Bierdel, Michael et al.Download PDFPatent Trials and Appeals BoardJul 29, 20202019004654 (P.T.A.B. Jul. 29, 2020) Copy Citation 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. 13/000,052 04/15/2011 Michael Bierdel 160328PCTUS/ BMS091131PCTU 1223 26285 7590 07/29/2020 K&L GATES LLP-Pittsburgh 210 SIXTH AVENUE PITTSBURGH, PA 15222-2613 EXAMINER GORDON II, BRADLEY R ART UNIT PAPER NUMBER 1773 NOTIFICATION DATE DELIVERY MODE 07/29/2020 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): USpatentmail@klgates.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL BIERDEL, THOMAS KÖNIG, CARSTEN CONZEN, ULRICH LIESENFELDER, KLEMENS KOHLGRUBER, REINER RUDOLF, and JOHANN RECHNER Appeal 2019-004654 Application 13/000,052 Technology Center 1700 Before LINDA M. GAUDETTE, JAMES C. HOUSEL, and BRIAN D. RANGE, Administrative Patent Judges. RANGE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 23–35, 37, 39–41, and 43–48. 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 Covestro Deutschland AG. Appeal Br. 3. Appeal 2019-004654 Application 13/000,052 2 CLAIMED SUBJECT MATTER2 Appellant describes the invention as relating to a process for extruding plastic compositions such as polycarbonate and polycarbonate blends. Spec. 1:2–6. The process seeks to incorporate other substances such as solids, liquids, gases, or other polymers or polymer blends with the assistance of a multi-screw extruder with specific screw geometries. Id. Claims 35 and 39 are the two independent claims on appeal, and the claims include similar recitations for purposes of this Decision. We reproduce illustrative claim 35 below and modify the claim’s formatting for readability: 35. A process for extruding plastic compositions comprising conveying, kneading or mixing the plastic compositions in a multi-screw extruder with screw elements, wherein the screw elements of the extruder are co-rotated in pairs, wherein the screw elements are fully self-wiping in pairs, wherein the screw elements comprise two or more screw flights, wherein each screw element comprises a cross-section screw profile comprising a constantly differentiable profile curve comprising four or more circular arcs, wherein the circular arcs merge tangentially into one another at their start and end points, and wherein at least one screw profile, selected from the generating screw profile and the generated screw profile, comprises a first arc and a second arc, wherein: a center point of the first arc is located on a line segment that extends from a center point of the second arc to a rightmost end point of the second arc, both the first arc and the second arc share a common line segment that extends from the center point of the first arc to the 2 In this Decision, we refer to the Final Office Action dated June 1, 2018 (“Final Act.”), the Appeal Brief filed November 19, 2018 (“Appeal Br.”), and the Examiner’s Answer dated March 22, 2019 (“Ans.”). Appeal 2019-004654 Application 13/000,052 3 rightmost end point of the second arc and a leftmost end point of the first arc, a leftmost end point of the second arc is located at a point that corresponds to an inner radius of the screw profile, and a rightmost end point of the first arc is located at a point that corresponds to an outer radius of the screw profile, and wherein both the center point of the first arc and the center point of the second arc are located within a circle having a radius equal to the outer radius of the screw profile and having a center point corresponding to the point of rotation D, and wherein the center point of the first arc is located on a line segment, which starts at the point of rotation D and ends at the point that corresponds to the outer radius of the screw profile, and wherein the center point of the second arc is located on a line segment, which starts at the point of rotation D and ends at the point that corresponds to the inner radius of the screw profile, and wherein the screw elements are axially symmetrical and, in one sector of 360°/(2·Z), the profile curve is comprised of at least two circular arcs, wherein Z is the number of flights of the screw elements. Appeal Br. 35–36 (Claims App.) REFERENCES The Examiner relies upon the prior art below in rejecting the claims on appeal: Name Booy Ikeda et al. (“Ikeda”) Fujii et al. (“Fujii”) Konig et al. (“Konig”) Reference 4,063,717 5,851,065 2002/0028340 A1 2005/0121817 A1 Date Dec. 20, 1977 Dec. 22, 1998 Mar. 7, 2002 June 9, 2005 Appeal 2019-004654 Application 13/000,052 4 REJECTIONS The Examiner maintains (Ans. 3) the following rejections on appeal: A. Claims 23–35, 37, 39–41, and 43–48 under 35 U.S.C. § 112 as indefinite. Final Act. 3. B. Claims 23–31, 35, 37, 39–41, and 43–47 under 35 U.S.C. § 103 as obvious over Ikeda in view of Booy. Id. at 4. C. Claims 32, 34, and 48 under 35 U.S.C. § 103 as obvious over Ikeda in view of Booy and Konig. Id. at 7. D. Claim 33 under 35 U.S.C. § 103 as obvious over Ikeda in view of Booy and Fujii. Id. at 8. OPINION Rejection A, Section 112, indefiniteness. The Examiner rejects claims 23–35, 37, 39–41, and 43–48 under 35 U.S.C. § 112 as indefinite. Final Act. 3. During prosecution, “[a] claim is indefinite when it contains words or phrases whose meaning is unclear.” Ex parte McAward, Appeal No. 2015- 006416, at 11 (PTAB Aug. 25, 2017) (precedential) (quoting In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014) (per curium)). Our reviewing court has emphasized that claim language should be “as precise as the subject matter permits” and has explained that the USPTO has an important role in ensuring that patent claims are clear and unambiguous. In re Packard, 751 F.3d at 1313; accord Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 899 (2014) (“Section 112’s definiteness requirement must take into account the inherent limitations of language,” yet mandates clarity to the extent possible under the circumstances). Importantly, the definiteness requirement of 35 U.S.C. § 112 “puts the burden of precise claim drafting squarely on the Appeal 2019-004654 Application 13/000,052 5 applicant.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997); see also Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008) ( “[T]he patent drafter is in the best position to resolve the ambiguity in the patent claims, and it is highly desirable that patent examiners demand that applicants do so in appropriate circumstances so that the patent can be amended during prosecution rather than attempting to resolve the ambiguity in litigation.”). Here, the Examiner presents four separate bases for determining that claims are unclear: (a) independent claims 35 and 39 because of the recitation “wherein the circular arcs merge tangentially into one another at their start and end points”; (b) independent claims 35 and 39 based on certain recitations lacking an antecedent basis; (c) dependent claims 40 and 41 based on claim terms lacking an antecedent basis; and (d) claims 35 and 40 because of each reciting a “circle” in an unclear manner. Ans. 4. With respect to basis (a), Appellant argues that claims 35 and 39 are not unclear because “defining what is an end point versus a start point as suggest[ed] by the Examiner is unnecessary for an understanding of the pending claims.” Appeal Br. 17–18. The Examiner, however, maintains that the claims’ recitation is unclear because, for example, it is unclear whether the recited “arcs” each share the same start and end points. Ans. 7–8. Appellant does not persuasively address this position. We, thus, sustain the Examiner’s rejection based upon position (a). Appellant does not argue against the Examiner’s positions (b), (c), and (d). Appeal Br. 16–18. We, thus, also sustain the Examiner’s rejection on these bases. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Appeal 2019-004654 Application 13/000,052 6 Cir. 2011)) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). Rejections B–D, Section 103, obviousness. The Examiner rejects claims 23–31, 35, 37, 39–41, and 43–47 under 35 U.S.C. § 103 as obvious over Ikeda in view of Booy. Final Act. 4. The Examiner applies additional art to some dependent claims. Id. at 7–8. Appellant argues against the rejection of independent claims 35 and 39. Appeal Br. 18–33. Obviousness is a question of law based on underlying determinations of fact. Graham v. John Deere Co., 383 U.S. 1, 17 (1966); Richardson- Vicks, Inc. v. Upjohn Co., 122 F.3d 1476, 1479 (Fed. Cir. 1997). The underlying factual determinations include: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) objective evidence of nonobviousness, i.e., secondary considerations. See Graham, 383 U.S. at 17–18. Here, because the scope of independent claims 35 and 39 is unclear (at least for the reasons addressed above), comparison of the claimed subject matter to the prior art pursuant to Graham requires undue speculation. We, therefore, procedurally reverse the Examiner’s obviousness rejections without assessing the merits of these rejections. See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (“[W]e do not think a rejection under 35 U.S.C. § 103 should be based on such speculations and assumptions.”). Appeal 2019-004654 Application 13/000,052 7 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 23–35, 37, 39–41, 43– 48 112 Indefiniteness 23–35, 37, 39–41, 43– 48 23–31, 35, 37, 39– 41, 43–47 103 Ikeda, Booy 23–31, 35, 37, 39–41, 43–47 32, 34, 48 103 Ikeda, Booy, Konig 32, 34, 48 33 103 Ikeda, Booy, Fujii 33 Overall Outcome 23–35, 37, 39–41, 43– 48 TIME PERIOD FOR RESPONSE 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 Copy with citationCopy as parenthetical citation