13087237 (P.T.A.B. Mar. 15, 2016)

Ex Parte Weismantel et al

Patent Trial and Appeal BoardMar 15, 2016

13087237 (P.T.A.B. Mar. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/087,237 04/14/2011 4743 7590 03/17/2016 MARSHALL, GERSTEIN & BORUN LLP 233 SOUTH WACKER DRIVE 6300 WILLIS TOWER CHICAGO, IL 60606-6357 FIRST NAMED INVENTOR Matthias Weismantel 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. 29827 /43709A 5800 EXAMINER NGUYEN, HUY TRAM ART UNIT PAPER NUMBER 1774 NOTIFICATION DATE DELIVERY MODE 03/17/2016 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): mgbdocket@marshallip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MATTHIAS WEISMANTEL, MICHAEL DE MARCO, ANDREAS DAISS, DOMINICUS VAN ESBROECK, KARL J. POSSEMIERS, RONNY DE KAEY, and IEO VAN MIERT Appeal2014-007384 Application 13/087,237 Technology Center 1700 Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and BRIAND. RANGE, Administrative Patent Judges. RANGE, Administrative Patent Judge. DECISION ON APPEAL Appeal2014-007384 Application 13/087,237 SUMMARY Appellants appeal under 35 U.S.C. Â§ 134(a) from a rejection of claims 11-15. We have jurisdiction. 35 U.S.C. Â§ 6(b). We AFFIRM. STATEMENT OF CASE Appellants 1 describe the present invention as relating "to a process for continuously preparing water-absorbing polymer particles .... " Spec. 1 :5- 6. The particles could be used, for example, in diapers. Id. at 1 :23-25. Claims 1-10 have been cancelled. Appeal Br. A-1. Claim 11, reproduced below, is the only independent claim on appeal and is illustrative of the claimed subject matter: Id. 11. An apparatus for continuous polymerization, comprising i) a polymerization reactor, ii) a first inlet including a first liquid to the polymerization reactor i), iii) at least one inlet including a second liquid into the first inlet ii), iv) a second inlet including a third liquid to the polymerization reactor i), and v) a device for comminuting a polymer gel, where an extended axis of the first inlet ii) intersects an extended axis of the second inlet iv) in the polymerization reactor i). REFERENCE The Examiner relied upon the prior art below when rejecting the claims on appeal: 1 According to the Appellants, the real party in interest is BASF SE. Appeal Br. 3. 2 Appeal2014-007384 Application 13/087,237 N akaki et al. (hereinafter, "N akaki ") us 4,656,232 REJECTIONS The Examiner made the following rejections: Apr. 7, 1987 Rejection 1. The Examiner rejected claims 11, 12, and 15 under 35 U.S.C. Â§ 102(b) as anticipated by Nakaki. Rejection 2. The Examiner rejected claims 13 and 14 under 35 U.S.C. Â§ 103 as unpatentable over Nakaki. ANALYSIS A. The Examiner's Rejection of Claims 11, 12, and 15 as Anticipated by Nakaki Appellants do not separately argue the patentability of claim 12. Claim 12 thus stands or falls with claim 11. 37 C.F.R. Â§ 41.37(c)(l)(iv) (2013). We address Appellants distinct arguments with respect to claim 15 separately. We agree with the Examiner that N akaki anticipates claim 11. Final Act 3. The Examiner explains how Nakaki teaches each structural element of claim 11, and we adopt these findings of fact. Final Act. 3--4. Appellants argue that the Examiner erred because (1) Nakaki does not disclose the extended axis of the first inlet intersecting an extended axis of the second inlet in the polymerization reactor, (2) Nakaki does not disclose a first inlet, at least one inlet, and a second inlet, and (3) Nakaki does not teach the mixing of a first and second liquid and mixing of a third liquid within a reactor. As a threshold matter, we note that all three of Appellants' arguments rely on an unduly narrow scope for claim 11. Claim 11 is broader than it 3 Appeal2014-007384 Application 13/087,237 may appear on first blush because many of the recited features are functional rather than structural. For example, claim 11 recites "a first inlet including a first liquid to the polymerization reactor i)." The first three words-"a first inlet"-are structural. The remainder of this recitation-"including a first liquid to the polymerization reactor i)"-refers to the first inlet's functional ability to transport a first liquid to the polymerization reactor. While a patent applicant may recite features structurally or functionally, "choosing to define an element functionally, i.e., by what it does, carries with it a risk." In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). In particular, where there is reason to believe that prior art structure is inherently capable of performing the claimed function, the burden shifts to the applicant to show that the claimed function patentably distinguishes the claimed structure from the prior art structure. See id.; In re Hallman, 655 F.2d 212, 215 (CCPA 1981) (affirming rejections where applicant failed to show that prior art structures were not inherently capable of functioning as claimed invention). Below, we address each of Appellants' three arguments with this legal framework in mind. First, to address Appellants' argument that Nakaki does not disclose inlet axes intersecting in the polymerization reactor, the Examiner annotates Nakaki's Figure 1 to show the intersecting inlet axes. The Examiner's illustration of axes superimposed on Figure 1 ofNakaki is reproduced below: 4 Appeal2014-007384 Application 13/087,237 Fl G. i ~Â· ~ .: 44 ~' ~ ~: tt '*'~"'''''''""""'"'''"~*'""' roÂ·~Â·!,,~",~JsÂ·Â·Â·Â·Â·Â· k i M~vHt ~ .Â·. N tÂ·,~:= N :~:i ~:- ~:: ~Â· .Â· & .. t ~. :: ~'\.; ~~.~ :::: . ~ Â·.~. \Kf"M This illustration depicts Nakaki's aspirator (Nakaki 2:48, 49) as annotated with the Examiner's hand-drawn lines showing intersecting inlet axes. The Examiner's illustration demonstrates that the extended axes of inlets 14 and 20 or 22 cross inside \vhat the Examiner calls "reactor (18)." ii ..ns. 5; see also Adv. Act. We agree with the Examiner's finding that these inlet axes cross within the area marked 18 in Figure 1. Nakaki, however, refers to 18 as a "diffuser part" rather than as a "reactor." Nakaki 4:8; Reply Br. 2. Thus, we must determine whether or not diffuser part 18 meets the structural requirements of a "polymerization reactor." Resolution of this issue requires construction of the term "polymerization reactor" as it appears in claim 11. It is well established that "the PTO must give claims their broadest reasonable construction consistent with the specification .... Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation." In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 5 Appeal2014-007384 Application 13/087,237 (Fed. Cir. 2007). "[A]s applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee." Id. Neither Appellants nor the Examiner explicitly propose any construction for "polymerization reactor." Ordinary dictionaries teach, for example, that a "reactor" may be "a vat for an industrial chemical reaction." Webster's Ninth New College Dictionary 980 (Merriam-Webster Inc., 2002). This dictionary definition, however, is unduly narrow in the context of the Specification which teaches, for example, that the reaction may preferably be carried out on a "belt reactor." Spec. 9:3--4. The Specification also teaches that a polymerization reactor could be, for example a kneader or tubular reactor. Id. at 2: 15-17, 8:31. Thus, the Specification avoids tying the term "polymerization reactor" to a vat or any other specific structure. Instead, the Specification indicates that the term "reactor" is more functional than structural. In light of the Specification's broad teachings, we construe the "polymerization reactor" of claim 11 as being any apparatus capable of accommodating a polymerization reaction. Based on this construction, we find that N akaki' s diffuser part 18 is not structurally distinguishable from a polymerization reactor. The diffuser part is an apparatus inherently capable of accommodating a polymerization reaction. If, for example, polymerization precursors were mixed in diffuser part 18, polymerization could occur within diffuser part 18. To be clear, Nakaki does not actually teach such a scenario. Reply Br. 2. This, however, does not negate that the structure of diffuser part 18's capability. See In re Schreiber, 128 F.3d at 1476-1480 (affirming Board's conclusion that claims directed at popcorn dispenser were anticipated in view of dispenser designed to dispense liquids such as oil). 6 Appeal2014-007384 Application 13/087,237 Indeed, Appellants do not appear to dispute that it is possible for polymerization to occur within diffuser part 18. Rather, Appellants argue that if such polymerization did occur, Nakaki's diffuser would become "blocked and useless" and that this result negates Nakaki as potential prior art. Reply Br. 3. We do not agree with Appellants' position regarding Nakaki becoming "blocked and useless" because it is based solely on attorney argument. Cf Estee Lauder Inc. v. L 'Orea!, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997) ("arguments of counsel cannot take the place of evidence lacking in the record.") (internal quotes and citation omitted). Moreover, flows into Nakaki's diffuser part 18 could be managed such that only a de minimus amount of polymerization occurs in diffuser part 18. In such a scenario, diffuser part 18 would still be a "polymerization reactor," but no blockage would be expected. Thus, we find the Examiner properly found that Nakaki discloses the claimed element "where an extended axis of the first inlet ii) intersects an extended axis of the second inlet iv) in the polymerization reactor i). Second, Appellants argue that Nakaki does not disclose "a first inlet," "at least one inlet," and "a second inlet." The Examiner identifies Nakaki's (1) Figure 1, numeral 10, as corresponding to "a first inlet," (2) Figure 1, numeral 14 as corresponding to the "at least one inlet," and (3) Figure 1, numeral 20, as corresponding to "a second inlet." Final Act. 3, 4; Ans. 4---6. Appellants have not identified a reversible error in these findings. Appellants argue that fluid inlet 34 and nozzle 32 ofNakaki's Figure 2 cannot be considered "separate inlets." Appeal Br. 15, 16. This argument is off-point because the Examiner relies on Figure 1 rather than Figure 2 in identifying the three recited inlets. Final Act. 3, 4; Ans. 4, 5. 7 Appeal2014-007384 Application 13/087,237 Appellants also misapprehend claim scope when challenging the Examiner's finding that fluid inlet 10 is capable of containing two different liquids. Appeal Br. 26. Structurally, inlet 10 is a capable of transferring one liquid at one point in time and transferring a second liquid at a second time. Third, Appellants argue that Nakaki does not disclose three inlets each transferring a liquid. Appeal Br. 17, 18. Appellants state, for example, that Nakaki "merely discloses one liquid fluid and one gaseous fluid, with no teaching or suggestion of two liquid fluids." Id. at 26. Appellants are correct that N akaki describes, for example, operation where inlet 22 transports an inert gas. Nakaki 5:50-60. Based on the description of the structure of the apparatus ofNakaki, however, we find that each Nakaki inlet identified by the Examiner is inherently capable of transporting a liquid. Because the "including a ... liquid" limitations are written in a functional manner, this is all that is required to establish that Nakaki meets these elements sufficiently for a prima facie case of anticipation. Cf In re Schreiber, 128 F.3d at 1478. Thus, the burden shifts to Appellants to show that Nakaki does not inherently possess inlets capable of transporting the three liquids. Id. Appellants do not meet that burden here. We therefore sustain the Examiner's rejection of claims 11 and 12. Appellants also argue claim 15 separately.2 Appeal Br. 23. Claim 15 requires that "the angle between first inlet ii) and inlet iv) in flow direction is less than 90Q." Appeal Br. A-1. Appellants argue that inlets identified by the Examiner intersect at a 90Q angle within the diffuser. Appeal Br. 23. We 2 The Examiner rejected claim 15 as anticipated by Nakaki. Final Act. 4. Appellants' separate argument regarding claim 15 is provided under headings concerning obviousness. Appeal Br. 21. Nonetheless, we treat Appellants' argument as responsive to the Examiner's anticipation rejection. 8 Appeal2014-007384 Application 13/087,237 disagree. As the Examiner explains and illustrates via the marked up version ofNakaki Figure 1 reproduced above, the axis of the inlet leaving diffuser 20 I feed inlet 22 and axis of monomer fluid passage chamber 14 is less than 90 degrees. Ans. 7-8. Moreover, Nakaki also teaches the advantages of such an angle in its text. Nakaki 3:50-65 ("If the two fluids run oppositely to each other there ensues a highly undesirable possibility that the two fluids will be heavily splashed against the wall of the pipe and the monomer so deposited thereon will be polymerized in situ"). Thus, we affirm the Examiner's rejection of Claim 15. B. The Examiner's Rejection of Claims 13 and 14 as obvious over Nakaki As explained below, we do not find Appellants' arguments concerning obviousness persuasive. Appellants first present three general arguments- arguments unrelated to the recitations of claim 13 or claim 14-----opposing the Examiner's obviousness rejection based on Nakaki. First, Appellants argue that Nakaki does not make claims 13 or 14 obvious because Nakaki does not teach all elements. Appeal Br. 21. Appellants do not identify what elements are missing but instead appear to rely upon the arguments regarding anticipation discussed above. Thus, we disagree with Appellants' position for the reasons discussed above. Second and third, Appellants argue that there is no motivation to modify Nakaki to reach missing elements and that there is no reasonable expectation of benefit to incentivize modification ofNakaki. Id. Again, Appellants do not identify any missing elements beyond those addressed above. Furthermore, there is no need to substitute Nakaki's operation with gas for operation with a liquid because Nakaki's inlets are structurally capable of transporting liquid. For the reasons explained above, we find that 9 Appeal2014-007384 Application 13/087,237 Nakaki teaches the elements of claim 11 and no motivation or incentive to modify Nakaki is necessary. Aside from these general arguments, Appellants make no arguments specific to claim 14. Thus, we sustain the Examiner's rejection of claim 14. Appellants separately argue the patentability of claim 13 based on its language. Claim 13 requires "a length of the first inlet ii) between the polymerization reactor i) and the inlet iii) is from 0.01 to 2m." We agree with the Examiner that a person of ordinary skill could arrive at the claimed range through routine experimentation with reasonable expectation of success. Final Act. 6. The inlet has a length. Although Nakaki is using the apparatus in a different way than Appellants, given the scope of the range ( 1 centimeter to 2 meters), the ordinary artisan would have arrived at a length within that range when constructing the aspirator is reasonable. Appellants present no evidence of secondary considerations that might impact an obvious analysis. In light of the considerations above, we agree with the Examiner's conclusion that the claim 13 's invention as a whole would have been obvious to one of ordinary skill in the art at the time the invention was made. Ans. 7. Thus, we sustain the Examiner's rejection of claim 13. DECISION For the above reasons, we affirm the Examiner's decision. In particular, we affirm with respect to ( 1) the Examiner's rejection of claims 11, 12, and 15 under 35 U.S.C. Â§ 102(b) as anticipated by Nakaki and (2) the Examiner's rejection of claims 13 and 14 under 35 U.S.C. Â§ 103 as unpatentable over Nakaki. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). 10 Appeal2014-007384 Application 13/087,237 AFFIRMED 11 Application/Control No. Applicant(s)/Patent Under Reexamination 13/087,237 Matthias Weismantel et al. Notice of References Cited Examiner Art Un it -4"7f"\f"\ n ..... ,.,. ..... -I ..... .i: -I I /UU od!::jO:: I UI I Huy-Tram Nguyen U.S. PATENT DOCUMENTS DOCUMENT * SOURCE** DOCUMENT NO. DATE NAME CLASS SUBCLASS APS OTHER D A D D D B D D D c D D D D D D D E D D D F D D D G D D D H D D D I D D D J D D D K D D D L D D D M D D FOREIGN PATENT DOCUMENTS DOCUMENT * SOURCE** DOCUMENT NO. DATE COUNTRY NAME CLASS SUBCLASS APS OTHER D N D D D 0 D D D p D D D Q D D D R D D D s D D D T D D NON-PATENT DOCUMENTS DOCUMENT * DOCUMENT (Including Author, Title Date, Source, and Pertinent Pages) SOURCE** APS OTHER D u WEBSTER'S NINTH NEW COLLEGE DICTIONARY 980 (Merriam-Webster Inc., 2002). D D D v D w D x *A copy of this reference 1s not being furnished with this Office action. (See Manual of Patent Exam1n1ng Procedure, Section 707.05(a).) **APS encompasses any electronic search i.e. text, image, and Commercial Databases. U.S. Patent and Trademark Office PT0-892 (Rev. 03-98Notice of References Cited D D D D D D Part of Paper No. 16