Ex Parte Weismantel et al

Patent Trial and Appeal BoardAug 22, 2017

12521857 (P.T.A.B. Aug. 22, 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. 12/521,857 06/30/2009 Matthias Weismantel 29827/44646 2430 4743 7590 08/24/2017 MARSHALL, GERSTEIN & BORUN LLP 233 SOUTH WACKER DRIVE 6300 WILLIS TOWER CHICAGO, IL 60606-6357 EXAMINER CHOI, STEPHEN ART UNIT PAPER NUMBER 3724 NOTIFICATION DATE DELIVERY MODE 08/24/2017 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 MATTHIAS WEISMANTEL, RUDIGER FUNK, LEIGH R. BLAIR, KEVIN D. HEITZHAUS, and BRUCE STOREY Appeal 2016-000676 Application 12/521,8571 Technology Center 3700 Before NINA L. MEDLOCK, PHILIP J. HOFFMANN, and BRUCE T. WIEDER, Administrative Patent Judges. WIEDER, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35U.S.C. § 134 from the Examiner’s final rejection of claims 3—13. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. CLAIMED SUBJECT MATTER Appellants’ claimed “invention relates to the production of superabsorbent polymers on a continuous belt reactor.” (Spec. 1,11. 5—6.) 1 According to Appellants, the real party in interest is BASF SE. (Appeal Br. 3.) Appeal 2016-000676 Application 12/521,857 Claim 13 is the sole independent claim on appeal. It recites: 13. A process for production of superabsorbent polymers on a continuous belt reactor, comprising cutting a formed polymer gel at an end of the continuous belt reactor with at least one rotating knife, wherein a length of a cutting edge is at least 1 cm and the cutting edge is non-parallel to a rotation axis and wherein a power input of the at least one rotating knife changes less than 20 % during one revolution. REJECTIONS Claims 3—13 are rejected under 35 U.S.C. § 103(a) as unpatentable in view of Sasabe (EP 1,510,317 Al, pub. March, 2, 2005) (hereinafter EP ’317),2 and either Sidles (US 3,515,618, iss. June 2, 1970) or Dickinson (US 116,033, iss. June 20, 1871.) Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable in view of EP ’317, either Sidles or Dickinson, and Oppenheim (US 1,639,807, iss. Aug. 23, 1927). ANALYSIS Claims 3—5, 7, 8, 12, and 13 Appellants argue that “EP ’317, at paragraph [0047], clearly teaches that adhesion of the polymer gel is a problem. To overcome this disadvantage, EP ’317 teaches varying revolution speeds of the rotating knife.” (Appeal Br. 14, emphasis omitted.) Additionally, Appellants argue, 2 Appellants cite to EP 1,510,317 B1 in their Appeal and Reply Briefs. The Examiner cites to EP 1,510,317 Al in the Final Office Action, but cites to EP 1,510,317 B1 in the Answer. Because the rejection was based on EP 1,510,317 Al, we will refer to that reference in this opinion. 2 Appeal 2016-000676 Application 12/521,857 “EP ’317, at paragraph [0147] uses a semi-synchronous-type rotary cutter, which according to paragraph [0047] has a varying speed, and accordingly a varying power input.” (Id.) The Examiner disagrees and finds that “Appellants’ arguments appear to be solely based on the assumption that EP ’317 only discloses such a semi-synchronous type rotary cutter. However, EP ’317 also teaches different examples of adhesion prevention with a full-synchronous type rotary cutter.” (Answer 5.) EP ’317 discloses that it is possible that while cutting the continuous sheet, the rotary blade is caused to migrate synchronously with the running of the continuous sheet, and that, after the cutting, the rotary blade is caused to rapidly migrate, thereby preventing the adhesion of the continuous sheet or cut pieces and also getting ready for the next cutting operation. (EP ’317 147.) However, we agree with the Examiner that EP ’317 discloses this as just one way of addressing an adhesion problem. EP ’317, in paragraphs 55—57, discusses “[a]dhesion prevention” without discussing varying the rotation speed of the rotating blade. (See id. ^fl[ 55—57.) Additionally, in paragraphs 67—71, EP ’317 discusses an “[a]dhesion prevention medium,” again without discussing varying the rotation speed of the rotating blade. (See id. ^fl[ 67—71.) For example, EP ’317 discloses: It is effective to prevent the adhesion of the continuous sheet by supplying an adhesion prevention medium to the fixed blade and the rotary blade for cutting the continuous sheet and to places which neighbor the cutting places and have a possibility of undergoing the contact of the continuous sheet. (Id. 1 67.) EP ’317 also specifically discloses that using a fixed rpm for the rotating blades can result in no adhesion problem: 3 Appeal 2016-000676 Application 12/521,857 This cutter is a full-synchronous type rotary cutter. The numbers of revolutions of the revolution bodies were set for 30 rpm, and the continuous sheet was continuously cut every 15 cm lengthwise of the continuous sheet. . . . There was seen no adhesion of the gel sheet to such as the rotary blades or the revolution bodies, and there was seen no re-adhesion between cut sections, either. {Id. 1171.) In view of the above, we are not persuaded that EP ’317 teaches varying the rotation speed of the rotating blade as the only method for avoiding an adhesion problem. Rather, we agree with the Examiner that EP ’317 teaches methods for avoiding adhesion that do not need to vary the rotation speed of the rotating blade. Therefore, we do not find Appellants’ argument persuasive of error. Appellants also argue that “EP ’317 merely discloses a straight blade that is parallel to the rotation axis, which is contrary to the claimed non parallel feature recited in claim 13 and the spiral feature recited in claim 3.” (Appeal Br. 13.) The Examiner disagrees and finds that “EP ’317 clearly teaches a spiral knife on [sic] paragraphs [49, 111, 113, 147, and 171].” (Answer 7.) In particular, EP ’317 discloses that “[t]he edge of the rotary blade can be inclined to the straight edge of the fixed blade. In this case, it follows that the edge of the rotary blade is inclined along a cylindrical plane, so the blade edge or the rotary blade is spirally disposed.’ '' (EP ’317 149, emphasis added.) Specifically with regard to the claim 13 limitation “wherein a power input of the at least one rotating knife changes less than 20 % during one revolution,” the Examiner finds that EP ’317 4 Appeal 2016-000676 Application 12/521,857 fails to expressly teach a power input of the at least one rotating knife changes less than 20% during one revolution. Sidles teaches a rotating knife having spiral helix cutter blades such that the workpiece is continuously cut into small pieces during one revolution of the rotating knife (e.g., Figure 2). Dickinson teaches a rotating knife having a spiral knife such that knives are at all times in contact (e.g., Figure 2 and right column lines 3- 10). Note that the device of Sidles or Dickinson will require no change in power input during one revolution since contact between the knife and a support or the knives is uniform during one revolution. It would have been obvious to one having ordinary skill in the art at the time the invention was made to incorporate the teachings of Sidles or Dickinson on the arrangement of knives on a rotating knife on the device of [EP ’317] in order to reduce change of force that rests on a knife supporting structure to increase serviceable life. (Final Action 2—3.) Appellants argue that Dickinson “is directed to cutting straw, and therefore any problem solved by the cutter of [Dickinson] is completely different from the adhesion problem addressed and solved by EP ’317. Straw does not present the adhesion problem of a polymer gel, and the cutting of straw is in a completely non-analogous cut.” (Appeal Br. 14.) The Examiner disagrees and finds that “although the devices of Sidles and Dickson [sic] are related to cutting different materials, both references are reasonably pertinent to the particular problem with which the appellants were concerned since both references are related to a teaching of arranging spiral knives on a rotary cutter.” (Answer 7.) Moreover, as discussed above, EP ’317 teaches a rotary blade that is “spirally disposed.” (See EP ’317149.) The analogous-art test requires that the Board show that a reference is either in the field of the applicant’s endeavor or is reasonably pertinent to the problem with which the inventor was 5 Appeal 2016-000676 Application 12/521,857 concerned in order to rely on that reference as a basis for rejection. In re Oetiker, 977 F.2d 1443, 1447 (Fed.Cir.1992). References are selected as being reasonably pertinent to the problem based on the judgment of a person having ordinary skill in the art. Id. (“[I]t is necessary to consider ‘the reality of the circumstances,’—in other words, common sense—in deciding in which fields a person of ordinary skill would reasonably be expected to look for a solution to the problem facing the inventor.” (quoting In re Wood, 599 F.2d 1032, 1036 (C.C.P.A. 1979))). In re Kahn, 441 F.3d 977, 986—87 (Fed. Cir. 2006). The Examiner has shown that Dickinson is reasonably pertinent to teaching an arrangement of knives on a rotary cutter, a problem with which the inventor was concerned. Appellants do not persuasively argue why an adhesion problem or lack thereof would make Dickinson’s teaching of an arrangement of knives on a rotary cutter not pertinent to the inventors’ problem of arranging knives on a rotary cutter. Therefore, we do not find Appellants’ non-analogous art argument persuasive of error. Appellants further argue that “[a] combination of EP ’317 and either [Dickinson] or [Sidles] would render EP ’317 unsatisfactory for its intended purpose, and the proposed modification would require a substantial reconstruction and redesign of the elements of EP ’317.” (Appeal Br. 18.) Specifically, Appellants argue “the spiral knives of the [Dickinson] and [Sidles] patents cannot be combined with EP ’317 because such a combination would make it impossible to overcome the adhesion problem associated with polymer without a substantial reconstruction and design.” (Id.) As discussed above, EP ’317 discloses different approaches for addressing an adhesion problem. (See, e.g., EP ’317 ^fl[ 55—57, 67—71.) 6 Appeal 2016-000676 Application 12/521,857 Appellants do not explain why these approaches do not address any such adhesion problem or why, when combining EP ’317 with Dickinson or Sidles, these approaches would no longer be effective. Indeed, as discussed above, EP ’317 itself discloses a spirally disposed rotary blade. (See id. 149.) In view of the above, we are not persuaded that the Examiner erred in determining that “[i]t would have been obvious to one having ordinary skill in the art at the time the invention was made to incorporate the teachings of Sidles or Dickinson on the arrangement of knives on a rotating knife on the device of [EP ’317].” (See Final Action 2—3.) Appellants do not separately argue dependent claims 3—5, 7, 8, and 12. These claims fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). Claim 6 Claim 6 recites: “The process according to claim 13 wherein a difference of a speed of the continuous belt and a tip speed of the knife is less than 25%.” The Examiner finds that paragraph 171 of EP ’317 discloses that “the speed of the continuous belt and the tip speed of the knife is fully synchronized.” (Final Action 3.) Appellants persuasively argue that “[t]his discloses nothing concerning the difference in speed between the continuous belt and the tip speed of the knife. Either speed can be altered such that the lengths of cuttings are changed.” (Appeal Br. 21.) We are persuaded that the Examiner erred in rejecting claim 6. 7 Appeal 2016-000676 Application 12/521,857 Claims 9 and 10 Claim 8 recites: “The process according to claim 13 wherein the at least one knife is mounted on a cylinder.” Claim 9 recites: “The process according to claim 8 wherein a diameter of the cylinder excluding the knife is from 10 cm to 60 cm.” Claim 10 recites: “The process according to claim 8 wherein the diameter of the cylinder including the knife is from 20 cm to 70 cm.” The Examiner cites to paragraph 171 of EP ’317 in rejecting claims 8— 10. (Final Action 3.) “Appellants fail to see wherein paragraph [171] of EP ’317 supports the dimensions recited in present claims 9 and 10.” (Appeal Br. 21.) Paragraph 171 ofEP ’317 discloses, in relevant part, that “[t]he cuter has a basic structure as illustrated in Fig. 3. Revolution bodies having a diameter of 200 mm and spiral rotary blades having a thickness of 14 mm . . . .” (EP ’3171171.) Appellants do not persuasively argue why the disclosure in EP ’317 of a cylinder, i.e., a “revolution body,” with a diameter of 200 mm does not teach a cylinder with a diameter in the ranges recited in claims 9 and 10. Therefore, we are not persuaded of error. Claim 11 Claim 11 recites: “The process according to claim 8 wherein four spiral knives are mounted on the cylinder and each spiral knife forms a A turn spiral.” As an initial matter, we note that EP ’317 discloses the use of multiple rotating blades. (See EP ’317 1115 (“The cutting intervals lengthwise of the 8 Appeal 2016-000676 Application 12/521,857 continuous sheet 10 can be changed according to relations of the . . . number of the plate-shaped rotary blades 36 on the revolution body 34.”).) The Examiner finds that the modified device of [EP ’317] fails to expressly teach four spiral knives being mounted on the cylinder and each spiral knife forms a A turn spiral. However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to employ four spiral knives wherein each spiral knife forming a A turn spiral as taught by applicant’s admitted prior art on the device of [EP ’317] in order to provide progressive shearing action. It is noted that the common knowledge or well- known in the art statement of the previous office action has been taken to be admitted prior art because applicant either failed to traverse the examiner’s assertion of official notice or that the traverse was inadequate. See MPEP § 2144.03. (Final Action 3.) Appellants argue “what is the prior art admitted to by appellants? The present specification [sic] does not contain prior art directed to claim 11.” (Appeal Br. 22.) Appellants acknowledge that “appellants[] originally did not address a specific rejection of dependent claim 11.” (Id.) With regard to the “admitted prior art,” the Examiner determined that it would have been obvious to one having ordinary skill in the art at the time the invention was made to employ one end of a spiral knife in rotating direction being a beginning of a next spiral knife at an other [sic] lateral end of polymer gel to be cut and/or four spiral knives being mounted on a cylinder and each spiral knife forming a A turn spiral on the device of [EP ’317] since the examiner takes Official Notice on the use of such an arrangement as old and well known in the art for the purpose of providing progressive shearing action. Taylor, Oppenheim, Shann, and FR 2062100 show examples. (Non-final Action 3—4, mailed March 7, 2012.) 9 Appeal 2016-000676 Application 12/521,857 To the extent Appellants challenge the Examiner’s taking of Official Notice as unsupported, we disagree. Appellants have not specifically pointed out the alleged errors in the Examiner’s action, which would include stating why the noticed fact is not considered to be common knowledge or old and well-known in the art. See MPEP § 2144.03(A); see also 37 C.F.R. § 1.111 (b). Moreover, the Examiner’s rejection points to particular evidence, e.g., Oppenheim. (See Non-final Action 3—4, mailed March 7, 2012.) In the Answer, the Examiner enters a new ground of rejection for claim 11, substituting the earlier reliance on Official Notice with reliance on Oppenheim. (Answer 4—5.) Specifically, the Examiner finds that Oppenheim teaches four spiral knives (e.g., 12) being mounted on the cylinder and each spiral knife forms a A turn spiral (e.g., Figure 1). It would have been obvious to one having ordinary skill in the art at the time the invention was made to employ four spiral knives as taught by Oppenheim on the modified device of [EP ’317] in order to obtain a desired cut length. (Id.) Appellants argue that like the cited [Dickinson] and [Sidles] patents, the [Oppenheim] patent (directed to com huskers, etc.) is in a field substantially different from the preparation of superabsorbent polymers .... Any problem solved by the cutter of the [Oppenheim] patent is completely different from the adhesion problem addressed and solved by EP ’317. (Reply Br. 1—2.) However, for the reasons discussed above with regard to Dickinson, we agree with the Examiner that EP ’317 discloses different approaches for addressing an adhesion problem. (See, e.g., EP ’317 ^fl[ 55— 57, 67—71.) Appellants do not explain why these approaches do not address 10 Appeal 2016-000676 Application 12/521,857 any such adhesion problem or why, when combining EP ’317 with Oppenheim, these approaches would no longer be effective. For the reasons discussed above, we are not persuaded that the Examiner erred in rejecting claim 11 in the Final Office Action or in the new ground of rejection. DECISION The Examiner’s rejections of claims 3—5 and 7—13 under 35 U.S.C. § 103(a) are affirmed. The Examiner’s rejection of claim 6 under 35 U.S.C. § 103(a) is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED-IN-PART 11