Plas-Pak Industries, Inc. v. Sulzer Mixpac AG

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
PLAS-PAK INDUSTRIES, INC.,
Appellant,
v.
SULZER MIXPAC AG,
Appellee.
______________________
2014-1447
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Reexamination
No. 95/001,656.
______________________
Decided: January 27, 2015
______________________
ANDREW C. RYAN, Cantor Colburn LLP, of Hartford,
Connecticut, argued for the appellant.
MATTHEW S. DICKE, K&L Gates LLP, of Chicago, Illi-
nois, argued for the appellee. With him on the brief were
THOMAS C. BASSO, ALAN L. BARRY, and SUZANNE E.
KONRAD. Of counsel on the brief was MICHAEL T.
MURPHY, of Washington, DC.
______________________
2 PLAS-PAK INDUSTRIES v. SULZER MIXPAC AG
Before LOURIE, MOORE, and REYNA, Circuit Judges.
LOURIE, Circuit Judge.
Plas-Pak Industries, Inc. (“Plas-Pak”) appeals from
the inter partes reexamination decision of the United
States Patent and Trademark Office (“USPTO”) Patent
Trial and Appeal Board (“the Board”) affirming the exam-
iner’s decision not to reject claims 1–15 of U.S. Patent
7,815,384 (“the ’384 patent”) as obvious under 35 U.S.C.
§ 103 (2006). 1 See Plas-Pak Indus., Inc. v. Sulzer Mixpac
AG, No. 2013007786, 2014 WL 203101 (P.T.A.B. Jan. 17,
2014) (“Opinion”). Because the Board did not err in
holding that claims 1–15 would not have been obvious, we
affirm.
BACKGROUND
Sulzer Mixpac AG (“Sulzer”) owns the ’384 patent,
which is directed to a device and methods for mixing and
dispensing multi-component paints. ’384 patent col. 1
ll. 20–22. Independent claim 1 reads as follows:
1. A device for applying a coating, comprising:
at least two cylindrical cartridges,
a static mixing nozzle in fluid communica-
tion with the cartridges,
a spray tip, in fluid communication with the
nozzle,
1 Because the application of the ’384 patent was filed
before March 16, 2013, the pre-Leahy-Smith America
Invents Act version of § 103 applies. See Pub L. No. 112-
29, 125 Stat. 284 (2011); 35 U.S.C. § 103 (2006).
PLAS-PAK INDUSTRIES v. SULZER MIXPAC AG 3
a first flexible hose is disposed between and
in fluid communication with the nozzle and
the spray tip, and
a second hose, in fluid communication with
the spray tip, for supplying atomization air
to the spray tip.
Id. col. 11 ll. 20–28. Independent claims 7 and 10 relate
to methods for applying a coating using the device de-
scribed in claim 1. See id. col. 12 ll. 1–11, 19–29.
In June 2011, Plas-Pak filed a request for inter partes
reexamination of claims 1–15 of the ’384 patent, which
the USPTO granted. The examiner initially issued a Non-
final Office Action in which he adopted Plas-Pak’s pro-
posed rejections under § 103 based on combinations of
references involving U.S. Patent 4,745,011 of Fukuta
(“Fukuta”), but declined to adopt Plas-Pak’s proposed
rejections based on combinations of references involving
U.S. Patent 6,241,125 of Jacobsen (“Jacobsen”). After
additional briefing by the parties, however, the examiner
issued a Right of Appeal Notice in which he withdrew the
previously adopted Fukuta-based rejections, maintained
his refusal to adopt the Jacobsen-based rejections, and
determined that claims 1–15 of the ’384 patent would not
have been obvious. Plas-Pak appealed to the Board.
On appeal, the Board affirmed the examiner’s decision
not to reject claims 1–15 as obvious. Opinion at *10–11.
The Board first found that Fukuta discloses pumps, check
valves, stop valves, and escape valves that are essential to
Fukuta’s “principle of operation,” i.e., “prevent[ing] back-
flow even when the propensity for backflow occurs repeat-
edly and at high velocity.” Id. at *5. In light of that
finding, the Board rejected Plas-Pak’s argument that it
would have been obvious to replace Fukuta’s pumps and
valves with the cylindrical cartridges and mixing gun of
U.S. Patent 3,989,228 of Morris (“Morris”). Id. at *4. The
Board reasoned that “Fukuta is directed to th[e] very
4 PLAS-PAK INDUSTRIES v. SULZER MIXPAC AG
‘manner in which the backflow of the mixture is prevent-
ed’ (i.e., by using check valves, stop valves, and escape
valves). Hence the modification suggested by [Plas-Pak] .
. . would impact this functionality in a fundamental way
so as to change the manner in which the apparatus of
Fukuta functions.” Id. at *5. Because the combination of
Fukuta and Morris would require “substantial reconstruc-
tion” and “affect[] the principle of operation” disclosed in
Fukuta, the Board held that the claims of the ’384 patent
would not have been obvious over Fukuta in view of
Morris. Id. at *7.
The Board then found that Jacobsen discloses a device
that dispenses fluid materials into a surface crack so as to
minimize leakage, “but does not disclose dispensing of
fluid by spraying or that a spray nozzle would attain this
objective.” Id. at *8. In light of that finding, the Board
rejected Plas-Pak’s argument that combining the mixing
gun of Jacobsen with the spray nozzle of U.S. Patent
Publication 2002/0170982 A1 of Hunter (“Hunter”) would
have been “nothing more than predictable variation of
prior art elements according to their established func-
tion[s].” Id. The Board reasoned that modifying Jacobsen
to include Hunter’s spray nozzle, as Plas-Pak suggested,
would undermine “the specific function of dispensing fluid
materials directly into surface cracks to minimize leak-
age” and “render Jacobsen unsuitable for [that] intended
purpose.” Id. The Board thus held that the claims of the
’384 patent would not have been obvious over Jacobsen in
view of Hunter. Id. at *10.
Plas-Pak timely appealed, and we have jurisdiction
pursuant to 28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
Our review of a Board decision is limited. In re Baxter
Int’l, Inc. 678 F.3d 1357, 1361 (Fed. Cir. 2012). We review
the Board’s legal determinations de novo, In re Elsner,
381 F.3d 1125, 1127 (Fed. Cir. 2004), but we review the
PLAS-PAK INDUSTRIES v. SULZER MIXPAC AG 5
Board’s factual findings underlying those determinations
for substantial evidence, In re Gartside, 203 F.3d 1305,
1316 (Fed. Cir. 2000). A finding is supported by substan-
tial evidence if a reasonable mind might accept the evi-
dence to support the finding. Consol. Edison Co. v.
NLRB, 305 U.S. 197, 229 (1938).
“[O]bviousness is a question of law based on several
underlying factual findings,” In re Baxter, 678 F.3d at
1361, including what a reference teaches, Rapoport v.
Dement, 254 F.3d 1053, 1060–61 (Fed. Cir. 2001), and
whether proposed modifications would change a refer-
ence’s “principle of operation,” see In re Mouttet, 686 F.3d
1322, 1332 (Fed. Cir. 2012) (finding “the Board’s determi-
nation that eliminating the optical components of Falk
would not destroy its principle of operation to be support-
ed by substantial evidence”). Where “a patent claims a
structure already known in the prior art that is altered by
the mere substitution of one element for another known in
the field, the combination must do more than yield pre-
dictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 416 (2007). However, combinations that change the
“basic principles under which the [prior art] was designed
to operate,” In re Ratti, 270 F.2d 810, 813 (CCPA 1959), or
that render the prior art “inoperable for its intended
purpose,” In re Gordon, 733 F.2d 900, 902 (Fed. Cir.
1984), may fail to support a conclusion of obviousness.
A.
Plas-Pak primarily argues that the Board erred by
limiting Fukuta’s “principle of operation” to its contribu-
tion to the art, i.e., the addition of stop valves to prevent
backflow. According to Plas-Pak, the Board should have
instead broadly defined Fukuta’s “principle of operation”
as the “movement of two separate reactive components
brought together at a mixer and dispensed through a
dispenser.” Appellant’s Br. 29. Then, Plas-Pak contends,
adding Morris’ cylindrical cartridges and mixing gun
6 PLAS-PAK INDUSTRIES v. SULZER MIXPAC AG
would have been nothing more than a simple substitution
to effectuate the same end goal of dispensing multi-
component fluids, thus failing to alter Fukuta’s “principle
of operation.” Simply combining components with well-
known functions to achieve predictable results, Plas-Pak
contends, would have rendered claims 1–15 obvious.
Sulzer responds that the Board correctly found that
Fukuta’s “principle of operation” “is entirely directed to a
method of coating a two-component mixture using a
system of pumps and valves to prevent backflow.” Appel-
lee’s Br. 21. Relying on a reference’s contribution to the
art to understand its “principle of operation” is not error,
Sulzer contends, and Fukuta undoubtedly touts the
necessary addition of stop valves to combat the prior art’s
well-established backflow problem. Thus, Sulzer argues,
replacing the pumps and valves as Plas-Pak suggests
would “change the way the components of Fukuta are
supplied and dispensed” by removing the very system
“Fukuta teaches [as] achieving its goal of preventing
backflow.” Id. at 23. Because combining Fukuta and
Morris would fundamentally alter Fukuta’s “principle of
operation,” Sulzer maintains that the combination would
not have supported a conclusion of obviousness.
We agree with Sulzer that the Board’s definition of
Fukuta’s “principle of operation” and the Board’s finding
that combining Fukuta and Morris would fundamentally
alter that “principle of operation” are supported by sub-
stantial evidence. As the Board noted, Fukuta is express-
ly “directed to [the] very ‘manner in which the backflow of
the mixture is prevented.’” Opinion at *5. Indeed, Fuku-
ta is rife with statements defining “the invention” as
adding stop valves to prevent backflow. See, e.g., Fukuta
col. 1 ll. 46–51 (“[T]he inventors of the present invention
have proposed placing stop valves disposed between the
junction and the check valve in addition to the construc-
tion of the conventional two-component mixing type
coating apparatus described above.”); id. col. 2 ll. 19–23
PLAS-PAK INDUSTRIES v. SULZER MIXPAC AG 7
(noting that “the present invention [] is characterized . . .
by closing the stop valves when the spraying operation of
the gun is stopped”); id. col. 3 ll. 56–58 (“The two-
component mixing type coating method of the present
invention uses the stop valves as a backflow prevention
means . . . .”). “The manner in which the two-component
mixing apparatus of Fukuta prevents backflow is unique
in its implementation,” Opinion at *6, and the Board
correctly limited Fukuta’s “principle of operation” to that
specific functionality. Therefore, replacing the valves and
pumps of Fukuta’s system with the cylindrical cartridges
and mixing gun of Morris, which fail to achieve compara-
ble backflow prevention, see id. (“[The] embodiments of
Morris do not disclose the functions of check valves 4a, 4b,
the stop valves 51, 5b, or the escape valve 6 disclosed in
Fukuta . . . .”), fundamentally alters Fukuta’s “principle of
operation.” Such a change in a reference’s “principle of
operation” is unlikely to motivate a person of ordinary
skill to pursue a combination with that reference. In re
Mouttet, 686 F.3d 1322; In re Ratti, 270 F.2d 810. Accord-
ingly, the Board did not err in concluding that claims 1–
15 would not have been obvious over Fukuta in view of
Morris. 2
B.
Plas-Pak alternatively argues that the Board incor-
rectly limited Jacobsen’s “intended purpose” to filling
surface cracks. According to Plas-Pak, a person of ordi-
nary skill would have understood that the “piston-driven
cartridges, static mixing nozzle, and flexible hose of
Jacobsen would have applications beyond filling cracks.”
Appellant’s Br. 58. Thus, Plas-Pak contends, Jacobsen
2 Plas-Pak raised the same arguments with respect
to the combination of Fukuta and U.S. Patent 5,033,650 of
Colin, which the Board rejected. Opinion at *7–8. We
therefore affirm the Board’s findings on that issue as well.
8 PLAS-PAK INDUSTRIES v. SULZER MIXPAC AG
should instead be understood as “a dispensing kit suited
in alternate manners of connection for conveying multiple
components of a reactive material before being discharged
where and when needed.” Id. at 20. Adding Hunter’s
spray nozzle would not undermine that broader “intended
purpose,” Plas-Pak adds, and therefore the combination is
a predictable variation of prior art elements that would
have rendered claims 1–15 of the ’384 patent obvious.
Sulzer responds that the Board’s definition of Jacob-
sen’s “intended purpose” is supported by substantial
evidence. According to Sulzer, Jacobsen expressly de-
scribes the invention, and not just a specific embodiment,
as “‘relate[d] to devices usable for dispensing fluid mate-
rial(s) via conventional dispensing outlet nozzle(s) directly
into a surface crack of a structure.’” Appellee’s Br. 38
(quoting Jacobsen col. 1 ll. 13–16). Moreover, Sulzer
continues, Jacobsen teaches that its “primary goal is to
minimize or avoid leakage.” Id. at 41. Adding a spray
nozzle as Plas-Pak suggests would necessarily undermine
that express goal: “[a]s such, one of ordinary skill in the
art would have no reason to substitute the controlled
dispensing nozzle of Jacobsen with the spray nozzle of
Hunter.” Id. Thus, Sulzer argues, the combination does
not support a conclusion of obviousness.
We agree with Sulzer that the Board’s definition of
Jacobsen’s “intended purpose” and the Board’s finding
that adding Hunter’s spray nozzle would render Jacobsen
“inoperable for its intended purpose” are supported by
substantial evidence. As the Board noted, Jacobsen’s
dispensing system has the very “specific function of dis-
pensing fluid materials directly into surface[] cracks to
minimize leakage.” Opinion at *8. Indeed, Jacobsen
repeatedly recites that limited purpose. See, e.g., Jacob-
sen col. 1 ll. 13–16 (“This invention relates to devices
usable for dispensing fluid material(s) via conventional
dispensing outlet nozzle(s) directly into a surface crack of
a structure . . . .”); id. col. 1 ll. 63–65 (“The material
PLAS-PAK INDUSTRIES v. SULZER MIXPAC AG 9
dispensing tube is then seated against the inlet tube bore
end to funnel the discharged material directly into the
underlying crack.”); id. col. 2 ll. 40–45 (“This invention
relates to devices for establishing leakproof seated con-
nections . . . used in dispensing fluid material from car-
tridges, for directing such fluid into cracks in an
underlying structure.”). And Jacobsen does not teach how
a spray nozzle might accomplish the “intended purpose” of
“dispensing fluid materials directly into cracks.” Opinion
at *8. Therefore, as the Board found, modifying Jacobsen
to accommodate the spray nozzle of Hunter would render
Jacobsen “inoperable for its intended purpose,” and a
person of ordinary skill would thus not have been moti-
vated to pursue the combination. In re Gordon, 733 F.2d
900; In re ICON Health & Fitness, Inc., 496 F.3d 1374
(Fed. Cir. 2007). Accordingly, the Board did not err in
concluding that claims 1–15 would not have been obvious
over Jacobsen in view of Hunter.
CONCLUSION
We have considered the remaining arguments and
find them unpersuasive. Because the Board did not err in
finding that the prior art combinations would either alter
Fukuta’s “principle of operation” or render Jacobsen
“inoperable for its intended purpose,” we affirm the
Board’s decision to decline to make the proposed obvious-
ness rejections of claims 1–15 of the ’384 patent.
AFFIRMED