Ex Parte TILL et al

Patent Trial and Appeal Board

Aug 4, 2016

12323579 (P.T.A.B. Aug. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/323,579 11/26/2008
432 7590 08/08/2016
NILS ff LJUNGMAN & AS SOCIA TES
P. 0. BOX 130
GREENSBURG, PA 15601-0130
FIRST NAMED INVENTOR
Volker TILL
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
NHL-HOL-196 8014
EXAMINER
ZHOU, QINGZHANG
ART UNIT PAPER NUMBER
3752
NOTIFICATION DATE DELIVERY MODE
08/08/2016 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):
nhla@earthlink.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VOLKER TILL and DIETER-RUDOLF KRULITSCH
Appeal2014-003509
Application 12/323,579
Technology Center 3700
Before MICHELLE R. OSINSKI, JILL D. HILL, and PAUL J.
KORNICZKY, Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Volker Till and Dieter-Rudolf Krulitsch ("Appellants") appeal under
35 U.S.C. § 134(a) from the Examiner's decision to reject claims 41--44 and
47-55. 1 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Claims 45, 46, and 56---60 are indicated as allowable if rewritten in
independent form including all of the limitations of the base claim and any
intervening claims. Final Act. 10.
Appeal2014-003509
Application 12/323,579
CLAIMED SUBJECT MATTER
Independent claims 41 and 52 are pending. Claim 41, reproduced
below, illustrates the subject matter on appeal.
41. A filling arrangement configured to fill containers with a
product containing liquid and solid components, said filling
arrangement comprising:
a housing comprising a product channel and inlet and
discharge openings disposed at the ends of said product channel;
said housing being configured to connect to a product
reservoir arrangement at said inlet opening;
said discharge opening being configured to discharge
product into a container;
said filling arrangement comprising three operating states
compnsmg:
a first operating state in which flow of product is
stopped;
a second operating state in which flow of product is
permitted; and
a third operating state in which flow of the liquid
component of the product is permitted and solid
components of the product are retained.
Appeal Br. 22 (Claims App.).
REJECTIONS
I. Claims 41--44 and 47-51 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Clusserath (US 2005/0198921 Al; pub. Sept. 15,
2005). Final Act. 2; Ans. 3.
II. Claim 52 stands rejected under 35 U.S.C. § 102(b) as
anticipated by Haring (US 5,896,900; iss. Apr. 27, 1999). Final Act. 6; Ans.
7.
III. Claims 53-55 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Haring and Clusserath. Final Act. 8; Ans. 9.
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Appeal2014-003509
Application 12/323,579
Rejection I
ANALYSIS
Independent claim 41 recites, inter alia, three operating states,
including "a third operating state in which flow of the liquid component of
the product is permitted and solid components of the product are retained."
The Examiner finds that Clusserath discloses this limitation. Final Act. 2
(citing Clusserath, i-f 33 ("in a first opening position of the valve body 10, the
liquid valve has a reduced flow cross section for slow filling at the beginning
of the respective filling process"). According to the Examiner, in
Clusserath's third operating state, the valve's reduced flow cross section
may retain any solid components that are larger than the cross section. Id. at
2-3.
The Examiner and Appellants agree that Clusserath does not explicitly
disclose retaining solid components while flow of the liquid component of
the product is permitted. Appeal Br 11; Final Act. 10. Appellants argue that
this limitation must therefore be inherently (i.e., necessarily) present in
Clusserath to establish anticipation, and that the Examiner has not proven
such inherency. Appeal Br. 11.
The Examiner responds that "in which flow of the liquid component
of the product is permitted and solid components of the product are retained"
is a functional limitation, such that Clusserath need only be capable of
performing the claimed function. Ans. 14. The Examiner contends that
Clusserath discloses filling juice, and that juice may have pulp, which may
be retained by its reduced-flow area. Id.
Appellants reply that "[ t ]he fact that an apparatus may be capable of
performing a certain function ... cannot be used to establish inherency."
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Appeal2014-003509
Application 12/323,579
Reply Br. 10. We agree. Even if Clusserath only needs to be capable of
performing the claimed function of permitting liquid and retaining solids, it
must necessarily be capable of performing the claimed function. The
Examiner's finding that Clusserath may be capable of performing the
claimed function is therefore insufficient to establish inherency and thus
anticipation. Indeed, the Examiner impermissibly resorts to speculation in
addressing Clusserath's ability to retain solids, because Clusserath does not
address liquids having a solid component.
We, therefore, do not sustain the rejection of claim 41 as anticipated
by Clusserath. Claims 42--44 and 47-51 depend from claim 41. We,
therefore, do not sustain Rejection I.
Rejection II
Independent claim 52 is rejected over Haring, and recites a gas cutoff
element "disposed in said product channel and ... configured to retain liquid
product component ... to block the flow of gas" therethrough; and "an
actuating element ... operatively connected to said gas cutoff element and
... configured to move said gas cutoff element between a gas-blocking
position and a non-gas-blocking position."
The Examiner finds that Haring discloses, inter alia, a gas cutoff
element 7 disposed in a product channel 5 and configured to retain liquid
product to block the flow of gas through the gas cutoff element 7 and into
the product channel 5, and an actuating element 11 configured to move the
gas cutoff element 7 between a gas-blocking position and a non-gas-
blocking position. Final Act. 7. The Examiner also contends that the gas
cutoff element additionally includes a portion of Haring' s valve block
(housing) 4. Ans. 13. The Examiner further explains that Haring's valve
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Appeal2014-003509
Application 12/323,579
block 4 comprises a left portion, a middle portion, and a right portion, with
the middle portion comprising a product channel 5, and the left portion being
part of the gas cutoff element. Id.
Appellants reply that, even if the Examiner's findings regarding
Hasing's three-part valve block are correct, Haring does not disclose a gas
cutoff element that meets the claim limitations. Reply Br. 7-8. The claimed
"gas cutoff element" must be disposed in the product channel and retain
liquid within itself. Id. at 8-9. The Examiner points to no element of
Haring that resides in a product channel and retains liquid within itself. Id.
Further, if Haring's product channel is defined to be the center portion (at 5)
of its housing, and the gas cutoff element is considered to include Haring' s
left housing portion (at 4) and its valve 7, then Haring's filter element 4, 7 is
not disposed within its product channel 5. Id. at 9.
We agree with Appellants. We first note that Haring is silent
regarding gas, except for a brief discussion of gas exchange during filling
and emptying its metering chamber. Haring 2:23-25. Even if we were to
assume that elements 4 and 7 of Haring are capable of performing a gas
cutoff function, they are not disposed within a product channel. We,
therefore, do not sustain Rejection II.
Rejection III
Claims 53-55 depend from claim 52. The Examiner does not find
that Clusserath cures the deficiency of Haring with respect to the claimed
cutoff valve. We, therefore, do not sustain Rejection III.
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Appeal2014-003509
Application 12/323,579
DECISION
We REVERSE the Examiner's rejection of claims 41--44 and 47-51
under 35 U.S.C. § 102(b) as anticipated by Clusserath.
We REVERSE the Examiner's rejection of claim 52 under 35
U.S.C. § 102(b) as anticipated by Haring.
We REVERSE the Examiner's rejection of claims 53-55 under 35
U.S.C. § 103(a) as unpatentable over Haring and Clusserath.
REVERSED
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