Ex Parte Brandon

Patent Trial and Appeal Board

Apr 9, 2018

13746432 (P.T.A.B. Apr. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/746,432 01122/2013
28289 7590 04/11/2018
THE WEBB LAW FIRM, P.C.
ONE GATEWAY CENTER
420 FT. DUQUESNE BL VD, SUITE 1200
PITTSBURGH, PA 15222
FIRST NAMED INVENTOR
Mark M. Brandon
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.
2202-123279 2938
EXAMINER
SWIATOCHA, GREGORYD.
ART UNIT PAPER NUMBER
3725
NOTIFICATION DATE DELIVERY MODE
04/11/2018 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):
patents@webblaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK M. BRANDON 1
Appeal2017-003019
Application 13/7 46,432
Technology Center 3700
Before STEFAN STAICOVICI, ARTHUR M. PESLAK, and
SEAN P. O'HANLON, Administrative Patent Judges.
O'HANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
August 20, 2015, final decision rejecting claims 1 and 3-20.2 We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
1 Appellant is the Applicant, FCI Holdings Delaware, Inc., which, according
to the Appeal Brief, is the real party in interest. Br. 2.
2 Claim 2 is canceled. Id. at 17 (Claims App.).
Appeal2017-003019
Application 13/746,432
SUMMARY OF THE DECISION
We AFFIRM.
SUMMARY OF THE INVENTION
Appellant's disclosure is directed to "a method and apparatus for
forming a bulb in a stranded cable bolt." Spec. i-f 2. Claims 1 and 13 are
independent. Claim 1, reproduced below from page 17 (Claims Appendix)
of the Appeal Brief, is illustrative of the claimed subject matter:
1. A method of forming a bulb in a cable bolt, the method
compnsmg:
providing cable from a cable source;
advancing the cable in a first direction;
forming a bulb in a portion of the cable while the portion
of the cable is continuously advanced and while the cable is
continuously provided from the cable source, wherein the bulb
is formed by moving a bulb forming mechanism along with the
portion of the cable being continuously advanced.
REJECTIONS
Claims 1, 6, 8-11, 13, 14, 18, and 19 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Steains (US 7,562,550 B2, issued July
21, 2009) alone or in combination with Benteler (US 4,563,802, issued Jan.
14, 1986). 3
Claims 3, 4, 12, 16, and 17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Steains and Benteler.
3 Although the heading indicates that only Steains is used in this rejection,
Benteler is also referenced in the body of the rejection. See Final Act. 3-5,
6-7.
2
Appeal2017-003019
Application 13/746,432
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Steains and Koyamatsu (US 5,522,561, issued June 4,
1996).
Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Steains and Evans (WO 2010/071935 Al, published July
1, 2010).
Claims 15 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Steains and Anagnostopoulos (US 2008/0078226 Al,
published Apr. 3, 2008).
ANALYSIS
Rejection Based on Steains Alone or in Combination with Benteler
The Examiner finds that Steains discloses a method substantially as
claimed in claim 1, but "is not explicit to wherein the bulb is formed by
moving a bulb forming mechanism along with the portion of the cable being
continuously advanced." Final Act. 3--4. The Examiner determines,
however, that because "Steains teaches an encoder ... and the cable being
continuously advanced ... in order to move the bulbing assembly along the
cable"
'
it would have been obvious to one of ordinary skill in the art at
the time of the invention to modify Steains wherein the bulb is
formed by moving a bulb forming mechanism along with the
portion of the cable being continuously advanced in order to
control the position of the bulb forming mechanism in relation
to a continuously advancing cable by use of the encoder in
order to process a cable without stopping operations.
Id. at 4 (citing Steains, 2:35, 4:57). The Examiner determines:
3
Appeal2017-003019
Application 13/746,432
In order for a cable to be continuously advanced and to form
bulbs as disclosed by Steains ... , it would be obvious to one of
ordinary skill in the art at the time of the invention that the
locking clamp (#3), which is attached to the nonmoving frame
(#1), would have to be in an inactive, non-clamping position.
Id. at 2 (citing Steains, 4:56-58); see also Ans. 11. The Examiner
determines that "[t]his would allow the bulbing mechanism (#5) to move
along with the cable as the cable is continuously advanced." Id. (citing
Steains, 2:27, 4:56-58).
The Examiner also finds that Benteler teaches "continuously moving
an endless metal strip and forming and severing means for continuously
forming and severing during the movement of the strip (while the strand
continuously moves ... ) in order to avoid uneconomical idle times," and
reasons that it would have been obvious to one of ordinary skill in the art "to
modify Steains wherein the bulb is formed by moving a bulb forming
mechanism along with the portion of the cable being continuously advanced
in order to avoid uneconomical idle times in view of the teachings of
Benteler." Id. at 4--5 (citing Benteler, 1:64, 3:7-10).
The Examiner makes a similar rejection regarding independent claim
13. Id. at 6-7.
Steains Alone
Steains discloses that cable bolt 4 is secured by cable bolt locking
clamp 3 while bulbs 22 are formed. Steains 3:28-30, 4:16-19. With the
cable bolt so secured, first and second clamp sets 6, 8 are activated to engage
the portion of the cable where a bulb is to be formed, and the second clamp
set is moved towards the first clamp set to form a bulb. Id. at 3:52---61, 4:22-
4
Appeal2017-003019
Application 13/746,432
34, Fig. 2. If another bulb is to be formed on the cable bolt, encoder 20
directs motor 19 to move the clamp sets (via their attachment to frame 1) to
the desired location, and the bulb-forming process is repeated. Id. at 4:41-
53.
Steains discloses that the cable can be supplied to the apparatus in the
following manner:
It will be appreciated by those skilled in the art that
various methods can be used for supplying cable to the
apparatus. These include continuously feeding the cable from a
reel or supplying cut lengths of cable. Cut lengths of cable can
be fed to the apparatus manually, via a magazine, or via a pick
and place style system.
Id. at 4:55---60.
In relying on Steains alone to reject claim 1, the Examiner's stated
rationale for modifying Steains to omit use of locking clamp 3 is "to control
the position of the bulb forming mechanism in relation to a continuously
advancing cable by use of the encoder in order to process a cable without
stopping operations." Final Act. 4. This, however, appears to be a
restatement of Appellant's stated benefit of the claimed invention. See, e.g.,
Spec. i-f 18 ("Such a continuous operation improves efficiency of the bulb
forming operation by not having to start and stop the drive motors (not
shown) powering the spool 12 and drive mechanism 16 and by not having
stoppage time while the bulbs 20 are being formed."). Absent Appellant's
Specification, the Examiner has not persuasively explained or identified
adequate teachings within Steains or the prior art to support, by a
preponderance of evidence, the determination that it would have been
obvious to modify Steains as suggested by the Examiner. See In re Warner,
5
Appeal2017-003019
Application 13/746,432
379 F.2d 1011, 1017 (CCPA 1967) (setting forth that the Patent Office may
not "resort to speculation, unfounded assumptions or hindsight
reconstruction to supply deficiencies in its factual basis" in making a
rejection under 35 U.S.C. § 103). We agree with Appellant that the
Examiner's use of Steains alone is based on impermissible hindsight
reasoning. See Br. 10-11.
Steains and Benteler
Regarding the rejection of claim 1 based on Steains and Benteler,
Appellant argues that Benteler is non-analogous art because (1) it is in a
different field of endeavor and because (2) it is not reasonably pertinent to
the particular problem with which the inventor is involved. Id. at 11-12.
Regarding the second prong, Appellant argues that "Benteler is concerned
with uneconomical idle times, transport times, and storing times during the
production of exhaust pipes for automotive vehicles ... whereas the present
invention seeks to improve efficiency of a bulb forming operation and
preventing stoppage time when the bulbs are formed .... " Id. at 11 (citing
Benteler, 1:50-55; Spec. i-f 18). Appellant alleges differences between
"forming a bulb in a mine roof bolt cable" and "the production of exhaust
pipes for an automobile." Id. Appellant argues that because the Benteler
process includes bending steps after the pipe strand is cut into sections, the
teachings of Benteler "are not pertinent to a fully continuous process as
claimed." Id. at 12.
The analogous-art test requires that the Board show that a
reference is either in the field of the applicant's endeavor or is
reasonably pertinent to the problem with which the inventor
was concerned in order to rely on that reference as a basis for
6
Appeal2017-003019
Application 13/746,432
rejection. In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992).
References are selected as being reasonably pertinent to the
problem based on the judgment of a person having ordinary
skill in the art. Id. ("[I]t is necessary to consider 'the reality of
the circumstances, '-in other words, common sense-in
deciding in which fields a person of ordinary skill would
reasonably be expected to look for a solution to the problem
facing the inventor." (quoting In re Wood, 599 F.2d 1032, 1036
(C.C.P.A.1979))).
In re Kahn, 441F.3d977, 986-87 (Fed. Cir. 2006). "A reference is
reasonably pertinent [to a problem an appellant attempts to solve] if ... it is
one which, because of the matter with which it deals, logically would have
commended itself to an inventor's attention in considering his problem." In
re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). "If a reference disclosure has
the same purpose as the claimed invention, the reference relates to the same
problem, and that fact supports use of that reference in an obviousness
rejection." Id.
We agree with the Examiner that Benteler constitutes analogous art
because it is pertinent to the problem of operating manufacturing equipment
in a continuous manner to improve efficiency. As correctly noted by the
Examiner (see Ans. 11-12; Final Act. 3), this is a common problem both
Appellant and Benteler sought to achieve. Appellant's Specification asserts
that "continuous operation improves efficiency of the bulb forming
operation ... by not having stoppage time while the bulbs 20 are being
formed." Spec. i-f 18. Similarly, Benteler teaches a process of "continuous
production ... in which uneconomical idle times ... are avoided." Benteler
1 :50-55. Both Appellant and Benteler achieve these efficiencies by moving
a piece of equipment at the same speed as the work piece so that work can
7
Appeal2017-003019
Application 13/746,432
be done while the work piece is translating. See Spec. i-f 17; Benteler 56-62,
4:67-5:7.
Appellant's assertion of differences between applications for mine
roof bolt cables and automobile exhaust pipes may be relevant to the field of
endeavor, but does not persuasively illustrate a difference regarding the
problems that are solved. Nor are Appellant's comments regarding
Benteler' s bending steps persuasive to differentiate the problems identified
by the Examiner.
Appellant also argues that "[t]he bending of the pipes more closely
corresponds to the deformation of the cable to form a bulb in the cable, as
recited in claim 1, than the moveable saw operation of Benteler." Br. 13.
Thus, Appellant argues, one of ordinary skill in the art would not modify
Steains in view of Benteler as set forth by the Examiner. Id.
We are not persuaded by Appellant's arguments. Appellant's
conclusory arguments fail to address the rejection as set forth by the
Examiner, and fail to apprise us of error. See In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997) (holding that attorney arguments or conclusory
statements are insufficient to rebut a prima facie case of obviousness).
Accordingly, for the foregoing reasons, we sustain the Examiner's
rejection of claim 1, and its dependent claims 6 and 8-11, which are not
argued separately, as being unpatentable over Steains and Benteler.
Appellant relies on similar arguments for the patentability of claim 13 as
discussed above regarding the rejection of claim 1. See Br. 13-14.
Accordingly, for the same reasons as discussed above, we also sustain the
Examiner's rejection of claim 13, and its dependent claims 14, 18, and 19,
8
Appeal2017-003019
Application 13/746,432
which are not argued separately, as being unpatentable over Steains and
Benteler.
Rejection Based on Steains and Benteler
Claims 3, 4, 16, and 17
With respect to the rejection of claims 3, 4, 16, and 17, Appellant
relies on the arguments discussed above in regard to the rejection of claim 1.
Id. at 14--15. Accordingly, for the same reasons as discussed above, we also
sustain the rejection of claims 3, 4, 16, and 17, as being unpatentable over
Steains and Benteler.
Claim 12
Claim 12 depends indirectly from claim 1 through claim 3, and further
requires continuously advancing an entire portion of the cable extending
from the cable source until it is cut to a preset length while the cable is
continuously advanced by moving a cutting device along with the cable. Id.
at 17, 18 (Claims App.). The Examiner finds that Benteler discloses these
features. Final Act. 8; see also Ans. 13.
Appellant repeats arguments regarding Benteler's bending steps. Br.
14--15. These arguments are unpersuasive because they do not address the
rejection as set forth by the Examiner, and, therefore, fail to apprise us of
error.
Appellant also argues that "there is nothing in Steains to suggest
continuously advancing an entire length of the cable extending from the
cable source." Id. at 15. This argument is unpersuasive because it does not
address the Examiner's reasoning that it would have been obvious to one of
9
Appeal2017-003019
Application 13/746,432
ordinary skill in the art to operate Steains' s apparatus with locking clamp 3
in an inactive, non-clamping position. See Final Act. 2. Thus, Appellant's
arguments do not address the rejection as set forth by the Examiner, and,
therefore, fail to apprise us of error.
Accordingly, for the foregoing reasons, we sustain the Examiner's
rejection of claim 12 as being unpatentable over Steains and Benteler.
Rejections Based on Steains and One of Koyamatsu, Evans, and
Anagnostopoulos4
With respect to the rejection of claims 5, 7, 15, and 20, Appellant
relies on the arguments discussed above in regard to the rejection of claim 1.
Br. 15-16. Accordingly, for the same reasons as discussed above, we also
sustain the rejections of claim 5 as being unpatentable over Steains and
Koyamatsu, of claim 7 as being unpatentable over Steains and Evans, and of
claims 15 and 20 as being unpatentable over Steains and Anagnostopoulos.
DECISION
The Examiner's decision to reject claims 1 and 3-20 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
4 We understand the Examiner's reference to Steains to mean Steains alone
or in combination with Benteler, as applied to the independent claims.
Appellant appears to interpret the rejections similarly, as Appellant makes
reference to Benteler in traversing these rejections. See Br. 15-16.
10