 1077, 1080 (CCPA 1972); see also In re Dillon, 919 F.2d 688, 692-93
(Fed. Cir. 1990) (en banc). (“[W]here the prior art gives reason or
motivation to make the claimed [invention] . . . the burden (and opportunity)
then falls on an applicant to rebut that prima facie case.”)
All arguments not timely raised in the principal Appeal Brief are
considered waived. 37 C.F.R. § 41.37(c)(1)(vii); See also Cross Med.
Prods. Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1320-21 n.3
(Fed. Cir. 2005) (It is well established that arguments not raised in the
opening Brief are deemed waived.).
ANALYSES
Claims 16 and 17
As indicated supra, Graves teaches holding a quantity of solid organic
filament-forming composition, such as polymer particles, in a container,
conveying the solid composition in the container onto a melting grid to melt
the composition, delivering the resulting molten composition from the
melting grid into a reservoir, metering the molten composition from the
reservoir with a gear pump, filtering the molten composition with a filter
pack, and sending the filtered molten composition to a spinneret. Graves
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does not mention that its solid polymer particles are provided in the form of
spherical particles having an average diameter (D3) and that its melting grid
has a plurality of conical openings comprising an inlet diameter (D1) which
is greater than (D3) but less than (2D3) (i.e., 2D3 > D1 > D3).
However, Grave teaches employing any solid polymer particles,
inclusive of the claimed spherical polymer particles. Appellants also do not
dispute the Examiner’s finding that spherical polymer particles having a
diameter of 1.0 mm useful for forming filaments were commercially
available and known at the time of the invention. Further, Lipscomb teaches
improving the process of the type taught by Graves by melting solid polymer
particles with a heating plate containing a multiplicity of apertures
corresponding to the claimed grate-shaped melting element having a
plurality of openings, in lieu of the melting grid taught by Graves.
Lipscomb teaches (p., 3, ll. 20-37) (emphasis added) that:
The heating plate will usually be of metal and may be
designed in a wide variety of ways. For example, it may take
the form of a simple plate with holes drilled through, a helical
spiral, a series of concentric rings or a cone shaped structure. It
is however essential that the total cross sectional area of the
apertures is sufficient to carry away the molten material formed,
but leaves a sufficient proportion of solid plate for heating the
plate and conducting the heat to the solid particles. In one
simple modification a number of holes are drilled in a plate,
which holes increase in size so that the upper surface of the
plate is reduced substantially to a series of knife edges between
round holes. The solid material is thereby forced by the piston
into conical recesses leading to the holes.

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In other words, Lipscomb’s heating plate corresponding to the claimed
grate-shaped melting element has apertures in the form of, inter alia, cone-
shaped holes (the claimed opening narrowing conically in a downward
direction) large enough to receive a solid polymer material. Lipscomb, by
virtue of inserting the particle into the upper sections of the conical shaped
holes by some force, impliedly teaches that the average diameter (D3) of the
spherical polymer particles to be melted is tightly fit within the inlet
diameters (upper sections) (D1) of cone-shaped holes (thus satisfying the
claimed 2D3 > D1 > D3 requirement). Moreover, Phipps teaches that a cone-
shaped aperture having optimum dimensions is useful for melting solid
polymer particles used in forming filaments.
Given the above teachings, we concur with the Examiner that one of
ordinary skill in the art would have been led to melt solid polymer particles,
inclusive of spherical polymer particles, with a grate melting element having
the claimed conical openings, with the inlet diameter (D1) of the openings
being larger than the average diameter (D3) of the spherical polymer
particles, but smaller than twice the average diameter (D3) of the spherical
polymer particles (2D3 > D1 > D3). This is especially true in this situation
since both Lipscomb and/or Phipps recognize the need to optimize the cross-
sectional area or dimensions of cone-shaped holes in melting and delivering
polymer for forming filaments. Boesch, 617 F.2d at 276.
It follows that Appellants have not identified reversible error in the
Examiner’s determination that the collective teachings of Graves, Phipps,
and Lipscomb would have suggested melting solid polymers, inclusive of
spherical polymer particles, with a grate melting element having the claimed
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conical openings, with the inlet diameter (D1) of the openings being larger
than the average diameter (D3) of the spherical polymer particles, but
smaller than twice the average diameter (D3) of the spherical polymer
particles (2D3 > D1 > D3).
Appellants refer to a Rule 132 Declaration executed by Andreas
Christel in 2006 at page 10 of the Brief.4 However, Appellants have not
shown why it is sufficient to rebut any prima facie case of obviousness
established by the Examiner. Initially, we note that Appellants have not
adequately explained how and why the Declaration shows criticality of the
claimed subject matter as a whole. More importantly, we note that
Appellants have proffered no factual evidence to support the assertion in the
Declaration regarding the criticality of the claimed subject matter. See, e.g.,
In re De Blauwe, 736 F.2d at 705. Appellants merely assert at page 10 of
the Appeal Brief that:
The Declaration of Andreas Christel is that of one skilled
in the art (see page 1 of the Declaration). . . .
The Declaration of Andreas Christel is supportive of the
invention disclosed in the specification and recited in claim 16.

The fact that one of ordinary skill in the art, without any experimentation,
would have recognized the advantage of the claimed features, further
galvanizes, not negates, the Examiner’s prima facie case of obviousness.

4 Appellants have not provided any appendix containing a copy of the
Declaration relied upon in this appeal. Nor have Appellants provided a
statement relating to entry of the Declaration into the record by the
Examiner. Thus, consistent with 37 C.F.R. § 41.37(c)(1)(ix) (2004), we
need not consider the Declaration.

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Thus, on this record, Appellants have not demonstrated that the Declaration
relied upon is sufficient to rebut the prima facie case of obviousness
established by the Examiner.
Appellants argue at page 2 of the Reply Brief that “[t]he original
description at page 3, lines 20-27[, of the Specification] clearly points out
the criticality of the spherical particles relative to the grate-shape melting
element.” This argument, however, is not present in the Appeal Brief and
is, therefore, considered waived.
To the extent it must be considered, we do not find that the conclusory
statements in the Specification are sufficient to establish the criticality of the
claimed subject matter. It is well settled that Appellants’ mere conclusory
statements in the Specification not supported by factual evidence are not
sufficient to overcome the prima facie case established by the Examiner.
See, e.g., In re De Blauwe, 736 F.2d at 705.
Accordingly, based on the totality of record relied upon by the
Examiner and Appellants, including due consideration of Appellants’
arguments and evidence, we determine that the preponderance of evidence
weights most heavily in favor of obviousness within the meaning of 35
U.S.C. § 103(a).
Claim 18
Graves exemplifies melting polyhexamethylene adipamide having a
melting point of about 263oC at a temperature of about 280oC. However,
Graves is not limited to its exemplified embodiment. Graves also teaches
maintaining a melting grid at any temperature above the melting point of the
composition, which is inclusive of the melting temperature recited in claim
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18. Thus, we concur with the Examiner that one of ordinary skill in the art
would have been led to employ, inter alia, the melting temperature recited in
claim 18, in the filament making process suggested by Graves, Lipscomb,
and Phipps. This is especially true in this case since both Lipscomb and/or
Phipps recognize that the melting temperature employed affects the melting
rate of the polymer particles involved, i.e., a recognized result effective
variable.
On this record, Appellants have not identified any reversible error in
the Examiner’s determination that Graves, Phipps, and Lipscomb would
have suggested the melting condition recited in claim 18 within the meaning
of 35 U.S.C. § 103.
Claim 19
As is apparent from Graves, Phipps, and Lipscomb, their processes
are directed to melting the entire polymer particles to form a homogeneous
molten material useful for making filaments. Lipscomb and Phipps do not
describe removing any unmelted residues since the entire polymeric particles
are melted in their melting processes. Graves removes unwanted residues
resulting from its melting process with a filter pack. Thus, we concur with
the Examiner that the collective teachings of Graves, Lipscomb, and Phipps
would have suggested forming little or no unmelted residues, such as the
amount recited in claim 19, during their melting processes within the
meaning of 35 U.S.C. § 103(a).
On this record, Appellants have not identified any reversible error in
the Examiner’s determination that the collective teachings of Graves,
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Phipps, and Lipscomb would have suggested the unmelted residual volume
recited in claim 19.
Claim 20
Graves, Phipps, and Lipscomb do not require the presence of moisture
in their polymer particles. Appellants also do not challenge the Examiner’s
finding that removing or reducing materials affecting the decomposition
process, such as moisture, in the feed material (the polymeric particle taught
by Graves, Phipps, and Lipscomb) was well known at the time of the
invention. Thus, we concur with the Examiner that the collective teachings
of Graves, Phipps, and Lipscomb would have suggested to one of ordinary
skill in the art to employ the spherical polymer particles having little or no
moisture content as required by claim 20 within the meaning of 35 U.S.C. §
103(a).
On this record, Appellants have not identified any reversible error in
the Examiner’s determination that the collective teachings of Graves,
Phipps, and Lipscomb would have suggested to one of ordinary skill in the
art to employ spherical polymer particles having the claimed moisture
content equal to or less than 10 ppm as required by claim 20.

Claim 21
As indicated supra, Graves, Phipps, and Lipscomb teach employing
solid polymers, inclusive of commercially available spherical polymer
particles having a diameter of 1.0 mm. Appellants do not dispute the
Examiner’s finding that spherical polymer particles having a diameter of 1.0
mm were commercially available and known at the time of the invention.
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Thus, we concur with the Examiner that the collective teachings of Graves,
Phipps, and Lipscomb would have suggested to one of ordinary skill in the
art to employ spherical polymer particles having the average particle size
recited in claim 21 within the meaning of 35 U.S.C. § 103(a).
On this record, Appellants have not identified any reversible error in
the Examiner’s determination that the collective teachings of Graves,
Phipps, and Lipscomb would have suggested to one of ordinary skill in the
art to employ spherical polymer particles having the average particle size
recited in claim 21.
Claim 22
Appellants do not dispute the Examiner’s finding that it was well
known at the time of the invention that “many various polymeric materials
are [sic., were] commercially available in various pellet/granule sizes of
about 1.0 mm . . . in a wide range of molecular weights (i.e., intrinsic
viscosities).” More importantly, Phipps teaches that the properties of the
fiber-forming material (polymer particles), such as the viscosity of the melt,
affect the dimensions of the conical-shaped holes in a melting device. In
other words, the claimed intrinsic viscosity is a known result effective
variable in the filament making process suggested by Graves, Phipps, and
Lipscomb. Thus, we concur with the Examiner that it is well within the
ambit of one of ordinary skill in the art to choose spherical polymer particles
having an appropriate or optimum intrinsic viscosity, such as those claimed,
for the given size cone-shaped apertures in the melting device suggested by
Graves, Phipps, and Lipscomb within the meaning of 35 U.S.C. § 103(a).
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On this record, Appellants have not identified any reversible error in
the Examiner’s determination that one of ordinary skill in the art would have
been led to choose spherical polymer particles having an appropriate or
optimum intrinsic viscosity, such as those claimed, based on the collective
teachings of Graves, Phipps, and Lipscomb.
Claim 23
Appellants repeat the same arguments advanced in connection with
claims 16, 17, 19, 20, 21 and 22. Thus, for the reasons set forth above, we
determine that Appellants have not identified any reversible error in the
Examiner’s determination that the collective teachings of Graves, Phipps,
and Lipscomb would have suggested to one of ordinary skill in the art to
arrive the subject matter recited in claim 23.
Claims 27-29
Appellants do not dispute the Examiner’s finding that Graves employs
an inert atmosphere of nitrogen and exemplifies melting and delivering a
polymer material under 10 pounds of nitrogen pressure. Implicit in this
finding is that container 5 of Graves corresponds to the claimed pressurized
casing since it is in fluid communication with a melting grid and a gear
pump 15 under nitrogen pressure. Thus, Appellants have not identified
reversible error in the Examiner’s determination that Graves would have
suggested to one of ordinary skill in the art to employ a pressurized
container in its filament making apparatus.
Contrary to Appellants’ argument, Lipscomb teaches a melting plate
comprising cone-shaped openings having the claimed inlet diameter.
Moreover, Phipps teaches a cone-shaped aperture is useful for melting solid
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polymer particles used for forming filaments. Thus, the collective teachings
of Lipscomb and Phipps would have suggested a melting plate
corresponding to the claimed grate-shaped melting element comprising
cone-shaped openings having the claimed inlet diameter.
The claimed apparatus requires a grate-shaped melting element
comprising a plurality of openings having an inlet diameter which size is
dependent on the unknown average diameter of the unclaimed polymer
particles. In other words, the claimed grate-shaped melting element can
have an opening inlet diameter of any size, including those taught and/or
suggested by Lipscomb and Phipps, since the average diameter of spherical
polymer particles selected can be such that the claimed inlet diameter of the
openings can be identical to the diameter of the prior art openings. In any
event, we determine that the determination of workable or optimum
dimensions of cone-shaped holes is well within the ambit of one of ordinary
skill in the art since they are recognized as result effective variables as
indicated supra.
Accordingly, Appellants have not identified any reversible error in the
Examiner’s determination that the collective teachings of Graves, Phipps,
and Lipscomb would have suggested an apparatus comprising a pressurized
container (casing) and a grate-shaped melting element having conical
openings having an inlet diameter defined relative to unknown average
diameters of polymer particles to be used as required by claims 27 through
29 within the meaning of 35 U.S.C. § 103(a).
Claims 24-26
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As indicated supra, Lipscomb teaches employing a melting plate
having cone-shaped holes corresponding to the claimed grate-shaped
melting element having cone-shaped holes. Phipps also teaches a cone-
shaped aperture is useful for melting solid polymer particles used for
forming filaments. Although Lipscomb and Phipps do not specifically
mention the actual inlet and outlet diameter and axial length of the cone-
shaped holes, they teach the need for optimizing the total cross-sectional
area or dimensions of the cone-shaped holes in melting and delivering
polymer for the purpose of forming filaments. Thus, we concur with the
Examiner that the determination of the workable or optimum dimensions,
such as the dimensions recited in claims 24 through 26, of the cone-shaped
holes in the melting plate of the type taught by Lipscomb is well within the
ambit of one of ordinary skill in the art.
On this record, Appellants have not identified any reversible error in
the Examiner’s finding that the determination of the workable or optimum
dimensions, such as the dimensions recited in claims 24 through 26, of the
cone-shaped holes in the melting plate of the type taught by Lipscomb is
well within the ambit of one of ordinary skill in the art.

ORDER
In summary, we affirm the Examiner’s rejections of claims 16
through 23 and 27 through 29 under 35 U.S.C. § 103(a) as unpatentable over
the combined disclosures of Graves, Phipps, and Lipscomb and claims 24
through 26 under 35 U.S.C. § 103(a) as unpatentable over the combined
disclosures of Lipscomb and Phipps.
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Accordingly, the decision of the Examiner is affirmed.

TIME PERIOD
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

ssl

CARELLA, BYRNE, BAIN, GILFILLAN, CECCHI,
STEWART & OLSTEIN
5 BECKER FARM ROAD
ROSELAND, NJ 07068
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