Ex Parte Ghezzi

Board of Patent Appeals and Interferences

Apr 19, 2012

10514987 (B.P.A.I. Apr. 19, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/514,987 04/14/2005 Enrico Ghezzi Z01-150 8270
28156 7590 04/20/2012
COLEMAN SUDOL SAPONE, P.C.
714 COLORADO AVENUE
BRIDGE PORT, CT 06605-1601
EXAMINER
KUMAR, RAKESH
ART UNIT PAPER NUMBER
3651
MAIL DATE DELIVERY MODE
04/20/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte ENRICO GHEZZI
________________

Appeal 2010-004056
Application 10/514,987
Technology Center 3600
________________

Before PHILLIP J. KAUFFMAN, MICHAEL L. HOELTER and
JAMES P. CALVE, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-004056
Application 10/514,987

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STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1-3. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

The Claimed Subject Matter
The claimed subject matter pertains to an insertion device whose
reciprocating member is actuated by a linear motor. Independent claim 1 is
representative of the claims on appeal and is reproduced below:
1. An automatic rolling machine comprising an insertion
device wherein a reciprocating member is provided with a
means adapted to pick up a part to be machined from a guide
and to insert said part in a working position, and wherein the
reciprocating member is actuated by a linear motor.

References Relied on by the Examiner
Pezzoli US 5,158,119 Oct. 27, 1992
Malmedie UK 882,125 A Nov. 15, 1961

The Rejection on Appeal
Claims 1-3 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Malmedie and Pezzoli (Ans. 3).

ANALYSIS
Appellant argues claims 1-3 together as a group (App. Br. 6). We
select claim 1 for review with claims 2 and 3 standing or falling with claim 1
(37 C.F.R. § 41.37(c)(1)(vii) (2011)).

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Claim 1 requires that “the reciprocating member is actuated by a
linear motor.” The Examiner relies on Malmedie for teaching all the
elements of the claimed invention except that Malmedie does not teach using
a linear motor for providing the reciprocating motion (Ans. 3-4). Appellant
concurs that Malmedie is directed to the same kind of machine having
similar features except that Malmedie is directed to a rotary motor and not a
linear motor (App. Br. 6). The Examiner relies on Pezzoli as disclosing a
linear motor that performs rectilinear movement and concludes that it would
have been obvious “to modify the teachings of Malmedie to include a linear
motor as taught by Pezzoli as a means for reciprocating the reciprocating
member of Malmedie because the size of the apparatus can be significantly
reduced” (Ans. 4).
Appellant “admits that linear motors have been known in other
machines” but contends this fact does not make it obvious to use linear
motors in automatic rolling machines “at the time Appellant made his
invention” (App. Br. 7 referencing Appellant’s Declaration). Appellant
supports this contention by providing evidence of secondary consideration to
the effect that (a) sales of machines incorporating a linear motor have
increased by more than 30% per annum since 2002 while the largest Italian
manufacturer (whose machines did not employ linear motors) went bankrupt
in 2004; (b) a European counterpart application has been issued; (c) another
competitor sought a license thereunder and when this was not forthcoming,
filed an opposition against this European patent; and (d) other European
competitors have started advertising their machines as having linear motors
(App. Br. 7-10 and Reply Br. 2, both referencing Appellant’s Declaration).
Appellant further notes that Pezzoli dates back to 1992 and that linear
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motors were employed in machines in the 1980s yet despite the long use and
advantages of linear motors, Appellant was the first to employ them in
automatic rolling machines decades later (App. Br. 8-9). In other words,
Appellant contends that there “was no reason for the omission of such
devices from automatic rolling except that it required an invention, and that
invention was made by Appellant” and further that “Appellant’s invention
provides substantial commercial advantages and fulfills a long-felt need”
(App. Br. 9, see also 10).
Our reviewing court has instructed us that “secondary considerations
of nonobviousness . . . simply cannot overcome a strong prima facie case of
obviousness” and that for obviousness under § 103, “all that is required is a
reasonable expectation of success” (Wyers v. Master Lock Co., 616 F.3d
1231, 1242, 1246 (Fed. Cir. 2010) (citations omitted)). The Wyers court also
provided instruction that for “objective evidence of secondary considerations
to be accorded substantial weight, its proponent must establish a nexus
between the evidence and the merits of the claimed invention” (Wyers, 616
F.3d at 1246).
Here, Pezzoli discloses three linear motors, each being “reciprocable
lengthwise” (Pezzoli Abstract and Figure). Pezzoli explains that a linear
motor is preferable over “making use of mechanical elements like cams and
levers” as employed in Malmedie to allow strokes and phases of motion to
be varied continuously during operation (Pezzoli 2:12-17; Malmedie Fig 3).
Appellant mirrors this teaching in Pezzoli by stating that “Appellant’s
invention replaces the complex of flywheel, shafts, and gears of the
Melmedie (sic.) blank feeder mechanism with a linear motor” (App. Br. 6,
see also Spec. 3:9-12). Pezzoli further identifies that linear motors enable
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changes to be readily made regarding stroke length and movement times
(Pezzoli 3:20-25). These are the same advantages stated by Appellant (i.e.
“a very short response time and easy adaptation of its stroke length”) (App.
Br. 6, see also Spec. 1:27-29 and 3:17-19). Pezzoli further expresses the
“structural simplicity and convenience, as well as saving of space”
associated with linear motors, the same as identified by the Examiner as to
why it would be obvious to combine Pezzoli’s linear motor with Malmedie’s
rolling machine (Pezzoli 4:7-12; Ans. 4).
The Supreme Court has provided guidance in matters of obviousness
to the effect that 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)). Also,
“when a patent ‘simply arranges old elements with each performing the
same function it had been known to perform’ and yields no more than one
would expect from such an arrangement, the combination is obvious” (KSR,
550 U.S. at 417). Further, the “question is not whether the combination was
obvious to the patentee but whether the combination was obvious to a person
with ordinary skill in the art” (KSR, 550 U.S. at 420). Appellant has not
shown that a linear motor in a rolling machine operates differently than
expected or that it performs a different function or that one skilled in the art
would not have been capable of making this combination1. Accordingly, we
hold that the teachings of the references, as well as the stated reason to
combine, supports a prima facie case that the claimed subject matter would
have been obvious to one of ordinary skill in the art.

1 Instead, Appellant contends that since the introduction of linear motors in
the 80s, “machine builders have been able to commonly use the linear
motors in motion control” (App. Br. 8).
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Appellants have furnished evidence of secondary considerations in
rebuttal to the rejection of obviousness and we consider this evidence anew
(see, e.g., In re Eli Lilly and Co., 902 F.2d 943, 945 (Fed. Cir. 1990)). We
are also mindful that objective evidence of non-obviousness in any given
case may be entitled to more or less weight depending on its nature and its
relationship with the merits of the invention (see Stratoflex, Inc. v. Aeroquip
Corp., 713 F.2d 1530, 1538-39 (Fed. Cir. 1983)). Accordingly, we consider
the issue of obviousness under 35 U.S.C. § 103, carefully evaluating and
weighing both the evidence relied upon by the Examiner and the objective
evidence of non-obviousness provided by the Appellants.
Regarding the submitted Declaration addressing issues of secondary
consideration (Evidence App’x; see also App. Br. 7-10, Reply Br. 1-3), the
Examiner indicated that there is no nexus showing that the stated sales
increase “is solely contributed to” or is “due to” the linear motor rather than
“other market effects” or conditions such as the loss of competitors via
bankruptcy or any number of other indicated factors (Ans. 6, Decl. ¶¶ 7, 8).
We agree with the Examiner that the establishment of a nexus between the
submitted evidence and the merits of the claimed invention, and not some
other factor, has not been created2. While Appellant presents evidence of an
increase in sales and that another manufacturer went bankrupt, such
evidence is not persuasive of commercial success due to the lack of evidence
regarding market share (Decl. ¶ 7; see also Cable Elec. Prods., Inc. v.
Genmark, Inc., 770 F.2d 1015, 1026-27 (Fed. Cir. 1985)(Gross sales figures

2 See In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (“applicant must
submit some factual evidence that demonstrates the nexus between the sales
and the claimed invention-for example, an affidavit from the purchaser
explaining that the product was purchased due to the claimed features”).
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do not show commercial success absent evidence of market share.)). In
addition to the need for such a nexus, our reviewing court has instructed us
that “[a]bsent a showing of long-felt need or the failure of others, the mere
passage of time without the claimed invention is not evidence of
nonobviousness” (Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d
1317, 1324-25 (Fed. Cir. 2004)). Appellant does not present evidence of
long-felt need or unsuccessful efforts by others to incorporate linear motors
in rolling machines other than to state that a European patent has been
obtained which is now being challenged (Decl. ¶¶ 10-12; App. Br. 8, 9,
Reply Br. 2). Regarding copying (Decl. ¶¶ 13, 14; App. Br. 9, 10; Reply Br.
2), the Wyers court was not persuaded by allegations of copying absent
evidence of efforts to replicate a specific patented product or prototype
(Wyers, 616 F.3d at 1246) and in Ecolochem, the court indicated that
evidence of copying is equivocal at best since in the face of strong prior art it
may simply show the competitor's recognition of the improvement as part of
the prior art (Ecolochem, Inc. v. S. Cal. Edison Co., 227 F.3d 1361, 1380
(Fed. Cir. 2000)).
Having considered all the evidence presented by Appellants against
obviousness and weighing all the evidence anew, it is our conclusion that the
evidence for obviousness outweighs the evidence against obviousness (See
In re Fenton, 451 F.2d 640, 643 (CCPA 1971) (the court balanced the
Office’s case against the strength of appellant’s objective evidence of non-
obviousness.). Accordingly, and in view of the record presented, we sustain
the Examiner’s rejection of claim 1-3.

Appeal 2010-004056
Application 10/514,987

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DECISION
The rejection of claims 1-3 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).

AFFIRMED

MP