Ex Parte Sauer et al

Board of Patent Appeals and Interferences

Jun 27, 2012

10507982 (B.P.A.I. Jun. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte KLAUS SAUER and GILBERT MOSER
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Appeal 2010-000065
Application 10/507,982
Technology Center 3700
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Before STEFAN STAICOVICI, GAY ANN SPAHN, and
LYNNE H. BROWNE, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Klaus Sauer and Gilbert Moser (Appellants) seek our review under 35
U.S.C. § 134 of the Examiner’s rejection of claims 16-19 and 21-23.
Appellants cancelled claims 1-15 and 20. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.
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Application 10/507,982

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The Claimed Subject Matter
The claimed subject matter is directed to “a device for attenuating
pressure surges of liquids, e.g.[,] of a biologically vulnerable liquid, flowing
inside a liquid conduit and for cleaning, in particular sterilizing, the liquid
conduit.” Spec. 1, para. [0001].1 Claim 16 (the sole independent claim),
reproduced below, with emphasis added, is representative of the subject
matter on appeal.
16. A device for attenuating pressure
surges of liquids flowing inside a liquid conduit
and for cleaning the liquid conduit comprising:
a bypass conduit that bridges over a section
of the liquid conduit, wherein a first isolating valve
is disposed in the section of the liquid conduit
between outlets of the bypass conduit and at least
one lockable gas supply conduit is provided in the
bypass conduit, and wherein the bypass conduit is
divided into two gas-filled spaces by a second
isolating valve disposed within the bypass conduit,
a separate lockable gas supply conduit running
into each of the two spaces, both spaces
communicating with the liquid conduit to attenuate
pressure surges therein.

The Rejections
The following Examiner’s rejections are before us for review.
(1). Claims 16-19, 21, and 23 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Muszinski (DE 197 06 578 A1, published Oct. 1,
1998). Ans. 3-5.

1 All references to the Specification are to the Substitute Specification filed
July 23, 2007.
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Application 10/507,982

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(2). Claim 19 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Muszinski and McMahon (US 136,746, issued Mar. 11, 1873). Ans. 5.
(3). Claim 22 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Muszinski and Janssen (US 5,386,927, issued Feb. 7, 1995). Ans. 6-7.

OPINION
Rejection (1) - Obviousness based on Muszinski
The Examiner finds that Muszinski substantially discloses the subject
matter of independent claim 16, except for “a separate lockable gas supply
conduit running into each of the two spaces, both spaces communicating
with the liquid conduit to attenuate pressure surges therein.” Ans. 3. The
Examiner concludes that
It would have been obvious to one of
ordinary skill in the art at the time of invention to
add an additional supply conduit, branched off
from the existing line 8 . . . to have a separate
lockable gas supply conduit running into each of
the two spaces . . . since it has been held that mere
duplication of the essential working parts of a
device involves only routine skill in the art. The
addition of the . . . separate lockable gas supply
would be added in order to provide a secondary
source of pressure in order to create a backup
system in the event the original gas supply . . .
fail[s].

Ans. 4.
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Application 10/507,982

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Appellants contend that the Examiner’s proposed modification of
Muszinski “is not based on rational reasoning,”2 because “[t]he Examiner
has modified Muszinski to add a second separate lockable gas supply
conduit into a second space to the right of valve (7),” but “the full claim
limitation requires that both spaces communicate with the liquid conduit to
attenuate pressure surges.” Br. 8-9. In other words, Appellants contend that
Muszinski teaches only one space in pipe section 3, i.e., gas cushion 18,
communicates with a liquid conduit (product filling line 2) through open
valve 4 and “[t]hus, the modification of Muszinski by simply adding a
second gas supply conduit would be insufficient,” because Muszinski
teaches that only one valve 4 is open to the product filling pipe 2. App. Br.
9.
Muszinski discloses a pressure surge compensator 1 including a U-
shaped pipe section 3 that branches off a product filling pipe 2 of a beverage
filling machine. Muszinski, Figure3 and p. 3, ll. 29-32.4 Left and right slide
valves 4, 5 are located on the left and right side of the pipe section 3,
respectively, near the vicinity of the junction of the pipe section 3 and the
filling pipe 2. Muszinski, Figure and p. 3, line 34. Shut-off valve 6 is
arranged in the filling pipe 2 between the junctions of the pipe section 3 and
the filling pipe 2 and shut-off valve 7 is provided in the upper connecting

2 For this proposition, Appellants cite to In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006), cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007).
3 Because there is only a single figure, it has no figure number and will
simply be referred to as “Figure.”
4 References to Muszinski are to the English Translation of DE 197 06 578
A1 by McElroy Translation Company in January of 2007, which is of record
in the application file.
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Application 10/507,982

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portion of the pipe section 3 to serve for varying the effective size of the
pressure surge compensator 1. Muszinski, Figure and p. 3, l. 34 to p. 4, l. 2.
In operation during a filling procedure, “the shut-off valves 4 and 6 are open
while the shut-off valve [5]5 and optionally the shut-off valve 7 are closed.”
Muszinski, p. 4, ll. 9-10. “If a larger gas cushion 18 is required for special
applications, the shut-off valve 7 can be opened such that the space available
for the gas cushion 18 in the pipe section 3 is increased.” Muszinski, p. 4, ll.
24-25.
In view of the discussion of Muszinski supra, we note that the shut-
off valve 5 is always closed during a filling operation and thus, does not
communicate with the product filling pipe 2. Even when the shut-off valve
7 is opened during special applications where a larger gas cushion 8 is
necessary, the shut-off valve 5 remains closed so that Muszinski never
discloses that “the bypass conduit is divided into two gas-filled spaces . . .
both spaces communicating with the liquid conduit to attenuate pressure
surges therein,” as is required by independent claim 16. We cannot agree
with the Examiner’s supposition that “the addition of a secondary back-up
pressure source would provide a system [where] both spaces would
communicate with the liquid conduit” and “[t]here is no positive recitation
that this communication occurs simultaneously, [and] even if this would be
the case, one would merely open the lower right valve (5) to perform this
communication.” See Ans. 8. Since Muszinski does not teach using his

5 Although the English Translation has reference numeral “6” here, we note
that this sentence is taken from the 23rd paragraph of the original German
document and is located at column 3, lines 1-3 of the original German
document. The original German text of the sentence has Arabic numeral “5”
in the place where the translator inadvertently put reference numeral “6.”
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pressure surge compensator 1 with the shut-off valve 5 open, we agree with
Appellants that the Examiner’s articulated reasoning is not based upon a
rational underpinning.
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 16, and claims 17-19, 21, and 23 dependent thereon,
under 35 U.S.C. § 103(a) as unpatentable over Muszinski.
Rejection (2) - Obviousness based on Muszinski and McMahon
and Rejection (3) - Obviousness based on Muszinski and Janssen

The Examiner’s alternate rejection of claim 19 under 35 U.S.C.
§ 103(a) as unpatentable over Muszinski and McMahon and the Examiner’s
rejection of claim 22 under 35 U.S.C. § 103(a) as unpatentable over
Muszinski and Janssen both rely on the same reasoning without rational
underpinning that was used to reject independent claim 16. Accordingly, we
do not sustain the Examiner’s rejection of claim 19 under 35 U.S.C. § 103(a)
as unpatentable over Muszinski and McMahon and the Examiner’s rejection
of claim 22 under 35 U.S.C. § 103(a) as unpatentable over Muszinski and
Janssen.

DECISION
We reverse the Examiner’s rejections of claims 16-19 and 21-23.

REVERSED

Klh