Hoff, Vincent et al.

Patent Trials and Appeals Board

Apr 14, 2020

13982080 - (D) (P.T.A.B. Apr. 14, 2020)

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.
13/982,080 10/01/2013 Vincent Hoff 1001-347 3060
25215 7590 04/14/2020
The Dobrusin Law Firm P.C.
29 W. Lawrence Street, Ste. 210
SUITE 210
PONTIAC, MI 48342
EXAMINER
PROCTOR, CACHET I
ART UNIT PAPER NUMBER
1715
NOTIFICATION DATE DELIVERY MODE
04/14/2020 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):
dobrusin_PAIR@firsttofile.com
patmail@patentco.com
rmasquelier@patentco.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VINCENT HOFF and CHRISTOPHE EPP

Appeal 2019-004758
Application 13/982,080
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, MICHAEL P. COLAIANNI, and
N. WHITNEY WILSON, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1-6, 8-18, 20, 35, and 36. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as L&L
Products, Inc., via license from Zephyros, Inc. Appeal Br. 2.
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Appellant’s invention is directed to improvements in or relating to
methods of extrusion (Spec. 1:3-4; Claim 1).
Claim 1 is representative of the subject matter on appeal:
A process for the provision of thermally activatable materials on a
substrate comprising extruding the material onto the substrate via a nozzle
and extrusion die at a temperature below an activation temperature wherein
the material is fed to an extruder, the material is cooled within an initial zone
of a barrel of the extruder, heating the material to a temperature above a
melting point and below the activation temperature of the material in a
subsequent zone of the barrel of the extruder and extruding the molten
material onto the substrate where it bonds to the substrate and cools to
provide thermally activatable material on the substrate;
wherein a residence time of the material in the extruder is less than 10
minutes;
wherein the initial zone of the barrel of the extruder is cooled by
passing a cooling fluid around the initial zone of the barrel of the extruder
and a temperature of the fluid is controlled so that as it leaves the initial zone
of the barrel of the extruder its temperature is no greater than 15°C;
wherein there are three separate subsequent heating zones along the
barrel of the extruder and a separate heating system is provided for the
nozzle and the extrusion die;
wherein a gap is located between an end of a screw located within the
barrel of the extruder and an opening of the extrusion die; and
wherein the gap is filled with the material immediately prior to
commencing extrusion, and the material is sucked back into the gap when
extrusion is terminated.

Appellant appeals the following rejections:
1. Claims 1, 3-6, 8-12, 35, and 36 are rejected under 35 U.S.C. §
103 as unpatentable over Hable (EP 1,582,268 A1, published
October 5, 2005) in view of Maillefer (U.S. 4,569,595, issued
February 11, 1986), Statz (U.S. 5,889,114, issued March 30,
1999), Lande (U.S. 2003/0140671 A1, published July 31, 2003),
and OU (U.S. 2012/0082784 A1, published April 5, 2012).
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2. Claim 2 is rejected under 35 U.S.C. § 103 as unpatentable over
Hable in view of Maillefer, Statz, Lande, OU and Frankland (Jim
Frankland, How Much L/D Do You Really Need?: Plastics
Technology, 1–2 (December 2011).
3. Claim 9 is rejected under 35 U.S.C. § 103 as unpatentable over
Hable in view of Maillefer, Statz, OU, and Franklin.
4. Claims 10 and 11 are rejected under 35 U.S.C. § 103 as
unpatentable over Hable in view of Maillefer, Statz, OU and
Greuel (U.S. 5,922,425, issued July 13, 1999).
5. Claims 8 and 12 are rejected under 35 U.S.C. § 103 as
unpatentable over Hable in view of Maillefer, Statz, OU and
Schulz (U.S. 4,032,501, issued June 28, 1977).
6. Claims 13, 14, 18, and 20 are rejected under 35 U.S.C. § 103 as
unpatentable over Hable in view of Maillefer, Statz, OU, and
Coupland (U.S. 3,526,929, issued Sept. 8, 1970).
7. Claims 15-17 are rejected under 35 U.S.C. § 103 as unpatentable
over Hable in view of Maillefer, Statz, OU, and Ligon (U.S.
5,358,397, issued October 25, 1994).
With regard to rejection (1), Appellant’s arguments focus on
independent claims 1 and 9 only (Appeal Br. 17-28, 30, 35). Although
Appellant argues that claim 9 should be considered separately, Appellant
relies on the same arguments made with regard to claim 1 (Appeal Br.
14, 30). Any claims not argued separately will stand or fall with claim 1.
Regarding rejections (2) to (7), Appellant relies on arguments made
regarding claim 1 and merely states either that the Examiner provided
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insufficient fact finding with respect to the dependent claims, or the
additional reference supplied does not cure the argued deficiencies with
the claims (Appeal Br. 29-35). Although Appellant argues that the claims
do not stand or fall together, no substantive argument has been provided
with respect to any claim. (Appeal Br. 14, 29-35). See, In re Lovin, 652
F.3d 1349, 1356 (Fed. Cir. 2011) (“Although Lovin properly included
separate subheadings for each claim in his appeal brief as required by the
rule, his arguments under those subheadings merely “point[ed] out what
the claims recite [d] and then assert[ed] that there [was] no corresponding
combination of steps taught or suggested in the applied references.”). Our
determination made with regard to rejection (1) is dispositive for rejections
(2) to (7) because Appellant relies upon the same or similar arguments
relied upon for rejection (1). .

FINDINGS OF FACT & ANALYSIS
The Examiner’s findings and conclusions regarding the § 103
rejection of claim 1 over Hable in view of Maillefer, Statz, Lande and OU
are located on pages 3 to 6 of the Final Action.
Appellant argues that the combined teachings of Hable, Statz,
Maillefer, Lande and OU fail to teach the following claim limitations: (1) the
material is cooled within an initial zone of a barrel of the extruder, (2) a
residence time of the material in the extruder is less than 10 minutes, (3) the
initial zone of the barrel of the extruder is cooled by passing a cooling fluid
around the initial zone of the barrel of the extruder, (4) a temperature of the
cooling fluid is controlled so that the material leaves the initial zone of the
extruder at a temperature of 15°C, (5) a gap is located between an end of a
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screw located within the barrel of the extruder and an opening of the
extrusion die, and (6) the gap is filled with the material immediately prior to
commencing extrusion and the material is sucked back into the gap when
extrusion is terminated (Appeal Br. 17).
With regard to limitations (1), (3) and (4) argued above, Appellant
contends that Hable merely mentions an extruder as an exemplary applicator
and teaches other alternatives such as a pump applicator (Appeal Br. 18).
Appellant argues that Hable does not disclose any further details regarding
the extruder (Appeal Br. 18). Appellant contends that one of ordinary skill
in the art would not have sought Hable’s teachings to address the problem of
arising from extruding thermally activatable material (Appeal Br. 18).
Appellant contends that a person of ordinary skill in the art would have been
unable to combine Maillefer’s teaching to form an extruder having a cooler
feed section with a heated plasticizing section with Hable’s extruder because
Hable provides no teachings regarding the extruder structure or functionality
(Appeal Br. 19). Appellant contends that it would not have been possible
for one skilled in the art to modify Hable’s variety of applicators to have
Maillefer’s cooling section (Appeal Br. 19).
Contrary to Appellant’s arguments, the Examiner finds that Hable
teaches using an extruder as the applicator to apply activatable material to a
substrate and even cites to the original application which was eventually
published as the Landes reference used in the rejection, as a suitable extruder
(Ans. 13; Hable ¶ 8). Hable further describes different extruders that may be
used including single screw extruders, twin-screw extruders, reciprocating
extruders, or combinations thereof (Hable ¶ 8). Maillefer teaches an
extruder that includes a screw and cylinder (e.g., a single screw extruder)
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(col. 2, ll. 20-35). Maillefer’s cylinder 1 and screw 4 is separated into a feed
zone and a plasticizing zone (col. 2, ll. 23-38). The feed zone part of the
cylinder 1 includes ducts 6 in the wall of the cylinder to circulate cooling
fluid (col. 2, ll. 27-30). The cooled feed zone keeps the feed cold and
prevents it from melting to aid in pushing pellets toward the plasticizing
section of the extruder cylinder (col. 2, ll. 57-68, col. 3, ll. 1-8). Hable’s and
Maillefer’s extruders are similar in structure such that the Examiner
correctly concludes that it would have been obvious to modify Hable’s
process to use Maillefer’s two-zone extruder to prevent premature heating of
the material (Final Act. 4). Appellant has not shown error in the
Examiner’s implicit finding that such a modification of Hable’s process
would have been beyond the skill of the ordinary artisan.
We are unpersuaded by Appellant’s argument that there is no
evidence that Hable’s process would have benefited from using an extruder
that prevents premature heating of the material (Appeal Br. 19, 24).
Maillefer teaches the benefit of using the extruder: to aid in pushing the
material through the extruder while avoiding premature heating of the pellets
(col. 2, ll. 57-68). Maillefer would have provided a reason for the
modification proposed by the Examiner. Appellant argues that the
Examiner has not provided reasoning or evidence why Hable modified by
Maillefer solves the same problem of a premature reaction of the material
(Appeal Br. 25). Appellant’s argument is not persuasive because the
Examiner’s reason for the modification as noted above does not need to be
the same as Appellant’s reason. In re Kahn, 441 F.3d 977, 987 (Fed. Cir.
2006) (motivation question arises in the context of the general problem
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confronting the inventor rather than the specific problem solved by the
invention.).
Regarding limitations (3) and (4) argued by Appellant, Appellant
contends that the Examiner has only provided evidence that Maillefer
teaches the temperature range for the cooling fluid is a result effective
variable for preventing premature heating that result in plastic material
overheating and reaching its thermal limit (Appeal Br. 20). Appellant argues
that the Examiner improperly concluded that the result effective variable of
cooling time in Maillefer addresses the issue of premature activation,
wherein Maillefer is not concerned with activating the material (Appeal Br.
20). Appellant contends that Maillefer does not teach that the temperature of
the coolant exiting the feed zone is 15°C or less (Appeal Br. 21).
Maillefer teaches that the feed zone is cooled using fluid passed
through cooling ducts 6 (col. 2, ll. 23-30). Maillefer teaches that the cooling
in the feed zone is “intensive” to provide a forced flow of material (col. 3, ll.
6-8). Maillefer teaches that function of the cooled feed zone is to push along
in the extruder cylinder the plastic material in the form of pellets or powder
(col. 2, ll. 57-59). Maillefer teaches that the plastic material must be kept
from melting as this would destroy the grip in the cylinder and desired
movement of the pellets through the feed zone (col. 2, l. 68 to col. 3, l. 2).
The Examiner reasonably finds that based on Maillefer’s teachings that the
temperature at which the material needs to be cooled would have been
dependent on the melting characteristics of the particular material being
extruded (Final Act. 5). The Examiner finds Maillefer’s teachings establish
that cooling fluid temperature is a result effective variable (Final Act. 5).
The Examiner concludes that it would have been obvious to use the claimed
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temperature range for the cooling fluid (i.e., no greater than 15°C) through
routine experimentation to ensure proper control of the pellet temperature
and to prevent premature heating (Final Act. 5). The Examiner finds that
Appellant does not provide any showing of criticality in temperature range
of no greater than 15°C (Final Act. 5).
Appellant agrees that Maillefer teaches that the cooling fluid
temperature is a result effective variable for preventing premature heating of
the material (Appeal Br. 20). Appellant’s argument that Maillefer does not
recognize controlling the cooling temperature to prevent overheating of
activation material is not persuasive (Appeal Br. 20). The Examiner finds
and Appellant does not contest that overheating a thermally activatable
material would result in premature activation of the material (Ans. 14; No
Reply Brief filed). The goal of Maillefer is to avoid overheating and
degrading of any material treated in an extruder (col. 1, ll. 26-35, 52-54).
Therefore, we agree that based upon the combined teachings of the
references, using Maillefer’s extruder to process Hable’s activatable material
would have resulted in one of ordinary skill in the art maintaining the
extruder temperature below the activation temperature of Hable’s material.
Hable teaches to apply the material using the extruder at a temperature
below the activation temperature of the material (¶ 46; Final Act. 4). The
temperature of the coolant in the feed zone of the extruder needed to
maintain that inactive form of Hable’s material would have been readily
determined by the ordinary skilled artisan. KSR Int’l Co. v. Teleflex, Inc.,
550 US 398, (2007). (“A person of ordinary skill in person is also a person
of ordinary creativity, not an automaton.”). The temperature of the coolant
leaving the feed section recited in claim 1 (i.e., no greater than 15°C) would
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have been a routine optimization. Appellant provides no showing of
critically for the claimed exit coolant temperature range.
With regard to argued limitation (2), Appellant argues that Statz fails
to disclose a thermally activatable material being processed for disposition
onto a substrate having a residence time in the extruder of less than 10
minutes (Appeal Br. 10). Appellant contends that the Examiner provides no
reasoning or evidence why one of ordinary skill in the art would have
referred to Statz to modify Hable and Maillefer (Appeal Br. 28). Appellant
contends that neither Hable nor Maillefer discuss degradation or crumbling
of the extruded material (Appeal Br. 25). Appellant contends that the
Examiner has not shown how the ordinarily skilled artisan would have been
motivated to carry out integration of the material composition of Statz with
the device of Hable and Maillefer (Appeal Br. 28).
The Examiner relies on Statz, however, to teach that the residence
time in an extruder affects the integrity of the material being extruded (Final
Act. 4; Ans. 14). Based on this teaching, the Examiner determines that the
residence time in an extruder is a result effective variable (Final Act. 4).
The Examiner concludes that in light of Statz’s teaching and in combination
with “the current state of the art (current residence times known to be used
for such materials)”, it would have been obvious to use the “claimed
residence time [(i.e., less than 10 minutes)] through routine optimization to
preserve the integrity of the material during the extrusion process especially
absent any evidence of criticality of using the time of less than 10 minutes.”
(Ans. 14). In other words, the Examiner is not suggesting to combine
Statz’s material composition into Hable’s process. Rather, the Examiner
relies on Statz as teaching that long residence times in an extruder may
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degrade the material being extruded, such that the residence time is a result
effective variable. Maillefer teaches that excessive heating in the extruder
may degrade the plastic material being extruded (col. 1, ll. 26-30).
Maillefer’s stated objective is to provide an extruder having better
performance characteristics, “regardless of the material to be treated.” (col.
1, ll. 52-54). In other words, Maillefer’s teachings directed to a two zone
extruder with a cooled feeding zone provides improved processing and
prevents overheating of the material being processed without limit on the
material being processed. Stated differently, Maillefer does not exclude
using activatable material as in Hable as the material being processed.
Appellant argues that undue experimentation would have been
required to arrive at the residence time recited in the claims (i.e., less than 10
minutes) (Appeal Br. 27). Appellant contends that the present invention
modifies residence time by adjusting multiple variables (i.e., cooling
temperatures, heating temperature, heating rate, operation rate (RPM),
compression ratio, and length to diameter ratio) for thermally activatable
materials, which is an abundance of variables that would require undue
experimentation to arrive at the residence time in the claim (Appeal Br. 27).
Appellant’s list of variable, however, include typical variables used in
extruder design. Indeed, Maillefer teaches an extruder having a cooling
section and a heating section with a feed channel depth that varies in the
downstream direction (col. 2, ll. 20-53). Maillefer teaches that the feed
section has grooves in the walls of the cylinder and cooling ducts 6 (col. 2,
ll. 23-34). Maillefer teaches that the feed zone is cooled to keep the feed
material below its melting point and the degree of cooling is regulated so
that the plastic powder or pellets are forced downstream with only slight
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heating (col. 3, ll. 1-8). Maillefer teaches that during extrusion at a certain
speed of screw rotation the plastic material being processed in the extruder
may become too hot and may be damaged due to overheating (col. 1, ll. 26-
30). Maillefer recognizes many of the same variables used by Appellant
(e.g., cooling temperatures, operation rate, compression ratio, length to
diameter ratio). Id. Maillefer teaches that the operating procedure described
therein (i.e., cooling the feed section and having separate plasticizing
section) “makes it possible to adapt a given extruder optimally to greatly
varying working conditions.” (col. 3, ll. 41-43, 47-49). Appellant has not
shown that undue experimentation would have been required to modify
Hable’s process with Maillefer’s extruder in light of Statz’s teaching such
that a residence time of less than 10 minutes is used.
Regarding limitations (5)2 and (6)3 argued, Appellant argues that the
Examiner has not established that OU teaches a gap located between an end
of a screw located within the barrel of an extruder and an opening of the
extrusion die, and the gap is filled with the material immediately prior to
commencing extrusion, and the material is sucked back into the gap when
extrusion is terminated (Appeal Br. 22).
The Examiner finds that Hable teaches intermittent extrusion of the
activatable material onto a substrate (Final Act. 6). The Examiner finds that
Hable fails to teach filling a gap between an extruder screw and the substrate

2 Argued limitation (5): a gap is located between an end of a screw located
within the barrel of the extruder and an opening of the extrusion die. (Appeal
Br. 17)
3 Argued limitation (6): the gap is filled with the material immediately prior
to commencing extrusion and the material is sucked back into the gap when
extrusion is terminated. (Appeal Br. 17).
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prior to extruding and sucking the material back into the gap after extrusion
(Final Act. 6). The Examiner finds OU teaches extruding hot melt adhesive
where the material is applied intermittently and using a vacuum suction
force to reverse the thermoplastic material (Final Act. 6). The Examiner
concludes that it would have been obvious to modify the process of Hable to
include the suction reversal of the screw to provide intermittent application
(Final Act. 6).
Contrary to Appellant’s arguments, the Examiner finds that the
combined teachings of Hable, Maillefer, Statz, and Lande disclose using an
extruder having a gap between the end of the screw and the opening of the
extrusion die (Ans. 15). The Examiner finds that Lande in Figure 2 shows
such an extruder arrangement where there is a gap between the extruder
screw and the opening of the extrusion die. Id. The Examiner finds that the
combined teachings of OU with Hable, Maillefer, Statz and Lande would
have taught the claimed intermittent extrusion followed by sucking the
material using a vacuum to return the extruded material into the gap between
the screw and the die in order to prevent dripping or adding undesired
material to the substrate (Ans. 15).
Appellant’s argument directed to OU alone does not address the
Examiner’s rejection based upon the combined teachings of the references.
No reply brief was filed by Appellant to respond to the Examiner’s position.
In other words, Appellant’s argument improperly attacks the references
individually, instead of addressing what the combined teachings would have
suggested to the ordinarily skilled artisan. In re Keller, 642 F.2d 413, 425
(CCPA 1981). We find that Lande teaches that the applicator 20 may be
programmed to pull the flowable material within the applicator after each
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application such that the excess material is removed (¶ 76). Lande teaches
that the controller may instruct the screw to reverse direction so that the
flowable material is drawn back into the extruder 20 after each application (¶
76). In other words, the combined teachings of the art would have suggested
the argued limitations.
Appellant argues that the Examiner engaged in impermissible
hindsight in determining that the combined teachings of Hable, Maillefer,
Statz, Lande and OU would have suggested the claimed invention (Appeal
Br. 35-37). For all the reasons discussed above, we disagree. The Examiner
relies on the teachings of references, not impermissible hindsight.
On this record, we affirm all the § 103 rejections of the Examiner.

CONCLUSION
In summary:
Claims
Rejected
Basis Prior Art Affirmed Reversed
1, 3-6, 8-12, 35,
36
§ 103 Hable,
Maillefer,
Statz,
Lande, OU
1, 3-6, 8-
12, 35,
36

2 § 103 Hable,
Maillefer,
Statz,
Lande, OU,
Franklin
2
9 § 103 Hable,
Maillefer,
Statz, OU,
Franklin
9
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Claims
Rejected
Basis Prior Art Affirmed Reversed
10, 11 § 103 Hable,
Maillefer,
Statz, OU,
Greuel
10, 11
8, 12 § 103 Hable,
Maillefer,
Statz, OU,
Schulz
8, 12
13, 14, 18, 20 § 103 Hable,
Maillefer,
Statz, OU,
Coupland
13, 14,
18, 20

15-17 § 103 Hable,
Maillefer,
Statz, OU,
Ligon
15-17
Overall
Outcome
1-6, 8-18,
20, 35,
36

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