Ex Parte Perkins et al

Board of Patent Appeals and Interferences

Jan 20, 2012

11303324 (B.P.A.I. Jan. 20, 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.
11/303,324 12/16/2005 Dennis Randall Perkins 2084A1 6945
7590 01/20/2012
PPG INDUSTRIES, INC.
Intellectual Property Department
One PPG Place
Pittsburgh, PA 15272
EXAMINER
SORKIN, DAVID L
ART UNIT PAPER NUMBER
1774
MAIL DATE DELIVERY MODE
01/20/2012 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
____________

Ex parte DENNIS RANDALL PERKINS,
PHILIP LAMBERT THOMAS, and
SHAWN RENWICK PECK
__________

Appeal 2010-011029
Application 11/303,324
Technology Center 1700
____________

Before BRADLEY R. GARRIS, CHUNG K. PAK, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-011029
Application 11/303,324

2
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1, 2, and 8-13. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 6(b).
We REVERSE.
Appellants’ invention is said to be directed to a mixing system
including static and rotary mixers which may be used to produce thermoset
compositions such as sealants.
Claim 1 is illustrative:
1. A system for mixing thermoset compositions
comprising:
a source of a base component of the thermoset
composition;
a source of a curing agent component of the thermoset
composition;
a static mixer comprising an inlet in fluid flow
communication with the sources of the base and curing agent
components of the thermoset composition, and an outlet for the
base and curing agent components; and
a rotary mixer in fluid flow communication with the
static mixer comprising an inlet in fluid flow communication
with the sources of the base and curing agent components, and
an outlet for the base and curing agent components.
Appellants appeal the following rejection:
Claims 1, 2, and 8-13 are rejected under 35 U.S.C. § 102(b) as being
unpatentable over Soissa (US 2,460,605 issued Feb. 1, 1949).

Appeal 2010-011029
Application 11/303,324

3
ISSUE
Did the Examiner reversibly err in failing to give patentable weight to
“a source of a base component of the thermoset composition” and “a source
of a curing agent component of the thermoset composition” recited in claim
1? We decide this issue in the affirmative.

FINDINGS OF FACT AND ANALYSES
Regarding the “base component” and “curing agent” limitations of
claim 1, the Examiner treated these limitations as material worked upon and
gave them no patentable weight (Ans. 4, 5).
Appellants argue that their system claim differs from the “article”
claim in In re Otto, 312 F.2d 937 (CCPA 1963) and thus is distinguishable.
We agree.
Appellants’ claims differ from the article claims (i.e., a hair curler) in
Otto, by reciting a system that includes “a source of a base component of the
thermoset composition” and “a source of a curing agent component of the
thermoset composition.” In other words, Appellants’ claims positively
require a source of a base component of a thermoset composition and a
source of a curing agent component of a thermoset composition as part of
the system structure.
Accordingly, to anticipate Appellants’ claims the prior art, Soissa,
must teach a source of base material of a thermoset composition and a
source of a curing agent. The Examiner does not find that Soissa teaches
such features.
Accordingly, we reverse the Examiner’s § 102(b) rejection of the
claims over Soissa.
Appeal 2010-011029
Application 11/303,324

4

DECISION
The Examiner’s decision is reversed.

ORDER
REVERSED

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