OFFICE ACTION
This application has been assigned or remains assigned to Technology Center 1700, Art Unit 1774 and the following will apply for this application:
Please direct all written correspondence with the correct application serial number for this application to Art Unit 1774.
Telephone inquiries regarding this application should be directed to the Electronic Business Center (EBC) at http://www.uspto.gov/ebc/index.html or 1-866-217-9197 or to the Examiner at (571) 272-1139. All official facsimiles should be transmitted to the centralized fax receiving number (571)-273-8300.
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 .
Election/Restriction Requirement
This application presents independent and distinct inventions (process and apparatus). Although all claims are being treated on the merits in this office action, the examiner reserves the right to require a restriction requirement at a later time if the prosecution warrants such action. See MPEP 811 and 37 CFR 1.142(a).
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. § 119, which papers have been placed of record in the file.
Information Disclosure Statement
Note the attached PTO-1449 for(s) submitted with the Information Disclosure Statement filed 1 MAY 2025.
Drawings
The drawings are objected to under 37 CFR § 1.84 in view of the following deficiencies that require correction:
the sole drawing figure does not comply with 37 CFR 1.84(u):
Numbering of views: (1) The different views must be numbered in consecutive Arabic numerals, starting with 1, independent of the numbering of the sheets and, if possible, in the order in which they appear on the drawing sheet(s). Partial views intended to form one complete view, on one or several sheets, must be identified by the same number followed by a capital letter. View numbers must be preceded by the abbreviation "FIG." Where only a single view is used in an application to illustrate the claimed invention, it must not be numbered and the abbreviation "FIG." must not appear.
Applicant should review the specification and drawing Figures to ensure a proper one-to-one correspondence between the specification and drawings in accordance with MPEP 608.01(g) and 37 CFR 1.84(f). The brief description of the drawings and the descriptive portion of the specification will require revision in accordance with any drawing objections listed herein or those noticed by Applicant during said review.
From MPEP 608.01(g): The reference characters must be properly applied, no single reference character being used for two different parts or for a given part and a modification of such part. See 37 CFR 1.84(p). Every feature specified in the claims must be illustrated, but there should be no superfluous illustrations.
INFORMATION ON HOW TO EFFECT DRAWING CHANGES
Replacement Drawing Sheets
Drawing changes must be made by presenting replacement figures which incorporate the desired changes and which comply with 37 CFR 1.84. An explanation of the changes made must be presented either in the drawing amendments, or remarks, section of the amendment. Any replacement drawing sheet must be identified in the top margin as “Replacement Sheet” (37 CFR 1.121(d)) and include all of the figures appearing on the immediate prior version of the sheet, even though only one figure may be amended. The figure or figure number of the amended drawing(s) must not be labeled as “amended.” If the changes to the drawing figure(s) are not accepted by the examiner, applicant will be notified of any required corrective action in the next Office action. No further drawing submission will be required, unless applicant is notified.
Identifying indicia, if provided, should include the title of the invention, inventor’s name, and application number, or docket number (if any) if an application number has not been assigned to the application. If this information is provided, it must be placed on the front of each sheet and centered within the top margin.
Annotated Drawing Sheets
A marked-up copy of any amended drawing figure, including annotations indicating the changes made, may be submitted or required by the examiner. The annotated drawing sheets must be clearly labeled as “Annotated Marked-up Drawings” and accompany the replacement sheets.
Timing of Corrections
Applicant is required to submit acceptable corrected drawings within the time period set in the Office action. See 37 CFR 1.85(a). Failure to take corrective action within the set period will result in ABANDONMENT of the application.
If corrected drawings are required in a Notice of Allowability (PTOL-37), the new drawings MUST be filed within the THREE MONTH shortened statutory period set for reply in the “Notice of Allowability.” Extensions of time may NOT be obtained under the provisions of 37 CFR 1.136 for filing the corrected drawings after the mailing of a Notice of Allowability.
Specification
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant's cooperation is requested in correcting any errors of which applicant may become aware in the specification.
The abstract is acceptable.
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed (MPEP 606.01).
Claim Rejections - 35 U.S.C. § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
The inquiry during examination is patentability of the invention as the inventor or a joint inventor regards such invention. If the claims do not particularly point out and distinctly claim that which the inventor or a joint inventor regards as his or her invention, the appropriate action by the examiner is to reject the claims under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. In re Zletz, 893 F.2d 319, 13 USPQ2d 1320 (Fed. Cir. 1989).
Claims 4, 7, 8, and 10-15 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
NOTE: Per 37 CFR 1.75(c), dependent claims shall be construed to include all the limitations of the claim incorporated by reference into the dependent claim. Accordingly, by definition, any claims that depend from a claim that is deemed indefinite under 35 USC 112(b) will also be considered indefinite and identified in the list of rejected claims above, even if such claims are themselves free of indefiniteness under § 112(b).
Regarding claims 4, 7, and 8, the phrase "in particular" renders the claims indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention or not. See MPEP § 2173.05(d).
Regarding claim 8, the phrase "such as" renders the claims indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention or not. See MPEP § 2173.05(d).
Claim 10, line 6: “the discharged polymer” lacks antecedent basis.
Claims 10 and 14 use a phrase including the word “means” in conjunction with a structural element - “a melt filter device” (i.e., “by means of a melt filter device”). In view of utilizing the word “means”, it is unclear whether these words convey function or structure. A limitation to be construed under 35 U.S.C. 112(f) cannot recite the structure for performing the function. Since no clear function is specified by these phrases, it is impossible to determine the equivalents of the element, as required by 35 U.S.C. 112(f). See Ex parte Klumb, 159 USPQ 694 (Bd. App. 1967).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4 and 6-9 of the instant application are rejected on the ground of nonstatutory obviousness-type double patenting (ODP) as being unpatentable over claims 1-8 of Application Serial No. 18/618,842. Although the conflicting claims are not identical, they are not patentably distinct from each other because the conflicting claims in the ‘842 application anticipate the subject matter of the pending claims 1-4 and 6-9 in the instant ‘686 application.
In the alternative, the patented claims are a species of the more generic claims of the instant application. As such, a species anticipates a genus. Thus, the subject matter of the pending application claims is anticipated by the subject matter of the patented claims.
Moreover, all of the elements recited in instant claims 1-4 and 6-9 are found within the conflicting claims 1-8. Accordingly, since the sets of claims in both applications effectively recite the same elements, these sets of claims, although not exactly alike, are not patentably distinct from each other giving rise to this double patenting rejection.
Furthermore, in view of this analysis, the following facts should be noted:
The disclosures of both the instant application and the ‘842 application are substantially similar.
The instant application claims were not presented earlier for examination on the merits.
The instant application claims are directed substantially to the same embodiment as the claims of the ‘842 application.
The inventive entity/Applicant of the instant ‘686 application and the ‘842 application is the same.
The instant application does not appear to be the product of a restriction requirement made during prosecution of the ‘842 patent.
For the foregoing reasons, the obviousness type double patenting rejection is justified and a timely filed and proper terminal disclaimer will be necessary to overcome this ODP rejection.
This is a provisional obviousness-type double patenting rejection because the conflicting claims in the other application have not been patented.
Claim Rejections - 35 USC § 102
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 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.
The terms used in this respect are given their broadest reasonable interpretation in their ordinary usage in context as they would be understood by one of ordinary skill in the art, in light of the written description in the specification, including the drawings, without reading into the claim any disclosed limitation or particular embodiment. See, e.g., In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000); In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989).
The Examiner interprets claims as broadly as reasonable in view of the specification, but does not read limitations from the specification into a claim. Elekta Instr. S.A.v.O.U.R. Sci. Int'l, Inc., 214 F.3d 1302, 1307 (Fed. Cir. 2000). "A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference." Verdegaal Bros. Inc. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987).
The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. "The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness." In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995) (affirmed a 35 U.S.C. 103 rejection based in part on inherent disclosure in one of the references). See also In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769, 775 (Fed. Cir. 1983). See MPEP 2112.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless—
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-4, 6-7, 9-10, and 13-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by SCHULZ (US 2010/0034917 A1).
SCHULZ ‘917 discloses a device for processing plastics material, comprising: a screw machine 1 having at least one treatment element shaft 2 for plasticizing the plastics material, stored in a housing, to form a polymer melt, wherein the screw machine has a plasticizing zone P, a compounding zone E, and an accumulation zone between P and E ([0012], [0016]) arranged between the plasticizing zone and the compounding zone, having at least one accumulation element 15 or 16 which holds the polymer melt, at least one melt channel 5 which bridges the accumulation zone and connects the plasticizing zone and the compounding zone to one another, and at least one melt filter device 4 for filtering the polymer melt which is arranged in the melt channel 5;
wherein an outlet in the melt channel 5 leading to the melt filter device 4 is provided in the housing immediately before the accumulation zone, and in that an inlet 6 of the melt channel 5 coming from the melt filter device 4 is provided in the housing immediately after the accumulation zone;
wherein the at least one melt filter device 4 has a melt filter that can be operated continuously or discontinuously, manifestly;
wherein the at least one melt filter device 4 has a pressure build-up unit for building up a melt pressure (the screw threads in zone P);
at least one degassing opening 10 is provided in the housing for degassing, wherein the at least one degassing opening 10 is arranged in a feed zone, the plasticizing zone, the storage zone, the compounding zone, or a discharge zone of the screw machine;
wherein the at least one degassing opening 10 is connected to a degassing device 11;
wherein a discharge opening is provided on a last housing portion of the housing in the conveying direction, through which opening the compounded polymer melt can be applied, wherein an extrusion tool, an extruded head tool, a nozzle device or a screw machine is connected to the discharge opening, or wherein a filter device and/or a granulating device is connected to the discharge opening ([0015]);
and a method for processing plastics material, comprising the following steps: feeding the plastics material at 9 into a screw machine 1; plasticizing the plastics material by means of the screw machine 1 to form a polymer melt; conducting at least a part of the polymer melt from the screw machine at 5, filtering the discharged polymer melt by means of a melt filter device 4, and returning the filtered polymer melt into the screw machine at 6; and compounding the polymer melt by means of the screw machine 1 in one or more of said zones;
wherein the polymer melt is homogenized and/or degassed at 10, 11;
wherein the compounded polymer melt is discharged from the screw machine 1 and then filtered by means of a filter device 4 and/or granulated by means of a granulating device [0015].
wherein the compounded polymer melt is discharged from the screw machine 1 and is then supplied to an extrusion tool, an extruded head tool, a nozzle device, or a screw machine [0015].
Claims 1-6, 8-13 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by KOLOSSOW (US 6074084).
KOLOSSOW discloses a device for processing plastics material, comprising: a screw machine having at least one treatment element shaft 19, 31 for plasticizing the plastics material, stored in a housing 1-8, to form a polymer melt, wherein the screw machine has a plasticizing zone, a compounding zone, and an accumulation zone 4 arranged between the plasticizing zone and the compounding zone, having at least one accumulation element 23 which holds the polymer melt, at least one bypass melt channel 12, 13 which bridges the accumulation zone and connects the plasticizing zone and the compounding zone to one another, and at least one melt filter device for filtering the polymer melt which is arranged in the melt channel (col. 3, lines 42-46; col. 9, lines 13-28);
wherein an outlet in the melt channel 12 leading to the melt filter device is provided in the housing immediately before the accumulation zone 4, and in that an inlet of the melt channel 13 coming from the melt filter device is provided in the housing immediately after the accumulation zone 4;
wherein the at least one melt filter device has a melt filter that can be operated continuously or discontinuously (col. 3, lines 42-46; col. 9, lines 13-28, manifestly);
wherein the at least one melt filter device has a pressure build-up unit 11 for building up a melt pressure, in particular a melt pump 11;
additive feeders at 10, 14, and 15;
wherein at least one degassing opening is provided in the housing for degassing, wherein the at least one degassing opening is arranged in a feed zone, the plasticizing zone, the storage zone, the compounding zone, or a discharge zone of the screw machine (col. 1, line 57);
wherein the screw machine is a multi-screw machine, in particular a two-screw machine, such as a twin-screw extruder (col. 11, lines 30-47);
wherein a discharge opening proximate 31 is provided on a last housing portion 8 of the housing in the conveying direction, through which opening the compounded polymer melt can be applied, wherein an extrusion tool, an extruded head tool, a nozzle device or a screw machine is connected to the discharge opening, or wherein a filter device and/or a granulating device is connected to the discharge opening (col. 4, lines 37-41);
and a method for processing plastics material, comprising the following steps: feeding the plastics material into a screw machine at 9; plasticizing the plastics material by means of the screw machine to form a polymer melt (col. 9, lines 38-42); conducting at least a part of the polymer melt from the screw machine at 12, filtering the discharged polymer melt by means of a melt filter device (col. 3, lines 42-46; col. 9, lines 13-28); and returning the filtered polymer melt into the screw machine at 13; and compounding the polymer melt by means of the screw machine in zones V and/or VII;
wherein at least one additive is added to the plastics material and/or the polymer melt, and/or in that at least one additive is mixed into the polymer melt during the plasticizing and/or during compounding at 10, 14, or 15;
wherein the at least one additive at 14, 15 is added and/or mixed after the polymer melt has been filtered;
wherein the polymer melt is homogenized in sections V, VII and/or degassed (col. 1, line 57);
and wherein the compounded polymer melt is discharged from the screw machine and is then supplied to an extrusion tool, an extruded head tool, a nozzle device, or a screw machine (col. 4, lines 37-41).
Claim Rejections - 35 USC § 103
The terms used in this respect are given their broadest reasonable interpretation in their ordinary usage in context as they would be understood by one of ordinary skill in the art, in light of the written description in the specification, including the drawings, without reading into the claim any disclosed limitation or particular embodiment. See, e.g., In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000); In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989). The Examiner interprets claims as broadly as reasonable in view of the specification, but does not read limitations from the specification into a claim. Elekta Instr. S.A.v.O.U.R. Sci. Int'l, Inc., 214 F.3d 1302, 1307 (Fed. Cir. 2000).
To determine whether subject matter would have been obvious, "the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved .... Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented." Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966).
The Supreme Court has noted:
Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.
KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1740-41 (2007). "Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed." (Id. at 1742).
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 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.
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.
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 instant office action conforms to the policies articulated in the Federal Register notice titled “Updated Guidance for Making a Proper Determination of Obviousness” at 89 Fed. Reg. 14449, February 27, 2024, wherein the Supreme Court’s directive to employ a flexible approach to understanding the scope of prior art is reflected in the frequently quoted sentence, ‘‘A person of ordinary skill is also a person of ordinary creativity, not an automaton.’’ Id. at 421, 127 S. Ct. at 1742. In this section of the KSR decision, the Supreme Court instructed the Federal Circuit that persons having ordinary skill in the art (PHOSITAs) also have common sense, which may be used to glean suggestions from the prior art that go beyond the primary purpose for which that prior art was produced. Id. at 421–22, 127 S. Ct. at 1742. Thus, the Supreme Court taught that a proper understanding of the prior art extends to all that the art reasonably suggests, and is not limited to its articulated teachings regarding how to solve the particular technological problem with which the art was primarily concerned. Id. at 418, 127 S. Ct. at 1741 (‘‘As our precedents make clear, however, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.’’). ‘‘The obviousness analysis cannot be confined . . . by overemphasis on the importance of published articles and the explicit content of issued patents.’’ Id. at 419, 127 S. Ct. at 1741. 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. In reaching its decision to vacate, the Federal Circuit stated that by ignoring evidence showing ‘‘the knowledge and perspective of one of ordinary skill in the art, the Board failed to account for critical background information that could easily explain why an ordinarily skilled artisan would have been motivated to combine or modify the cited references to arrive at the claimed inventions.’’ Id.
From Norgren Inc. v. Int’l Trade Comm’n, 699 F.3d 1317, 1322 (Fed. Cir. 2012) (‘‘A flexible teaching, suggestion, or motivation test can be useful to prevent hindsight when determining whether a combination of elements known in the art would have been obvious.’’); Outdry Techs. Corp. v. Geox S.p.A., 859 F.3d 1364, 1370–71 (Fed. Cir. 2017) (‘‘Any motivation to combine references, whether articulated in the references themselves or supported by evidence of the knowledge of a skilled artisan, is sufficient to combine those references to arrive at the claimed process.’’). In keeping with this flexible approach to providing a rationale for obviousness, the Federal Circuit has echoed KSR in identifying numerous possible sources that may, either implicitly or explicitly, provide reasons to combine or modify the prior art to determine that a claimed invention would have been obvious. These include ‘‘market forces; design incentives; the ‘interrelated teachings of multiple patents’; ‘any need or problem known in the field of endeavor at the time of invention and addressed by the patent’; and the background knowledge, creativity, and common sense of the person of ordinary skill.’’ Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013), quoting KSR, 550 U.S. at 418–21, 127 S. Ct. at 1741–42.
The Federal Circuit has also 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). One aspect of the flexible approach to explaining a reason to modify the prior art is demonstrated in the Federal Circuit’s decision in Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 796 (Fed. Cir. 2021), which confirms that a proposed reason is not insufficient simply because it has broad applicability. Patent challenger Intel had argued in an inter partes review before the Board that some of Qualcomm’s claims were unpatentable because a PHOSITA would have been able to modify the prior art, with a reasonable expectation of success, for the purpose of increasing energy efficiency. Id. at 796–97. The Federal Circuit explained that ‘‘[s]uch a rationale is not inherently suspect merely because it’s generic in the sense of having broad applicability or appeal.’’ Id. The Federal Circuit further pointed out its pre-KSR holding ‘‘that because such improvements are ‘technology independent,’ ‘universal,’ and ‘even common-sensical,’ ‘there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves.’ ’’ Id., quoting DyStar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (emphasis added by the Federal Circuit in Intel). When formulating an obviousness rejection, the PTO may use any clearly articulated line of reasoning that would have allowed a PHOSITA to draw the conclusion that a claimed invention would have been obvious in view of the facts. MPEP 2143, subsection I, and MPEP 2144. Acknowledging that, in view of KSR, there are ‘‘many potential rationales that could make a modification or combination of prior art references obvious to a skilled artisan,’’ the Federal Circuit has also pointed to MPEP 2143, which provides several examples of rationales gleaned from KSR. Unwired Planet, 841 F.3d at 1003.
When considering the prior art in its entirety, note Allied Erecting v. Genesis Attachments, 825 F.3d 1373, 1381, 119 USPQ2d 1132, 1138 (Fed. Cir. 2016) ("Although modification of the movable blades may impede the quick change functionality disclosed by Caterpillar, ‘[a] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.’" (quoting Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165, 77 USPQ2d 1865, 1870 (Fed Cir. 2006) (citation omitted))). However, "the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
Claims 5, 8, 11, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over SCHULZ (US 2010/0034917 A1) in view of DOLLHOPF et al. (US 4959186).
SCHULZ does not disclose the additive feeder or the device being a multi-screw machine. DOLLHOPF et al. discloses in Figure 8 a screw machine having a bypass channel 11, 53, or 55; degassing at 52, and additive feeder at 50 and 51; and teaches that such screw machines may be a single screw or multi-screw machine (col. 3, lines 12-56).
It would have been obvious to one skilled in the art before the effective filing date of the invention to have provided SCHULZ with one or more additive feeders and to configure SCHULZ as a multi-screw machine as taught by DOLLHOPF et al. for the purpose of charging degasifying aids, polymer additives or fillers, for example (per col. 8, lines 17-29) and to use the single, dual or multiple-screw extruder to plasticize and homogenize synthetic molding compounds, to extrude semi-finished synthetic materials or polymer fibers and for processing- and reaction-extrusion, e.g. for processing solution-polymers (col. 3, lines 48-56).
Conclusion
No claims stand allowed.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited prior art discloses screw machines with bypass channels and/or melt filtering mechanisms.
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/CHARLES COOLEY/
Examiner, Art Unit 1774
DATED: 24 JULY 2026
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