Ex Parte Coursey et al

Patent Trial and Appeal Board

Aug 26, 2016

13451201 (P.T.A.B. Aug. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/451,201 04/19/2012
35411 7590 08/29/2016
KIL YK & BOWERSOX, P.L.L.C.
3925 CHAIN BRIDGE ROAD
SUITE D401
FAIRFAX, VA 22030
FIRST NAMED INVENTOR
David J. COURSEY
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.
5195-039-05 4805
EXAMINER
CHOI, STEPHEN
ART UNIT PAPER NUMBER
3724
MAILDATE DELIVERY MODE
08/29/2016 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 APPEAL BOARD
Ex parte DAVID J. COURSEY and
BRIGHTMAN KENNETH HOLLIDAY
Appeal2014-004384
Application 13/451,201
Technology Center 3700
Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
ERIC C. JESCHKE, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
David J. Coursey and Brightman Kenneth Holliday (Appellants)
appeal under 35 U.S.C. § 134(a) from the Examiner's decision to reject:
(1) claim 22 under 35 U.S.C. § 112, second paragraph, as indefinite; (2)
claims 1-5, 8-10, 22, and 28 under 35 U.S.C. § 102(b) as anticipated by
Gordon (US 6,644,153 Bl; iss. Nov. 11, 2003); (3) claim 12 under 35
U.S.C. § 103(a) as unpatentable over Gordon; (4) claims 6 and 7 under 35
U.S.C. § 103(a) as unpatentable over Gordon and Simpson (US 6,966,245
Bl; iss. Nov. 22, 2005); (5) claims 1-5, 8-11, 18-21, and 23-27 under 35
U.S.C. § 103(a) as unpatentable over Morrison (US 5,337,639; iss. Aug. 16,
1994) and Gordon; (6) claims 13-17 under 35 U.S.C. § 103(a) as
Appeal2014-004384
Application 13/451,201
unpatentable over Morrison, Gordon, and Johnstonbaugh (US 4,615,448; iss.
Oct. 7, 1986); and (7) claims 1-5, 8-12, 18-21, and 23-27 under 35 U.S.C.
§ 103(a) as unpatentable over Gordon and Morrison. An oral hearing in
accordance with 37 C.F.R. § 41.47 was held on August 16, 2016. We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
CLAIMED SUBJECT MATTER
The claimed subject matter relates to systems "for preventing
jamming or snagging of paper, cardboard, or other sheets or webs of
conveyed material as they are transferred across presses, dies, punches, or
other paper-cutting or paper-forming equipment." Spec., para. 2, Figs. 2, 6,
7. Claims 1 and 11 are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A material conveying system comprising:
a frame having a planar top surface;
a mounting slot formed in the frame and including an opening
at the top surface of the frame; and
a deflectable lifting device comprising a securing base and a
bendable arm extending from the securing base, the securing
base having a size, shape, and contour that is generally
complementary to the mounting slot, the securing base being
disposed in the mounting slot, wherein the bendable arm extends
from the securing base, away from the mounting slot, and above
the planar top surface of the frame, the bendable arm configured
to exert sufficient lift to elevate a sheet of material off of the
planar top surface of the frame.
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Application 13/451,201
Claim 22
ANALYSIS
Indefiniteness
The Examiner determines that although the securing base of Figure 10
of the subject application "do[ es] appear to show the length of the securing
base that is no longer than of the opening[,]" "claim 1, which claim 22
depends on, calls for the securing base to have a size, shape, and a contour
that is generally complementary to the opening. The embodiment[] shown
on [Figure 10 does] not appear to meet this limitation" and "the
embodiment[] of [Figure 10 shows] two different opening widths and two
different securing base widths. Hence, it is not clear what portions of the
openings and the securing base appellants are referring to by the limitations
in claim 22." Ans. 4; see also id. at 5-6; Non-Final Act. 2. According to the
Examiner, Appellants' "Figure 10 shows the width at portion A ... of the
securing base is wider than the width at portion B ... of the elongated
opening." Id. at 5; see also id. at 6 (the Examiner's annotated version of
Figure 10 of the subject application).
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether "those skilled in the art would understand what is claimed when the
claim is read in light of the specification." Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). Appellants'
Specification describes that "[i]n some embodiments, the base 102 of
deflectable lifting device 100 can have a size, shape, and contour that is
generally complementary to the mounting slot 106." Spec., para. 30, Fig. 2;
see also id. at paras. 50-51, Fig. 10. Upon review of paragraphs 30, 50, and
51 and Figures 2 and 10 of the subject application, a skilled artisan would
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Application 13/451,201
recognize that securing base 102 has a size, shape, and a contour that
generally complements mounting slot 106. We agree with Appellants that
the securing base of Figure 10 of the subject application has (1) "a length
that is no longer than the length of the opening to mounting slot 150 formed
in the planar top surface of frame (support) 148" and (2) "a width that is no
wider than the width of the opening to mounting slot 150 formed in the
planar top surface of frame or support 148." Appeal Br. 13-14; see also id.
at 14 (Appellants' annotated version of Figure 10 of the subject
application). 1 We further agree with Appellants that the functional statement
"the securing base [being] configured to fit through the opening at the top
surface ... such that the securing base can be mounted in the mounting slot
by insertion through the top surface," as recited in claim 22, "clarifies what
is meant by 'the securing base has a width that is no wider than the width of
the elongated opening."' Reply Br. 5 (emphasis omitted); see also Appeal
Br. 45--46, Claims App. As such, we agree with Appellants that upon
review of the Specification and figures of the subjection application, "[ o ]ne
skilled in the art could understand the [metes and] bounds of the claimed
invention." Reply Br. 5---6.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner's rejection of claim 22 for indefiniteness.
1 "Portion B" referred to by the Examiner in the annotated version of Figure
10 of the subject application is merely "a mounting strip 146" of mounting
slot 150 that can mate with mounting groove 140 of deflectable lifting device
100. See Ans. 5, 6 (the Examiner's annotated version of Fig. 10 of the subject
application); see also Spec., para. 50, Fig. 10; Reply Br. 5.
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Application 13/451,201
Anticipation by Gordon
Claims 1-5, 8-10, 22, and 28
The Examiner finds that "Gordon discloses all the recited elements of
the invention including a frame having a planar top surface." Non-Final
Act. 3. According to the Examiner, "Gordon teaches, on column 5, lines 14-
15, that the disclosed die boards can be connected to flat dies. It is by
definition the flat dies have a planar surface." Ans. 5. The Examiner further
finds that Gordon discloses "[a] bendable arm [41] [that extends] from the
securing base [31] ... above the planar top surface of the frame ... , the
bendable arm configured to exert sufficient lift to elevate a sheet of material
off of the planar top surface of the frame." Non-Final Act. 3 (citing Gordon,
3:13-17, Fig. 2).
Appellants contend that Gordon fails to disclose a bendable arm that
extends above a planar top surface of a frame and is configured to elevate a
sheet of material off of a planar top surface of a frame. Appeal Br. 16-23.
According to Appellants,
the ejector elements 29 [of Gordon] are pointing downwardly
during operation, when they contact the panel of sheet material
21, and are not extending above a top surface, let alone a planar
top surface, to lift or elevate the sheet. Instead, in Gordon, the
ejector elements point downwardly to grip or grab the sheet and
eject it from the nip between the two cylinders 11 and 12 as the
ejector elements are spun around due to their attachment to
rotating upper cylinder or die roll 11. The ejector elements push
downwardly against the lower anvil cylinder and do no true
lifting whatsoever.
Appeal Br. 20 (citing Gordon, 5:65---6:2); see also Gordon, Fig. 1.
Figures 15-18 of Gordon "show use of the ejector element of FIGS. 2
[and] 3 ... as a lead edge ejector." Gordon, 10:25-26 (emphasis omitted);
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see also Appeal Br. 21-23; Non-Final Act. 3. We agree with Appellants
that, as seen in Figures 15-18 of Gordon, "any contact between the ejector
elements 29 and the sheet of material 21 being worked occurs when the
ejector elements 29 are extending in a downward direction, forcing the sheet
of material 21 against the anvil 12" and as opposed to lifting up (elevating)
and off of a planar top surface, "the Gordon ejector element [29] instead
pushes a sheet of material downwardly against the bottom rotating cylinder
[12] (the anvil) and flings the sheet or a portion thereof laterally out of the
nip [20] between the anvil and the top cylinder [11] (die roll)." See Appeal
Br. 21-23; Gordon, 10:25-52, Figs. 15-18. As shown in Gordon's Figures
15-18, the elevation of sheet 21 remains constant with ejector element 29
operating to move cut piece 27 from cutting die 11 and "away from the
remainder of the sheet material 21." Gordon 10:46-52. Moreover, even
assuming arguendo that by definition "flat dies have a planar surface," as the
Examiner proposes, the Examiner fails to establish by sufficient evidence or
technical reasoning that bendable arm 41 of Gordon would necessarily
extend above the planar surface of the frame, as called for in claim 1. See
Ans. 5; see also Non-Final Act. 3; Appeal Br. 16-23; id. at 42, Claims App.;
Reply Br. 6.
In the Answer, the Examiner takes the position that even if
Appellants' allegation that the flat die would be pointing downwardly is
correct, "the action of the ejector on Gordon would be considered as lifting
since [a] portion of a sheet material is lifted off from a sheet material.
Gordon also describes, on column 11, lines 9 and 13, such an action of the
ejector as 'lifting'." Ans. 5; see also Non-Final Act. 12. First, the Examiner
fails to establish by sufficient evidence or technical reasoning that "the
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ejector on Gordon would be considered as lifting since [a] portion of a sheet
material is lifted off from a sheet material." Id.; see also Appeal Br. 23;
Reply Br. 6. Column 3, lines 13-17 of Gordon merely describes an ejector
"for product ejection, sheet control and other purposes." See Non-Final Act.
3. Second, column 11, lines 9-13 of Gordon describes an alternate
embodiment. See Gordon, 4:53-54. Third, even assuming arguendo that an
action of ejector 86 of Figure 19 of Gordon is "lifting," as the Examiner
suggests, the Examiner fails to establish by sufficient evidence or technical
reasoning that the "lifting" action of ejector 86 of Figure 19 "elevate[s] a
sheet of material off of the planar top surface of the frame," as claimed. See
Appeal Br. 42, Claims App.; see also Reply Br. 6; Gordon, 11:8-16, Figs.
19, 21. As such, based on the fore going reasons, the Examiner fails to
establish by a preponderance of the evidence that Gordon anticipates the
system of claim 1.
Accordingly, we do not sustain the Examiner's rejection of
independent claim 1 and its dependent claims 2-5, 8-10, 22, and 28 as
anticipated by Gordon.
Obviousness over Gordon or Gordon and Simpson
Claims 6, 7, and 12
The Examiner's rejections of (1) claims 6 and 7 as unpatentable over
Gordon and Simpson (Non-Final Act. 4--5) and (2) claim 12 as unpatentable
over Gordon (Non-Final Act. 8) are each based on the same unsupported
findings discussed above with respect to the rejection of claim 1. The
Examiner does not rely on Simpson to remedy the deficiencies of Gordon.
Further, the Examiner's proposed modification of Gordon does not remedy
the deficiencies of Gordon. Accordingly, for reasons similar to those
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discussed above for the rejection of claim 1, we do not sustain the
Examiner's rejections of (1) claims 6 and 7 as unpatentable over Gordon and
Simpson and (2) claim 12 as unpatentable over Gordon.
Obviousness over Morrison and Gordon
Claims 1-5, 8-11, 18-21, and 23-27
The Examiner finds that Morrison discloses "the invention
substantially as claimed including a support frame comprising a planar top
surface (e.g., 18) and a sheet conveyor (e.g., Figures 1, 12, 13)." Non-Final
Act. 5. The Examiner relies on Gordon for disclosure of "a deflectable
lifting device." Id. The Examiner concludes that it would have been
obvious "to employ the deflecting device as taught by Gordon on the device
of Morrison as an alternative lifting device. The proposed modification
provides enhanced lifting capacity to compensate for the weight of the sheet
material for better control over movement of the sheet material." Id. at 7.
Appellants contend that "[t]here would be no motivation to look to
Gordon, let alone modify Morrison in view of Gordon, if one were seeking
to improve the outfeed lift ramp of Morrison." Appeal Br. 29; Reply Br. 9;
see also id. at 10-11. We agree.
Morrison discloses that outfeed lift ramp 24 "lend[ s] internal support
to the highly flexible and non-supportive web portion 25, thereby permitting
the remaining web 20 to be easily lifted and removed from the female die
face without the opportunity for snagging or tangling." Morrison, 6:52-58
(emphasis omitted), Figs. 7, 8, 11. We fail to see, and the Examiner fails to
articulate, how modifying Morrison's rigid outfeed lift ramp 24 with the
flexible deflecting device of Gordon would "provide[] better control of
conveying process by enhancing lifting capacity of the outfeed lift ramp of
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Application 13/451,201
Morrison." Ans. 9 (emphasis added); see also id. at 12; Non-Final Act. 7.
We agree with Appellants that such a modification "would result in friction
that would hinder elevation of a moving sheet of material, caus[ing] snags,"
a problem Morrison's device is attempting to avoid. See Reply Br. 10-11;
compare Morrison, 6:41-51, Fig. 10, with 6:52-58, Fig. 11. Where, as here,
the proposed modification would render the prior art invention being
modified unsatisfactory for its intended purpose, the proposed modification
would not have been obvious. See Tee Air, Inc. v. Denso Mfg. Michigan,
Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999); In re Gordon, 733 F.2d 900, 902
(Fed. Cir. 1984). Hence, the modification proposed by the Examiner would
not have been obvious to a person of ordinary skill in the art. See Appeal
Br. 29; Reply Br. 9; see also id. at 10-11.
Accordingly, we do not sustain the Examiner's rejection of
independent claims 1 and 11 and their respective dependent claims 2-5, 8-
10, 18-21, and 23-27 as unpatentable over Morrison and Gordon.
Obviousness over Morrison, Gordon, and Johnstonbaugh
Claims 13-17
The Examiner's rejection of claims 13-17 as unpatentable over
Morrison, Gordon, and Johnstonbaugh (Non-Final Act. 8) is based on the
same unsupported findings and conclusions discussed above with respect to
the rejection of claim 11. The Examiner does not rely on Johnstonbaugh to
remedy the deficiencies of Morrison and Gordon. Accordingly, for reasons
similar to those discussed above for the rejection of claim 11, we do not
sustain the Examiner's rejection claims 13-17 as unpatentable over
Morrison, Gordon, and Johnstonbaugh.
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Application 13/451,201
Obviousness over Gordon and Morrison
Claims 1-5, 8-12, 18-21, and 23-27
At the outset, we agree with Appellants that "[t]he Examiner, although
citing Gordon as the primary reference, appears to suggest that the Morrison
device would be modified with the Gordon device." Reply Br. 10; see also
Appeal Br. 35-36; Non-Final Act. 9; Ans. 12. As discussed above, the
Examiner's proposed modification of Morrison with Gordon would not have
been obvious to a person of ordinary skill in the art. See Appeal Br. 29, 35-
36; Reply Br. 9-11.
Accordingly, we do not sustain the Examiner's rejection of
independent claims 1 and 11 and their respective dependent claims 2-5, 8-
10, 12, 18-21, and 23-27 as unpatentable over Gordon and Morrison.
DECISION
We REVERSE the decision of the Examiner to reject claims 1-28.
REVERSED
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