DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Request for Reconsideration
This office action is responsive to the reply filed on 31 October 2025, which did not amend, cancel, or add any claims. Claims 1, 8-9, 14-16, 18, 20-21 & 23-33 are pending in this application.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 8, 9, 14-16, 18, 20, 21 & 23-33 are rejected under 35 U.S.C. 103 as being unpatentable over Niimi et al. (CA 3,074,828; hereafter Niimi) in view of Ziu (US 5,452,922), Wittbold et al. (US 2013/0100759 A1; hereafter Wittbold), and “Ancaster Conveying Systems Catalog” (NPL, 2002; cited in applicant’s IDS filed 30 June 2025; hereafter “Ancaster”).
Regarding claim 1, Niimi discloses (figs. 1-8) a gypsum manufacturing system (e.g., as in figs. 1 & 2; see para. 36: “a gypsum board production apparatus”) comprising:
a mixer (5) configured to mix a gypsum slurry (3a; “calcined gypsum slurry”);
a forming table (T; “Conveying table T” having forming rollers 8 and lower sheet 1, etc. configured to form the dispensed slurry into a gypsum sheet; see figs. 1 & 2); and
a hose (10; which may be provided in various modified forms, such as that depicted in fig. 8B) coupled to the mixer (5; as shown) and configured to dispense the gypsum slurry from the mixer through the hose and onto the forming table (as shown; see figs. 1-4), wherein the hose (10; when in the modified form of fig. 8B) comprises:
a first section (12) having a cross sectional area A1 (see diameter D1 of first section 12 in fig. 5a & see related para. 48; thus, first section 12 has a cross sectional area
A
1
=
π
4
∙
D
1
2
) , and
a second section (13) consisting of two diverging subsections (16), the second section being in fluid communication with said first section (12; via third section 14) such that said first section is located upstream from said second section, with the two subsections diverging as they extend away from the first section (as shown; see flow direction arrows at α in figs. 2-5), the second section having a total cross sectional area A2 (see subsection diameter D3 in fig. 5c & see related para. 51; each of the two subsections has a cross sectional diameter
A
s
u
b
s
e
c
t
i
o
n
=
π
4
∙
D
3
2
; thus, second section 13 has a cross sectional area
A
2
=
2
∙
A
s
u
b
s
e
c
t
i
o
n
, or
A
2
=
π
2
∙
D
3
2
);
wherein said hose comprises a third section (14) having a cross sectional area A3 (see diameter D2 of third section 14 in fig. 5c & see related para. 49; thus, third section 14 has a cross sectional area
A
3
=
π
4
∙
D
2
2
) located intermediate said first section (12) and said second section (13),
wherein said first section (12) is connected to said third section (14) by an elbow (see 12c in fig. 8B),
wherein said first section (12) has a longest dimension d1 (i.e., D1 in fig 5a) in a plane perpendicular to its longitudinal axis (Z),
wherein each of the two subsections (16) of said second section has a longitudinal axis (see broken lines in figs. 5A-C), wherein the longitudinal axes of the two subsections combine to form a plane that lies parallel to a longitudinal axis of said third section (as shown in figs. 5B & 5C; i.e., the diverging axes of the subsections form a plane which is parallel to the axis of the third section such that the subsection axes and the third section axis all have the same angle of inclination θ1 in side view).
Regarding the limitation wherein said elbow comprises an external radius of curvature Rex at least half d1 and at most twice d1, Ziu teaches (col. 2, lines 49-63) that “Elbow fittings produced commercially throughout the world are standardized in terms of radii. Historically, elbow fittings have primarily been produced using two standard conventions for defining the centerline radius of curvature, regardless of the material of construction of the pipe, or the diameter or wall thickness of the pipe. These two standard conventions are the "short-radius" elbow fitting and the "long-radius" elbow fitting. The short-radius elbow fitting is defined as having a centerline radius of curvature which is approximately equal to the nominal diameter of a corresponding straight section of pipe. A long-radius elbow fitting is defined as having a centerline radius-of-curvature which is approximately equal to 1.5 times the diameter of the corresponding straight section of pipe.”
As would be understood by a person having ordinary skill int the art, for a standard elbow fitting design, the external radius of curvature would be the centerline radius of curvature plus one additional radius (e.g., see fig. 1 of US 5,054,819 to Grunwald). Thus, a short-radius elbow fitting would have an external radius of curvature of approximately 1.5 times the diameter of a corresponding straight pipe section while a long-radius elbow would have an external radius of curvature of approximately 2 times the diameter of a corresponding straight pipe section.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Niimi such that the elbow comprises an external radius of curvature Rex at least half d1 and at most twice d1 (e.g., 1.5 times D1 in the case of a short-radius type elbow fitting) in view of the teachings of Ziu, especially considering that Ziu explains that elbows are conventionally produced to such a standard convention for defining the radius of curvature “regardless of the material of construction of the pipe, or the diameter or the wall thickness of the pipe”, and selecting an elbow geometry for a particular application based on known standard is a matter of routine engineering design.
Regarding the limitations wherein the longitudinal axis (Z) of said first section (12) lies perpendicular to a longitudinal axis of said third section (14), and wherein the plane formed by the longitudinal axes of the two subsections (16) lies perpendicular to the longitudinal axis of said first section, Niimi discloses that the longitudinal axis (Z) of the first section (12) as shown (e.g., in figs 5B & 5C) is “vertically extending” but “may have the center axis Z-Z somewhat inclined with respect to the vertical direction” (para. 48).
Niimi also discloses that the longitudinal axes of the third section (14) and the subsections (16) are generally horizontal but are inclined relative to horizontal with an angle θ1 “set to be, for instance, an angle ranging from 10 degrees to 30 degrees” (para. 49, lines 5-6).
The above disclosures of Niimi therefore disclose or reasonably suggest that the longitudinal axis of the third section and the plane of the subsection axes (parallel to the third section) may be inclined relative to a vertically arranged axis Z of the first section between 60 and 80 degrees, and potentially more in instances where the axis Z is somewhat inclined relative to vertical.
As a result, Niimi may reasonably be seen as disclosing that the longitudinal axis of said first section lies generally (i.e., nearly) perpendicular to the longitudinal axis of said third section and that the plane formed by the longitudinal axes of the two subsections lies generally (i.e., nearly) perpendicular to the longitudinal axis of said first section and, as set forth in MPEP § 2144.05(I), a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). See also In re Scherl, 156 F.2d 72, 74-75, 70 USPQ 204, 205-206 (CCPA 1946) (prior art showed an angle in a groove of up to 90° and an applicant claimed an angle of no less than 120°).
However, as Niimi does not explicitly disclose the axis of first section to be strictly “perpendicular” to the axes of the second and third sections, to promote compact prosecution, the following additional teaching is provided:
Wittbold teaches (figs. 1-12; particularly figs. 1, 4, 5 & 7) a hose (200) for use in a gypsum manufacturing system (see fig. 12; para. 2, etc.), the hose comprising: an upstream first section (221), a downstream second section having two subsections (204 & 206), and a third section (208 and/or 223) located intermediate said first section and said second section, wherein said first section (202 / 221) is connected to said third section (208 and/or 223) by an elbow (225), wherein the longitudinal axis (75; “main entry flow axis”) of said first section lies perpendicular to the longitudinal axis (85; “main flow discharge axis”) of said third section, and wherein longitudinal axes of each of the two subsections combined to form a plane that lies perpendicular to the longitudinal axis of the first section and parallel to the longitudinal axis of the third section (see fig. 5; para. 55).
Wittbold explains (para. 55) that the first section (221) is disposed at a feed angle θ with respect to the third section (i.e., 223) and the second section (204 & 206) which can range, in certain embodiments, from about 45 degrees to 175 degrees, or 60 degrees to 120 degrees, or 70 degrees to 110 degrees. Wittbold teaches that, in the illustrated embodiment, the first section (221) is “substantially perpendicular” to the second (204, 206) and third (223) sections.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Niimi such that the longitudinal axis of said first section lies perpendicular to a longitudinal axis of said third section the plane formed by the longitudinal axes of the two subsections (which is parallel to the axis of the third section) lies perpendicular to the longitudinal axis of said first section, in view of the teachings of Wittbold, as the simple substitution of one known second / third section inclination arrangement (i.e., the original second / third section inclination arrangement of Niimi, where the hose sections downstream of the elbow may be inclined 10 to 30 degrees from perpendicular) for another (i.e., arrangement of Wittbold, wherein the hose sections downstream of the elbow are provided perpendicular to the first section upstream of the elbow) to obtain predictable results (e.g., a reduction in hose exit velocity, due to removal of the downward incline and/or due to additional head losses at the elbow resulting from a greater change of direction).
Regarding the limitation wherein the ratio of A1:A2 is in the range of 2:1-4:1, Niimi discloses that “the diameter D1 is set to be, for instance, a dimension in the range from 100 mm to 250 mm” [3.93 to 9.84 inches](para. 48, lines 6-7) and that the diameter D3 in each subsection 16 (of second section 13) “is set to be a dimension in a range from 30 mm to 100 mm” [1.18 to 3.93 inches](para. 51, lines 1-3).
Given the cross-sectional area formulas for A1 and A2 above, the disclosed range of diameters of Niimi results in the following ranges of cross-sectional areas:
A1: 7,854 mm2 (at D1 = 100 mm) to 49,087 mm2 (at D1 = 250 mm)
Asubsection = 707 mm2 (at D3 = 30 mm) to 7,854 mm2 (at D3 = 100 mm)
A2: 1,414 mm2 (at D3 = 30 mm) to 15,708 mm2 (at D3 = 100 mm)
As can be seen, the above ranges encompass many potential combinations which would fall within the range defined by the limitation wherein the ratio of A1:A2 is in the range of 2:1-4:1. By way of example, when A1 and A2 are each at the largest end of the disclosed ranges, A1 is 3.1 times the size of A2, corresponding to a ratio of 3.1:1. However, it is recognized that Niimi does not provide any specific examples of dimensions which would necessarily fall within the claimed range.
Ancaster (cited in applicant’s IDS received on 30 June 2025) is an NPL document containing a catalog excerpt listing commercially available components for gypsum manufacturing systems (and further including miscellaneous communications by sales representatives offering for sale the products listed therein, circa January 2002).
Page 10 of the references includes a table entitled “Mixer Boot Specifications”, and an accompanying photograph is included on page 11, entitled “ACS mixer boots”. As would be reasonably understood by a person having ordinary skill in the art, the table entry under “mixer boot style and sized” entitled “Double Mixer Boot” is intended to correspond to the double mixer boot shown at the top right of the accompanying photograph.
PNG
media_image1.png
252
754
media_image1.png
Greyscale
To facilitate clarity, the following annotated figure is provided.
One of ordinary skill in the art would readily recognize the “double mixer boot” of Ancaster to be substantially same type of device as the “hose” in the instant case, which is also the same type of device as the discharge conduits / hoses in both Niimi and Wittbold (i.e., the instant application, Ancaster, Wittbold, and Niimi each relate to double outlet / discharge mixer boots / hoses for gypsum manufacturing systems).
Turning again to the table of Ancaster, the table lists “Inlet Sizes” (i.e., first section diameters, as understood) of 5” and 6”, and “Outlet Sizes” (i.e., second section subsection diameters, as understood) of 1 5/8”, 2”, 2 3/16”, 2 3/8”, 2 9/16”, 2 7/8”, 3”, 3 1/2" & 4”. As can be readily seen, the inlet sizes of 5” [127mm] and 6” [152.4 mm] of the commercially available hose of Ancaster each fall within the range of D1 disclosed by Niimi (100 mm to 250 mm; 3.93 to 9.84 inches). Similarly, the range of outlet sizes from 1 5/8” [41.28mm] to 4” [101.6mm] substantially corresponds to the range of D3 disclosed by Niimi (30 mm to 100 mm; 1.18 to 3.93 inches).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to form the hose of the gypsum manufacturing system of Niimi to have an inlet size (i.e. first section diameter) and an outlet size (i.e., subsection diameter) corresponding to sizes known to be utilized by prior commercially available hoses (i.e., inlet sizes of 5” or 6”; outlet sizes of 1 5/8”, 2”, 2 3/16”, 2 3/8”, 2 9/16”, 2 7/8”, 3”, 3 1/2" & 4) or otherwise to manufacture the hose in an array of such known sizes, in view of the teachings of Ancaster, in order to maximize compatibility of the hose with existing equipment and accessories, especially considering that Niimi otherwise discloses a range of usable diameters for the first section and the two subsections and the listed sizes of Ancaster represent known commercially available examples within the originally disclosed ranges.
Returning to the ratio of A1:A2, a corresponding ratio of A1:A2 for each of the size combinations taught by Ancaster can be calculated using the same formulas for A1 and A2 previously set forth for Niimi. The resulting calculations reveal that at least the following combinations would result in ratios of A1:A2 falling with the claimed range of 2:1-4:1:
For 5” Inlet (A1 = 19.63 in2)
Outlet Size (A2)
Ratio A1:A2
2” (6.28 in2)
3.125
2-3/16” (7.52 in2)
2.61
2-3/8” (8.86 in2)
2.22
For 6” Inlet (A1 = 28.27 in2)
Outlet Size (A2)
Ratio A1:A2
2-3/16” (7.52 in2)
3.76
2-3/8” (8.86 in2)
3.19
2-9/16” (10.31 in2)
2.74
2-7/8” (12.98 in2)
2.18
3” (14.14 in2)
2
In view of the above, when the system of Niimi is modified as above to utilize any of the above known size combinations, the resulting system would read on the limitation wherein the ratio of A1:A2 is in the range of 2:1-4:1.
While the prior art may not necessarily have recognized that these particular combinations provided improved performance (e.g., improved left-right homogeneity) than combinations outside of this range, the use of size combinations falling within the range was known nonetheless and, as set forth in MPEP § 2112(I), something which is old does not become patentable upon the discovery of a new property: "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus, the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable.
Regarding the remaining limitation wherein the ratio of A1:A3 is in the range of 1:1-4:1, as previously noted, Niimi discloses a range of diameters for the first section which correspond to a range of values for the cross-sectional area A1 [i.e., A1: 7,854 mm2 (at D1 = 100 mm) to 49,087 mm2 (at D1 = 250 mm)]. Niimi further discloses (para. 49, lines 8-10) that the diameter D2 of the third section (14) may range from 50 mm to 150 mm, which would correspond to a range of values for cross sectional area A3 of 1,964 mm2 (at D2 = 50mm) to 17,672 mm2 (at D2 = 150mm).
As can be seen, the above ranges encompass many potential combinations which would fall within the range of limitations wherein the ratio of A1:A3 is in the range of =1:1-4:1. By way of example, when A1 and A3 are each at the smallest end of the disclosed ranges, A1 is exactly four times the size of A3. When A1 and A3 are each at the largest end of the disclosed ranges, A1 is 2.8 times the size of A3.
Furthermore, a person of ordinary skill in the art, when considering the disclosure of Niimi, would reasonably understand that the cross-sectional area of the third section (14), which serves as a transition between the first section (12) and the second section (13), would fall somewhere between the cross-sectional area A1 of the first section and the cross-sectional area A2 of the second section. Indeed, such an arrangement is reasonably shown in fig. 8B of Niimi, and the range of third section diameters disclosed by Niimi also reflects a range between that of the first section and that of the second section.
Additionally, the double mixer boot shown by Ancaster also reasonably appears to have a third section with an area falling between that of the first section and that of the second section (i.e., the third section does not appear to be larger than the first section, and clearly serves to transition to the second section). The other two mixer boots shown in the figure of Ancaster, while of the single outlet type, also reasonably show a corresponding third section which reduces from the first section diameter to a second section diameter.
In view of the above (and if not already seen as such), it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to form the third section of the hose of Niimi to have a cross-sectional area A3 which is between the cross-sectional area A1 of the first section and the cross-sectional area A2 of the second section, in view of the combined teachings of Niimi and Ancaster, in order to provide an appropriate gradual transition between the relatively larger inlet cross-section A1 and the relatively smaller outlet cross-section A2, thus avoiding undesirably abrupt transitions which might otherwise result in increased noise, abrasive wear, solids accumulation, or stagnation zones, etc.
Returning to the limitation wherein the ratio of A1:A3 is in the range of =1:1-4:1, a ratio of 1:1 would correspond to A1 and A3 being equal, while a ratio of 4:1 would correspond to A3 being 1/4th of A1 (i.e., equal to A2 if A1:A2 = 4:1).
With the system of Niimi arranged as set forth above to have A3 between A1 and A2, the corresponding ratio of A1:A3 would range from >1:1 (i.e. as A3 is less than A1) to <A1:A2 (i.e., as A3 is larger than A2, the ratio of A1:A3 is necessarily smaller than A1:A3).
As a result, when the system of Niimi is modified in view of Ancaster as above to utilize one of the known size combinations resulting in A1:A2 being within the range of 2:1-4:1 and to have A3 between A1 and A2, the resulting system would read on the remaining limitation wherein the ratio of A1:A3 is in the range of =1:1 - 4:1 (e.g., for a 5” inlet and 2” outlets, A1:A2 = 3.125, whereby A1:A3 is within a range of 1:1 - 3.125:1).
In view of the above, all of the limitations of claim 1 are met, or are otherwise rendered obvious.
Regarding claim 8, Niimi discloses the additional limitation wherein the cross sectional areas of each of the two subsections of the second section of the hose are substantially equal.
In particular, the figures of Niimi show both of the subsections 16 to be the same size and symmetric in design, and Niimi describes the inner diameter of both subsections as “A diameter…D3…set to be a dimension in a range from 30mm to 100mm”, thus, as person of ordinary skill in the art would reasonably understand this to mean that both of the subsections have the same diameter (and, by extension, the same cross-sectional area) in this base configuration. Moreover, Niimi explicitly discloses that, in a preferred embodiment, they should have a “bilaterally symmetric” configuration (para. 28, lines 1-7).
While Niimi suggests that “if desired”, the diameters of the left and right subsections can be varied from one another, either to achieve different flow rates or to ensure equal flow rates by mitigating an upstream phenomenon (para. 28, lines 7-16), a person of ordinary skill in the art would understand these to be exceptions or modifications to the base embodiment where the cross-sectional area of each subsection within the plurality of subsections is otherwise substantially equal.
Regarding claims 9 & 27, the system of Niimi, as modified above, would, in its normal and usual operation, perform a method of manufacturing a gypsum product (i.e., a gypsum board 4, having a gypsum material [from slurry 3] laminated between paper sheets 1 & 2; see figs. 1-4; paras. 35-38, etc.) comprising:
providing a gypsum manufacturing system (for the method of claim 9: the system according to claim 1 above; for the method of claim 27: the system according to claim 8 above);
mixing a gypsum slurry (3a) in said mixer (5)(see para. 36: “Liquid (water) W and powder ingredients P, such as calcined gypsum, adhesive agent, set accelerator, additives, admixtures, and so forth, are fed to the mixer 5. The mixer mixes these constituent materials…”);
exiting said gypsum slurry from said mixer through said hose (10) onto said forming table (T)(see figs. 1-4; para. 36: “The mixer 5 feeds the resultant slurry (a calcined gypsum slurry) 3 (3a) onto the lower sheet 1 through a slurry delivery section 6 and a slurry delivery conduit 10…”) and
setting said gypsum slurry (para. 37: “The continuous belt-like formation 4 runs continuously at a conveyance velocity V while a setting reaction of the slurry proceeds, until it reaches roughly cutting rollers 9 (9a, 9b)”; para. 38: “The green boards are conveyed toward the direction as shown by the arrow J, and are passed through a dryer (not shown) to be subjected to a forced drying process in the dryer, and thereafter, they are trimmed to be board products, each having a predetermined product length, and thus, gypsum board products are produced”).
Regarding claim 14, with respect to the limitation wherein the ratio of A1:A2 is in the range of 3:1 to 4:1, as can be seen from the tables provided for the rejection of claim 1 above, forming the system of Niimi to utilize any of the following known size combinations in view of Ancaster would result in a corresponding ratio of A1:A2 within the claimed range of 3:1 to 4:1 :
5” Inlet with 2” Outlets [A1:A2 = 3.125]
6” Inlet with 2-3/8” Outlets [A1:A2 = 3.19]
6” Inlet with 2-3/16” Outlets [A1:A2 = 3.76]
Regarding claims 15 & 16, with respect to the limitations wherein the ratio of A1:A3 is in the range of 1.5:1 to 3.5:1 (claim 15) and wherein the ratio of A1:A3 is in the range of 2:1 to 3:1 (claim 16), it is first noted that, while applicant’s specification expresses a preference for a range of ratios of A1:A3 between 1:1 and 4:1, the specification does not set forth evidence of criticality specifically attributable to the narrower claimed ranges of 1.5:1 to 3.5:1 (as in claim 15) or 2:1 to 3:1 (claim 16).
With the system of Niimi arranged as set forth for claim 1 to have A3 between A1 and A2, the corresponding ratio of A1:A3 would range from >1:1 (i.e. as A3 is less than A1) to <A1:A2 (i.e., as A3 is larger than A2, the ratio of A1:A3 is necessarily smaller than A1:A3).
As previously explained, when the system of Niimi is modified in view of Ancaster as above to utilize one of the known size combinations resulting in A1:A2 being within the range of 2:1-4:1 and to have A3 between A1 and A2, the resulting system would have a ratio of A1:A3 in the range of =1:1 - 4:1.
Utilizing specific examples of size combinations taught by Ancaster, as can be seen in the tables provided for claim 1 above, a system using a 5” inlet and 2” outlets would have A1:A2 = 3.125, whereby A1:A3 is within a range of 1:1 - 3.125:1. Similarly, a system using a 6” inlet and 2-3/8” outlets would have A1:A3 in a range of 1:1 to 3.19:1, while a system using a 6” inlet and 2-3/16” outlets would have A1:A3 in a range of 1:1 to 3.76:1.
As set forth in MPEP § 2144.05(I), in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Moreover, as set forth in MPEP § 2144.05(II)(A), “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Niimi by selecting A3 to be any reasonable value between A1 and A2 (as already set forth in the grounds of rejection for claim 1; i.e., resulting in a corresponding ratio A1:A3 being between 1:1 and A1:A2) as required for a particular application (e.g., any reasonable value between 1:1 and 3.125, for an embodiment having a 5” inlet and 2” outlets, etc.), including values which result in ratios of A1:A3 falling within the ranges of 1.5:1 to 3.5:1 (as in claim 15) or 2.1 to 3:1 (as in claim 16) since, as set forth above, it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists” [In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)].
Furthermore, as set forth in MPEP § 2144.05(II)(A), it has been generally held that where the difference between the prior art and a claimed invention involves only a change of form, proportions, or degree, such a difference is unpatentable even though changes of the kind may produce better results than prior inventions [see Smith v. Nichols, 88 U.S. 112, 118-19 (1874) & In re Williams, 36 F.2d 436, 438 (CCPA 1929)]. In the instant case, the only difference between the ranges disclosed in the prior art and the claimed ranges, if any, appears to amount to a change in proportions (i.e., the relative proportions of the first section and the third section; otherwise, a change in form), whereby such a difference is of the kind generally held to be unpatentable even when such changes may produce better results than prior inventions.
Regarding claim 18, the system of Niimi reads on the additional limitation wherein the two subsections (16) of the second section diverge to form a Y or V shape (see fig. 5A). See also para. 20: “The branch part splits the…current smoothly by a fluid passage in the form of a V-letter”. Niimi also discloses other prior art hoses having second sections with two subsections diverging to form a Y or V shape (see figs. 10A & 11A).
Regarding claim 20, Niimi discloses (figs. 1-8) a gypsum manufacturing system (e.g., as in figs. 1 & 2; see para. 36: “a gypsum board production apparatus”) comprising:
a mixer (5) configured to mix a gypsum slurry (3a; “calcined gypsum slurry”);
a forming table (T; “Conveying table T” having forming rollers 8 and lower sheet 1, etc. configured to form the dispensed slurry into a gypsum sheet; see figs. 1 & 2); and
a hose (10; which may be provided in various modified forms, such as that depicted in fig. 8B) coupled to the mixer (5; as shown) and configured to dispense the gypsum slurry from the mixer through the hose and onto the forming table (as shown; see figs. 1-4), wherein the hose (10; when in the modified form of fig. 8B) comprises:
a first section (12) having a cross sectional area A1 (see diameter D1 of first section 12 in fig. 5a & see related para. 48; thus, first section 12 has a cross sectional area
A
1
=
π
4
∙
D
1
2
), and
a second section (13) consisting of two diverging subsections (16), the second section being in fluid communication with said first section (12; via third section 14) such that said first section is located upstream from said second section, with the two subsections diverging as they extend away from the first section (as shown; see flow direction arrows at α in figs. 2-5), the second section having a total cross sectional area A2 (see subsection diameter D3 in fig. 5c & see related para. 51; each of the two subsections has a cross sectional diameter
A
s
u
b
s
e
c
t
i
o
n
=
π
4
∙
D
3
2
; thus, second section 13 has a cross sectional area
A
2
=
2
∙
A
s
u
b
s
e
c
t
i
o
n
, or
A
2
=
π
2
∙
D
3
2
);
wherein said hose comprises a third section (14) having a cross sectional area A3 (see diameter D2 of third section 14 in fig. 5c & see related para. 49; thus, third section 14 has a cross sectional area
A
3
=
π
4
∙
D
2
2
) located intermediate said first section (12) and said second section (13),
wherein said first section (12) is connected to said third section (14) by an elbow (see 12c in fig. 8B),
wherein said first section (12) has a longest dimension d1 (i.e., D1 in fig 5a) in a plane perpendicular to its longitudinal axis (Z); and
wherein each of the two subsections (16) of said second section has a longitudinal axis (see broken lines in figs. 5A-C).
Regarding the limitation wherein said elbow comprises an external radius of curvature Rex at least half d1 and at most twice d1, Ziu teaches (col. 2, lines 49-63) that “Elbow fittings produced commercially throughout the world are standardized in terms of radii. Historically, elbow fittings have primarily been produced using two standard conventions for defining the centerline radius of curvature, regardless of the material of construction of the pipe, or the diameter or wall thickness of the pipe. These two standard conventions are the "short-radius" elbow fitting and the "long-radius" elbow fitting. The short-radius elbow fitting is defined as having a centerline radius of curvature which is approximately equal to the nominal diameter of a corresponding straight section of pipe. A long-radius elbow fitting is defined as having a centerline radius-of-curvature which is approximately equal to 1.5 times the diameter of the corresponding straight section of pipe.”
As would be understood by a person having ordinary skill int the art, for a standard elbow fitting design, the external radius of curvature would be the centerline radius of curvature plus one additional radius (e.g., see fig. 1 of US 5,054,819 to Grunwald). Thus, a short-radius elbow fitting would have an external radius of curvature of approximately 1.5 times the diameter of a corresponding straight pipe section while a long-radius elbow would have an external radius of curvature of approximately 2 times the diameter of a corresponding straight pipe section.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Niimi such that the elbow comprises an external radius of curvature Rex at least half d1 and at most twice d1 (e.g., 1.5 times D1 in the case of a short-radius type elbow fitting) in view of the teachings of Ziu, especially considering that Ziu explains that elbows are conventionally produced to such a standard convention for defining the radius of curvature “regardless of the material of construction of the pipe, or the diameter or the wall thickness of the pipe”, and selecting an elbow geometry for a particular application based on known standard is a matter of routine engineering design.
Regarding the limitation wherein each of the two subsections of said second section has a longitudinal axis that lies perpendicular to the longitudinal axis of said first section, Niimi discloses that the longitudinal axis (Z) of the first section (12) as shown (e.g., in figs 5B & 5C) is “vertically extending” but “may have the center axis Z-Z somewhat inclined with respect to the vertical direction” (para. 48). Niimi also discloses that the longitudinal axes of the two subsections (16), along with the axis of the third section (14), are generally horizontal but are inclined relative to horizontal with an angle θ1 “set to be, for instance, an angle ranging from 10 degrees to 30 degrees” (para. 49, lines 5-6).
The above disclosures of Niimi therefore disclose or reasonably suggest that the longitudinal axes of the two subsections (and the longitudinal axis of the third section) may be inclined relative to a vertically arranged axis Z of the first section between 60 and 80 degrees, and potentially more in instances where the axis Z is somewhat inclined relative to vertical.
As a result, Niimi may reasonably be seen as disclosing that the longitudinal axes of the two subsections (and the longitudinal axis of the third section) are generally (i.e., nearly) perpendicular to the longitudinal axis of said first section and, as set forth in MPEP § 2144.05(I), a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). See also In re Scherl, 156 F.2d 72, 74-75, 70 USPQ 204, 205-206 (CCPA 1946) (prior art showed an angle in a groove of up to 90° and an applicant claimed an angle of no less than 120°).
However, as Niimi does not explicitly disclose the axis of first section to be strictly “perpendicular” to the axes of the two subsections (and the axis of third section), to promote compact prosecution, the following additional teaching is provided:
Wittbold teaches (figs. 1-12; particularly figs. 1, 4, 5 & 7) a hose (200) for use in a gypsum manufacturing system (see fig. 12; para. 2, etc.), the hose comprising: an upstream first section (221), a downstream second section having two subsections (204 & 206), and a third section (208 and/or 223) located intermediate said first section and said second section, wherein said first section (202 / 221) is connected to said third section (208 and/or 223) by an elbow (225), wherein the longitudinal axis (75; “main entry flow axis”) of said first section lies perpendicular to the longitudinal axis (85; “main flow discharge axis”) of said third section and the longitudinal axes of the subsections of the second section (see fig. 5; para. 55).
Wittbold explains (para. 55) that the first section (221) is disposed at a feed angle θ with respect to the third section (i.e., 223) and the second section (204 & 206) which can range, in certain embodiments, from about 45 degrees to 175 degrees, or 60 degrees to 120 degrees, or 70 degrees to 110 degrees. Wittbold teaches that, in the illustrated embodiment, the first section (221) is “substantially perpendicular” to the second (204, 206) and third (223) sections.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Niimi such that the longitudinal axis of said first section lies perpendicular to the longitudinal axes of each of the two subsections of said second section and the longitudinal axis of said third section, in view of the teachings of Wittbold, as the simple substitution of one known second / third section inclination arrangement (i.e., the original second / third section inclination arrangement of Niimi, where the hose sections downstream of the elbow may be inclined 10 to 30 degrees from perpendicular) for another (i.e., arrangement of Wittbold, wherein the hose sections downstream of the elbow are provided perpendicular to the first section upstream of the elbow) to obtain predictable results (e.g., a reduction in hose exit velocity, due to removal of the downward incline and/or due to additional head losses at the elbow resulting from a greater change of direction).
Regarding the limitation wherein the ratio of A1:A2 is in the range of 3:1-4:1, Niimi discloses that “the diameter D1 is set to be, for instance, a dimension in the range from 100 mm to 250 mm” [3.93 to 9.84 inches](para. 48, lines 6-7) and that the diameter D3 in each subsection 16 (of second section 13) “is set to be a dimension in a range from 30 mm to 100 mm” [1.18 to 3.93 inches](para. 51, lines 1-3).
Given the cross-sectional area formulas for A1 and A2 above, the disclosed range of diameters of Niimi results in the following ranges of cross-sectional areas:
A1: 7,854 mm2 (at D1 = 100 mm) to 49,087 mm2 (at D1 = 250 mm)
Asubsection = 707 mm2 (at D3 = 30 mm) to 7,854 mm2 (at D3 = 100 mm)
A2: 1,414 mm2 (at D3 = 30 mm) to 15,708 mm2 (at D3 = 100 mm)
As can be seen, the above ranges encompass many potential combinations which would fall within the range defined by the limitation wherein the ratio of A1:A2 is in the range of 3:1-4:1. By way of example, when A1 and A2 are each at the largest end of the disclosed ranges, A1 is 3.1 times the size of A2, corresponding to a ratio of 3.1:1. However, it is recognized that Niimi does not provide any specific examples of dimensions which would necessarily fall within the claimed range.
Ancaster (cited in applicant’s IDS received on 30 June 2025) is an NPL document containing a catalog excerpt listing commercially available components for gypsum manufacturing systems (and further including miscellaneous communications by sales representatives offering for sale the products listed therein, circa January 2002).
Page 10 of the references includes a table entitled “Mixer Boot Specifications”, and an accompanying photograph is included on page 11, entitled “ACS mixer boots”. As would be reasonably understood by a person having ordinary skill in the art, the table entry under “mixer boot style and sized” entitled “Double Mixer Boot” is intended to correspond to the double mixer boot shown at the top right of the accompanying photograph. See annotated figure provided in the grounds of rejection for claim 1 above.
One of ordinary skill in the art would readily recognize the “double mixer boot” of Ancaster to be substantially same type of device as the “hose” in the instant case, which is also the same type of device as the discharge conduits / hoses in both Niimi and Wittbold (i.e., the instant application, Ancaster, Wittbold, and Niimi each relate to double outlet / discharge mixer boots / hoses for gypsum manufacturing systems).
Turning again to the table on page 10 of Ancaster, the table lists “Inlet Sizes” (i.e., first section diameters, as understood) of 5” and 6”, and “Outlet Sizes” (i.e., second section subsection diameters, as understood) of 1 5/8”, 2”, 2 3/16”, 2 3/8”, 2 9/16”, 2 7/8”, 3”, 3 1/2" & 4”.
As can be readily seen, the inlet sizes of 5” [127mm] and 6” [152.4 mm] of the commercially available hose of Ancaster each fall within the range of D1 disclosed by Niimi (100 mm to 250 mm; 3.93 to 9.84 inches). Similarly, the range of outlet sizes from 1 5/8” [41.28mm] to 4” [101.6mm] substantially corresponds to the range of D3 disclosed by Niimi (30 mm to 100 mm; 1.18 to 3.93 inches).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to form the hose of the gypsum manufacturing system of Niimi to have an inlet size (i.e. first section diameter) and an outlet size (i.e., subsection diameter) corresponding to sizes known to be utilized by prior commercially available hoses (i.e., inlet sizes of 5” or 6”; outlet sizes of 1 5/8”, 2”, 2 3/16”, 2 3/8”, 2 9/16”, 2 7/8”, 3”, 3 1/2" & 4) or otherwise to manufacture the hose in an array of such known sizes, in view of the teachings of Ancaster, in order to maximize compatibility of the hose with existing equipment and accessories, especially considering that Niimi otherwise discloses a range of usable diameters for the first section and the two subsections and the listed sizes of Ancaster represent known commercially available examples within the originally disclosed ranges.
Returning to the ratio of A1:A2, a corresponding ratio of A1:A2 for each of the size combinations taught by Ancaster can be calculated using the same formulas for A1 and A2 previously set forth for Niimi. The resulting calculations reveal that at least the following combinations would result in ratios of A1:A2 falling with the claimed range of 3:1-4:1:
For 5” Inlet (A1 = 19.63 in2)
Outlet Size (A2)
Ratio A1:A2
2” (6.28 in2)
3.125
For 6” Inlet (A1 = 28.27 in2)
Outlet Size (A2)
Ratio A1:A2
2-3/16” (7.52 in2)
3.76
2-3/8” (8.86 in2)
3.19
In view of the above, when the system of Niimi is modified as above to utilize any of the above known size combinations, the resulting system would read on the limitation wherein the ratio of A1:A2 is in the range of 3:1-4:1.
While the prior art may not necessarily have recognized that these particular combinations provided improved performance (e.g., improved left-right homogeneity) than combinations outside of this range, the use of size combinations falling within the range was known nonetheless and, as set forth in MPEP § 2112(I), something which is old does not become patentable upon the discovery of a new property: "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus, the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable.
Regarding claim 21, the system of Niimi, as modified in the grounds of rejection of claim 20 above such that the longitudinal axis of said first section lies perpendicular to the longitudinal axes of each of the two subsections of said second section and the longitudinal axis of said third section (i.e., in view of Wittbold), reads on the additional limitation wherein the longitudinal axis of said first section lies perpendicular to a longitudinal axis of said third section.
Regarding claims 23 & 24, it is noted that new claim 23 is a combination of claims 14 & 15, while new claim 24 is a combination of claims 14 & 16.
The limitation wherein the ratio of A1:A2 is in the range of 3:1 to 4:1 (recited in both claims 23 & 24) corresponds to the limitation already recited in claim 14 and is found to be unpatentable for corresponding reasons as already discussed for claim 14 above (not repeated for brevity).
The remaining limitations of claims 23 & 24, wherein the ratio of A1:A3 is in the range of 1.5:1 to 3.5:1 (claim 23) and wherein the ratio of A1:A3 is in the range of 2:1 to 3:1 (claim 24), correspond to limitations already recited in claims 15 & 16, respectively, and are found to be unpatentable for corresponding reasons as already discussed for claims 15 & 16 above (not repeated for brevity).
Regarding claim 25, the system of Niimi reads on the additional limitation wherein the two subsections (16) of the second section diverge to form a Y or V shape (see fig. 5A). See also para. 20: “The branch part splits the…current smoothly by a fluid passage in the form of a V-letter”. Niimi also discloses other prior art hoses having second sections with two subsections diverging to form a Y or V shape (see figs. 10A & 11A).
Regarding claim 26, Niimi discloses the additional limitation wherein the cross sectional areas of each of the two subsections of the second section of the hose are substantially equal.
In particular, the figures of Niimi show both of the subsections 16 to be the same size and symmetric in design, and Niimi describes the inner diameter of both subsections as “A diameter…D3…set to be a dimension in a range from 30mm to 100mm”, thus, as person of ordinary skill in the art would reasonably understand this to mean that both of the subsections have the same diameter (and, by extension, the same cross-sectional area) in this base configuration. Moreover, Niimi explicitly discloses that, in a preferred embodiment, they should have a “bilaterally symmetric” configuration (para. 28, lines 1-7).
While Niimi suggests that “if desired”, the diameters of the left and right subsections can be varied from one another, either to achieve different flow rates or to ensure equal flow rates by mitigating an upstream phenomenon (para. 28, lines 7-16), a person of ordinary skill in the art would understand these to be exceptions or modifications to the base embodiment where the cross-sectional area of each subsection within the plurality of subsections is otherwise substantially equal.
Regarding claims 28-33, these claims each recite a method of manufacturing a gypsum product substantially corresponding to those already recited in claims 9 & 27, except they require providing the gypsum manufacturing system according to different respective claims (claims 9 & 27, already discussed, provide the system according to claims 1 & 8, respectively; additional claims 28-33 provide the system according to claims 18, 20 & 23-26, respectively).
The system of Niimi (as set forth in the grounds of rejection for claims 18, 20 & 23-26, respectively) would, in its normal and usual operation, perform a method of manufacturing a gypsum product comprising: providing a gypsum manufacturing system (i.e., according to claim 18, 23, or 24, respectively); mixing a gypsum slurry in said mixer; exiting said gypsum slurry from said mixer through said hose onto said forming table; and setting said gypsum slurry; for corresponding reasons as already detailed for claims 9 & 27 above (not repeated for brevity).
Response to Arguments
Applicant's arguments filed 31 October 2025 have been fully considered but they are not persuasive.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
As such, applicant’s initial argument that Niimi does not suggest the claimed A1:A2 ratio is not found to be persuasive. As noted in applicant’s remarks, Niimi discloses a range of possible A1:A2 values, which encompass the claimed ranges. While Niimi does not disclose specific dimensions which would fall within the narrower claimed ranges, Ancaster provides a list of known / commercially available inlet and outlet sizes for such hoses whereby a number of area ratios resulting from combinations of the known sizes would fall within the claimed ranges.
Applicant further argues that, as Ancaster appears to show outlets that are parallel with each other, the hose would have a “wall surface region” which would result in stagnation, which Niimi seeks to avoid. This argument is not found to be persuasive for several reasons.
First, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
See also MPEP § 2141.03(I): "A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007). "[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle." Id. at 420, 82 USPQ2d 1397. Office personnel may also take into account "the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at 418, 82 USPQ2d at 1396.
In this case, a person of ordinary skill in the art would have recognized that the inlet and outlet sizes taught by Ancaster, known to be used in commercially available prior art hoses and which fall within a size range substantially corresponding to that disclosed by Niimi, could be used for the hose of Niimi (e.g., in order to maximize compatibility of the hose with existing equipment and accessories), without necessarily incorporating other features such as a stagnation-inducing wall structure at the branch point.
Furthermore, while Niimi seeks to improve on prior art hoses having parallel outlet sections as in FIG. 11 (i.e. like those of Wittbold and Ancaster), this does not constitute a “teaching away” as appears to be suggested by applicant. As set forth in MPEP § 2123(II), Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994).
Applicant argues that “there would have been no reason to apply the dimension suggested by Ancaster for its parallel outlets to the diverging outlets of Niimi’s slurry delivery conduits”. This argument is not found to be persuasive for several reasons.
First, as set forth in the grounds of rejection, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to form the hose of the gypsum manufacturing system of Niimi to have an inlet size (i.e. first section diameter) and an outlet size (i.e., subsection diameter) corresponding to sizes known to be utilized by prior commercially available hoses (i.e., inlet sizes of 5” or 6”; outlet sizes of 1 5/8”, 2”, 2 3/16”, 2 3/8”, 2 9/16”, 2 7/8”, 3”, 3 1/2" & 4) or otherwise to manufacture the hose in an array of such known sizes, in view of the teachings of Ancaster, in order to maximize compatibility of the hose with existing equipment and accessories, especially considering that Niimi otherwise discloses a range of usable diameters for the first section and the two subsections and the listed sizes of Ancaster represent known commercially available examples within the originally disclosed ranges.
Applicant further argues that, as Niimi suggests that “diverging” vs “parallel” geometry of the second sections can have a “significant effect” on the uniformity of the flow, “were the person of ordinary skill in the art to use the double mixer boots of Ancaster as they are presented, they would not arrive at the claimed system because there would be no diverging second sections. Rather, they would be parallel as in the distinguished prior art…”. This argument is not found to be persuasive. As previously noted, to rely upon the teachings of the inlet and outlet sizes of Ancaster, there is no requirement to bodily incorporate the entirety of the hose structure of Ancaster into the hose of Niimi. A person of ordinary skill in the art would have understood that the inlet and outlet sizes of Ancaster could be used with the hose of Niimi, with a reasonable expectation of success, even if the outlet sections were arranged to diverge rather than run parallel.
Applicant similarly argues that the “parallel outlets” of Ancaster are “very different” from the “diverging outlets” of Niimi. This argument is not found to be persuasive. Applicant has provided no evidence or articulated reasoning to support the position that a person of ordinary skill in the art would consider the outlets of Ancaster and Niimi to be “very different”. A person of ordinary skill in the art would understand Niimi as teaching the diverging outlet sections to be a modification / improvement to the otherwise known parallel outlet sections. In this way, whether parallel or diverging, said person of ordinary skill in the art would reasonably understand them to be similar / corresponding structures, not “very different” as suggested.
Applicant further argues that “Ancaster is merely a product catalog, and does not provide any teachings with respect to why its outlet sizes are what they are, so it provides very little guidance to the person of ordinary skill in selecting outlet sizes”. This argument is not found to be persuasive. As noted, Ancaster is seen as disclosing the inlet and outlet sizes as being commercially available sizes for such hoses, and such sizes otherwise fall within the range of suitable sizes disclosed by Niimi.
As set forth in MPEP § 2141(III): “[t]he obviousness analysis cannot be confined by . . . overemphasis on the importance of published articles and the explicit content of issued patents…. In many fields it may be that there is little discussion of obvious techniques or combinations, and it often may be the case that market demand, rather than scientific literature, will drive design trends.” KSR, 550 U.S. at 419, 82 USPQ2d at 1396.
Thus, even though Ancaster does not explicitly state why those sizes are offered, the reference still teaches that they are available and, as mentioned, it would have been obvious to a person having ordinary skill in the art to form the hose of Niimi to have an inlet size and an outlet size corresponding to sizes known to be utilized by prior commercially available hoses or otherwise to manufacture the hose in an array of such known sizes in order to maximize compatibility of the hose with existing equipment and accessories, especially considering that Niimi already discloses a range of usable diameters for the first section and the two subsections and the listed sizes of Ancaster represent known commercially available examples within the disclosed ranges of Niimi.
As set forth section III.A of the USPTO notice titled “Updated Guidance for Making a Proper Determination of Obviousness” at 89 Fed. Reg. 14449 February 27, 2024 (notice):
“Federal Circuit case law since KSR follows the mandate of the Supreme Court to understand the prior art— including combinations of the prior art—in a flexible manner that credits the common sense and common knowledge of a PHOSITA. The Federal Circuit has made it clear that a narrow or rigid reading of prior art that does not recognize reasonable inferences that a PHOSITA would have drawn is inappropriate. An argument that the prior art lacks a specific teaching will not be sufficient to overcome an obviousness rejection when the allegedly missing teaching would have been understood by a PHOSITA—by way of common sense, common knowledge generally, or common knowledge in the relevant art.
For example, in Randall Mfg. v. Rea, 733 F.3d 1355 (Fed. Cir. 2013), the Federal Circuit vacated a determination of nonobviousness by the Patent Trial and Appeal Board (PTAB or Board) because it had not properly considered a PHOSITA’s perspective on the prior art. Id. at 1364. The Randall court recalled KSR’s criticism of an overly rigid approach to obviousness that has ‘‘little recourse to the knowledge, creativity, and common sense that an ordinarily skilled artisan would have brought to bear when considering combinations or modifications.’’ Id. at 1362, citing KSR, 550 U.S. at 415–22, 127 S. Ct. at 1727.”
Applicant’s arguments that a person of ordinary skill in the art would not have considered utilizing the inlet and outlet sizes of Ancaster, corresponding to sizes already known to be used for commercially available prior art hoses, for the hose of Niimi, even though such values fall within the range of sizes suggested by Niimi, because Niimi suggests that the outlet portions should diverge rather than run parallel, relies upon the same kind of “narrow or rigid reading” of the prior art which the Federal Circuit has found inappropriate as it does not recognize reasonable inferences that a person of ordinary skill in the art would have drawn, and otherwise constitutes an overly rigid approach to obviousness that has ‘‘little recourse to the knowledge, creativity, and common sense that an ordinarily skilled artisan would have brought to bear when considering combinations or modifications.’’.
With respect to “claims 18 & 26”, applicant argues that “there would have been no reason to arrive at the substantially equal area subsections of the second section…based on the teachings of Ancaster” as Niimi suggests “differing the diameter of the left port versus the right port as a means for compensating for the differing flow rates”, and as Ancaster also shows outlets of different sizes. This argument is not found to be persuasive for several reasons.
Note: this argument was likely intended to reference claims 8 and 26, not 18 and 26.
First, as stated in the corresponding grounds of rejection, Niimi already discloses the additional limitation wherein the cross sectional areas of each of the two subsections of the second section of the hose are substantially equal. In particular, the figures of Niimi show both of the subsections 16 to be the same size and symmetric in design, and Niimi describes the inner diameter of both subsections as “A diameter…D3…set to be a dimension in a range from 30mm to 100mm”, thus, a person of ordinary skill in the art would reasonably understand this to mean that both of the subsections have the same diameter (and, by extension, the same cross-sectional area) in this base configuration. Moreover, Niimi explicitly discloses that, in a preferred embodiment, they should have a “bilaterally symmetric” configuration (para. 28, lines 1-7).
While Niimi suggests that “if desired”, the diameters of the left and right subsections can be varied from one another, either to achieve different flow rates or to ensure equal flow rates by mitigating an upstream phenomenon (para. 28, lines 7-16), a person of ordinary skill in the art would understand these to be exceptions or modifications to the base embodiment where the cross-sectional area of each subsection within the plurality of subsections is otherwise substantially equal.
Similarly, while the image of the double boot of Ancaster appears to show an asymmetrical configuration, there is nothing in Ancaster to explicitly suggest that the depicted asymmetrical configuration is the only available configuration, or that a symmetrical configuration is excluded. See MPEP § 2123(II): Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).
A person of ordinary skill in the art, when considering the teachings of Ancaster, would have understood or otherwise reasonably inferred that the outlet size for each side could be selected independently from among the listed size options, whereby the outlets could have the same cross-sectional area (i.e. if the same size is selected for each) or different cross-sectional areas (i.e., if different sizes are selected), especially when considered in view of Niimi, which discloses a preference for symmetrical design but provides rationale for using an alternative asymmetrical design if desired for certain applications.
Applicant further argues that “Ancaster also discloses a broad range of possible A1:A2 ratios and thus does not ameliorate the deficiencies of Niimi”.
In support of this point, applicant first reiterates that Ancaster shows two differently sized outlets. As above, this argument is not found to be persuasive as Niimi already discloses that both outlets can be provided with the same cross-sectional area and Ancaster does not necessarily require different cross-section areas, even though such is shown in the figure.
Applicant further explains that the smallest possible A1:A2 ratio in Ancaster is 0.78 (5” inlet, two 4” outlets) and the largest is 6.83 (6” inlet with two 1-5/8” outlets)[Note: applicant repeated “two 4” outlets” for the 6.83 value but this is a typographical error; 6.83 corresponds to 6” inlet and 1-5/8” outlet].
Applicant suggests that “As Ancaster does not suggest that the double mixer boots can have issues regarding flow heterogeneity, there is nothing in Ancaster that would suggest that the claimed A1:A2 ratio in the range of 2:1 to 4:1 (or 3:1 to 4:1) can help minimize flow heterogeneity between the two outlets”.
Finally, Applicant states: “Furthermore, only particular combinations of inlets and outlets would lead to a double mixer boot having an A1:A2 ratio in the range of 3:1 to 4:1. For example, in the tables listed by the office… only 3 of the 18 possible double mixer boots (~17%) would lead to an A1:A2 ratio in the range of 3:1 to 4:1. If expanded to include double mixer boots having outlets of different sizes, only 13 of the 90 possible double mixer boots (~14%) would lead to an A1:A2 ratio in the range of 3:1 to 4:1”.
These arguments are not found to be persuasive for several reasons.
Regarding the related points that the range of sizes of Ancaster could result in some combinations outside of the broader claimed range (2:1 to 4:1), and that only some of the combinations would result in values within the narrower claimed range (3:1 to 4:1), there is no requirement that all of the size combinations of Ancaster must result in ratios within the claimed range: 8 of the 18 possible symmetrical combinations fall within the broader claimed range and, as noted by applicant, 3 of these also fall within the narrower claimed range.
As set forth in MPEP § 2131.03(I), "[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985); "If the prior art discloses a point within the claimed range, the prior art anticipates the claim." UCB, Inc. v. Actavis Labs. UT, Inc., 65 F.4th 679, 687, 2023 USPQ2d 448 (Fed. Cir. 2023).
It appears applicant is attempting to draw parallels between the genus-species situation of Niimi, which discloses a broad range of sizes (but not particular values within the range) and Ancaster, which teaches a list of particular sizes (which may be collectively seen as defining a broader range); but this is not found to be persuasive.
With Niimi alone (absent consideration of Ancaster), the claimed range of ratios fall inside the broader range of ratios implicitly enabled by the corresponding area ranges, establishing a prima facie case of obviousness. However, Niimi does not specifically set forth examples within the relatively narrower claimed range, and applicant argues that the use of ratios within the narrower ranges improves homogeneity in a manner which would not be the case across the Niimi’s entire disclosed range. However, this is no longer the case when considering the further teachings of Ancaster.
In particular, Ancaster includes a list of specific inlet and outlet sizes which are intended to be selected from in various combinations (i.e., the various combinations defining the range of configurations available for order in the catalog). Because Ancaster includes a finite list of specific sizes, rather than a broad range, the issue of genus-species relative to the claimed range is reversed here: as noted above, “If the prior art discloses a point within the claimed range, the prior art anticipates the claim.".
As set forth in MPEP § 2131.02(I): "A generic claim cannot be allowed to an applicant if the prior art discloses a species falling within the claimed genus." The species in that case will anticipate the genus. In re Slayter, 276 F.2d 408, 411, 125 USPQ 345, 347 (CCPA 1960).
See also MPEP § 2131.02(II): “A genus does not always anticipate a claim to a species within the genus. However, when the species is clearly named, the species claim is anticipated no matter how many other species are additionally named. See Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990) (The claimed compound was named in a reference which also disclosed 45 other compounds. The Board held that the comprehensiveness of the listing did not negate the fact that the compound claimed was specifically taught. The Board compared the facts to the situation in which the compound was found in the Merck Index, saying that "the tenth edition of the Merck Index lists ten thousand compounds. In our view, each and every one of those compounds is ‘described’ as that term is used in [pre-AIA ] 35 U.S.C. 102(a), in that publication."). Id. at 1718.
In other words, while Niimi disclosed only a broad range which does not necessarily anticipate or render obvious a narrower range, Ancaster implicitly discloses a finite set of cross-sectional area combinations (and, by extension, a finite set of cross-sectional area ratio values). Since the teachings of Ancaster suggest specific cross-sectional area ratio values (rather than mere ranges), the claim would be rendered obvious if any of the ratio values among the finite list of ratio values was within the claimed range and in this case, as mentioned, there are 8 such values which fall within the broader claimed range and 3 which fall within the narrower claimed range.
While the prior art may not have recognized that these particular combinations provided improved performance (e.g., improved left-right homogeneity) relative to combinations outside of this range, the use of size combinations falling within the claimed range was known nonetheless and, as set forth in MPEP § 2112(I), something which is old does not become patentable upon the discovery of a new property: "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus, the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable.
Related to the above, applicant further argues that Niimi discloses varying the diameter of the left and right ports to adjust the flow rate, rather than selecting outlet vs inlet area ratios. This argument is not found to be persuasive for several reasons.
First, while Niimi suggest that an asymmetrical design can be used if desired to induce or correct for flow imbalance, this is not a required feature but rather an optional alternative to the otherwise preferred symmetrical design.
It is also noted that the grounds of rejection to utilize the inlet and outlet sizes of Ancaster in the hose of Niimi do not rely on the motivation of reducing heterogeneity, but rather in a motivation to utilize sizes already known to be commercially available (e.g., in order to maximize compatibility of the hose with existing equipment and accessories, especially considering that Niimi otherwise discloses a range of usable diameters for the first section and the two subsections and the listed sizes of Ancaster represent known commercially available examples within the originally disclosed ranges).
As set forth in MPEP § 2144(IV), the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006).
The combination of Niimi and Ancaster renders obvious the use of certain combinations of inlet and outlet sizes, a subset of which would result in area ratios falling within the claimed range which applicant has discovered may provide additional benefits (i.e., improved homogeneity). However, this amounts to a discovery of an inherent benefit which would have already been present in prior art hoses having such ratios, even if not recognized previously.
The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art (i.e., using size combinations which fall within a subset of size combinations already known to be used) cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
See also MPEP § 2112(II): There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003).
Moreover, the fact that Niimi discloses one potential technique for improving flow heterogeneity does not necessarily discourage or teach away from the use of a different technique which may also (intentionally or unintentionally) improve flow heterogeneity,
As set forth in MPEP § 2143.01(I), the disclosure of desirable alternatives does not necessarily negate a suggestion for modifying the prior art to arrive at the claimed invention.
See also section III.B of the USPTO notice titled “Updated Guidance for Making a Proper Determination of Obviousness” at 89 Fed. Reg. 14449 February 27, 2024 (notice):
“The Federal Circuit has… clarified that a proposed reason to combine the teachings of prior art disclosures may be proper, even when the problem addressed by the combination might have been more advantageously addressed in another way. PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1197–98 (Fed. Cir. 2014) (‘‘Our precedent, however, does not require that the motivation be the best option, only that it be a suitable option from which the prior art did not teach away.’’) (emphasis in original).”
Conclusion
The prior art made of record in the attached PTO-892 and not relied upon is considered pertinent to applicant's disclosure.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/Richard K. Durden/Examiner, Art Unit 3753
/KENNETH RINEHART/Supervisory Patent Examiner, Art Unit 3753