Ex Parte CutsforthDownload PDFPatent Trials and Appeals BoardMay 8, 201913587308 - (D) (P.T.A.B. May. 8, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/587,308 08/16/2012 28075 7590 05/10/2019 SEAGER, TUFTE & WICKHEM, LLP 100 SOUTH 5TH STREET SUITE 600 MINNEAPOLIS, MN 55402 FIRST NAMED INVENTOR Robert S. Cutsforth 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. 1099.1118101 5843 EXAMINER NGUYEN, NGA B ART UNIT PAPER NUMBER 3683 NOTIFICATION DATE DELIVERY MODE 05/10/2019 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): GEN.USPTO@stwiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte ROBERTS. CUTSFORTH Appeal2018-002023 Application 13/587,308 Technology Center 3600 Before ST. JOHN COURTENAY III, MARC S. HOFF, and BETH Z. SHAW, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1 and 3-27, which are all the claims pending in this application. 1 Claims 2 and 28-33 are canceled. See Amendment, filed Oct. 26, 2016. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We affirm. 1 The real party in interest is Cutsforth, Inc. App. Br. 4. Appeal2018-002023 Application 13/587,308 STATEMENT OF THE CASE Introduction Appellant's claimed invention relates "to providing maintenance of brush holders and brushes of an electrical device at an electrical facility." Spec. ,-i 1. Exemplary Claim 1. A method of performing maintenance of components of an electrical device, comprising: [L 1] receiving, via a third-party parcel delivery service, a container of used brush holder assemblies at a remote location geographically removed from an electrical device facility from which the used brush holder assemblies were in service; [L2] replacing one or more worn components of one or more of the used brush holder assemblies to prepare unused brush holder assemblies at the remote location; and [L3] sending, via a third-party parcel delivery service, a container of unused brush holder assemblies to the electrical device facility for installation on an electrical device at the electrical device facility. App. Br. 25, "Claims Appendix." (Emphasis added regarding contested limitations). Rejections A. Claims 1, 3----9~ and 15----19 are rejected under pre-AIA 35 U.S.C. § 103(a) as being obvious over the combined teachings and suggestions of Cutsforth et al. (U.S. 2008/0291040 Al, published Nov. 27, 2008) (hereinafter "Cutsforth"), and Shroff et al. (lJ.S. 2013/0173490 Al~ 2 Appeal2018-002023 Application 13/587,308 published JuL 4, 2013) (hereinafter "Shrotl~'). B. Claims 10-14 and 20-27 are rejected under pre-AIA 35 U.S.C. § 103(a) as being obvious over the combined teachings and suggestions of Cutsforth, and Hoy et al. (US 2009/0076955 Al, published Mar. 19, 2009) (hereinafter "Hoy"). ANALYSIS We have considered all of Appellant's arguments and any evidence presented. To the extent Appellant has not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived. See 37 C.F.R. § 41.37(c)(l)(iv). We have reviewed Appellant's arguments in the Briefs, the Examiner's obviousness rejections, and the Examiner's responses to Appellant's arguments. Appellant does not proffer sufficient argument or evidence to persuade us of error regarding the Examiner's underlying factual findings and ultimate legal conclusion of obviousness. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). For at least the reasons discussed below, we agree with and adopt the Examiner's findings and legal conclusions, as set forth in the Final Action and Answer. In our analysis below, we highlight and address specific findings and arguments for emphasis. 3 Appeal2018-002023 Application 13/587,308 Rejection A of Independent Claim 1 Issue: Under 35 U.S.C. § 103, did the Examiner err by finding Cutsforth and Shroff collectively teach or suggest the contested limitations: [L 1] receiving, via a third-party parcel delivery service, a container of used brush holder assemblies at a remote location geographically removed from an electrical device facility from which the used brush holder assemblies were in service; [L2] replacing one or more worn components of one or more of the used brush holder assemblies to prepare unused brush holder assemblies at the remote location; and [L3] sending, via a third-party parcel delivery service, a container of unused brush holder assemblies to the electrical device facility for installation on an electrical device at the electrical device facility. within the meaning of representative claim 1? 2 (Emphasis added). App. Br. 25 ( contested limitations L l -L3 emphasized). Limitation LI of Independent Claim 1 under Rejection A Appellant argues that Cutsforth fails to disclose limitation L 1 of claim 1. App. Br. 8. Appellant focuses on the "remote location" recited in claim 1. Id. Specifically, Appellant contends: Appellant respectfully points out that neither of the cited references appears to teach or suggest receiving a container of used brush assemblies at a remote location (hereinafter, 2 We give the contested claim limitations the broadest reasonable interpretation (BRI) consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). 4 Appeal2018-002023 Application 13/587,308 location "A") geographically removed from an electrical device facility (hereinafter, location "B") in which the used brush holder assemblies were in service, replacing one or more worn components of the used brush holder assemblies at the remote location (location "A") to form unused brush assemblies, and sending a container of unused brush assemblies to the electrical device facility (location "B") for installation on an electrical device at the electrical device facility (location "B"). Based upon the rejection, it appears that that Examiner has misconstrued the use of the claim term "remote" when comparing the claim to the cited reference(s). In the instant claim, the term "remote location" corresponds to location "A" as described above, while in Cutsforth, the term "remote electrical facilities" referred to by the Examiner corresponds to location "B" in which the used brush holder assemblies were in service, as described above. In other words, in the instant claim, brush holder assemblies are used (placed in service) at location "B" and used brush holder assemblies are sent to location "A", where components of the brush holder assemblies are replaced. App. Br. 9. However, Appellant fails to address the Examiner's specific findings regarding paragraphs 50 and 56 of Cutsforth. Moreover, Appellant provides no citations to specific portions of the reference(s) as evidence to support the arguments advanced in the Appeal Brief. We observe this pattern of conclusory attorney argument repeats throughout the Appeal Brief, and does not meet Appellant's burden of persuasion to show error in the Examiner's prima facie case of obviousness. Moreover, paragraph 56 and Figure 2 of Cutsforth teach a remote location (i.e., a control center) geographically removed from an electrical device facility: The control center may be located remote from one or more electrical facilities ( e.g., in a different building, facility, city, 5 Appeal2018-002023 Application 13/587,308 county, state, country, etc.) ... The software program or monitor may alert an operator, technician and/or other personnel that a brush at one of the remote electrical facilities is sufficiently worn and/or needs to be replaced, a brush at one of the remote electrical facilities is damaged, failure has occurred or is imminent, or other maintenance may need to be performed. Cutsforth ,i 56 ( emphasis added). Cutsforth (ii 50) describes delivery of replacement brushes: In some embodiments, the output signal from the processing unit 40 or a technician may schedule maintenance or inspection, send personnel to perform maintenance or inspection, order and/or schedule distribution/delivery of a replacement brush 24 or other part, route maintenance personnel and/or product delivery to a specified location, or arrange for other notification and/or scheduling tasks be performed. Cutsforth ,i 50 ( emphasis added). As for any purported difference in perspective between receiving used brush holder assemblies "at a remote location geographically removed from an electrical device facility from which the used brush holder assemblies were in service," or the reverse (e.g., claim 10: "A method of shipping a plurality of brush holder assemblies"), our reviewing court guides: where "the problem is known, the possible approaches to solving the problem are known and finite, and the solution is predictable through use of a known option," a solution that is obvious to try may indeed be obvious. Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1351 (Fed. Cir. 2008), citingKSRint'l Co. v. Teleflex Inc., 550 U.S. 398,421 (2007). 3 3 A finding of obviousness under the "obvious to try" standard "does not require absolute predictability of success ... all that is required is a reasonable expectation of success." In re Kubin, 561 F.3d 1351, 1360 (Fed. 6 Appeal2018-002023 Application 13/587,308 Applying this reasoning here, we find the possible approaches to solving the shipping problem are known and finite. Specifically, we find transporting a container of goods to/from a remote location via a "third-party delivery service" necessarily involves: (1) sending the container by an entity at a first location, and (2) receiving the container by an entity at a second location. The respective locations of sending and receiving can be reversed with predictable results. We find this is simply the natural result flowing from the shipping of goods. 4 Cir. 2009) (quoting In re O'Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988)) ( emphasis added). See also Manual of Patent Examining Procedure (MPEP) § 2143(I)(E) ("'Obvious to try'- choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success"). 4 "The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness." In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995) (affirmed 35 U.S.C. § 103 rejection based in part on inherent disclosure in one of the references). The question of obviousness is "based on underlying factual determinations including ... what th[e] prior art teaches explicitly and inherently." In re Zurko, 258 F.3d 1379, 1383 (Fed. Cir. 2001) (citations omitted). Our reviewing court has also "recognized that inherency may supply a missing claim limitation in an obviousness analysis." PAR Pharmaceutical, Inc. v TWI Pharmaceuticals, Inc. 773 F.3d 1186, 1194-95 (Fed Cir. 2014). However, [t]he mere fact that a certain thing may result from a given set of circumstances is not sufficient. If, however, the disclosure is sufficient to show that the natural result flowing from the operation as taught would result in the performance of the questioned function, it seems to be well settled that the disclosure should be regarded as sufficient. In re Oelrich, 666 F .2d at 5 81 ( emphasis added) ( citations and quotation marks omitted). Thus, our early precedent, and that of our predecessor court, established that the concept of inherency must be limited when applied to obviousness, and is present only when the limitation 7 Appeal2018-002023 Application 13/587,308 Regardless of whether the brush holder assemblies are new, used, or refurbished, we find the structure of the brush holder assemblies does not change according to location, i.e., the structure is not "transformed" by shipping (assuming no damage during shipping). Nor do Appellant's independent claims specify how the brush holder assemblies are replaced. Claim 4 (not argued separately) recites a brush holder replacement approach that we find would have been obvious to any artisan: "replacing one or more of the used brush holder assemblies with unused brush holder assemblies at the remote location." We find any artisan would have known that new brush holder assemblies would provide improved performance over used brush holder assemblies. Moreover, we find sending and receiving containers of goods was notoriously well known in the shipping art, as taught by Cutsforth (,-J 50, Fig. 2), in combination with Shroff (,-J 42), that teaches the widely known industry practice of using boxes as shipping containers, as found by the Examiner. See Final Act. 2-5. at issue is the "natural result" of the combination of prior art elements. Id. PAR Pharmaceutical, Inc., 773 F.3d at 1195 (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)) (emphasis added). 8 Appeal2018-002023 Application 13/587,308 Limitation L2 of Independent Claim 1 under Rejection A replacing one or more worn components of one or more of the used brush holder assemblies to prepare unused brush holder assemblies at the remote location; Regarding limitation L2 of claim 1, Appellant argues: "even if maintenance is scheduled, replacement parts/product are ordered/routed for delivery, personnel are sent, etc., to location 'B' as taught by Cutsforth, nowhere does Cutsforth necessarily teach or suggest that the replacement parts are used brush holder assemblies that have had worn parts replaced, as in claim l." App. Br. 10 (emphasis added). However, Cutsforth (ii 50) teaches worn brushes that need to be replaced: When the software program determines that a parameter, such as the threshold wear of the brush 24 has been met or is projected to be met at a future temporal occasion, the software program may output a signal. In some embodiments, the signal may alert an operator, technician and/or other personnel that the brush 24 is sufficiently worn and/or needs to be replaced." ( emphasis added). Regarding Appellant's additional contention that "the replacement parts of Cutsforth could simply be new parts" (App. Br. 10), we conclude claim 1 does not preclude the replaced components of "one or more of the used brush holder assemblies" from being new parts. Appellant's argument is unavailing because it is not commensurate with the scope of the claim. Moreover, we find it would make no sense to replace the "one or more worn components" of the "used brush holder assemblies" of claim 1 with more worn components. We find an artisan would have known that sending 9 Appeal2018-002023 Application 13/587,308 used brush holder assemblies back "to the electrical device facility for installation on an electrical device at the electrical device facility" would have had little or no utility, as such used brush holder assemblies would likely result in imminent failure, and/or associated safety issues. Claim 1. Limitation L3 of Independent Claim 1 under Rejection A sending, via a third-party parcel delivery service, a container of unused brush holder assemblies to the electrical device facility for installation on an electrical device at the electrical device facility. Given our discussion above regarding the obviousness of shipping goods (i.e., sending and receiving goods using containers), and to the extent Appellant may advance any specific substantive arguments pertaining to limitation L3 ("sending, via a third-party parcel delivery service, a container"), we find the Examiner proffered combination of Cutsforth and Shroff renders the recited step of "sending, via a third-party parcel delivery service, a container" obvious for the essentially same reasons as discussed above regarding limitation L 1. Moreover, we conclude it would have been obvious at the time of the invention to ship "unused brush holder assemblies to the electrical device facility for installation on an electrical device at the electrical device facility," as recited in claim 1 limitation L3, because, as discussed above, we find an artisan would have known that sending used replacement brush holder assemblies would likely result in imminent failure, and/or associated safety issues. 10 Appeal2018-002023 Application 13/587,308 Based upon our review of Appellant's arguments for Rejection A of claim 1, we find Appellant adopts a general pattern of argument, by merely: (1) submitting that the claim language is not disclosed or suggested by the cited references, (2) describing the claimed invention in terms of reference to the preferred embodiments found in the Specification, (3) arguing limitations that are not claimed, and ( 4) arguing the references separately, considered in isolation. Regarding (1 ), under our procedural rule, "[a] statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim." 37 C.F.R. § 41.37(c)(l)(iv).5 Regarding (2) and (3), a basic canon of claim construction is that one may not read a limitation into a claim from the written description. Renishaw plc v. Marposs Societa'per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998). Regarding ( 4), one cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Because Appellant fails to address the Examiner's specific findings regarding Cutsforth ,i,i 50, 56, and for the additional reasons discussed above, on this record we are not persuaded of error regarding the Examiner's ultimate legal conclusion of obviousness for Rejection A of independent representative claim 1. 5 See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art."). 11 Appeal2018-002023 Application 13/587,308 Rejection A of Independent claim 15 For similar reasons, we agree with and adopt the Examiner's legal conclusion of obviousness for Rejection A of independent claim 15, which recites similar limitations to those contested by Appellant for claim 1. See Final Act. 9 -13. Further regarding Rejection A of independent claim 15, we disagree with Appellant that the Examiner has not provided a "rational underpinning necessary to support a legal conclusion of obviousness." App. Br. 14. Following the guidance of KSR, we agree with the Examiner that "one of ordinary skill in the art would have recognized that the combination of Cutsforth and Shroff' would have yielded the "predictable results of facilitating the shipping and deliver[y] of the replacement brush holders." Final Act. 5. 6 Moreover, Appellant does not point to any evidence of record that shows combining the Cutsforth and Shroff references in the manner proffered by the Examiner (Final Act. 4-5) would have been "uniquely challenging or difficult for one of ordinary skill in the art" or would have "represented an unobvious step over the prior art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Nor does Appellant provide any objective evidence of secondary considerations (e.g., unexpected results -Graham factor 4, objective indicia of non-obviousness), which our reviewing court guides "operates as a 6 "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR, 550 U.S. at 416. 12 Appeal2018-002023 Application 13/587,308 beneficial check on hindsight." Cheese Systems, Inc. v. Tetra Pak Cheese and Powder Systems, Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013). Contrary to Appellant's arguments (App. Br. 14), we find the Examiner (Final Act. 5) has set forth sufficient "articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). See also 35 U.S.C. § 132(a) (the notice requirement to establish a prima facie case). Regarding the inspection step of claim 15 ("inspecting one or more components of the plurality of used brush holder assemblies at the remote location to collect inspection data"), we agree with the Examiner's finding: regarding Cutsforth (ii 50), which describes that personnel ( e.g., a technician) may schedule maintenance or inspection. See Ans. 9. 7 Regarding Appellant's additional contention that "Cutsforth does not expressly teach replacing worn components of the used brush holder assemblies at the remote location" (App. Br. 15), see our discussion of this same issue regarding claim 1, supra. For at least these reasons, and based upon a preponderance of the evidence, we are not persuaded on this record of error regarding the Examiner's ultimate legal conclusion of obviousness for Rejection A of independent representative claim 15. See Final Act. 9-13. 7 Our reviewing court guides: "'the question under 35 USC 103 is not merely what the references expressly teach but what they would have suggested to one of ordinary skill in the art at the time the invention was made."' Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)). (emphasis added); see also MPEP § 2123. 13 Appeal2018-002023 Application 13/587,308 Rejection B of Independent claim 10 For similar reasons, we agree with and adopt the Examiner's legal conclusion of obviousness for Rejection B of independent claim 10, for the essentially same reasons discussed above regarding the same primary Cutsforth reference, as applied to claims 1 and 15, as rejected by the Examiner under Rejection A. Regarding the different Hoy secondary reference cited by the Examiner for Rejection B, we note Appellant's argument: Notably, nowhere do Hoy et al. appear to teach or suggest that the cited "product" is or comprises a plurality of anything, let alone a plurality of brush holder assemblies with the brushes pre-loaded in the brush holders, as required by claim 10. Instead, Hoy et al. appear to teach placing a single electronic device in each box or container, and thus cannot teach or suggest placing a plurality of brush holder assemblies in a container. App. Br. 18. However, the brush holder assemblies are taught by Cutsforth ,i 28. Non-obviousness cannot be established by attacking the references individually when the rejection is based upon a combination of prior art disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The test for obviousness is not whether the claimed invention is expressly suggested in any one or all of the references, but 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. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Accordingly, and based upon a preponderance of the evidence, we are not persuaded on this record of error regarding the Examiner's ultimate legal 14 Appeal2018-002023 Application 13/587,308 conclusion of obviousness for Rejection B of independent representative claim 10. See Final Act. 14-16; Ans. 15-17. Rejection B of Independent claim 20 In contrast to independent method claims 1, 10, and 15, independent claim 20 is directed to an apparatus: 20. An apparatus for shipping a plurality of brush holder assemblies, the apparatus comprising: a container; and a plurality of brush holder assemblies packaged in the container, wherein each brush holder assembly includes a brush pre-loaded into a brush holder of the brush holder assembly, wherein movement of each brush holder assembly within the container is restricted. Regarding Rejection B of independent claim 20, Appellant advances arguments that are similar to those discussed above. App. Br. 20-21. The Examiner finds Cutsforth (iJiJ 28, 56; Fig. 1) teaches the brush holder assemblies, as claimed. Final Act. 20-21. The Examiner finds Hoy (ii 22) teaches the claimed "container" including "materials 14" for properly packaging the device, for example: "wrapping materials for safeguarding the device from damage." Final Act. 21 ( quoting Hoy ,i 22). We agree with and adopt the Examiner's legal conclusion of obviousness for Rejection B of independent claim 20 (Final Act. 20-22), for the essentially same reasons discussed above regarding the same primary Cutsforth reference, as applied under Rejection A to claims 1 and 15, and as 15 Appeal2018-002023 Application 13/587,308 discussed above regarding the different Hoy secondary reference as relied upon by the Examiner (in combination with Cutsforth) to support Rejection B of independent claim 10. Accordingly, and based upon a preponderance of the evidence, we are not persuaded on this record of error regarding the Examiner's ultimate legal conclusion of obviousness for Rejection B of independent representative claim 20. See Final Act. 20-22; Ans. 21-23. Dependent Claims 3-9, 11-14, 16--19, and 21-27 Regarding all dependent claims 3-9, 11-14, 16-19, and 21-27, Appellant adopts a general pattern of argument by: (1) asserting that the dependent claim is purportedly directed toward patentable subject matter for the same reasons as the independent claim from which it depends, (2) merely reciting the additional limitation(s) of the dependent claim, (3) asserting that the cited references do not teach or suggest the additional dependent claim limitation(s), (4) without addressing the Examiner's specific findings, and, (5) without citing to any specific portion(s) of the references as objective evidence in support. See App. Br. 11-14, 16-17, and 19-24. Regarding (1 ), we find this pattern of argument unpersuasive for the same reasons discussed above as pertaining to the associated independent claim. Regarding (2), under our procedural rule, "[a] statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim." 37 C.F.R. § 41.37(c)(l)(iv). Regarding (3-5), "Attorney argument is no substitute for evidence." Enzo Biochem, Inc. v. Gen-Probe, Inc., 424 F.3d 1276, 1284 (Fed. Cir. 2005). We 16 Appeal2018-002023 Application 13/587,308 afford such conclusory attorney arguments little weight. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). For at least these reasons, we find dependent claims 3-9, 11-14, 16-19, and 21-27 are not substantively argued separately under our procedural rule. see 37 C.F.R. § 41.37(c)(l)(iv). Accordingly, grouped dependent claims 3-9 and 16-19, rejected under Rejection A, fall with representative independent claim 1. Likewise, grouped dependent claims 11-14 and 21-27, rejected under Rejection B, fall with representative independent claim 10. CONCLUSION Based upon a preponderance of the evidence, and on this record, we are not persuaded of error regarding the Examiner's underlying factual findings and ultimate legal conclusion of obviousness for all claims 1 and 3-2 7 on appeal. DECISION We affirm the Examiner's decision rejecting claims 1 and 3-27 under pre-AIA 35 U.S.C. § 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § l.136(a)(l)(iv). See 37 C.F.R. § 41.50(±). AFFIRMED 17 Copy with citationCopy as parenthetical citation