Ex Parte Yamane et al

Patent Trial and Appeal Board

Mar 6, 2014

10883700 (P.T.A.B. Mar. 6, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte YASUAKI YAMANE, HIDEO FUNAHASHI, and KOICHI MIYAKE
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Appeal 2013-003070
Application 10/883,700
Technology Center 1700
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Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
N. WHITNEY WILSON, Administrative Patent Judges.

WILSON, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 5 and 8-10. An oral hearing was held on February
27, 2014. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm-in-part.

CLAIMED SUBJECT MATTER
Appellants’ invention is directed to a system for kneading and
extruding a material. The system contains five principal components: (1) a
crusher to crush the material into coarse particles; (2) an extruder which
operates on the coarse particles; (3) a gear pump for receiving and
discharging material extruded from the extruder; (4) a “means for applying
resistance” (“resistance means”) to the extruded material and supply the
material to (5) a kneading and extruding apparatus. The claimed invention
recites that the resistance means is “disposed immediately in front of” the
kneading and extruding apparatus. Independent claim 5 is representative of
the claims on appeal and, as taken from the Claims Appendix, is set forth
below (emphasis added):

5. A system for kneading and extruding a material, comprising:
a crusher for crushing the material into coarse particles;
an extruder for conveying and extruding the material
crushed by the crusher;
a gear pump for receiving and discharging the material
extruded by the extruder;
a kneading and extruding apparatus; and
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means for applying a resistance to the material discharged
from the gear pump and supplying the material to the kneading and
extruding apparatus,
wherein the means for applying a resistance is disposed
immediately in front of the kneading and extruding apparatus such
that the material discharged from the gear pump is not substantially
cooled between the means for applying resistance and the kneading
and extruding apparatus.

The following rejections are appealed:
(1) Claims 5 and 8-10 under 35 U.S.C. § 112, first paragraph, for failing
to comply with the written description requirement because the limitations
“material discharged from the gear pump is not substantially cooled” (claim 5)
and “without the material discharged from the gear pump being substantially
cooled” (claim 8) are not described in the Specification as originally filed.
(2) Claims 5 and 8-10 under 35 U.S.C. § 112, second paragraph as
being indefinite because of the use of the term “substantially.”
(3) Claim 5 under 35 U.S.C. § 112, second paragraph as being
indefinite because the limitation “not substantially cooled between the
means for applying resistance and the kneading and extruding apparatus”
does not make clear what structure is required.
(4) Claims 5 and 8-10 under 35 U.S.C. § 102(e) as anticipated by
Galimberti, et al., U.S. Patent Publication No. 2006/0108706 A1, published
May 25, 2006 (“Galimberti”).

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ANALYSIS
With respect to Rejection (1), the written description rejection, the
Examiner correctly notes that the Specification does not explicitly describe
the “[not] substantially cooled” limitation (Ans. 5). In fact, neither the term
“temperature” nor the terms “cool”/”cooled”/”cooling” appear in the
Specification. Appellants implicitly acknowledge that the disputed claim
language does not explicitly appear in the Specification, but argue that the
limitations are “inherent from Fig. 5” (Br. 5), which is reproduced below
from Appellants brief (including Appellants’ annotations):

Fig. 5 schematically illustrates the structure between a gear pump and
a kneading and extruding apparatus according to the invention.

Appellants argue that because FIG. 5 depicts a system in which
resistance plate 25 directly abuts the side of the kneading and extruding
apparatus 2, material passing through resistance plate 25 will enter kneading
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and extruding apparatus 2 without being exposed to the ambient
environment (Br. 5). Therefore, according to Appellants, “the material
discharged from the gear pump to the kneading and extruding apparatus is
not cooled except for such minimal cooling as may occur at the closed,
abutting joint between the resistance plate and the extruding apparatus”
which means that the disputed limitations satisfy the requirements of § 112,
first paragraph (id.).
In order to satisfy the written description requirement of § 112, the
specification – including the drawings and the originally filed claims - must
allow a person of ordinary skill in the art to recognize that the inventor
invented what is claimed. In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir.
1989). The specification must reasonably convey to a person of ordinary
skill in the art that the inventor had possession as of the filing date of the
claimed subject matter. Ralston Purina Co. v. Far–Mar–Co, Inc., 772 F.2d
1570, 1575 (Fed. Cir. 1985); see also, Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1563 (Fed. Cir. 1991).
Dependent claims 9 and 10 specifically recite that the means for
applying a resistance “directly contact” (or “is directly contacting”) the
kneading and extruding apparatus. This is the arrangement as depicted in
FIG. 5, which is relied on by Appellants. However, claim 5 – from which
both claims 9 and 10 depend - does not require direct contact between the
resistance means and the kneading and extruding apparatus. Instead, claim 5
recites that the resistance means “is disposed immediately in front of the
kneading and extruding apparatus.” Therefore, the arguments made by
Appellants in support of their position that the phrase “not substantially
cooled” is described in the Specification (which are based on the
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embodiment shown in FIG. 5) are not persuasive,1 because if the resistance
means does not directly contact the kneading and extruding apparatus,
cooling of the material may occur. Moreover, even in the embodiment
shown in FIG. 5, Appellants have not proffered persuasive evidence to show
that no substantial cooling would occur.
Accordingly, based on this record, we find that Appellants have not
shown that the Examiner erred in finding that the Specification does not
meet the standards with respect to the limitation at issue.
With regards to Rejection (2), that the use of the term “substantially”
renders the claims indefinite, Appellants state that “one skilled in the art
would understand ‘substantially cooled’ to mean such minimal cooling as
may correspond to that occurring due to the direct passage of material
through a closed abutting joint” (Br. 5). However, Appellants have not
supported this statement with credible evidence2 sufficient to show that the
Examiner has erred in making this rejection, nor is it disputed that the
Specification provides no specific guidance as to the meaning of
“substantially”. Accordingly, we affirm this rejection.
Appellants did not address the third rejection under § 112 (Rejection
(4), above) either in their briefs or at the oral hearing. Accordingly, we will
affirm this rejection without further comment.

1 Appellants do not separately argue the § 112 rejections of each claim (see
Br. 4-6).
2 Appellants appear to point to FIG. 5 in support of their position, although
this reliance is not explicit (Br. 5-6). However, FIG. 5 (a) does not provide
any specifics with regard to possible temperature loss, and (b) is not, for the
reasons set forth above, fully representative of the invention set forth in
claims 5 and 8.
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With respect to Rejection (4), the anticipation rejection over
Galimberti, the Examiner finds that the embodiment shown in Galimberti’s
Fig. 5 discloses each of the elements of the claims (Ans. 6-9). In response,
Appellants argue that Galimberti does not disclose that “the means for
applying a resistance is disposed immediately in front of the kneading and
extruding apparatus.” The Examiner points to Galimberti’s FIG. 5 as
allegedly showing the resistance means disposed immediately in front of the
kneading and extruding apparatus (Ans. 11-12).
A prior art reference anticipates a patent claim under
35 U.S.C. § 102(b) if it discloses every claim limitation. See, e.g., In re
Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012) (citing Verizon Servs.
Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1336–37 (Fed. Cir. 2010)).
In this instance, the Examiner reliance on Galimberti’s FIG. 5 as showing
the resistance means being disposed immediately in front of the kneading
and extruding apparatus is misplaced. As noted by Appellants and
acknowledged by the Examiner, Galimberti’s FIGS. 3 and 4 explicitly show
a conveyor belt between the resistance means and the kneading and
extruding apparatus (Br. 11; Ans. 12). However, although Galimberti’s
FIG. 5 shows the same line which represents the conveyor belt between the
resistance means and the kneading and extruding apparatus in FIGS. 3 and 4,
Galimberti does not explicitly identify the line in FIG. 5 as a conveyor belt.
We agree with Appellants3 that the Specification, when viewed as a
whole, makes clear that FIG. 5 includes a conveyor belt between the
resistance means and the kneading and extruding apparatus. The Examiner’s
statement that no cooling is needed in the apparatus of Galimberti’s FIG. 5

3 Br. 12-13.
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because the extrudate in that embodiment is granulated4 is unsupported by
persuasive evidence.
Because the Examiner has not shown that Galimberti discloses every
claim limitation – in particular the limitation that the resistance means is
disposed immediately in front of the kneading and extruding apparatus – we
reverse the anticipation rejection.

CONCLUSION
(1) We AFFIRM the rejection of claims 5 and 8-10 under
35 U.S.C. § 112, first paragraph, for failing to comply with the written
description requirement.
(2) We AFFIRM the rejection of claims 5 and 8-10 under
35 U.S.C. § 112, second paragraph as being indefinite because of the use of
the term “substantially.”
(3) We AFFIRM the rejection of claim 5 under 35 U.S.C. § 112,
second paragraph as being indefinite.
(4) We REVERSE the rejection of claims 5 and 8-10 under
35 U.S.C. § 102(e) as anticipated by Galimberti.

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-IN-PART

4 Ans. 12.
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