Ex Parte Koenig et al

Patent Trial and Appeal Board

Sep 14, 2017

12999810 (P.T.A.B. Sep. 14, 2017)

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.
12/999,810 06/20/2011 Thomas Koenig 15778-00342-US 8317
26285 7590 09/18/2017
KfrT flATRS T T P-Pimhnrah
EXAMINER
210 SIXTH AVENUE
PITTSBURGH, PA 15222-2613
HOWELL, MARC C
ART UNIT PAPER NUMBER
1774
NOTIFICATION DATE DELIVERY MODE
09/18/2017 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):
USpatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS KOENIG, MICHAEL BIERDEL,
ULRICH LIESENFELDER, KLEMENS KOHLGRUBER, and
JOHANN RECHNER
Appeal 2017-001305
Application 12/999,8101
Technology Center 1700
Before RAE LYNN P. GUEST, MICHELLE N. ANKENBRAND, and
MONTE T. SQUIRE, Administrative Patent Judges.
GUEST, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 18 and 20—35 under 35 U.S.C. § 102(b) as
anticipated by Haring2 or under 35 U.S.C. § 103(a) as unpatentable over
Haring in view of additional prior art. See generally Examiner’s Final
1 Appellants identify the real party in interest as Covestro Deutschland AG,
formerly Bayer Material Science AG. Appellants’ Appeal Brief 2, filed
February 17, 2016 (hereinafter “App. Br.”); Appellants’ Reply Brief 1, filed
November 2, 2016 (hereinafter “Reply Br.”).
2 U.S. Patent 4,824,256, issued April 25, 1989 to Erwin Haring et al.
(hereinafter “Haring”).
Appeal 2017-001305
Application 12/999,810
Office Action, dated October 9, 2015 (“Final Act.”) and Examiner’s
Answer, dated September 2, 2016 (“Ans.”). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appellants’ invention is directed to a process for extruding plastic
compositions, particularly in a co-rotating twin-screw extruder, and
particularly for the purpose of compounding, or mixing, polymers together
or with additives and removing volatile constituents, such as air and water.
Specification (“Spec.”) 1:2—29. According to the Specification, the
geometry of closely intermeshing, self-wiping screw elements of a co­
rotating twin-screw extruder is defined by 1) the number of flights Z, i.e., the
number of circular-arcs of each element which wipes the outer wall; 2) a
centreline distance A (as shown in Figure 1, reproduced below); and 3) a
barrel diameter DE (also shown in Figure 1).
Figure 1, reproduced above, depicts a schematic cross-sectional view
of corresponding circular arcs of intermeshing, self-wiping screw elements
of the present invention. See Amendments made to the Specification on July
6, 2015; Spec. 6:13—15. A tip angle KW0 is defined by the angle of any
such circular arc, relative to the center of rotation. Id. at 3:10—11. If the tip
angle is too large, a particularly large amount of energy is dissipated in the
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Application 12/999,810
melt, which leads locally to severe overheating in the product. Id. at 2:28—
33. Reducing the tip angle by providing large clearances between the screws
is also not desirable. Id. at 3:27—4:5. Accordingly, the present invention is
directed to an extrusion process that has specific geometries for closely
intermeshing, co-rotating screw elements with the advantage of a low tip
angle for reduced temperature. Id. at 4:6—9. This is achieved by having
irregularly shaped or “kinked” profiles for the screw elements, as shown, for
example, in Figure 4, reproduced below. Id. at 5:8—9 and 17—18, 8:31—9:12.
Figure 4, reproduced above, depicts a cross sectional view of
intermeshing screws of co-rotating twin-screw extruder of the present
invention.
The Specification describes the reduction in tip angle as beneficial
over regular profiles of the prior art having “identical clearances and
identical pitch.” Id. at 10:6—8.
Sole independent claim 18 is exemplary of the subject matter on
appeal and is reproduced below (with indentations added for clarity):
18. A process for extruding plastic compositions
comprising
extruding the plastic compositions in a multi-screw
extruder,
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Application 12/999,810
co-rotating the screw elements of the extruder in pairs
and the screw elements being fully self-wiping in pairs, using
screw elements
with two or more screw flights Z,
with a centreline distance A and
an outer diameter DE,
wherein a total of the tip angles of a pair of screw
elements is greater than zero and smaller than " 'A
using screw elements wherein each screw element
comprising circular arcs which wipe the outer wall, and
wherein the number of flights Z corresponds to the
number of circular arcs wiping the outer wall, and
wherein each screw element has one of a generating
screw profile or a generated screw profile, and
each generating and generated screw profile is composed
of d*Z or more circular arcs with a radius greater than or equal
to zero and smaller than or equal to A,
where the circular arcs merge tangentially into one
another at their end points.
App. Br. 12 (Claims App.). Claim 28 depends from claim 18 and further
recites that “clearances in the range from 0.1 to 0.001 relative to the
diameter of the screw profile have between screw elements and barrel and/or
between neighboring screw elements.” Id. at 14. Claim 35 also depends
from claim 18 and further recites that “the circular arcs have different radii
and/or centers.” Id. at 15.
Appellants present arguments with respect to only claims 18, 28, and
35. App. Br. 3 and 5—10. Thus, the claims not separately argued stand or
fall with the claims from which they depend.
Unless otherwise indicated, we adopt the Examiner’s findings in the
Answer as our own and add any additional findings of fact appearing below
for emphasis.
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II. CLAIM 18
Claim 18 stands rejected under 35 U.S.C. § 102(b) as anticipated by
Haring. Claim 18 recites, inter alia, that “the screw elements [are] self­
wiping in pairs.” Appellants admit that Haring describes the wiping of
curved sections 26 of one kneading disk by crests 25 of the other kneading
disk, but asserts that crests 25 are not oppositely wiped by curved sections
26. Reply Br. 4. Appellants contend that the “zero curvature” “straight
crests 25” in Figure 5 “would prevent nominal contact. . . over the entire
length of the crests 25 during rotation.” Id. Appellants also contend that
this self-wiping feature is not taught in Figure 6, despite the curved crests
25', because the wedge flow over the crests is increased, as shown in Figure
8. Id. at 4—5.
Appellants’ arguments are not sufficiently supported by evidence in
the record and are in direct contradiction to the statements in Haring, which
Appellants quote (Reply Br. 4), namely:
crest 25 of the one kneading disk can move in substantially
clearance-free manner past the curved section 26 of the other
kneading disk 21 in the penetration zone of the bores 5, 6, i.e.
between the gussets 24. Thus, the kneading disks 21 arranged in
one plane clean one another.
Haring col. 5,11. 1—6 (emphasis added). Haring further states that:
according to the invention, the known kneading disks geometry
is retained, i.e. the optimum ratio of the maximum radius of the
kneading disks to the centre-to-centre distance of the two shafts
remains unchanged, so that sealing and consequently self­
cleaning of two adjacent kneading disks in one plane is ensured.
Id. at col. 3,11. 10-15 (emphasis added).
Appellants present no basis for us to find that the disks do not clean
each other as stated in Haring. If curved section 26 and crest 25 move “in
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Application 12/999,810
substantially clearance-free manner,” then crest 25 is cleaned by curved
section 26 to the same extent that curved section 26 is cleaned by crest 25
because they “clean one another.”
Nor are we persuaded that crests 25 in Figure 5 are “straight” and
have “zero curvature,” as argued by Appellants. Reply Br. 4. To the
contrary, Haring states that crest 25 is “defined by a circular arc section with
a generating angle of fi=5° to 10°.” Haring col. 4,11. 63—66. Haring
describes crests 25' in Figure 6 as “rounded” and shows a smaller radius of
curvature R in Figure 6. Id. at col. 5,11. 22—24. We are not persuaded that
the description provided for Figure 6 means that crests 25 in Figure 5 are
“straight” with “zero curvature.” See Reply Br. 7, n.l.
Appellants also contend that Haring does not disclose “6*Z or more
circular arcs,” as recited in claim 18. App. Br. 7—8.
The Examiner finds that “absent any recitation defining the radii
and/or centers of the arcs, it would be reasonable to interpret curved portions
26 of H[a]ring to include any number of arcs, up to and including the ‘6*Z
or more circular arcs’ recited in claim 18.” Ans. 10.
Appellants assert that the Examiner’s finding of “theoretically infinite
number of constituent arc segments having the same curvature that make up
a single arc,” while “correct in a theoretical or mere mathematical way” (see
App. Br. 7, Reply Br. 7), is unreasonably broad and not consistent with the
Specification as it would have been understood by one skilled in the art.
App. Br. 7—8; Reply Br. 6—7. Rather, Appellants assert that the
interpretation from the examples and figures of the Specification requires an
interpretation where “the circular arcs have different radii and/or centers.”
App. Br. 8. Accordingly, Appellants assert that Figures 5 and 6 of Haring
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show screw profiles with at most 6 circular arcs, in particular one defined by
each of the crests 25 (or 25' in Figure 6) and one defined by each of the
curved sections 26. Reply Br. 5, 7.
Appellants’ narrower interpretation is not persuasive. Appellants’
sole basis for the narrow interpretation is found in the Examples and Figures
of the Specification. App. Br. 8. We decline to read structure set forth only
in the Specification into the claim. Our reviewing court has counseled often
against limiting broad claim terms solely on the basis of specification
passages and tells us that, absent express claim language carrying a narrow
meaning, claims should only be limited based on the specification when
Appellants expressly disclaim a broader definition. In re Bigio, 381 F.3d
1320, 1324—25 (Fed. Cir. 2004). Here, the Specification provides no express
disclaimer. During prosecution, Appellants are free to amend the claims to
include language carrying a narrower meaning.
Further, the subject matter Appellants assert is the properly interpreted
scope of claim 18 is the sole precise language recited in claim 35, which
depends from claim 18. Accordingly, we decline to interpret claim 18 as
inherently incorporating the language expressly recited in claim 35. To do
so would find that two disparate claims have identical claim scope. See
Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004)
(“[Wjhere the limitation that is sought to be ‘read into’ an independent claim
already appears in a dependent claim, the doctrine of claim differentiation is
at its strongest.”); see also SunRace Roots Enter. Co., Ltd. v. SRAM Corp.,
336 F.3d 1298, 1302-03 (Fed. Cir. 2003); D.M.I., Inc. v. Deere & Co., 755
F.2d 1570, 1574 (Fed. Cir. 1985).
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Finally, Appellants admit that the Examiner’s interpretation is
mathematically correct. Without any clear and precise alternative meaning
given to the term “circular arcs,” or any evidence limiting how the skilled
artisan would have understood this phrase in the context of the Specification,
we have no reason to find the Examiner’s interpretation unreasonable.
Appellants further contend that Haring does not disclose “the circular
arcs merg[ing] tangentially into one another at their end points,” as recited in
claim 18. App. Br. 8—9. Appellants’ arguments with respect to this
limitation are directed to the Examiner’s interpretation of circular arcs being
incorrect (App. Br. 8; Reply Br. 7), which we do not find persuasive, as
discussed above. Appellants have not persuasively shown that the
Examiner’s interpretation is unreasonably broad.
Accordingly, we are not persuaded of error with respect to the
Examiner’s rejection of claim 18.
III. CLAIM 28
Claim 28 is also rejected under 35 U.S.C. § 102(b) as anticipated by
Haring. Appellants assert that because Haring’s screws are not self-wiping,
they lack the recited “clearances in the range of 0.1 to 0.001 relative to the
diameter” recited in claim 28. App. Br. 9.
As discussed above, we find that Haring expressly teaches self-wiping
screws. Moreover, we agree with the Examiner (Ans. 9) that Haring also
expressly teaches clearances of “0.06 to 0.09 times the radius ... to said
crests” (Haring col. 3,11. 16—18), which, considering the diameter is twice
the radius, would be 0.03 to 0.45 times the diameter and which would fall
squarely within the range of 0.001 to 0.1 relative to the diameter, as recited
in claim 28.
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Accordingly, we are not persuaded of Examiner error in the rejection
of claim 28.
IV. CLAIM 35
Claim 35 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Haring in view of Valsamis.3 Claim 35 depends from claim 18 and
specifically recites that “the circular arcs have different radii and/or centers.”
The Examiner finds that Valsamis teaches screw element profiles that have
6*Z arcs having different radii and/or centers.” Final Act. 6—7 (citing
Valsamis Figs. 3 and 4); Ans. 5—6. The Examiner concludes that “[t]o one
of ordinary skill in the art at the time of invention, it would have been
obvious to have provided the apparatus of H[a]ring with the varying circular
arcs of Valsamis for the purpose of reducing the energy required for the
extruding of the plastic materials.” Id. at 7 (citing Valsamis col. 10,11. 9—
23).
Appellants argue, inter alia, that the Examiner’s finding of 6*Z
circular arcs, where the circular arcs have different radii and/or centers, must
include “FLAT” part 73. Reply Br. 8, 11 (describing each of the circular
arcs with different radii and/or centers of Valsamis and only arriving at 12
arcs by including the FLAT part 73 shown in Figure 3); App. Br. 10 (citing
Valsamis col. 8,11. 27—56). However, according to Appellants, the “FLAT”
portion cannot properly be considered a circular arc because claim 18 further
requires that each circular arc have “a radius greater than or equal to zero
and smaller than or equal to A,” which is the “centreline distance,” or the
distance between the center points of the two screw profiles. In other words,
3 U.S. Patent 5,487,602, issued January 30, 1996 to Lefteris N. Valsamis et
al. (hereinafter “Valsamis”).
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the circular arcs cannot have an infinite radius, which would be the case with
a perfectly flat line.
We agree with Appellants that the Examiner has not explained how
Valsamis teaches 6*Z (or 12 in the case of Valsamis) circular arcs as recited
in the claims. Indeed, Valsamis expressly teaches a portion of the screw
profile as being “a straight tangent portion 73 (called a “FLAT”).” Valsamis
col. 8,11. 30—31. We cannot reasonably find 6*Z (or 12) circular arcs in the
screw profile without including FLAT portion 73.
Accordingly, we are persuaded of Examiner error in the rejection of
claim 35, and we reverse this rejection.
V. CONCLUSION
On the record before us and for the reasons discussed above, we
sustain the following rejections maintained by the Examiner:
Claims 18, 20, 21, 23, 24, and 26—29 rejected under pre-AIA
35 U.S.C. § 102(b) as being anticipated by Haring;
Claims 22 and 25 rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Haring in view of Valsamis; and
Claims 30-34 rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Haring in view of the additional prior art recited by the
Examiner (see Final Act. 7; Ans. 6).
We do not sustain the rejection of claim 35 under 35 U.S.C. § 103(a)
as being unpatentable over Haring in view of Valsamis.
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VI. ORDER
We affirm the Examiner’s rejections of claims 18 and 20—34. We
reverse the Examiner’s rejection of claim 35 under 35 U.S.C. § 103(a) as
being unpatentable over Haring in view of Valsamis.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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