Ex Parte Reimers

Patent Trial and Appeal Board

Sep 25, 2013

11970185 (P.T.A.B. Sep. 25, 2013)

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.
11/970,185 01/07/2008 JAY REIMERS COS-954 DIV 2532
25264 7590 09/25/2013
FINA TECHNOLOGY INC
PO BOX 674412
HOUSTON, TX 77267-4412
EXAMINER
LEO, LEONARD R
ART UNIT PAPER NUMBER
3744
MAIL DATE DELIVERY MODE
09/25/2013 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JAY REIMERS
____________________

Appeal 2011-010372
Application 11/970,185
Technology Center 3700
____________________

Before CHARLES N. GREENHUT, PATRICK R. SCANLON,
and BARRY L. GROSSMAN, Administrative Patent Judges.

SCANLON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-010372
Application 11/970,185

2
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 17-27, which are all of the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Appellant’s invention “relates to a heat exchanger for use in
devolatilizing polymers.” Spec., para. [0001]. Claims 17 and 19 are the
independent claims on appeal. Claim 17, reproduced below, is illustrative of
the claimed subject matter.
17. A devolatilizer adapted for devolatilizing a
polymer comprising a plate heat exchanger
comprising:
at least one heating plate and a plurality of
heating tubes wherein the heating tubes are
positioned such that they can heat the heating
plates using a heat transfer fluid flowing through
the heating tubes and wherein the heating tube
comprises a return tube nested inside of a supply
tube;
wherein the supply tube receives and then
carries the heat transfer fluid, and wherein heat is
conducted from the heat transfer fluid into the
heating plate;
wherein upon reaching a bottom of the
heating tube, the heat transfer fluid has lost at least
a part of the heat it carried to the heating plate and
said fluid is relatively cooler; and
wherein the relatively cooler heat transfer
fluid then enters the return tube and passes out of
the heating tube.
Appeal 2011-010372
Application 11/970,185

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Claim 19 is directed to a devolatilizer comprising a heat exchanger
similar to that recited in claim 17.
REFERENCES
The Examiner relies upon the following prior art references:
Touze
Wolf
US 4,210,101
US 4,325,228
Jul. 1, 1980
Apr. 20, 1982
REJECTIONS
The following rejections are before us on appeal:
Claims 17-20, 23, and 25-27 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Touze.
Claims 17, 19-22, and 24-26 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Wolf.
ANALYSIS
Both of the Examiner’s rejections rely on the finding that the
recitation of a “devolatilizer” in the claim preambles does not “impart a
structural limitation.” Ans. 4, 5. Appellant does not contest whether Touze
and Wolf disclose the structural elements attributed to them by the
Examiner. Rather, Appellant’s sole argument against both grounds of
rejection is that “the recitation of a devolatilizer adapted for devolatilizing a
polymer imparts a structural limitation that distinguishes the present claims
from” both Touze and Wolf. Br. 3-5. Accordingly, our decision with
respect to both rejections will turn on our determination of this argument.
Appellant’s reliance on In re Caldwell, 319 F.2d 254 (CCPA 1963),
for the proposition that “[t]he CCPA has consistently recognized the
propriety of defining an invention by what it does, rather than by what it is”
Appeal 2011-010372
Application 11/970,185

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(Br. 3, 4) is misplaced. First, the Examiner does not take the position that
Appellant’s preambles present improper functional language. Rather, the
Examiner’s position is that “the manner in which a claimed apparatus is
intended to be employed does not differentiate the claimed apparatus from a
prior art apparatus satisfying the claimed structural limitations,” and thus the
recitation of a “devolatilizer” does not impart a structural limitation. Ans. 3-
4, 5 (citing Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter.
1987)).
Moreover, in Caldwell, the court held that claims directed to a method
of stimulating growth of ruminants, poultry, or swine by feeding them “an
effective amount of aspirin for growth simulation” were not obvious over a
prior art reference that did not suggest such a method and even suggested
“that such a method is an impossibility.” Caldwell, 319 F.2d at 257. We
thus agree with the Examiner that Caldwell is not germane to the issue at
hand of whether Appellant’s claim language defining an apparatus in terms
of its intended use patentably distinguishes the claims from the prior art.
Ans. 6.
In addition, the Examiner takes the position that both Touze and Wolf
are capable of performing as a devolatilizer as claimed. Id. A prior art
apparatus that is capable of performing the claimed function satisfies the
functional limitations in an apparatus claim. In re Schreiber, 128 F.3d 1473,
1478 (Fed. Cir. 1997); see also In re Swinehart, 439 F.2d 210, 212-13
(CCPA 1971) (“[T]he mere recitation of a newly discovered function or
property, inherently possessed by things in the prior art, does not cause a
claim drawn to those things to distinguish over the prior art.”). There is a
sound basis for the Examiner’s position in that the structure of Touze and
Appeal 2011-010372
Application 11/970,185

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Wolf appears to be structurally identical to that which is claimed. Thus, the
burden shifts to Appellant to come forward with argument or evidence to
demonstrate why the Examiner is incorrect. See In re Spada, 911 F.2d 705,
708 (Fed. Cir. 1990); In re Swinehart, supra. Appellant merely asserts that
it is not clear that the heat exchangers of Touze and Wolf “would be able to
devolatize a composition passing therethrough.” Br. 4, 5. However, this
naked assertion, without more, is insufficient to convince us of error in the
Examiner’s finding that both Touze and Wolf are capable of performing as a
devolatilizer.
In view of the above, Appellant’s arguments do not apprise us of
error, and we sustain both of the Examiner’s rejections.
DECISION
We affirm the decision of the Examiner rejecting claims 17-27.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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