Ex Parte Roggeman et al

Board of Patent Appeals and Interferences

Nov 1, 2010

10799565 (B.P.A.I. Nov. 1, 2010)

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.
10/799,565 03/11/2004 David M. Roggeman P00091US1B 7785
7590 11/01/2010
Chief IP Counsel
Bridgestone Americas Holding, Inc.
1200 Firestone Parkway
Akron, OH 44317
EXAMINER
MERKLING, MATTHEW J
ART UNIT PAPER NUMBER
1723
MAIL DATE DELIVERY MODE
11/01/2010 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 DAVID M. ROGGEMAN, JAMES OZIOMEK, and
TIMOTHY L. TARTAMELLA
____________________

Appeal 2009-012460
Application 10/799,565
Technology Center 1700
____________________

Before CHARLES F. WARREN, CATHERINE Q. TIMM, and
STEPHEN WALSH, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge TIMM.

Opinion Dissenting-in-part filed by Administrative Patent Judge WALSH.

TIMM, Administrative Patent Judge.
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DECISION ON APPEAL1
I. STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 17-42. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
Appellants’ invention relates to the humidification of fluids, which are
poorly soluble in water, and particularly to humidification of hydrocarbons,
such as butadiene, prior to catalytic polymerization (Spec. 1:2-5). The
claims are directed to the apparatus for carrying out the humidifying process
(see, e.g., claim 17) and also to that apparatus in combination with the
apparatus for polymerizing the humidified hydrocarbon (see, e.g., claim 33).
It is the humidifying portion of the apparatus that is central to the
disputes on appeal, and particularly, portions of the humidifying apparatus
defined in terms of the hydrocarbons and water input into the system.
Figure 2 depicts the humidifying apparatus and is reproduced below:

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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Fig. 2 is a side sectional view of humidifying column (Spec. 2:20)

The humidifier includes a column 10 packed with a bed 12 of
dispersion material, such as porcelain beads, and including a head space 22
above the packed bed, i.e., a region free of dispersion material (Spec. 3:27 to
4:2; 4:15-16). The apparatus further includes an inlet 30 for introducing
water to approximately cover the packing material 12, and an inlet 52 for
introducing hydrocarbon in the form of a dry blend (Spec. 4:3-14).
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In operation, as the lighter hydrocarbon rises through the water, water
dissolves into the hydrocarbon (Spec. 5:14-20). Humidified droplets of the
hydrocarbon rise into a disengagement zone 70 above the water. Within the
disengagement zone 70, entrained undissolved water falls back down into
the bed (as shown below the dashed line of Fig. 2), and the hydrocarbon
droplets rise into region 72 of the disengagement zone 70 where the
humidified hydrocarbon droplets coalesce and exit through the outlet 74
(Spec. 5:19-27).
The claims containing the disputed limitations, i.e., claims 17, 33, and
39, are reproduced below with reference numerals to the structures shown in
Figure 2 and with the limitations of particular interest italicized:
17. An apparatus for humidifying a hydrocarbon stream
comprising:
a vessel [column 10] which defines an interior cavity and
having an inlet [52] adjacent a lower end of the cavity for
receiving a hydrocarbon stream;
a bed of a packing material [12] in the cavity;
water filling at least a portion of the bed [12]; and
a disengagement zone[70], comprising a hydrocarbon
monomer having a water content and undissolved water
entrained with the hydrocarbon.

33. An apparatus for humidifying and polymerizing a
hydrocarbon stream comprising:
a vessel [column 10] which defines an interior cavity, the
vessel [10] comprising a first inlet [52] adjacent a lower end of
the cavity for receiving a hydrocarbon stream, a second inlet
[30] for adding water to the vessel [10], and an outlet [74];
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a bed in the cavity, the bed comprising a packing material
[12] and water which fills a portion of the bed;
a head space [22] in the cavity above the bed [12] which
allows liquid water to fall out of the hydrocarbon stream; and
a polymerization reactor coupled to the outlet.

39. The apparatus of claim 33, further comprising a
second vessel coupled to the inlet, wherein the second vessel
includes a mono-unsaturated alkene or conjugated diene.

The Specification discloses static mixer 90 in Figure 1 (Spec. 6:11-
14), which appears to meet the requirements of the second vessel of claim
39.
Appellants seek review of the following rejections maintained by the
Examiner:2
A. The rejection of claims 17, 18, 20, 21, 26-29, and 34 under 35
U.S.C. § 102(b) as anticipated by Okada (JP 05-171164);3 and

2 Appellants do not present the rejection of claims 27 and 28 under
35 U.S.C. § 112, ¶ 2 for our review (Amended Appeal Brief of Nov. 6, 2008,
hereinafter “Br.”). Appellants attempted to overcome the indefiniteness
rejection by amending the claims (After-Final Amdt. of Mar. 4, 2008).
However, the Examiner did not enter the amendment (Advisory of Mar. 17,
2008; Ans. 2). Accordingly, since the Examiner noted that the After-Final
Amendment was not entered and did not affirmatively withdraw the ground
of rejection, we summarily affirm the rejection of claims 27 and 28 under
35 U.S.C. § 112, ¶ 2.
3 The Examiner made the Japanese document of record on April 30, 2007
and relied upon paragraph 15 to reject the claims (Non-Final Office Action
at 4 and 5; Final Office Action at 3 and 4). The Examiner’s search notes
state that the Examiner consulted the JPO website for a machine translation
(Search Info. Apr. 30, 2007). Appellants made an abstract and machine
translation of record on October 30, 2007. In response to an Order by the
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B. The rejection of claims 31, 36, and 40 under 35 U.S.C. § 102(b) as
anticipated by Holst (US 5,650,128);
C. The rejection of claim 19 under 35 U.S.C. § 103(a) as obvious
over Okada in view of Smith, Jr. (US 5,446,223);
D. The rejection of claim 25 under 35 U.S.C. § 103(a) as obvious
over Okada in view of Yoneda (US 5,123,836);
E. The rejection of claims 22-24, 31, and 32 under 35 U.S.C. § 103(a)
as obvious over Okada in view of Holst;
F. The rejection of claim 30 under 35 U.S.C. § 103(a) as obvious over
Okada in view of Niwa (US 4,705,654);
G. The rejection of claims 33, 38, and 39 under 35 U.S.C. § 103(a) as
obvious over Okada in view of Goode (US 6,111,03);
H. The rejection of claim 35 under 35 U.S.C. § 103(a) as obvious
over Okada in view of Goode (US 6,111,034);
I. The rejection of claim 37 under 35 U.S.C. § 103(a) as obvious over
Okada in view of Holst, and in further view of Goode; and
J. The rejection of claims 41 and 42 under 35 U.S.C. § 103(a) as
obvious over Okada in view of Goode, and in further view of Birks et al.
(US 4,847,207).
II. DISCUSSION
According to Appellants,

Board, the Examiner made a certified translation of record on June 16, 2009
(Order of June 9, 2009; Communication of June 16, 2009). There is no
dispute as to the teachings of Okada and the certified translation describes
the teachings of Okada in proper English. Therefore, we cite to this
translation.
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The controversy in this application has surrounded
whether it is valid to consider certain claim terms as limiting
the apparatus claims. The Examiner contends the limitations
are directed to an article worked upon by the apparatus and not
the apparatus itself. While Applicants vigorously dispute this
interpretation of the claims in the arguments below, it should be
clear that if the current claims were to issue into a patent, the
claim terms at issue would be construed by a court to be
limitations in view [of] Applicants' numerous statements
arguing to that effect in the prosecution history.
(Amended Br. 5.)
The Examiner interprets limitations relating to the manner of
operating the apparatus and the material worked upon by the apparatus as
not further limiting the structure of the apparatus. For instance, in rejecting
claim 17 as anticipated by Okada the Examiner states:
Regarding limitations recited in claim 1 [sic, 17] which
are directed to a manner of operating disclosed system, neither
the manner of operating a disclosed device nor material or
article worked upon further limit an apparatus claim. Said
limitations do not differentiate apparatus claims from prior art.
See MPEP §2114 and 2115. Further, process limitations do not
have a patentable weight in an apparatus claim. See Ex parte
Thibault, 164 USPQ 666, 667 (Bd. App. 1969) that states
"Expressions relating the apparatus to contents thereof and to
an intended operation are of no significance in determining
patentability of the apparatus claim.
(Ans. 3-4.)
The threshold issue arising is: Did the Examiner properly interpret
the apparatus claims?
We answer this question in the affirmative.
The claims are directed to an apparatus, i.e., a machine for performing
a function. As such, what is defined by the claim is “‘a concrete thing,
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consisting of parts, or of certain devices and combination of devices.’” In re
Nuijten, 500 F.3d, 1346, 1355 (Fed. Cir. 2007) (quoting Burr v. Duryee,
68 U.S. (1 Wall.) 531, 570 (1863)). Moreover, “it is well settled that a man
cannot have a patent for the function or abstract effect of a machine, but only
for the machine which produces it.” Corning v. Burden, 56 U.S. 252, 268
(1853). Also, “it has been long established that a person may not patent a
combination of device and material upon which the device works, nor limit
other persons from the use of similar material by claiming a device patent.”
In re Smith, 36 F.2d 302, 303 (CCPA 1929); see also In re Rishoi, 197 F.2d
342, 344-45 (CCPA 1952) (refusing to give a liquid film created during the
operation of the apparatus patentable weight in an apparatus claim because
“there is no patentable combination between a device and the material upon
which it works.”)
The reason such combinations are not permitted is that infringement
cannot be predicated upon the material input into the apparatus, nor the use
to which the apparatus is put. See Roberts v. Ryer, 91 U.S. 150, 151 (1875)
(“The inventor of a machine is entitled to the benefit of all the uses to which
it can be put, no matter whether he had conceived the idea of the use or
not.”); see also Morgan Env. Co. v. Albany Paper Co., 152 U.S.C. 425, 432-
33 (1894).
For the above reasons, limitations directed to the article worked upon,
the mode of operation, and other limitations of function or use, are said to
limit an apparatus claim only to the extent that those limitations result in a
patentably distinguishable structural difference in the claimed apparatus as
compared to the prior art. In re Casey, 370 F.2d 576, 580 (CCPA 1967)
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(“The claims in issue call for an apparatus or machine, viz. a tape dispensing
machine. The manner or method in which such machine is to be utilized is
not germane to the issue of patentability of the machine itself.”).4
Given the long held principles of law stated above, we determine that
the Examiner correctly analyzed the scope of the claims and correctly found
that Okada anticipates claim 17.
In terms of structure, claim 17 requires a vessel with an interior cavity
and an inlet adjacent a lower end of the cavity, and a bed of packing material
in the cavity. Okada shows such an apparatus in Figure 1. The claimed
“disengagement zone” arises when the apparatus is filled to a particular level
with water and hydrocarbon feedstock. This “zone” as claimed will change
based upon the operation of the apparatus. There is no evidence that filling
the apparatus to a particular level with water and hydrocarbon changes the
structure of the apparatus, i.e., the “mechanical device” or “concrete thing,
consisting of parts, or of certain devices and combination of devices.”
Corning v. Burden, 56 U.S. at 267; Nuijten, 500 F.3d at 1355 (quoting Burr
v. Duryee, 68 U.S. (1 Wall.) 531, 570 (1853)).

4 The cases cited by Appellants are inapposite. In the case of In re Nelson,
137 F.2d 106 (CCPA 1943), the Board conceded that the prior art did not
teach “the spray head of special character” required by claims 14 and 15, but
concluded the improvement was in the spray head rather than its
combination with other apparatus. Id. at 107. The court held that the fact
that the improvement lied in the nozzle of the spray head did not preclude
the patentability of the combination. Id. at 108-09. The quote from a Board
decision reproduced in Hester Indus., Inc. v. Stein, Inc., 142 F.3d 1472,
(Fed. Cir. 1998) is not convincing in view of the principles of law articulated
by the Supreme Court, as well as the principles articulated by our reviewing
court, and its predecessor referenced in our opinion.
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With regard to Appellants’ statement that “if the current claims were
to issue into a patent, the claim terms at issue would be construed by a court
to be limitations in view [of] Appellants’ numerous statements arguing to
that effect in the prosecution history” (Br. 5), in view of the state of the law,
we cannot agree that a court would necessarily so interpret the claims.
Moreover, the mode of claim interpretation applied during patent
prosecution is different than that used by courts in litigation. See, e.g., In re
Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). During patent prosecution the
pending claims must be interpreted as broadly as their terms reasonably
allow without reading limitations from the Specification, or applicant’s
arguments, into the claims.5 Id.
Because Appellants do not argue any of the other claims rejected as
anticipated by Okada separately, those claims stand or fall with claim 17.
We, therefore, sustain the rejection of claims 17, 18, 20, 21, 26-29, and 34
for anticipation by Okada.
With regard to rejection B, i.e., the Examiner’s rejection of claims 31,
36, and 40 as anticipated by Holst, Appellants rely upon the same reasons as
presented for the rejection for anticipation over Okada, i.e., that the
disengagement zone is not taught (Br. 9). Appellants do not argue any claim
apart from the others. We, therefore, select claim 31 as representative.
The Examiner found that Holst teaches the structure required by the
rejected claims (Ans. 5-6). Appellants have not persuaded us of an error on
the part of the Examiner with respect to the rejection over Holst. As we

5 Note that prosecution “history” is not yet “history” during prosecution
before the examiner. During prosecution, claims can be amended, and
positions changed.
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stated above, the caselaw supports the Examiner’s claim interpretation and
Appellants do not convincingly rebut the Examiner’s finding that Holst
describes a structure anticipating the claimed structure.
Our dissenting colleague is of the opinion that the water input into
Appellants’ column is a necessary structural component of the claimed
invention and “[t]he Examiner made no finding that Holst’s apparatus
comprised water.” We do not agree that such a finding was necessary.
As the Examiner clearly stated: “[the] apparatus disclosed by Holst is
identical to the apparatus claimed by the appellant (minus the limitations
directed toward the materials worked upon in the apparatus[)].” (Ans. 16.)
This statement clearly encompasses the position that “water” in the subject
claim language is not an apparatus limitation on the “vessel” as claimed.
A reasonable interpretation of claim 31, in light of the Specification
and the case law, establishes that “water” and the “disengagement zone,
comprising” the same are temporary processes steps, materials, and
conditions. Indeed, the sole apparatus limitation in claim 31 is the packed
vessel having an interior cavity and upper and lower inlets. Such a vessel
can be used for any manner of chemical synthesis, lab or industrial, and the
theory that such a vessel known in the art can again be patented in an
apparatus claim solely on the basis of in-use process steps, materials, and
conditions, intended and unintended, which have nothing to do with the
known structure of the vessel is addressed by the discussed case law.
We, therefore, sustain the rejection of claims 31, 36, and 40 as
anticipated by Holst.
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With regard to the Examiner’s rejections C through F listed above for
obviousness over Odaka in combination with various other references,
Appellants again rely upon the arguments presented against the rejection for
anticipation over Okada (Br. 9-11). For the reasons presented above,
Appellants have not persuaded us of any error by the Examiner with respect
to these rejections.
With regard to the Examiner’s rejection G listed above, i.e., the
rejection of claims 33, 38, and 39 as obvious over Okada in view of Goode,
Appellants present arguments directed to claims 33 and 39. We, therefore,
select claims 33 and 39 as representative for deciding the issues on appeal.
Appellants contend that the Examiner failed to substantively address
the limitation “a head space in the cavity above the bed which allows liquid
water to fall out of the hydrocarbon stream” required by claim 33 (Br. 11).
The Examiner responds that Okada discloses a head space above the
bed above spray nozzle 9 as shown in Figure 1. The Examiner finds that this
head space has the ability to function as claimed, that the apparatus is
identical to the claimed apparatus, and that the functional language does not
distinguish the claimed apparatus from the prior art. (Ans. 17.)
Appellants disagree that Okada has a head space with the ability to
allow liquid water to fall out of a fluid stream because a certain height is
required for the water to fall out or separate from the hydrocarbon (Reply
Br. 6).
The evidence supports the Examiner’s finding that Okada reasonably
describes an apparatus meeting the structural requirements of the claim. As
a first matter, the apparatus is the vessel with cavity, inlet and outlet, and
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packed bed. Okada teaches such an apparatus. The head space is a
consequence of the operation of the apparatus. It is only after Appellants
begin conducting their process that “a head space” as claimed arises. But,
such a head space need never arise if the apparatus is used to conduct a
different process. The operator of the apparatus is entitled to the benefit of
all its uses and the manner in which the apparatus is used is not germane to
the patentability of the apparatus itself. Roberts v. Ryer, 91 U.S. at 151;
Casey, 370 F.2d at 580.
The Examiner found that Okada’s apparatus is capable of being
operated so that the claimed head space occurs. This determination is
reasonable in light of the similarities in structure between the claims
apparatus and that of Okada.
Where there is reason to believe that the prior art structure possesses
all the claimed characteristics including the capability of performing the
claimed function, the burden shifts to the applicant to show that, in fact, the
claimed function structurally distinguishes the claimed apparatus from the
prior art apparatus. In re Ludtke, 441 F.2d 660, 664 (CCPA 1971).
Appellants cite to the Specification at page 5, lines 25-27 in arguing
that Okada’s head space does not have the required capability (Reply Br. 6).
But the fact that the disengagement zone 70 is of “sufficient height” to allow
the separation of the entrained water and hydrocarbon as recited in the
portion of the Specification cited by Appellants does not provide convincing
evidence that Okada’s apparatus is not capable of being operated with a head
space which would allow the required separation.
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Turning to claim 39, Appellants further contend that the requirement
for “a second vessel coupled to the inlet, wherein the second vessel includes
a mono-unsaturated alkene or conjugated diene” as required by this claim is
not present in the cited references (Br. 12). The Examiner finds that
Okada’s mixer 6 has the structure required by the claimed second vessel
(Ans. 17). But according to Appellants, “[a] vessel for mixing gases would
be expected to be different from a vessel for mono-unsaturated alkene or
conjugated diene monomer that is coupled to an inlet adjacent a lower end of
the cavity for receiving a hydrocarbon stream.” (Br. 12.)
We note that Appellants identify the useful mono-unsaturated alkenes
as including ethene (Spec. 2:29-30). It is not seen how Appellants’ second
vessel, which appears to be mixer 90 shown in Figure 1, is patentability
distinguishable in structure from the mixer 6 of Okada when Appellants’
mixer can also accommodate gases such as ethene (ethylene).
Appellants have not convinced us that the Examiner erred in rejecting
claims 33, 38, and 39 as obvious over Okada in view of Goode.
Appellants advance no further arguments against the remaining
rejections, i.e., rejections H through J listed above. Therefore, we sustain
those rejections for the reasons presented above.
III. CONCLUSION
On the record before us, we sustain all the rejections maintained by
the Examiner.
IV. DECISION
The decision of the Examiner is affirmed.
V. TIME PERIOD FOR RESPONSE
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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
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WALSH, Administrative Patent Judge, concurring-in-part and dissenting-
in-part.

I concur with the decision to affirm the rejection under 35 U.S.C.
§ 102(b) over Okada’s disclosure, and the rejections under 35 U.S.C.
§ 103(a) over the combined teachings of Okada and other references. I also
concur with the decision affirming the rejection of claims 27 and 28 under
35 U.S.C. § 112, second paragraph. I respectfully dissent from the decision
to affirm the rejection under 35 U.S.C. § 102(b) over Holst’s disclosure.
I agree that the evidence supports the Examiner’s finding that Okada
described an apparatus used to humidify a hydrocarbon stream and
comprising a vessel, a bed of packing material, water filling at least a portion
of the bed, and a disengagement zone. (Ans. 3.) The Examiner interpreted
claim 1 as reciting “limitations . . . directed to a manner of operating
disclosed system” that receive no weight. I do not interpret claim 1 in that
way. I conclude instead that the disengagement zone defined in claim 1
does comprise “a hydrocarbon monomer having a water content and
undissolved water entrained with the hydrocarbon.”
Okada taught that its apparatus could be operated “like a scrubber,”
which sprays water from the upper side to the gas flowing from the lower
side,” e.g. via spray nozzle 9, or by a mode that “simply blows the gas in
water,” e.g. via clean water inlet 11. Okada, ¶¶ 10, 15. In either mode, the
humidified gas would necessarily leave the vessel via an outlet above spray
nozzle 9. Id. at ¶ 15. The Examiner explained as much. See Ans. at 15 and
17. I agree with my colleagues that the evidence was sufficient to shift the
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burden to Appellants to show that the upper zone of Okada’s vessel did not
comprise “a hydrocarbon monomer having a water content and undissolved
water entrained with the hydrocarbon.” In re Ludtke, 441 F.2d 660, 664
(CCPA 1971); In re Schrieber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). In the
face of that evidence, I find Appellants’ arguments about claim construction
are misdirected and unpersuasive. As Appellants repeat the same or similar
arguments regarding all the obviousness rejections, I agree with my
colleagues that those rejections must also be affirmed.
The rejection over Holst is based on different evidence. The
Examiner made no finding that Holst’s apparatus comprised water. (Ans. 5-
6.) Appellants argue that “the Office Action completely fails to
substantively address the ‘a hydrocarbon monomer having a water content
and undissolved water entrained with the hydrocarbon.” (App. Br. 9.) I
agree. Without a foundational finding that water was present in the Holst
apparatus, I see no evidence to support finding that Holst described a
disengagement zone comprising entrained undissolved water. Accordingly,
I respectfully dissent from the decision to affirm the anticipation rejection
based on Holst.

cam

CHIEF IP COUNSEL
BRIDGESTONE AMERICAS HOLDING, INC.
1200 FIRESTONE PARKWAY
AKRON OH 44317