90011197 (P.T.A.B. Jul. 30, 2013)

Ex Parte 7648353 et al

Patent Trial and Appeal BoardJul 30, 2013

90011197 (P.T.A.B. Jul. 30, 2013)

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. 90/011,197 10/04/2010 7648353 199981.000435 1932 490 7590 07/30/2013 VIDAS, ARRETT & STEINKRAUS, P.A. Richard A. Arrett SUITE 400, 6640 SHADY OAK ROAD 6640 Shady Oak Rd. EDEN PRAIRIE, MN 55344 EXAMINER TILL, TERRENCE R ART UNIT PAPER NUMBER 3991 MAIL DATE DELIVERY MODE 07/30/2013 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 PATENT TRIAL AND APPEALS BOARD ____________________ Ex parte FETTE GMBH, Patent Owner and Appellant ____________________ Appeal 2013-008234 Reexamination control 90/011,197 Patent 7,648,353 B2 Technology Center 3900 ____________________ Before CHUNG K. PAK, JEFFREY B. ROBERTSON, and RAE LYNN P. GUEST, Administrative Patent Judges. GUEST, Administrative Patent Judge. DECISION ON APPEAL I. STATEMENT OF CASE Fette Gmbh (hereinafter “Appellant”), the real party in interest1 of Patent 7,648,353 B2 (hereinafter the “’353 patent”), appeals under 35 U.S.C. §§ 134(b) and 306 from the Examiner’s decision to reject claims 1-3 under 35 U.S.C. § 103(a) as unpatentable over Shimada2 in view of Christiaens3 and claim 6 under 1 See Appellant’s Appeal Brief filed August 10, 2012 (hereinafter “App. Br.”) at 3. Appeal 2013-008234 Application 90/011,197 2 U.S.C. §103(a) as unpatentable over Shimada in view Christiaens and further in view of Bellows.4 Final Office Action, mailed April 27, 2021, pages 2-5. We have jurisdiction under 35 U.S.C. §§ 134(b) and 306. We AFFIRM. This reexamination proceeding arose from a third-party request for ex parte reexamination filed by Gerald Levy of the law firm Day Pitney LLP. Corrected Request for Ex Parte Reexamination, filed October 4, 2010. The ’353 patent relates to a visual monitoring device for a rotary press arranged in a housing further including a high speed camera with a lens directed onto a location within the housing. ’353 patent, col. 1, l. 66 to col. 2, l. 2. Representative claim 1 on appeal reads as follows (with underlining showing added text relative to the original patent claims): 1. A visual monitoring device for rotary presses, in which a rotor, with upper and lower punches and a die plate, at least one compression station, at least one filling station, and at least one ejector station are arranged in a housing, at which individual process steps occur, characterized in that arranged in the housing is at least one high speed camera (42), whose lens is directed onto a location in the housing, and to which an image analysis device is connected, further characterized in that an endoscope (44) is arranged in front of the camera (42), and that the lens of the endoscope (44) is directed onto the location to be monitored and in that a process space (52) of the 2 JP 2898931, published June 2, 1999, identifying Keiji Shimada as sole inventor (hereinafter “Shimada”). All reference to “Shimada” herein is to the English- language translation of record. 3 US 6,676,863 B2, issued January 13, 2004, to Dirk Christiaens et al. (hereinafter “Christiaens”). 4 US 4,383,572, issued May 17, 1983, to Kenneth O. Bellows (hereinafter “Bellows”). Appeal 2013-008234 Application 90/011,197 3 rotary press is enclosed by an inner housing (50), that is essentially in sealing contact only with the sections (12, 14) of the rotor on the upper and lower sides of the die plate (10), and that the high speed camera (42) is arranged outside of the process space (52), and the endoscope (44) is led into the process space (52) in a sealed way. (Claims App’x, App. Br. 15.) Claim 1 is the only independent claim. Claims 2, 3, and 6 all depend from claim 1. Appellant argues claims 1-3 as a group, for which we select claim 1 as a representative claim. App. Br. 6-13. Although separately rejected, Appellant makes no arguments with respect to claim 6 beyond those arguments made with respect to claim 1. App. Br. 14. Accordingly, all claims stand or fall with claim 1. II. ISSUE ON APPEAL The issue on appeal is: Whether a rotary press having a process space enclosed by a sealed inner housing and a high speed camera arranged outside of the process space with an endoscope led into the process space in a sealed way would have been obvious to one of ordinary skill in the art in view of the teachings of Shimada and Christiaens? III. PRINCIPLES OF LAW “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981) “[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.” In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983). Appeal 2013-008234 Application 90/011,197 4 In making an obviousness determination one “can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” See KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) “[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” Id at 417. “[F]amiliar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Id at 420. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” Id at 416 Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). IV. DISCUSSION We adopt the Examiner’s findings in the Answer as our own and add any additional findings of fact appearing below for emphasis. The Examiner finds that Shimada discloses a rotary press with a camera system that has a camera located outside the process space and an endoscope leading into the process space. Ans. 4. The Examiner also finds that Christiaens explicitly teaches that a housing around the process space can reduce contamination of the surrounding environment as well as reduce exposure of the operator to toxic products. Ans. 5 (citing Christiaens, col. 2, ll. 43-48). The Examiner concludes that a person of ordinary skill in the art would have recognized the housing described Christiaens as being “beneficial” to the device described in Shimada. Ans. 5. Appeal 2013-008234 Application 90/011,197 5 Appellant contends that there is no objective reason to modify the press and camera unit described by Shimada with the housing described by Christiaens, because Christiaens does not teach or suggest a camera and Shimada does not teach or suggest a camera that is affected by dust and contamination. App. Br. 12. Appellant also contends that the Examiner used impermissible hindsight reasoning in concluding that it would be obvious to place the camera on the outside of the housing. Id. We agree with the Examiner. Applying the sealed housing as disclosed by Christiaens to the press as taught by Shimada yields no more than the predictable result of protecting the surrounding environment and operator from any toxic materials that may be used in a press. Therefore, the Examiner’s conclusion is based on the teachings of the references themselves, and not hindsight as argued by Appellant. Appellant further argues that because Shimada discloses a camera with X-Y- Z movement, and because Christiaens does not explicitly disclose openings in the sealed housing to which elements with X-Y-Z movement may be attached in such a way that would allow the housing to remain sealed, the pending claims are patentable over the combination of Shimada and Christiaens. App. Br. 13. The prior art provides evidence that a camera extending into a process area of a rotary press and a sealed housing surrounding the processing area, were known in the art. Thus, the claimed invention is rendered obvious by the teachings of the prior art as a whole. Appellant presents no meaningful evidence that combining the teachings of the prior art in a manner that results in the presently claimed visual monitoring device would be beyond the skill of the ordinary artisan. Indeed, the Examiner has found that providing sealed openings where the endoscope passes through such a housing would be routine for the skilled artisan. Appeal 2013-008234 Application 90/011,197 6 Ans. 8. The Examiner’s finding is supported by the other teachings of sealed couplings in the housing of Christiaens for various purposes. See Christiaens, col. 10, l. 50- col. 12, l. 18. V. CONCLUSION On the record before us, we affirm the rejections maintained by the Examiner. VI. TIME PERIOD FOR RESPONSE Requests for extensions of time in this ex parte reexamination proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f). AFFIRMED Appeal 2013-008234 Application 90/011,197 7 FOR PATENT OWNER: VIDAS, ARRETT & STEINKRAUS, P.A. Richard A. Arrett Suite 400, 6640 Shady Oak Road Eden Prairie, MN 55344 FOR THIRD-PARTY REQUESTER: Gerald Levy DAY PITNEY LLP 7 Times Square New York, NY 10036-7311 cu