Ex Parte Caunter

Board of Patent Appeals and Interferences

Nov 19, 2009

10771994 (B.P.A.I. Nov. 19, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NICHOLAS J. CAUNTER
____________

Appeal 2008-006281
Application 10/771,994
Technology Center 3600
____________

Decided: November 19, 2009
____________

Before WILLIAM F. PATE, III, MICHAEL W. O’NEILL, and STEFAN
STAICOVICI, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Nicholas J. Caunter (Appellant) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-3, 5-9, and 11-16. Appellant
Appeal 2008-006281
Application 10/771,994

2
canceled claim 4. The Examiner objected to claim 10. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).
The Invention
The claimed invention is to a device for removing folded signatures
from a saddle-back conveyor.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A device for removing folded signatures
from a saddle-back conveyor comprising:
a rotating arm rotating a full rotation;
a first gripper mounted on the moving
arm; and
an electromechanical actuator connected
to the first gripper for opening and closing
the first gripper, the electromechanical
actuator being mounted on the moving arm.

The Prior Art
The Examiner relies upon the following as evidence of
unpatentability:
Houseman US 4,852,722 Aug. 1, 1989
Müller EP 0 771 675 A1 May 7, 1997
Emigh US 5,954,323 Sep. 21, 1999

The Rejections
The following Examiner’s rejections are before us for review:
Claims 1-3, 7-9, 11-13, and 16 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Emigh.
Claims 14 and 15 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Houseman.
Appeal 2008-006281
Application 10/771,994

3
Claims 1-3, 5-9, and 11-16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Müller in view of Emigh.1

SUMMARY OF DECISION
We AFFIRM-IN-PART.

OPINION
Anticipation based on Emigh
The Examiner’s position that Emigh’s reciprocating arm is a rotating
arm rotating a full rotation contorts the ordinary and customary meaning of
“full rotation” as understood by a person having ordinary skill in the art.
Appellant’s contention is that a person having ordinary skill in the art would
understand, when reading the claim in light of the Specification, that “full
rotation” of the rotating arm means a 360° rotation whether that rotation is in
one direction, i.e., rotational movement, or two directions, i.e., reciprocating
movement (clockwise and counterclockwise movement combined). An
ordinary and customary meaning of the term “full” is “containing as
much..as is possible or normal.” MERRIAM WEBSTER’S COLLEGIATE
DICTIONARY (10th Ed. 1997). Hence, we agree with Appellants that a “full
rotation” means a 360 degree rotation.
The Examiner’s finding that Emigh’s arm reciprocates is correct.
However, Emigh’s reciprocation is not a reciprocating movement that
rotates a full rotation, i.e., a 360° rotation clockwise and then

1 Claims 5 and 6 depend from canceled claim 4. For expediency in resolving
this appeal we are considering these claims depend from claim 1. Further
prosecution before the Examiner should address the dependency of claims 5
and 6.
Appeal 2008-006281
Application 10/771,994

4
counterclockwise or vice versa. Therefore, the claimed arm’s full rotation is
not fully met by the reciprocating arm described in Emigh. In view of the
foregoing, the Examiner’s rejection of claims 1-3, 7-9, 11-13, and 16 as
anticipated by Emigh cannot be sustained.
Anticipation based on Houseman
As Appellant has contended, the Examiner erred in positing that the
claimed invention in claim 14 fails to positively recite a saddleback
conveyor as part of the claimed invention. Claim 14 is drawn to a process
for removing signatures from a saddle-back conveyor that includes a step of
“reciprocating or rotating an arm to move a gripper to remove signatures
from a saddle-back conveyor . . . .” The claim recites the process is for use
with a saddle-back conveyor and a structural feature, i.e., the arm, removes
objects, i.e., signatures, from a saddle-back conveyor. As such, any
anticipatory reference either has to explicitly or inherently perform a process
on a saddle-back conveyor and have a structural feature that removes
signatures from a saddle-back conveyor. Houseman neither performs a
process on a saddle-back conveyor nor has a structural feature that removes
signatures from a saddle-back conveyor. Therefore, Houseman does not
anticipate the process of claims 14 and 15. In view of the foregoing, the
Examiner’s rejection of claims 14 and 15 as anticipated by Houseman
cannot be sustained.
Obviousness based on Müller and Emigh
Appellant contends that Emigh’s actuator is not an electromechanical
actuator and an artisan would not use Emigh’s actuator in the saddle-back
conveyor of Müller because the air lines 32 of Emigh would tangle into the
arm of Müller and thus not work with the fully rotating arm of Müller. The
Appeal 2008-006281
Application 10/771,994

5
Examiner responded that Emigh is an electromechanical actuator and the test
for obviousness does not require features of the secondary reference to be
bodily incorporated into the primary reference.
Appellant does not separately argue claims 5, 6, 7, 13, 15, or 16.
Claims 5, 6, 7, and 16 will stand or fall with claim 1. Claim 13 will stand or
fall with claim 11. Claim 15 will stand or fall with claim 14. Br. 7-10.
Appellant appears not to contest that Müller describes a device for
removing signatures from a saddle-back conveyor and that the device has a
fully rotating arm that rotates either with a rotational movement or
reciprocating movement or that a set of gears rotate the arm. Hence,
Appellant appears not to contest the scope and content of Müller and what
the Examiner has used in Müller to reach the conclusion that the claims are
obvious. Appellant appears not to contest that Emigh’s actuator is a
pneumatic actuator that is controlled by a solenoid valve that is not mounted
on the moving arm. Appellant’s contentions focus on: (1) the Examiner’s
finding that Emigh is an electromechanical actuator and (2) that an artisan
would not replace Müller’s gear set with Emigh’s actuator because the lines
to actuate Emigh’s actuator would tangle in Müller’s arm. Br. 7, 8.
The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). A prima facie
conclusion of obviousness may be supported by a showing that the claims
are directed to a process, machine, manufacture, or composition of matter
already known in the prior art that is altered by the mere substitution of one
element for another known in the field, as long as such modification yields a
Appeal 2008-006281
Application 10/771,994

6
predictable result. See id. (citing United States v. Adams, 383 U.S. 39, 40).
The Supreme Court further stated that:
[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.
KSR, 550 U.S. at 417.
Thus, when considering obviousness of a combination of known elements,
the operative question is “whether the improvement is more than the
predictable use of prior-art elements according to their established
functions.” Id.
Appellant’s contention against Emigh
We disagree with Appellant’s contention that Emigh’s pneumatic
actuator does not meet the claimed electromechanical actuator when this
limitation is read in light of the Specification. The Specification discloses
the electromechanical actuator “preferably includes a pneumatic cylinder.”
Spec. 3, para. [0011]; 6, paras.[0028] and [0030]. The cylinder is controlled
with a solenoid control valve. Spec. 3, para. [0012]; 6, para. [0030]; 7, para.
[0031]. Therefore, the broadest reasonable interpretation of an
“electromechanical actuator,” when read in light of the Specification, is a
solenoid controlled pneumatic cylinder.
Emigh describes that arm 17 is controlled by a pneumatic actuator 28
that has lines 32 connected to a solenoid valve 33. Emigh, col. 3, ll. 54-67
and Figures 4 and 5B. Therefore, Emigh describes a solenoid controlled
pneumatic cylinder. Accordingly, giving the limitation of the
“electromechanical actuator” its broadest reasonable interpretation when
Appeal 2008-006281
Application 10/771,994

7
read in light of the Specification, Emigh’s solenoid controlled pneumatic
cylinder meets the limitation of the “electromechanical actuator.”
Appellant’s contention against replacing actuators
Appellant does not appear to contest the scope and content of Müller.
Appellant’s contentions focus on the assertion that a person having ordinary
skill in the art would not substitute Emigh’s actuator for the mechanical
actuator described in Müller because the air lines of Emigh’s actuator would
get tangled in Müller’s arm. See Br. 8 (for claim 1), 9 (for claim 11), and 10
(for claim 14).
A prima facie conclusion of obviousness may be supported by a
showing that the claims are directed to a process, machine, manufacture, or
composition of matter already known in the prior art that is altered by the
mere substitution of one element for another known in the field, and such
modification yields a predictable result. See KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 416 (citing United States v. Adams, 383 U.S. 39, 40 (1966)).
“[T]he simple substitution of one known element for another” or “the mere
application of a known technique to a piece of prior art ready for the
improvement” generally will be obvious unless the substitution or the
application of the known technique would have been beyond the level of
ordinary skill in the art; or the results of the substitution or the application of
the known technique would not have been predictable by one of ordinary
skill in the art. KSR, 550 U.S. at 416-417.
We agree with the Examiner that a person of ordinary skill in the art
would have been prompted to replace the Müller actuator with the Emigh
actuator because both references teach moving the arm with an actuator, and
thus it is no more than “the simple substitution of one known element for
Appeal 2008-006281
Application 10/771,994

8
another or the mere application of a known technique to a piece of prior art
ready for the improvement.” KSR, 550 U.S. at 417. Specifically, this would
involve merely the substitution of one type of actuator with another known
type of actuator. A person of ordinary skill in the art would readily
appreciate that the actuator taught by Emigh, if substituted for the actuator of
Mueller, would provide an actuation of the rotating arm in much the same
manner as the actuator in Müller’s system. Hence, the substitution appears
to be the product not of innovation but of ordinary skill and common sense.
Although we appreciate Appellant’s argument that the modification of
Müller in light of Emigh might cause entanglement of the air lines as
Emigh’s actuator is shown, we note that “[a] person of ordinary skill is also
a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421.
As such, a person having ordinary skill in the art would readily supply
appropriate fittings and minor modifications that would prevent such
entanglement from occurring. Moreover, the Appellant does not provide
any evidence to show that modification of Müller to provide the actuator of
Emigh would have been beyond the technical grasp of a person of ordinary
skill in the art. We thus conclude that the substitution would have been
obvious to a person of ordinary skill in the art at the time of Appellant’s
invention. Further responding to Appellant’s entanglement allegation, “it 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). The relevant inquiry is whether the claimed subject
matter would have been obvious to those of ordinary skill in the art in light
of the combined teachings of those references. See In re Keller, 642 F.2d
413, 425 (CCPA 1981). It should be noted that “[c]ombining the teachings
Appeal 2008-006281
Application 10/771,994

9
of references does not involve an ability to combine their specific
structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). For the above
reasons, Appellant has failed to demonstrate that the Examiner erred in
determining that the combined teachings of Müller and Emigh would have
prompted a person of ordinary skill in the art to replace the mechanical
actuator of Müller with the electromechanical actuator of Emigh.
In view of the foregoing, Appellant has not demonstrated that the
Examiner erred in concluding claims 1, 11, and 14 are rendered obvious
based on Müller and Emigh. Claims 5, 6, 7, and 16 fall with claim 1
because they were not argued separately. Claim 13 falls with claim 11 and
claim 15 falls with claim 14 because they were not argued separately.
Accordingly, we will sustain the Examiner’s rejection of claims 1, 5, 6, 7,
11, 13, 14, 15, and 16.
While Appellant argues claims 2, 8, and 9 separately, Appellant does
not advance any arguments for these claims beyond what is argued for claim
1, namely, Emigh has no electromechanical actuator, and thus the limitations
of claim 1 cannot be met. Br. 8. We have addressed this argument supra
and concluded that it did not demonstrate error in the Examiner’s decision to
reject claim 1. Similarly, this argument fails to demonstrate error in the
Examiner’s rejection of claims 2, 8, and 9. Thus, we will sustain the
Examiner’s rejection of claims 2, 8, and 9.
However, Appellant’s argument that Emigh does not show a slip
contact as claimed in claims 3 and 12 has merit. The examiner fails to
address the slip contact limitation of claims 3 and 12. Therefore, we are
constrained not to sustain the Examiner’s rejection of claims 3 and 12
Appeal 2008-006281
Application 10/771,994

10
because the Examiner has failed to articulate any reason why Müller and
Emigh render obvious the slip contact as claimed in claims 3 and 12.

CONCLUSIONS
Appellant has demonstrated error in the Examiner’s rejection of
claims 1-3, 7-9, 11-13, and 16 under 35 U.S.C. § 102(b) as being anticipated
by Emigh.
Appellant has demonstrated error in the Examiner’s rejection of
claims 14 and 15 under 35 U.S.C. § 102(b) as being anticipated by
Houseman.
Appellant has not demonstrated error in the Examiner’s rejection of
claims 1, 2, 5-9, 11, 13, 14, 15, and 16 under 35 U.S.C. § 103(a) as being
unpatentable over Müller in view of Emigh.
Appellant has demonstrated error in the Examiner’s rejection of
claims 3 and 12 under 35 U.S.C. § 103(a) as being unpatentable over Müller
in view of Emigh.

DECISION
The Examiner’s decision to reject claims 1-3, 7-9, 11-13, and 16
under 35 U.S.C. § 102(b) as being anticipated by Emigh is reversed.
The Examiner’s decision to reject claims 14 and 15 under 35 U.S.C.
§ 102(b) as being anticipated by Houseman is reversed.
The Examiner’s decision to reject claims 1, 2, 5-9, 11, 13, 14, 15, and
16 under 35 U.S.C. § 103(a) as being unpatentable over Müller in view of
Emigh is affirmed
Appeal 2008-006281
Application 10/771,994

11
The Examiner’s decision to reject claims 3 and 12 under 35 U.S.C.
§ 103(a) as being unpatentable over Müller in view of Emigh is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART

Klh

DAVIDSON, DAVIDSON & KAPPEL, LLC
485 7TH AVENUE
14TH FLOOR
NEW YORK, NY 10018