Bierdel, Michael et al.

Patent Trials and Appeals Board

Jul 29, 2020

2019004654 (P.T.A.B. Jul. 29, 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.
13/000,052 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.
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Application 13/000,052

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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.”).
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Application 13/000,052

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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

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Application 13/000,052

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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
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Application 13/000,052

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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.
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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.”).

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Application 13/000,052

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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