Ex Parte Beesley

Patent Trial and Appeal Board

Jun 20, 2017

14250703 (P.T.A.B. Jun. 20, 2017)

United States Patent and Trademark Office
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.
14/250,703 04/11/2014 Robert C. Beesley HII-205 (62242-US) 5020
124104 7590 06/22/2017
TKTP-TTWT Tnint Pii stonier Number
EXAMINER
301 North Main Street HESS, DOUGLAS A
Suite 1101
Greenville, SC 29601 ART UNIT PAPER NUMBER
3651
NOTIFICATION DATE DELIVERY MODE
06/22/2017 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):
suzanne@jkiplaw.com
docketing @j kiplaw .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT C. BEESLEY
Appeal 2016-007971
Application 14/250,7031
Technology Center 3600
Before JOHN A. EVANS, LARRY J. HUME, and JAMES W. DEJMEK,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1—5, 7—15, and 17—20. Appellant has canceled claims 6
and 16. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellant, the real party in interest is Illinois Tool Works
Inc. App. Br. 4.
Appeal 2016-007971
Application 14/250,703
STATEMENT OF THE CASE2
The Invention
Appellant's disclosed and claimed inventions "relate[] generally to the
field of conveyor belts. More particularly, the disclosure relates to conveyor
belts with removable tops." Spec. 12.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added to contested limitation):
1. A conveyor belt for conveying articles having a
width comprising:
an interconnected series of relatively pivotable body
members; and
a plurality of platform members, each platform member
attached to a respective one of the body members, each
platform member having an upper surface and a substantially
vertical rail member extending upward at one side of the upper
surface, the upper surface having a first portion adjacent the
rail member, a second portion adjacent the first portion, and a
third portion adjacent the second portion, the first portion
extending from the rail member toward the second portion at
least to a center of the platform member, the second portion
extending upward in a direction from the first portion toward
the third portion, the first and second portions configured
relative to the width of the article such that when placed on the
platform member in contact with the rail the article extends to
and no further than the second portion.
2 Our decision relies upon Appellant's' Appeal Brief ("App. Br.," filed
Jan. 18, 2016); Reply Brief ("Reply Br.," filed Aug. 23, 2016); Examiner's
Answer ("Ans.," mailed June 23, 2016); Final Office Action ("Final Act.,"
mailed July 1, 2015); and the original Specification ("Spec.," filed
Apr. 11,2014).
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Appeal 2016-007971
Application 14/250,703
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Steeber et al. ("Steeber") US 6,601,697 B2 Aug. 5, 2003
Rejection on Appeal
Claims 1—5, 7—15, and 17—20 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Steeber. Ans. 2; Final Act. 2.
CLAIM GROUPING
Based on Appellant's' arguments (App. Br. 11—18), we decide the
appeal of the obviousness rejection of claims 1—5, 7—15, and 17—20 on the
basis of illustrative claim 1.
ISSUE
Appellant argues (App. Br. 11—18; Reply Br. 3—4) the Examiner's
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious Steeber is in
error. These contentions present us with the following dispositive issue:
Did the Examiner err in finding the cited prior art teaches or suggests
"[a] conveyor belt for conveying articles," that includes, inter alia, plural
platform members, "each platform member having an upper surface . . . the
upper surface having a first portion . . . the first portion extending from the
rail member toward the second portion at least to a center of the platform
member," as recited in claim 1?
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Appeal 2016-007971
Application 14/250,703
ANALYSIS
We agree with particular arguments advanced by Appellant with
respect to claims 1 and 11 for the specific reasons discussed below. We
highlight and address specific findings and arguments regarding claim 1 for
emphasis as follows.
Appellant contends the Examiner has not set forth a prima facie case
of obviousness because:
With reference to the marked sheets from Steeber et al.
provided with the previous Office Action, the noted "1st
portion" is less than 20% the width of the platform member 12.
The 1st portion is certainly not over halfway across the platform
member to the center. Even the 1st portion plus the "2nd portion"
together do not even approach a center of the platform member.
Fig. 3 of Steeber et al. shows that when article 38 reaches
position 50, one side contacts rail member 28 and the other side
extends past 2nd portion to the identified "3rd portion."
Therefore, Fig. 3 of Steeber et al. teaches exactly the
opposite of what is claimed with regard to the dimension/ratios
of portions 113/213, 115,215 and 117/119 .... The claimed
subject matter is thus a departure from what the reference
teaches, and no disclosure or suggestion has been identified for
the claimed elements.
App. Br. 16.
The Examiner's Final Rejection relies almost exclusively upon a
marked-up drawing Figure from the front page of the Steeber reference. See
Steeber Fig. 5.
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Appeal 2016-007971
Application 14/250,703
Figure 5 of Steeber, cited and annotated by the Examiner in the
rejection of claim 1, "is a front elevation view of another embodiment
of a conveyor belt of the present invention. The drawing shows the
body members having flanges on either end which ride in channels of
a rail member that rest on a base. In this embodiment, the base of the
rail member lays flat on the support beam, and the surface platform
member itself is inclined in order to provide for a sloped surface."
Steeber, col. 4,11. 9—16; and see Final Act. 2; Ans. 2.
We agree with Appellant the Examiner erred in finding the portion of
Steeber identified as the "1st portion" in annotated Figure 5 teaches or
suggests, relative to the identification of the claimed "platform member," the
claim limitation "the first portion extending from the rail member toward the
second portion at least to a center of the platform member," as recited in
claim 1.
We find on this record the Examiner's mapping of claim 1 to Steeber
is deficient, particularly as concerns the claimed extent of the first portion
with respect to the platform member, i.e., we find the first portion does not
extend "at least to a center of the platform member." With respect to the
motivation to modify the teachings of Steeber in this regard, we further find
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Appeal 2016-007971
Application 14/250,703
the Examiner has not provided the requisite "articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness." In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR Int'l
Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)).
Appellant makes further arguments (App. Br. 16—18; Reply Br. 3—4),
which we decline to reach, as we find the issue identified above to be
dispositive of this Appeal.
Accordingly, based upon the findings above, on this record, we are
persuaded of at least one error in the Examiner's reliance on the teachings
and suggestions of the cited prior art to teach or suggest the disputed
limitation of claim 1, such that we cannot sustain the Examiner's
obviousness rejection of independent claim 1 and independent claim 11,
which recites commensurate limitations. For the same reasons, we cannot
sustain the obviousness rejection of grouped dependent claims 2—5, 7—10,
12—15, and 17—20, which stand with claims 1 and 11. See Claim Grouping,
supra.
CONCLUSION
The Examiner erred with respect to the obviousness rejection of
claims 1—5, 7—15, and 17—20 under 35 U.S.C. § 103(a) over the cited prior
art of record, and we do not sustain the rejection.
DECISION
We reverse the Examiner's rejection of claims 1—5, 7—15, and 17—20.
REVERSED
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