Ex Parte Holdsworth

Patent Trial and Appeal Board

Jun 19, 2017

12680909 (P.T.A.B. Jun. 19, 2017)

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.
12/680,909 03/31/2010 Peter Holdsworth 32471/23601 9371
4743 7590 06/21/2017
MARSHALL, GERSTEIN & BORUN LLP
233 SOUTH WACKER DRIVE
6300 WILLIS TOWER
CHICAGO, IL 60606-6357
EXAMINER
COOLEY, CHARLES E
ART UNIT PAPER NUMBER
1774
NOTIFICATION DATE DELIVERY MODE
06/21/2017 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 PETER HOLDS WORTH1
Appeal 2016-006279
Application 12/680,909
Technology Center 1700
Before JEFFREY T. SMITH, DONNA M. PRAISS,
and MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellant appeals under 35U.S.C. § 134 from the Examiner’s
decision to finally reject claims 1—8, 10-18, and 20. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
1 The Real Party in Interest is identified as BASF SE, located at CARL-
BOSCH-STRASSE 38, LUDWIGSHAFEN, GERMANY 67056.
App. Br. 3.
Appeal 2016-006279
Application 12/680,909
Claim 1 illustrates the subject matter on appeal and is reproduced
below:
1. Apparatus for conveying a water-soluble or water
swellable particulate material to a make up unit used in the
hydration or dissolution of said material comprising:
a scroll conveying line (6) comprising a duct (6A) defined
by a wall and a scroll conveyor (6B) within said duct, wherein
the scroll conveying line has an inlet (6D) through which
material enters and an outlet (6C) through which the material
leaves the scroll conveying line, and
an air conveying line (3) comprising a duct through which
an air stream conveys the material to a make up unit (18)
comprising a material wetting head (9) for contacting the
material with water, and a mixing vessel (14) in which the
material is hydrated or dissolved to form a uniform aqueous
dilution or aqueous solution,
in which the scroll conveying line (6) is provided with a
means for ensuring the material substantially fills the space
between the scroll conveyor and the wall of the duct at least at
the outlet end of the conveying line,
wherein the means is selected from,
(a) the scroll conveying line (6) or outlet (6C) is in
communication with an element that restricts the flow of material
from the outlet, and/or
(b) the scroll conveying line (6) is mounted at a gradient
or a substantially vertical orientation, such that the outlet ( 6C) is
positioned higher than the inlet (6D), transferring the material
through the scroll conveying line to the outlet (6C), allowing the
material to enter the air conveying line (3) in which an air stream
conveys the material to the make up unit (18) in which the
material is hydrated or dissolved to form a uniform aqueous
dilution or aqueous solution,
2
Appeal 2016-006279
Application 12/680,909
wherein the air conveying line is provided with an air
pressure of 20 — 200 milli-Bar by means of a blower, and
wherein the particulate material has a weight average
particle size of no more than 2000 pm.
Appellant (App. Br. 2, 7) requests review of the following rejections2
from the Examiner’s Final Office Action:
I. Claims 1, 2, 4, 8, 10—12, 14, 18, and 20 rejected under 35
U.S.C. § 103(a) as unpatentable over Ricciardi (US 4,077,612, issued March
7, 1978), Irmscher (DE 197 04 061 Al, published August 6, 1998, and
relying on an English Abstract dated June 23, 2008), and Hopson (US
5,660,466, issued August 26, 1997).
II. Claims 1, 2, 3, 5, 10—13, 15, and 20 rejected under 35 U.S.C.
§ 103(a) as unpatentable over Ricciardi, Niemeijer (EP 0 041 279 Al,
published December 9, 1981), and Hopson.
III. Claims 1, 2, 6, 7, 10—12, 16, 17, and 20 rejected under 35
U.S.C. § 103(a) as unpatentable over Ricciardi, Herman (WO 91/16253 Al,
published October 31, 1991), and Hopson.
IV. Claims 1, 2, 4, 8, 10—12, 14, 18, and 20 rejected under 35
U.S.C. § 103(a) as unpatentable over Ricciardi, Irmscher, Hopson, and
Deering (US 4,551,206, issued November 5, 1985).
V. Claims 1, 2, 3, 5, 10—13, 15, and 20 rejected under 35 U.S.C.
§ 103(a) as unpatentable over Ricciardi, Niemeijer, Hopson, and Deering.
2 Both the Examiner and Appellant address issues under U.S.C. § 112, sixth
paragraph. Final Act. 3—6; App. Br. 10-12; Ans. 37. As noted by the
Examiner, there is no rejection presented based on this ground. Ans. 37.
Accordingly, issues raised by this discussion are not before us for review on
appeal.
3
Appeal 2016-006279
Application 12/680,909
VI. Claims 1, 2, 6, 7, 10—12, 16, 17, and 20 rejected under 35
U.S.C. § 103(a) as unpatentable over Ricciardi, Herman, Hopson, and
Deering.
OPINION3
The Prior Art Rejections
The dispositive issue on appeal is: Did the Examiner err in
determining that the combination of Ricciardi with each of the individual
teachings of Imrscher, Niemeijer and Herman would have led one skilled in
the art to an apparatus and method for conveying a water-soluble or water-
swellable particulate material using an element that restricts the flow of
material from the outlet of a scroll conveyor line as required by the subject
matter of independent claims 1 and 11?4
3 The Examiner presents six rejections (Rejections I—VI) for independent
claims 1 and 11, all based on the combination of the primary reference to
Ricciardi and one of the secondary references to Irmscher, Niemeijer and
Herman. Final Act. 7, 22, 25, 29, 32, 33. The Examiner relies on each of
these secondary references to teach the use of an element that restricts the
flow of material from the outlet of a scroll conveyor line. Id. at 9, 23, 26.
Both the Examiner and Appellant address the secondary references together
in the Appeal Brief and the Answer. App. Br. 15—19; Ans. 42—53.
Accordingly, we address these rejections together and limit our discussion to
claim 1.
4 A discussion of Hopson and Diering is unnecessary for disposition of this
appeal. The Examiner relied upon these references for features not related to
the dispositive issue.
4
Appeal 2016-006279
Application 12/680,909
After review of the respective positions provided by Appellant and the
Examiner, we answer the above statement of the issue in the positive and
REVERSE the Examiner’s prior art rejections of claims 1—8, 10—18, and 20
under 35 U.S.C. § 103(a) for the reasons presented by Appellant and add the
following.
The Examiner found Ricciardi discloses a device that differs from the
claimed invention in that Ricciardi does not disclose a scroll conveying line
provided with a means for ensuring the material substantially fills the space
between the scroll conveyor and the wall of the duct at least at the outlet end
of the conveying line as claimed. Final Act.7—9; Ricciardi Figures 1—3. The
Examiner found each of Irmscher, Niemeijer, and Herman disclose an
analogous scroll conveying line for conveying material wherein the outlet is
in communication with an element that restricts the flow of the material for
further processing. Final Act. 9, 23, 26; Irmscher Figure 1; Niemeijer Figure
1; Herman Figures 5, 15, 18. The Examiner determined it would have been
obvious to one skilled in the art to modify the outlet of the scroll conveying
line of Ricciardi to incorporate one of the elements of Irmscher, Niemeijer,
and Herman to convey the material more efficiently to the wetting apparatus
without any loss of air pressure and material. Final Act. 9—10, 23—24, 27.
Appellant argues each of Irmscher (citing to the first three paragraphs
of untranslated document), Niemeijer (Abstract), and Herman (1, 3) is
directed to continuous feeding of non-polyelectrolyte materials, such as
coal/cement dust, fuel, lime, sand, salt, and various dry chemicals. App. Br.
17. According to Appellant, Ricciardi is directed to atomizing the
polyelectrolyte powder so that every grain is wetted for a metering/wetting
polymer system to be completely functional while none of Irmscher,
5
Appeal 2016-006279
Application 12/680,909
Niemeijer, or Herman teach or suggest the use of a scroll conveyor line
having a flow restriction element in combination with a wetting system or
component that ensures atomization of the powder in their respective
systems. App. Br. 18, 20; Ricciardi col. 1,11. 47-49. Appellant contends
there is no reason for one of ordinary skill in the art to consider these
secondary references when specifically looking to improve upon Ricciardi’s
method and apparatus for conveying polyelectrolyte powders to wetting
units. App. Br. 16, 18. Therefore, Appellant argues, absent impermissible
hindsight, one skilled in the art would be unable to predict that an element
that restricts the flow of material from the outlet, such as the ones disclosed
by the secondary references, would provide intended results when
specifically used in an apparatus for metering and wetting the
polyelectrolytes of Ricciardi. Id. at 21—22.
We agree with Appellant that the Examiner’s obviousness rejection
cannot be sustained. Each of the Examiner’s rejections is premised on the
Examiner’s position that the restriction element of each of Irmscher,
Niemeijer, and Herman can perform the function specified in the claim.
Ans. 44-45. The Examiner, however, has not adequately explained why one
skilled in the art would have found the flow restriction elements of the
secondary references suitable for the device and method of Ricciardi.
Further, the Examiner has not provided an adequate technical explanation of
how one skilled in the art would have adapted the flow restriction elements
of the secondary references in the device and method of Ricciardi such that
the device and method would still atomize a polyelectrolyte powder so that
every grain is wetted for a metering /wetting polymer system as argued by
Appellant. App. Br. 18, 20.
6
Appeal 2016-006279
Application 12/680,909
Under these circumstances, Appellant has identified a reversible error
in the Examiner’s prima facie case of obviousness.
Accordingly, we reverse the Examiner’s prior art rejections of claims
1—8, 10-18, and 20 under 35 U.S.C. § 103(a) for the reasons presented by
Appellant and given above.
ORDER
The Examiner’s prior art rejections of claims 1—8, 10—18, and 20
under 35 U.S.C. § 103(a) are reversed.
REVERSED
7