`Only the Westlaw citation is currently available.This
`case was not selected for publication in West's Federal
`Reporter.
`
`See Fed. Rule of Appellate Procedure 32.1 generally
`governing citation of judicial decisions issued on or
`after Jan. 1, 2007. See also U.S.Ct. of App. Fed. Cir.
`Rule 32.1.
`
`
`United States Court of Appeals,
`Federal Circuit.
`PLAS–PAK INDUSTRIES, INC., Appellant,
`v.
`SULZER MIXPAC AG, Appellee.
`
`
`
`No. 2014–1447.
`Jan. 27, 2015.
`
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in Reexamina-
`tion No. 95/001,656.
`Andrew C. Ryan, Cantor Colburn LLP, of Hartford,
`CT, argued for the appellant.
`
`Matthew S. Dicke, K & L Gates LLP, of Chicago, IL,
`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.
`
`Before LOURIE, MOORE, and REYNA, Circuit
`Judges.
`
`LOURIE, Circuit Judge.
`*1 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 examiner's decision not to reject
`claims 1–15 of U.S. Patent 7,815,384 (“the '384 pa-
`tent”) as obvious under 35 U.S.C. § 103 (2006).FN1 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 obvi-
`ous, we affirm.
`
`
`FN1. Because the application of the '384
`patent was filed before March 16, 2013, the
`pre-Leahy-Smith America Invents Act ver-
`sion of § 103 applies. See Pub L. No. 112–29,
`125 Stat. 284 (2011); 35 U.S .C. § 103
`(2006).
`
`BACKGROUND
`Sulzer Mixpac AG (“Sulzer”) owns the '384 pa-
`tent, 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 communication
`with the cartridges,
`
`a spray tip, in fluid communication with the noz-
`zle,
`
`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
`
`Page 1 of 5
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`TRADING TECH EXHIBIT 2102
`TD Ameritrade v. Trading Technologies
`CBM2014-00137
`
`

`

`spray tip.
`
`
`
`Id. col. 11 ll. 20–28. Independent claims 7 and 10
`relate to methods for applying a coating using the
`device described 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 pa-
`tent, which the USPTO granted. The examiner ini-
`tially issued a Non-final Office Action in which he
`adopted Plas–Pak's proposed 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 com-
`binations 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, main-
`tained his refusal to adopt the Jacobsen-based rejec-
`tions, and determined that claims 1–15 of the '384
`patent would not have been obvious. Plas–Pak ap-
`pealed 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] backflow even when the propensity
`for backflow occurs repeatedly 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 cylin-
`drical 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 ‘manner
`in which the backflow of the mixture is prevented’
`(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 reconstruction” and “affect[ ] the princi-
`ple 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.
`
`
`*2 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 dis-
`close 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 argu-
`ment 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 Ja-
`cobsen 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 leakage” 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 jurisdic-
`tion 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 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 substantial evidence if a rea-
`sonable mind might accept the evidence to support the
`finding. Consol. Edison Co. v. NLRB, 305 U.S. 197,
`229, 59 S.Ct. 206, 83 L.Ed. 126 (1938).
`
`Page 2 of 5
`
`

`

`
`
`“[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 reference's “principle of operation,”
`see In re Mouttet, 686 F.3d 1322, 1332 (Fed.Cir.2012)
`(finding “the Board's determination that eliminating
`the optical components of Falk would not destroy its
`principle of operation to be supported by substantial
`evidence”). Where “a patent claims a structure already
`known in the prior art that is altered by the mere sub-
`stitution of one element for another known in the field,
`the combination must do more than yield predictable
`results.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
`416, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007). How-
`ever, combinations that change the “basic principles
`under which the [prior art] was designed to operate,”
`In re Ratti, 46 C.C.P.A. 976, 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 con-
`tribution 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 “princi-
`ple 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 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.
`
`
`*3 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.” Appellee'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 sup-
`plied 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 obvious-
`ness.
`
`
`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 substantial evidence. As the Board not-
`ed, Fukuta is expressly “directed to [the] very ‘manner
`in which the backflow of the mixture is prevented.’ “
`Opinion at *5. Indeed, Fukuta 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 pro-
`posed placing stop valves disposed between the junc-
`tion and the check valve in addition to the construction
`of the conventional two-component mixing type
`coating apparatus described above.”); id. col. 2 ll.
`19–23 (noting that “the present invention [ ] is char-
`acterized ... 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,”
`
`Page 3 of 5
`
`

`

`Opinion at *6, and the Board correctly limited Fuku-
`ta's “principle of operation” to that specific function-
`ality. Therefore, replacing the valves and pumps of
`Fukuta's system with the cylindrical cartridges and
`mixing gun of Morris, which fail to achieve compa-
`rable backflow prevention, see id. (“[The] embodi-
`ments 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 com-
`bination with that reference. In re Mouttet, 686 F.3d
`1322; In re Ratti, 46 C.C.P.A. 976, 270 F.2d 810.
`Accordingly, the Board did not err in concluding that
`claims 1–15 would not have been obvious over Fukuta
`in view of Morris.FN2
`
`
`FN2. 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.
`
`
`
`B.
`*4 Plas–Pak alternatively argues that the Board
`incorrectly limited Jacobsen's “intended purpose” to
`filling surface cracks. According to Plas–Pak, a person
`of ordinary 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 should instead be un-
`derstood as “a dispensing kit suited in alternate man-
`ners of connection for conveying multiple components
`of a reactive material before being discharged where
`and when needed.” Id. at 20, 270 F.2d 810. 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
`Jacobsen's “intended purpose” is supported by sub-
`stantial evidence. According to Sulzer, Jacobsen ex-
`pressly describes the invention, and not just a specific
`embodiment, as “ ‘relate[d] to devices usable for
`dispensing fluid mate-rial(s) via conventional dis-
`pensing 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, 270 F.2d 810. Adding a spray
`nozzle as Plas–Pak suggests would necessarily un-
`dermine 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 obvi-
`ousness.
`
`
`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 ren-
`der Jacobsen “inoperable for its intended purpose” are
`supported by substantial evidence. As the Board not-
`ed, Jacobsen's dispensing system has the very “spe-
`cific function of dispensing fluid materials directly
`into surface [ ] cracks to minimize leakage.” Opinion
`at *8. Indeed, Jacobsen repeatedly recites that limited
`purpose. See, e.g., Jacobsen col. 1 ll. 13–16 (“This
`invention relates to devices usable for dispensing fluid
`material(s) via conventional dispensing outlet noz-
`zle(s) directly into a surface crack of a structure ....”);
`id. col. 1 ll. 63–65 (“The material 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 connections
`... used in dispensing fluid material from cartridges,
`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.”
`
`Page 4 of 5
`
`

`

`Opinion at *8. Therefore, as the Board found, modi-
`fying 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 motivated 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 Ja-
`cobsen in view of Hunter.
`
`
`CONCLUSION
`*5 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 obviousness rejections of claims 1–15 of the
`'384 patent.
`
`
`AFFIRMED.
`
`
`C.A.Fed.,2015.
`Plas-Pak Industries, Inc. v. Sulzer Mixpac AG
`--- Fed.Appx. ----, 2015 WL 328222 (C.A.Fed.)
`
`END OF DOCUMENT
`
`
`
`Page 5 of 5
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