Actis, Bradley P.

Patent Trials and Appeals Board

Nov 18, 2019

13849436 - (D) (P.T.A.B. Nov. 18, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/849,436 03/22/2013
22145 7590 11/21/2019
KLEIN, O'NEILL & SINGH, LLP
16755 VON KARMAN AVENUE
SUITE 275
IRVINE, CA 92606
FIRST NAMED INVENTOR
Bradley P. Actis
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
1144-017.101 3755
EXAMINER
HIBBERT-COPELAND, MARY CATHERINE
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
11/21/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
KOS_Docketing@koslaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRADLEY P. ACTIS
Appeal 2017-011638 1
Application 13/849,436
Technology Center 3700
Before LISA M. GUIJT, BRADLEY B. BA YAT, and
PAUL J. KORNICZKY, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the decision
rejecting claims 1-17, which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on
October 22, 2019.
We REVERSE.
1 "Appellant" refers to "applicant" as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as "H.W. J. DESIGNS AGRIBUSINESS,
INC." Appeal Br. 1.
Appeal2017-011638
Application 13/849,436
CLAIMED INVENTION
"The present disclosure generally relates to an apparatus and method
for automatically strapping bales of cotton, other fibers, or stacks of articles,
such as lumber, bricks, shipping boxes, which are suitable for strapping."
Spec. 1:4---6. Appellant's claimed invention "relate[s] to a system and
method for welding the ends of thermoplastic straps together so as to form
strapped bales of cotton or any other desired materials or items." Id. 1 :6-8.
Claims 1 and 7 are the independent claims on appeal. Claim 7,
reproduced below, is illustrative of the subject matter on appeal.
7. A system for welding comprising a plurality of weld
assemblies, each of said weld assemblies comprising:
[(a)] a stationary weld jaw substantially stationary from
translational movement;
[(b)] a fixed weld jaw secured to a connecting rod by at
least two secured points; said fixed weld jaw and said
connecting rod are fixed from rotational and translational
movement relative to one another;
[(c)] a link pivotably connected to the fixed weld jaw by
a first pivot pin and pivotably connected to a structure by a
second pivot pin to angularly rotate relative to the fixed weld
jaw and the structure;
[(d)] a crank pivotably connected to the connecting rod
to impart reciprocating motion on the connecting rod; and
[ ( e)] wherein a centerline of the crank is adjustable
relative to the first pivot pin.
Appeal Br. 10-11, Claims App. (formatting and bracketed matter
added).
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Appeal2017-011638
Application 13/849,436
REJECTIONS
Claims 1, 3, 5-9, 11, and 13-16 stand rejected under 35 U.S.C.
§ I02(b) as being anticipated by Jaenson et al. (US 6,487,833 Bl, iss. Dec.
3, 2002) ("Jaenson").
Claims 2, 4, 10, 12, and 17 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Jaenson.
ANALYSIS
Anticipation by Jaenson
Based on our review of the record, including the Examiner's Final
Office Action and Answer, and Appellant's Appeal Brief and Reply Brief,
for the reasons discussed below, we agree with Appellant that the
Examiner's rejection of independent claims 1 and 7 as anticipated by
Jaenson under 35 U.S.C. § I02(b) is in error.
Claims 7-9, 11, 13, and 16
The Examiner maintains that claim 7 is anticipated by Jaenson
because J aenson discloses limitations (a) through ( e) of Appellant's claimed
invention. See Answer 2--4. Limitation (b) requires "a fixed weldjaw
secured to a connecting rod by at least two secured points; said fixed weld
jaw and said connecting rod are fixed from rotational and translational
movement relative to one another." Appeal Br. (Claims App.). In rejecting
this limitation, the Examiner finds Figure 11 of Jaenson discloses "a fixed
weld jaw (86) secured to a connecting [rod 120] by at least two secured
points," such that elements 86 and 120 "are fixed from rotational and
translational movement relative to one another." Final Act. 3.
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Application 13/849,436
Appellant argues that "Jaenson does not disclose how the connecting
rod 120 is connected to the lower weld plate 86, and, more specifically, does
not indicate whether the lower weld plate 86 is fixed to the connecting rod
120 such that there is no rotational and translational movement between the
fixed weld jaw and the connecting rod." Appeal Br. 5. According to
Appellant:
Although Jaenson discloses that the connecting rod 120 effects
movement of the lower weld plate 86, Jaenson does not disclose
how the connecting rod 120 effects movement of the lower
weld plate 86. FIG. 11 shows the connection rod 120 projecting
into the support block 114. However, there is NO disclosure
regarding how the connecting rod 120 is secured to the support
block 114 nor whether it has any connection to the lower weld
plate 86. Moreover, even if the connecting rod 120 is connected
to the lower plate 86, Jaenson does not specify no rotational and
translational movement between the lower plate 86 and the
connecting rod 120.
Id. Appellant contends that "Jaenson does not disclose the connecting rod
120 is connected to the lower weld plate 86" and the Examiner does not
specify where the cited text can be found in Jaenson. Id. at 8.
The Examiner responds:
However this argument is unpersuasive because the
connecting rod 120 as shown in figure 11 is connected to fixed
lower jaw 86 to be able to slide along the top surface of the
support block 114. And applicant submits that "the lower weld
plate 86 reciprocates due to movement of the connecting rod"
therefore the lower weld plate is fixed to the connecting rod for
movement. And is clearly connected to allow for movement of
the fixed weld jaw and would not be able to effect movement if
the connecting rod was not fixed to prevent rotational or
translational movement.
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Appeal2017-011638
Application 13/849,436
Answer 8. We are persuaded by Appellant's argument.
A determination that a claim is anticipated under 35 U.S.C. § 102(b)
requires that we compare the claim to the prior art reference and make
factual findings that "each and every limitation is found either expressly or
inherently in [that] single prior art reference." Celeritas Techs. Ltd. v.
Rockwell Int'! Corp., 150 F.3d 1354, 1360 (Fed. Cir. 1998); see also In re
Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004).
Jaenson relates to a weld arm finger assembly that operates by moving
strap portions attached to weld plates back and forth with respect to one
another to generate a substantial amount of heat through friction, which
softens the interfacing regions of the strap portions until a weld is formed.
Jaenson 4:5-12. Figure 11 of Jaenson is reproduced below:
FIG.ti
26
Jaenson discloses that its "[ w ]elding motion is accomplished by coupling the
connecting rod 120 to eccentric pivot pin 96, which is rotated at a high
speed, by a motor 78 coupled to the eccentric pivot pin (eccentric crank) 96
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Appeal2017-011638
Application 13/849,436
by a belt 110 and pulley 111, 112, arrangement." Jaenson 16:34--38.
According to J aenson,
the lower lever arm 94 applies upward pressure to the lower
weld plate 86 through the support block 114, upon which the
lower weld plate 86 slides. The lower weld plate 86 slides along
the top surface of the support block 114 as the lower weld plate
86 reciprocates due to movement of the connecting rod 120
caused by the eccentric pivot pin 96. The support block 114 is
pivotally mounted to the lever arm 94 via pivot pin 116, so as to
facilitate rocking of the upper and lower 86 weld plates.
Id. 16:49-57. "The motor 78, pulleys 111 and 112, eccentric pivot pin 96
and connecting rod 120 cooperate to define a drive which effects both
longitudinal movement and rocking of the lower weld plate 86." Id. 17:49-
52.
The Examiner does not cite to any express disclosure in the text of
J aenson that describes limitation (b) of claim 7. Instead, the Examiner relies
on Figure 11 's schematic in Jaenson and asserts that "connecting rod 120 as
shown in figure 11 is connected to fixed lower jaw 86." Answer 8. We
have reviewed Figure 11 of Jaenson, as well as its c01Tesponding
description, but we find nothing that shows or expressly discloses whether or
how the lower weld plate 86 is secured to connecting rod 120, as required by
limitation (b). Although Jaenson discloses that the eccentric portion of the
eccentric pivot 96 affects reciprocating movement of the connecting rod 120
and, consequently, the lower weld plate 86 (Jaenson 16:16-19), Jaenson
does not show whether the connecting rod 120 is fixed to the lower weld
plate 86 by at least two secured points, such that the weld plate and the
connecting rod are fixed from rotational and translational movement relative
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Appeal2017-011638
Application 13/849,436
to one another, as required by limitation (b ). Thus, the Examiner has not
shown that limitation (b) of claim 7 is expressly found in Jaenson. Jaenson
can, nevertheless, anticipate claim 7 if it inherently describes the claimed
subject matter.
To the extent that the Examiner maintains that Jaenson's connecting
rod 120 "is clearly connected to allow for movement of the fixed weld jaw"
(Answer 8), more than speculation is required. "Inherent anticipation
requires that the missing descriptive material is 'necessarily present,' not
merely probably or possibly present, in the prior art." Trintec Indus., Inc. v.
Top-U.S.A. Corp., 295 F.3d 1292, 1295 (Fed. Cir. 2002) (quoting In re
Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citation omitted)). "The
mere fact that a certain thing may result from a given set of circumstances is
not sufficient [to establish inherency.]" In re Oelrich, 666 F.2d 578, 581
(CCP A 1981 ). Appellant contends, and the Examiner does not counter, that
"the connecting rod 120 can be directly connected to the support block 114
to effect movement of the lower weld plate 86 or the connecting rod 120 can
be pivotally connected to the lower weld plate 86." Appeal Br. 5. To rely
upon the theory of inherency, the Examiner must provide a basis in fact
and/or technical reasoning to support reasonably the determination that the
allegedly inherent characteristic necessarily flows from the teachings of the
applied prior art. Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. &
Inter. 1990). However, the Examiner only speculates and provides no
further evidence or reasoning to support the finding that J aenson' s lower
weld plate is necessarily secured to the connecting rod 120 by at least two
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Application 13/849,436
secured points, such that the fixed weld plate and the connecting rod 120 are
fixed from rotational and translational movement relative to one another.
Accordingly, the Examiner has not established by a preponderance of
the evidence that Jaenson discloses either expressly or inherently "a fixed
weld jaw secured to a connecting rod by at least two secured points; said
fixed weld jaw and said connecting rod are fixed from rotational and
translational movement relative to one another," as called for in claim 7.
Thus, we do not sustain the rejection of independent claim 7, and dependent
claims 8, 9, 11, 13, and 16, as being anticipated by Jaenson.
Claims 1, 3, 5, 6, 14, and 15
Independent claim 1 recites "[a] method for welding two ends of a
strap comprising," in part, "fixing the fixed weld jaw to a connecting rod to
prevent rotational and translational movement between the two." Appeal Br.
(Claims App.). In rejecting this step of claim 1 as being anticipated by
Jaenson, the Examiner relies on the same finding as to limitation (b) of claim
7. See Final Act. 2 ("fixing the fixed weld jaw (86) to a connecting rod
(120) to prevent rotational and translational movement between the two").
For the same reasons discussed above, the Examiner has not shown, either
expressly or inherently, that Jaenson's lower weld plate 86 is fixed to
connecting rod 120, such that rotational and translational movement is
prevented between the two. As such, the Examiner has not established a
prima facie case of anticipation as to claim 1. Thus, we do not sustain the
rejection of independent claim 1, and dependent claims 3, 5, 6, 14, and 15,
as being anticipated by J aenson.
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Appeal2017-011638
Application 13/849,436
Obviousness over Jaenson
Claims 2, 4, 10, 12, and 17
In rejecting dependent claims 2, 4, 10, 12, and 17 as unpatentable over
Jaenson, the Examiner relies on the same deficient findings in Jaenson for
independent claims 1 and 7. Thus, we do not sustain the obviousness
rejection of dependent claims 2, 4, 10, 12, and 17 that incorporate the
erroneous findings of claims 1 and 7.
In summary:
1, 3, 5-9, 11, 102(b)
13-16
2, 4, 10, 12, 103(a)
17
Jaenson
Jaenson
CONCLUSION
1, 3, 5-9, 11,
13-16
2, 4, 10, 12,
17
1-17
The decision of the Examiner to reject claims 1-17 is reversed.
REVERSED
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