Ex Parte 6330941 et al

Board of Patent Appeals and Interferences

Apr 27, 2012

95000071 (B.P.A.I. Apr. 27, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/000,071 01/26/2005 6330941 790063.00072 7134
7590 04/27/2012
McKenna Long & Aldridge LLP
1900 K Street, NW
Washington, DC 20006
EXAMINER
FLANAGAN, BEVERLY MEINDL
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
04/27/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

REXNORD INDUSTRIES, LLC,
Requester and Cross-Appellant,

v.

HABASIT BELTING, INC.,
Patent Owner and Appellant.
____________

Appeal 2009-012531
Reexamination Control 95/000,071
Patent 6,330,941 B1
Technology Center 3900
____________

Before JOHN C. KERINS, JEFFREY B. ROBERTSON, and
DANIEL S. SONG, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appeal 2009-012531
Reexamination Control 95/000,071
Patent 6,330,941 B1

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Third-Party Requester Rexnord Industries, LLC (hereinafter
“Rexnord”) requests rehearing under 37 C.F.R. § 41.79 of the following
portions of our decision mailed August 5, 2010 (hereinafter “Decision”) in
the appeal of the reexamination of United States Patent 6,330,941 B1
(hereinafter the “‘941 Patent”) (Request for Rehearing filed September 29
2010, hereinafter “Request,” at 1-2.):
1. Our decision to reverse the Examiner’s rejection of: claims 1, 2, 6,
23, and 25 under 35 U.S.C. § 102(b) as being anticipated by Ensch;1 and
claims 1-22, and 25 under 35 U.S.C. §103(a) as obvious over Horton,2
Ensch, and Irwin;3 and
2. Our decision to affirm the Examiner’s refusal to adopt the
proposed rejections of: claims 19 and 23 under 35 U.S.C. § 103(a) as
obvious over Gruettner4 in view of Ensch; claims 11, 14, 15, and 20 under
35 U.S.C. § 102(b) as anticipated by Gruettner; claims 1-22, 24, and 25
under 35 U.S.C. § 103(a) as obvious over Horton in view of Irwin; claims 1-
25 under 35 U.S.C. § 103(a) as obvious over Horton in view of Ensch;
claims 1-22, and 25 under 35 U.S.C. § 103(a) as obvious over Horton in
view of Machinery Handbook;5 claims 1-22, and 25 under 35 U.S.C.

1 Ensch, U.S. 5,253,749, issued Oct. 19, 1993
2 Horton, U.S. 5,372,248, issued Dec. 13, 1994
3 Irwin, U.S. 5,139,135, issued Aug. 18, 1992
4 Gruettner, U.S. 5,303,818, issued Apr. 19, 1994
5 Erik Oberg et al., Machinery’s Handbook 604-607 (Robert E. Green and
Christopher J McCauley, eds., Industrial Press, Inc. 1996) [hereinafter
Machinery Handbook].
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§ 103(a) as obvious over Horton in view of Dutch Textbook;6 and claims 3-
5, 9, 10, 16, and 17 under 35 U.S.C. § 103(a) as obvious over Gruettner in
view of Horton.
Specifically, Requester contends that the Board misapprehended the
following points: (A) what is disclosed by Ensch; (B) the combination of
Horton, Ensch, and Irwin; (C) the combination of Ensch and Gruettner; (D)
what is disclosed by Gruettner, Horton, and Ensch; (E) the combination of
Horton and Irwin; (F) the combination of Horton with Ensch, Machinery
Handbook, or Dutch Textbook; and (G) the combination of Gruettner and
Horton. (Request 2.)
Patent Owner Habasit Belting, Inc. (hereinafter “Habasit”) urges that
the Request should be denied. (Comments in Opposition to Respondent’s
Request for Rehearing under 37 C.F.R. § 41.79(c) filed October 4, 2010,
hereinafter “PO Response,” at 1.)
Initially, we agree with Habasit that in the Request, Rexnord presents
several new arguments without a showing of good cause or that the
arguments are in response to a new ground of rejection,7 such new
arguments being beyond the scope of a Request for Rehearing under 37
C.F.R. § 41.79. (PO Response 2-4.) Accordingly, we only address
Rexnord’s Request to the extent it complies with 37 C.F.R. § 41.79 (b).

6 A. Anemaat and J.L. Spoormaker, Konstruktieleer Deel B: Konstrueren in
Kunststoffen 209-211 (Technical University at Delft, The Netherlands 1992)
[hereinafter Dutch Textbook].
7 The Decision, in reversing the Examiner’s decision not to adopt certain
rejections, did set forth new grounds of rejection by operation of rule 37
C.F.R. § 41.77(a), Rexnord’s Request does not challenge the portions of the
Decision designated as such.
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Patent 6,330,941 B1

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(A) Ensch
Regarding Ensch, Rexnord contends that we misapprehended whether
Ensch discloses a web portion forming into a corrugated portion. (Request
3-4.)
However, we addressed whether Ensch disclosed a web portion
forming into a corrugated portion in the Decision, where we stated:
“Although Ensch discloses that the support rib 90 extends between and
meets the upper edge of the reach bars 52, Ensch does not disclose any
structure that would correspond to the corrugated portion either below or
above and meeting the support rib 90, which is required in the claims as
discussed in the claim interpretation section.” (Decision 21.)
In the claim interpretation section of the Decision, we interpreted
claim 1, stating “Claim 1 requires that the web portion extends from one of
the upper and lower surface to some portion of the way through the
thickness of the intermediate section to form into a corrugated portion, the
corrugated portion then extending to the other of the upper and lower
surfaces” and “it is clear from the claims that the web portion begins either
from the upper surface or the lower surface of the intermediate section and
ends by forming into or starting the corrugated portion at a portion of the
way through the thickness of the intermediate section, the corrugated portion
ending at the opposite upper or lower surface of the intermediate section for
the entire intermediate width.” (Decision 18, 19.)
Thus, to be clear, because Ensch only discloses that support rib 90
extends between and meets the upper end of the reach bars 52, Ensch does
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Patent 6,330,941 B1

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not disclose the “formed into” limitation recited in the claims, as the
corrugated portion in Ensch does not extend below or above support rib 90.8
(See Decision, FF 7, 8.)
In addition, Rexnord’s argument that because Ensch discloses a
unitary molded form, Ensch discloses the arrangement recited in the claims
is deficient for the reasons expressed in the Decision and further elaborated
above. (Request 4; Decision 21.)

(B) Horton, Ensch, & Irwin
In the Decision, we reversed the Examiner’s rejection based on the
combination of Horton, Ensch, and Irwin, in view of the deficiencies of
Ensch, which have been addressed above. (Decision 21-22.) Rexnord’s
arguments in the Request are directed to other reasons why the combination
of Horton, Ensch and Irwin would have rendered the present claims obvious,
Rexnord additionally arguing that Irwin is not necessary to reach the instant
claims. (Request 5-6.) However, Requester did not previously present these
arguments in the Respondent Brief. (Req. Resp. Br. 12-14.) Additionally,
Rexnord does not present a showing of good cause as to why the new
arguments should be considered. Accordingly, Requester’s arguments in
this regard are beyond the scope of rehearing and have not been considered.

8 In this regard, Rexnord’s argument that the Examiner’s rejection should
not be discounted due to the presence of imprecise reference numbers is also
unpersuasive, in view of our analysis of Ensch in the Decision. (Request 4,
5.)
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(C) Gruettner & Ensch
We declined to reverse the Examiner’s decision not to reject claim 23
as obvious over Gruettner and Ensch, because Rexnord’s asserted reasoning,
that by providing transverse openings in the link ends closer to the lower
surface more securely retains the modules in a track, was not supported by
the record. (Decision 24; Req. App. Br. 22.) We also declined to reverse
the Examiner’s refusal to reject claim 19, because of the deficiencies of
Gruettner discussed in the Decision. (Decision, 24-26.) In the Request,
Rexnord attempts to set forth alternative rationales as to why one of ordinary
skill in the art would have combined Gruettner and Ensch to render claims
19 and 23 obvious. (Request 6-7.) As discussed above, such arguments are
beyond the scope of rehearing and have not been considered.

(D) Gruettner
In the Decision, we found that Rexnord had not produced “persuasive
evidence in the record that in Gruettner’s module, the sprocket having teeth
would be capable of engaging both the rounded endwall and angled face.”
(Decision 25.) In the Request, Rexnord again states that a tooth is capable
of entering to engage the rounded endwall disclosed by Gruettner. (Request
8-9.) We are not persuaded for the reasons set forth in the Decision.
Requester’s additional arguments regarding Horton and Ensch are beyond
the scope of rehearing as they propose new arguments and/or new grounds
of rejection. (Request 8-9.)

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(E) Horton & Irwin
We agreed with the Examiner’s decision not to adopt the proposed
rejection of the claims over Horton in view of Irwin because it was unclear
as to how the two references would have been combined to arrive at the
instant claims. (Decision 26-27.) Requester contends that the transverse rib
of Irwin would have been added to the top side of Horton because at any
other location, the functionality of the openings and spaces in Horton would
be eliminated. (Request 9, 10.) However, even if this were the case, as we
stated in the Decision, “the prior art is silent as to how the web portion of
Irwin would be incorporated into the belt module of Horton. That the belt
module resulting from some combination of Horton and Irwin may result in
an integrally molded article as advocated by Rexnord, does not provide a
sufficient basis to conclude that the resulting structure would meet the
recitation of a web portion only a portion of the way through the thickness,
and forming into a corrugated portion as recited in the claims.” (Decision
27.) Accordingly, we are not persuaded that we misapprehended or
overlooked any aspects of the combination of Horton in view of Irwin.

(F) Horton, Ensch, Machinery Handbook, & Dutch Textbook
With respect to the combination of Horton and Ensch, Requester sets
forth a similar argument as in (E) above, stating that Horton in view of
Ensch would inevitably lead to the claimed web portion that forms into the
corrugated portion due to the functionality required in the resulting belt
module. (Request 11-12.) Again, we fail to see how we misapprehended
the teachings of Horton and Ensch in the Decision. (Decision 28-29.)
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Requester’s position that one of ordinary skill in the art would have been
able to fit together Horton and Ensch like the pieces of a puzzle (Request
12.), still fails to provide a sufficient rational basis for arriving at the
structure recited in the claims. Accordingly, Requester’s arguments are not
persuasive.
For similar reasons, Requester’s arguments pertaining to the
Machinery Handbook and the Dutch Textbook are also unpersuasive for the
reasons stated in the Decision. (Request 12-13; Decision, 28-29.)

(G) Gruettner & Horton
Requester contends that in modifying the hinge barrels 24, 26 of
Gruettner in view of Horton, to make the hinge barrels wider, there would
not be an “open space between the leg portions in one module and the leg
portions in the adjacent module” as upper conveying surface 14 will
continue to cover the narrow leg portion. (Decision 31; Request 13-14.)
However, we further stated, "[t]here is no indication that the link ends
disclosed in Gruettner do not form a ‘strong wear bearing surface.’"
(Decision 30-31). In addition, we also stated that "[t]he modification
proposed by Rexnord would reduce Gruettner's continuous bearing surface
by narrowing the width of the link ends along the proximal ends[,]"
(Decision 31) considering the fully interlocked construction of the modules
of Gruettner. Moreover, the Requester's assertion that if barrels are simply
made wider, the bearing surface is made stronger, ignores the function of
these conveyor modules. If the link ends of one module are "made wider,"
this requires the link ends of the adjacent module to be made narrower in
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order for the modules to interlock. Such reduction in size of the link end
weakens its strength resulting in a weaker conveyor belt. In view of the
above, the Requester's suggested combination not only appears to be based
on hindsight, but also not supported by rational underpinnings.
Accordingly, we are not persuaded that we misapprehended or overlooked
the combined teachings of Gruettner and Horton.
In light of the above, Requester's argument that if the barrels 24, 26 of
Gruettner are made wider, the resulting barrier surface would be made
stronger due to additional material is not persuasive. (Request 14.)

Therefore, we decline to make any changes in the Decision mailed
August 5, 2010. Accordingly, the Request for Rehearing is denied.

DENIED

cu

Appeal 2009-012531
Reexamination Control 95/000,071
Patent 6,330,941 B1

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PATENT OWNER:
McKenna Long & Aldridge LLP
1900 K Street, NW
Washington DC 20006

THIRD-PARTY REQUESTER:
Quarles & Brady LLP
411 East Wisconsin Avenue
Milwaukee, Wisconsin 53202