Ex Parte 6330941 et alDownload PDFBoard of Patent Appeals and InterferencesApr 27, 201295000071 (B.P.A.I. Apr. 27, 2012) Copy Citation 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 2 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]. Appeal 2009-012531 Reexamination Control 95/000,071 Patent 6,330,941 B1 3 § 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. Appeal 2009-012531 Reexamination Control 95/000,071 Patent 6,330,941 B1 4 (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 Appeal 2009-012531 Reexamination Control 95/000,071 Patent 6,330,941 B1 5 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.) Appeal 2009-012531 Reexamination Control 95/000,071 Patent 6,330,941 B1 6 (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.) Appeal 2009-012531 Reexamination Control 95/000,071 Patent 6,330,941 B1 7 (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.) Appeal 2009-012531 Reexamination Control 95/000,071 Patent 6,330,941 B1 8 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 Appeal 2009-012531 Reexamination Control 95/000,071 Patent 6,330,941 B1 9 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 10 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 Copy with citationCopy as parenthetical citation