Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE NILS ANDERS L. WIKDAHL
Appeal No. 87-2183
January 25, 1988
HEARD: October 22, 1987
Request filed September 17, 1985, Control No. 90/000, 863, for the Reexamination of Patent No. 3,613,887, issued October 19, 1971, based on application Serial No. 767,151, filed October 14, 1968. Cyclone Separator To Be Built In A Casing Or Similar.
Charles H. Mottier et al. for appellant.
Primary Examiner--Ernest G. Therkorn.
Before Serota [FNa1]
Meros and Emery
This is an appeal from the final rejection of claims 1 through 7, which are all the claims in this reexamination of U.S. Patent 3,613,887.
The appealed subject matter relates to hydrocyclone separator apparatus (claims 1 to 6), and method (claim 7) for separating materials including fibers suspended in a liquid using that apparatus. A copy of appealed claims 1, 6 and 7, which are illustrative of the appealed subject matter, is appended to this decision.
The references relied on by the examiner are:
Gustavsson 2,771,157 Nov. 20, 1956
Wikdahl 3,261,467 July 19, 1966
'Radiclone 40', Projecting AB, Sweden, 1963, pages D02410 to D02417.
The appealed claims stand rejected as unpatentable under 35 U.S.C. 103 as follows:
1. Claims 1 to 6 over Gustavsson in view of Wikdahl.
2. Claim 7 over Gustavsson in view of Wikdahl and 'News from Projections' or 'Radiclone 40.'
A request for reexamination of U.S. Patent 3,613,887 was filed Sept. 17, 1985 by Hydrocyclone Technology, Inc. This patent is one of five patents involved in court litigation, Civil Action C84-974A, filed May 15, 1984, in the United States District Court, Northern District of Georgia, Atlanta Division. Reexamination has been requested in three of the five patents. A stay of the proceeding of the litigation has been ordered by the Court pending completion of the reexaminations. The present request for reexamination was granted in an Order mailed November 20, 1985, which Order states
'that a reasonable new interpretation of the Griffen, Heinrich and Gustavsson patents raises a substantial new question of patentability.'
Propriety of Grant of Request
Appellant urges (page 9 of Appeal Brief),
'The prior patents to Gustavsson and Wikdahl were discussed extensively during the prosecution of the 887 patent, and claims 1-5 were allowed over those references. Now, nearly twenty years after the application was filed, the Examiner has substituted his judgment--with no new facts before him--over the judgment of two prior Examiner's who allowed claims 1-5 to issue.
On this record, the patent owner respectfully submits that the reexamination request was improperly granted.'
*2 However, as stated by the Court of Appeals for the Federal Circuit setting In Banc in In re Etter, 756 F.2d 852, 225 USPQ 1, 4 (1985), cert. denied 106 Ct. 88 (1985),
'[D]etermination of whether a 'substantial new question of patentability' exists, and therefore whether reexamination may be had, is discretionary with the Commissioner, and, as [35 U.S.C.] § 303 provides, that determination is final, i.e., not subject to appeal.'
Note also Joy Manufacturing v. National Mine Service, 810 F.2d 1127, 1 USPQ2d 1627, 1629 (Fed. Cir. 1987).
The property of the grant of the request for reexamination is, as stated by the Court, discretionary and not subject to appeal to this Board. The grant of the request is a procedural matter which merely triggers the reexamination proceeding, and is not a substantive determination regarding the validity of the patent.
Rejections Under 35 U.S.C. 103
Based on a careful review of the record, we are unconvinced of reversible error in and affirm the examiner's rejection of appealed claims 1, 3 and 4 under 35 U.S.C. 103. We must, however, reverse, the examiner's rejections of appealed claims 2 and 5 to 7 under 35 U.S.C. 103.
We find virtually complete correspondence between the cyclone separator recited in appealed claims 1 and 3 and Gustavsson's cyclone, which certainty would have at least suggested and rendered prima facie obvious the subject matter of these claims. Gustavsson discloses (Figure 7 and lines 41 to 47 of column 2)
'a cyclone 5 of conventional design with a tangentially disposed inlet duct 6 . . . [and] a centrally disposed outlet duct . . . in [the] form of two frusto-conical portions 3 and 1 joined at their narrow ends. The upper portion 3 constitutes a diffuser portion and the lower portion 1 a throat portion.'
Gustavsson's cyclone (Figure 7) is disclosed as being equipped with a discharge duct such as shown in Figures 1 to 6. The discharge duct illustrated in Gustavsson's Figure 3 includes deflection blades 2 and a generally drop-shaped body or nave 9 (lines 46 to 53 of column 3).
The separation chamber of Gustavsson is 'generally conical' as recited in claim 1, i.e., the lower portion is conical and the upper portion adjacent the inlet 6 is cylindrical similar to the separation chamber shown in appellant's Figure 1. The centrally disposed outlet duct of Gustavsson, such as illustrated in Figure 3, constitutes a vortex finder as recited in appealed claim 1. Similarly, Gustavsson's drop-shaped body constitutes an elongate, coaxially disposed, closed nave; and the deflection blades 2 constitutes plural partition walls, which blades are clearly joined along an edge to drop-shaped body or nave 9 and extend radially from 9 to the wall of the vortex finder 8 which surrounds 9.
*3 The preamble of claim 1 recites that the cyclone separator is
'for separating material including fibers suspended in a liquid suspension into a light fraction containing the fibers and a heavy fraction containing rejects.'
However, the manner or method in which a machine is to be utilized is normally not germane to the issue of patentability especially where, as here, appellant's structure, even in view of the claim language, differs in no way from the structure of Gustavsson. In re Casey, 370 F.2d 576, 152 USPQ 235, 238 (CCPA 1967). Claim 1, for example, calls for an apparatus, i.e., a cyclone separator, that is structurally indistinguishable from Gustavsson's cyclone separator. That Gustavsson's structure possesses the capabilities requisite to meet the terms of appealed claims 1 and 3 is clearly illustrated by Wikdahl, as well as the 'Radiclone 40' and 'News from Projecting' prior art publications. Wikdahl discloses use of a multiple cyclone assembly employing cyclones very similar to Gustavsson's for separating material suspended in a fluid suspension (line 20 of column 3 and lines 6 to 7 of column 4). 'Radiclone 40' and 'News from Projecting' illustrate that multiple cyclone assemblies, such as disclosed in Wikdahl and employing cyclones similar to Gustavsson's, are well known in the art for cleaning (separation) of pulp and paper stock suspensions which contain fibers.
With respect to appealed claim 3, Gustavsson's Figures 1 and 3 show lights discharge ducts defining venturi-shaped nozzles.
Appealed claim 4 recites that the partition walls are flat with their inner edge parallel to the central axis of the nave. Gustavsson teaches (lines 62 to 70 column 1 and lines 68 to 72 of column 2) that
'the kinetic energy of fluid flowing in a whirl . . . is converted into pressure energy by deflecting the direction of movement of the flowing fluid approximately vertical to the plane of the fluid whirl without conversion of the kinetic energy of the fluid flow into pressure energy, and the kinetic energy of the fluid flow is subsequently converted into pressure energy by being subjected to decrease in velocity in a diffuser.
The aforesaid results are accomplished by a blade configuration such that the blades are in the form of generally plane surfaces curved in one plane only and that the leading edges of the blades are curved.'
To make the partition walls in Gustavsson flat, without a curved leading edge or surface, with concomittant loss of the advantages taught to be gained therefrom, would have been prima facie obvious to one of ordinary skill in the art, within the meaning of 35 U.S.C. 103, at the time appellant's invention was made. In re Karlson, 311 F.2d 581, 136 USPQ 184, 186 (CCPA 1963).
The rejection of claim 2 under § 103 cannot be sustained, however. Claim 2 recites that
*4 'said nave protrudes from the outer end of said outlet for the light fraction.'
The nave 9 in Gustavsson neither protrudes from the outer end of the outlet for the light fraction, nor is there any teaching or suggestion in Gustavsson that it do so. The examiner urges (page 3 of Examiner's Answer),
'Wikdahl discloses at column 3, lines 31-35 use of a protruding element to prevent or at least severely limit any outward displacement of the cyclone. It would have been obvious to use a protruding element in Gustavsson to prevent or limit displacement of the cyclone in view of the teachings of Wikdahl.'
Wikdahl's protruding element 19, however, differs physically and functionally, i.e., it serves to deflect the flow of fluid down-wardly and limits outward displacement of the cyclone, from Gustavsson's drop-shaped body or nave which does not protrude beyond the fluid outlet and serves to form flow channels between adjacent blades and to guide fluid flow therethrough. There is no teaching or suggestion in Wikdahl which would have rendered obvious extending the drop-shaped body or nave in Gustavsson such that it would protrude beyond the end of the fluid outlet for the light fluid as recited in appealed claim 2.
With respect to appealed claims 5 and 6, there is likewise no teachings or suggestion in Wikdahl to extend the nave in Gustavsson such that it would protrude from the outlet end of the light outlet into abutment with a wall portion; nor any teaching or suggestion that such protruding nave define an annular slot deflecting the light fraction in a radial direction.
Turning to the rejection of claim 7 under § 103, 'News for Projecting' and 'Radiclone 40' disclose apparatus virtually identical to Wikdahl's. These, references, as applied by the examiner, thus fail to meet all the limitations recited in claim 7, and the rejection thereof under § 103 must be reversed.
Under the provisions of 37 CFR 1.196(b), we reject claim 7 as unpatentable under 35 U.S.C. 305. Section 305 provides, inter alia, emphasis added,
'In any reexamination proceeding under this chapter, the patent owner will be permitted to propose any amendment to his patent and a new claim or claims thereto, in order to distinguish the invention as claimed from the prior art cited under the provisions of section 301 of this title, or in response to a decision adverse to the patentability of a claim of a patent. No proposed amended or new claim enlarging the scope of a claim of the patent will be permitted in a reexamination proceeding under this chapter.'
Presently appealed method claim 7 was added to this reexamination by appellant's 'Response To First Office Action' filed June 19, 1986. No claims drawn to a method were ever presented during prosecution of, nor issued in, U.S. Patent 3,613,887, the patent being reexamined here. There is no indication in the file record of the '887 patent that manifests that appellant ever objectively intended or considered his invention to include method.
*5 Appealed claim 7 is thus not directed to 'the invention as claimed' in the ' 887 patent as required by § 305. Moreover, appellant's addition of such a claim drawn to method enlarges the scope of the claims in the '887 patent in violation to § 305.
Any request for reconsideration or modification of this decision by the Board of Patent Appeals and Interferences based upon the same record must be filed within one month from the date hereof (37 CFR 1.197).
With respect to the new rejection under 37 CFR 1.196(b), should appellant elect the alternate option under that rule to prosecute further before the Primary Examiner by way of amendment or showing of facts, or both, not previously of record, a shortened statutory period for making such response is hereby set to expire one month from the date of this decision. In the event appellant elects this alternate option, in order to preserve the right to seek review under 35 USC 141 or 145 with respect to the affirmed rejection, the effective date of the affirmance is deferred until conclusion of the prosecution before the examiner unless, as a mere incident to the limited prosecution, the affirmed rejection is overcome.
If the appellant elects prosecution before the examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to us for final action on the affirmed rejection, including any timely request for reconsideration thereof.
37 CFR 1.136(a) does not apply to the times for taking any subsequent action in connection with this appeal.
BOARD OF PATENT APPEALS AND INTERFERENCES
Saul I. Serota
Edward J. Meros
Stephen J. Emery
FNa1. Chairman Serota has been substituted for Mr. Goldstein, who participated in the prehearing conference and in the oral hearing, but is unavailable for signature due to an extended illness; cf. In re Bose, 772 F.2d 866, 227 USPQ 1, 2-4 (Fed. Cir. 1985).
1. A cyclone separator for separating material including fibers suspended in a liquid suspension into a light fraction containing the fibers and a heavy fraction containing rejects, said cyclone separator comprising:
a vortex finder mounted in the outlet for the light fraction, said vortex finder including an elongate closed nave disposed coaxially with said chamber, and a plurality of partition walls joined along along an edge to the nave and radially extending from said nave to a wall of the vortex finder surrounding said nave.
*6 6. A cyclone separator for separating material including fibers suspended in a liquid suspension into a light fraction containing the fibers and a heavy fraction containing rejects and which employs partitions to prevent the twisting together of fibers in the light fraction and to recover pressure energy, said cyclone separator comprising:
a generally conical separation chamber having at its narrow end an outlet for the heavy fraction and at its wide end an outlet for the light fraction;
a vortex finder having means for preventing the twisting together of fibers and for recovering pressure energy mounted in the outlet for the light fraction, said means including an elongate nave disposed coaxially with said chamber and a plurality of partition walls for positioning the nave and for dividing the light fraction into adjacent partial flows and for arresting the rotation of said flows, said partition walls being joined along an edge to the nave and extending radially from said nave to a wall of the vortex finder surrounding said nave, said nave protruding from the outer end of said outlet for the light fraction; and
a casing to receive the light fraction, said casing including a wall portion disposed substantially parallel to the outer end of said outlet for the light fraction and spaced apart therefrom, and wherein a portion of said nave protrudes from said outlet and into abutment with said wall portion, the protruding nave portion constituting a distancing member which defines about said nave portion an annular slot of predetermined width between said casing wall portion and said outlet, said slot deflecting the light fraction in radial direction.
7. A method for separating material including fibers suspended in a liquid suspension into a light fraction containing the fibers and a heavy fraction containing rejects using the cyclone separator according to claim 6 to prevent the twisting together of fibers in the light fraction and to recover pressure energy.