Ex Parte Grischenko et al

Board of Patent Appeals and Interferences

Mar 10, 2010

11057959 (B.P.A.I. Mar. 10, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GRIGORY I. GRISCHENKO, ALOIS A. SCHMIDTNER,
PAUL J. ENGLAND, ALBERT D. JOHNS, and THOMAS W. ZELINSKI
____________

Appeal 2009-001236
Application 11/057,959
Technology Center 3700
____________

Decided: March 10, 2010
____________

Before JENNIFER D. BAHR, STEVEN D.A. McCARTHY, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Grigory I. Grischenko et al. (Appellants) appeal under 35 U.S.C.
§ 134 from the Examiner’s last decision to object to claim 52 under 37
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C.F.R. § 1.75 and to finally reject claims 1-17, 19-28, and 52 under 35
U.S.C. § 103(a) as unpatentable over Alexander (US 4,778,439, issued Oct.
18, 1988) and Kowalewski (US 5,383,392, issued Jan. 24, 1995).

Jurisdiction
We have jurisdiction under 35 U.S.C. § 6(b) to review the rejection
under 35 U.S.C. § 103(a). We do not have jurisdiction to review the
objection to claim 52, as this is a matter that is reviewable by petition to the
Director under 37 C.F.R. § 1.181. See MPEP § 1201 (the Board will not
ordinarily hear a question that is reviewable by petition); In re Berger, 279
F.3d 975, 984 (Fed. Cir. 2002) (citing In re Hengehold, 440 F.2d 1395,
1403-04 (CCPA 1971) (stating that there are many kinds of decisions made
by examiners that are not appealable to the Board when they are not directly
connected with the merits of issues involving rejections of claims, and
holding that “the kind of adverse decisions of examiners which are
reviewable by the board must be those which relate, at least indirectly, to
matters involving the rejection of claims”)); and In re Mindick, 371 F.2d
892, 894 (CCPA 1967) (holding that the refusal of an examiner to enter an
amendment of claims is reviewable by petition under 37 C.F.R. § 1.181, and
not by appeal to the Board). Therefore, we are not reviewing the Examiner’s
objection to claim 52.

The Invention
The claims on appeal relate to an apparatus and process for making
paperboard blanks.
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Claims 1 and 19, reproduced below, are illustrative of the subject
matter on appeal.
1. In a pressware apparatus for making pressed paperboard
articles, the combination comprising:

(a) a die set including a punch and a die adapted for
reciprocal motion with respect to each other and
configured to cooperate in order to form a shaped
product from a substantially planar paperboard
blank upon pressing thereof;

(b) a variable speed blank feeder for controlled
insertion of the paperboard blank into the die set
including:

(i) a pervious feed belt adjacent the die set;

(ii) a vacuum source communicating with the
pervious feed belt, the feed belt and vacuum
source being adapted for receiving the
paperboard blank and releasably securing it
to a surface of the belt;

(iii) variable speed drive means suitable for
advancing the feed belt in a feeding
direction, the drive means being capable of
accelerating the belt from a stationary
condition between feeds to the die set to an
elevated feed belt velocity during a blank
feed step as well as decelerating the feed
belt during the feed step to a lesser velocity,

whereupon the blank is released to the die set at a
velocity less than the elevated feed belt velocity.

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19. A method for making pressed paperboard articles,
comprising:

(a) providing a paperboard blank to a variable speed
blank feeder including:

(i) a pervious feed belt;

(ii) a vacuum source communicating with the
pervious feed belt, the feed belt and vacuum
source being adapted for receiving the
paperboard blank and releasably securing it
to a surface of the belt; and

(iii) variable speed drive means suitable for
advancing the feed belt in a feeding
direction;

(b) stopping the blank on the pervious feed belt and
securing it thereto by way of applying vacuum to
the pervious belt;

(c) feeding the blank from the feeder to a die set
including a punch and a die adapted for reciprocal
motion with respect to each other and configured
to cooperate in order to form a shaped product
from a substantially planar paperboard blank upon
pressing thereof, the step of feeding the blank to
the die set including accelerating the belt from a
stationary condition to an elevated feed belt
velocity, and decelerating the belt,

whereupon the blank is released to the die set at a
velocity less than the elevated feed belt velocity.

SUMMARY OF DECISION
We AFFIRM-IN-PART.
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OPINION
Issues
The determinative issues before us are as follows:
(1) Whether the combined teachings of Alexander and Kowalewski
render obvious a variable speed drive means capable of accelerating a
pervious feed belt to an elevated velocity, followed by decelerating to a
lesser velocity, followed by having a paperboard blank being released to a
die set at a velocity less than the elevated velocity.
(2) Whether the combined teachings of Alexander and Kowalewski
render obvious:
the cooperation of the pervious belt, vacuum source, and drive means
in order to feed the blank into the die set while the blank is at least partially
engaged with the pervious belt as set forth in claim 2;
providing the pervious belt with a positive engagement means as
called for in claim 3;
an apparatus adapted for feeding the blank in less than one second as
called for in claim 9;
an elevated belt speed within the range of about 750 feet per minute to
about 1500 feet per minute as called for in claim 13;
the claimed circumference of the pervious belt set forth in claim 17;
and
the process called for in claim 19.

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Analysis
Issue (1)
Claims 1 and 52 each recite a variable speed drive means “being
capable of accelerating the belt between feeds to the die set to an elevated
feed belt velocity during a blank feed step as well as decelerating the feed
belt during the feed step to a lesser velocity.”
As we survey the claimed subject matter we are mindful of the full
import of the expression “being capable of.” The verbal phrase “being
capable of” indicates in English that the preceding noun is so modified as to
have the ability to perform the gerund function; but there is no requirement
to perform that function. Note the following holding from In re Collier, 397
F.2d 1003, 1006 (CCPA 1968), a decision of the predecessor to our
reviewing court:
The main fault we observe in claim 17 is
indefiniteness in the sense that things which may
be done are not required to be done.1 For example,
the ferrule or connector member is crimpable but
not required, structurally, to be crimped; the
ground wire “means,” which we take to be a piece
of wire, is for disposition under the ferrule but is
not required to be disposed anywhere; it becomes
displaced when the ferrule is crimped but that may
never be, so far as the language of claim 17 is
concerned. These cannot be regarded as structural
limitations and therefore not as positive limitations
in a claim directed to structure. They cannot
therefore be relied on to distinguish from the prior
art.

1 There is no issue of indefiniteness before us. We cite Collier solely for the
guidance which it provides in interpreting the claims on appeal.
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As such, the requirement for the prior art to satisfy the claimed gerund
function at issue is that the prior art have a structure that has the ability to
perform the function; that structure, however, is not required to perform that
function. In other words, what is required is evidence that the prior art has
the ability to perform the function.
The Examiner found that Kowalewski’s motor accelerates and
decelerates. Ans. 4. The Examiner then found that this motor is able to
perform the recited functional limitations of the drive means, viz.
accelerating the belt between feeds to the die set to an elevated feed belt
velocity during a blank feed step as well as decelerating the feed belt during
the feed step to a lesser velocity. The question becomes whether there is
enough evidence to support this conclusion of fact. As stated in In re
Swinehart, 439 F.2d 210, 213 (CCPA 1971):
[W]here the Patent Office has reason to believe
that a functional limitation asserted to be critical
for establishing novelty in the claimed subject
matter may, in fact, be an inherent characteristic of
the prior art, it possesses the authority to require
the applicant to prove that the subject matter
shown to be in the prior art does not possess the
characteristic relied on.

Kowalewski discloses that belts are accelerated and decelerated in the
longitudinal feed direction in order to correct the registration of the sheet
while on the conveyor (two adjacent belts). Kowalewski discloses that a
sheet is usually out of register because it lags behind the correct registration
position. As such, Kowalewski discloses that the conveyor will accelerate
and then decelerate to line speed in order to make the registration correction.
Kowalewski discloses that if the sheet is ahead, then the conveyor will
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decelerate and then accelerate back to line speed in order to make the
registration correction. Kowalewski, col. 4, ll. 28-40. Consequently,
evidence exists in Kowalewski for the Examiner to reasonably believe that
Kowalewski’s motor has the ability to perform the recited functions.
Therefore, it is incumbent upon the Appellants to provide evidence that the
motor disclosed in Kowalewski is not able to perform the recited functions.
In response to the Examiner’s rejections, Appellants argue that:
Kowalewski teaches feeding cardboard blanks to a printing apparatus with a
roller nip; the vacuum belts are part of a transfer conveyor capable of
accelerating and decelerating a sheet in order to maintain registry of the
blanks; Kowalewski is only concerned with proper registry and not speed
and reliability of feeding blanks; and feed speed is maintained after
adjustments occur. App. Br. 15-16 and Reply Br. 8-9. None of these
arguments are evidence contradicting the Examiner’s finding of fact that
Kowalewski’s motor could perform the recited functions under appropriate
circumstances. Therefore, while we acknowledge the arguments, they do
not provide sufficient counter-evidence to highlight error in the Examiner’s
conclusion of fact regarding Kowalewski’s motor having the ability to
perform the recited functions.
Appellants’ reliance on United States v. Adams, 383 U.S. 39, 51-52
(1966), to support their argument that Alexander teaches away is
unconvincing to highlight an error in the Examiner’s conclusion of
obviousness. In Adams there was evidence that a person skilled in the art
warned of risks in using those types of electrodes. Appellants have provided
no evidence that persons skilled in the art have warned against using a
vacuum.
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For the reason above, the combined teachings of Alexander and
Kowalewski render obvious a variable speed drive means capable of
accelerating a pervious feed belt to an elevated velocity, followed by
decelerating to a lesser velocity, followed by having a paperboard blank
being released to a die set at a velocity less than the elevated velocity as
called for in claim 1. Appellant does not separately argue for patentability
of claims 5-8 and 52. As such, these claims fall with claim 1.
Issue (2)
Claim 2
Again, as we survey the claim language we are mindful of the full
import of the word “adapted.” The verb “adapted” in English means that the
preceding noun or nouns are suitable for the subsequent infinitive “to”
phrases. Again, there is no requirement that the preceding noun actually
does the subsequent infinitive phrases, i.e., the infinitive phrase is
noncommittal to the subject noun of the sentence. As such, the requirement
for the prior art to satisfy the claimed infinitive functions at issue is that the
prior art have a structure that is suitable to perform the function; the
structure, however, does not actually have to perform that function. In other
words, what is required is evidence that the prior art is suitable to perform
the function.
The Examiner found that Kowalewski is suitable to feed the cardboard
blanks as claimed. Ans. 7. The question become whether there is enough
evidence to support this conclusion of fact.
Kowalewski discloses a pervious feed belt (belts 52, 54) that rotates
around a vacuum box 56 connected to a vacuum source and the belt is driven
by drive means (motors 38a, 38b). Kowalewski, col. 4, l. 56 to col. 5, l. 14.
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Kowalewski discloses that this combination of elements conveys and
corrects the sheets (blanks). To convey and correct blanks requires that
these elements interact with each other in some manner in order to move a
blank from one station to another station. Kowalewski further discloses that
one of the stations to which the belt carries the blank is a die cut station 18.
Consequently, evidence exists in Kowalewski for the Examiner to
reasonably believe that Kowalewski’s drive means, belt, and vacuum source
are suitable to feed a blank to a die set as called in claim 2. It is now
incumbent upon Appellants to provide evidence that the combination of
drive means, belt, and vacuum source disclosed in Kowalewski is not
suitable to perform the recited functions. Appellants provide arguments to
the effect that there is no suggestion of the claimed subject matter within
claim 2. However, while we acknowledge the arguments, they do not take
the place of evidence that Kowalewski’s drive means, belt, and vacuum
source are not adapted to perform the recited function. See In re Pearson,
494 F.2d 1399, 1405 (CCPA 1974) (An attorney’s arguments in a brief
cannot take the place of evidence). Therefore, Appellants arguments fail to
highlight an error in the Examiner’s conclusion that the claimed subject
matter set forth in claim 2 is rendered obvious by the combination of
Alexander and Kowalewski.
Claims 3 and 4
Appellants identify claim 3 as representative of this group. Claim 3
recites that “the belt is provided with positive engagement means.”
Appellants argue Kowalewski fails to show positive engagement means on a
pervious feed belt. App. Br. 20. The Examiner found Kowalewski teaches a
belt with a high coefficient of friction and this satisfies the belt provision as
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set forth in claim 3. Ans. 9. In the Reply Brief, Appellants fail to address an
error in this finding of the Examiner. As such, Appellants have acquiesced
to this finding of the Examiner and have not highlighted an error in the
Examiner concluding that the claimed subject matter set forth in claim 3 is
rendered obvious by the combination of Alexander and Kowalewski. Claim
4 falls with claim 3.
Claims 9 through 12
Appellants identify claim 9 as representative of this group. Claim 9
sets forth the duration of the blank feed step recited in the “being capable of”
clause of claim 1 as less than one second. The Examiner posited that
Kowalewski is fully capable of achieving the claimed rate. Ans. 5.
Appellants argue that the Examiner has interpreted the claim contrary to the
Specification and that the duration is the time the motor is “on” as the blank
is being advanced. App. Br. 22. The Examiner responds that claims are
interpreted in light of the Specification and limitations from the
Specification are not read into the claims. The Reply Brief does not present
an argument to the Examiner’s response with respect to claim interpretation.
As such, it appears the Examiner deduces that when the claim is interpreted
in light of the Specification, the capability of accelerating the belt to an
elevated feed belt velocity during a blank feed step having a direction less
than 1 second would flow naturally from the combination of Alexander and
Kowalewski. Once the Examiner made findings supporting the claim
interpretation and how using that interpretation permits the prior art to
satisfy the claimed operation rate, it was incumbent upon Appellants to
provide evidence to the contrary. Appellants have not provided evidence to
the contrary. As such, Appellants have failed to highlight an error in the
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Examiner’s conclusion that the combination of Alexander and Kowalewski
renders obvious the claimed subject matter as set forth in claim 9. Claims
10-12 fall with claim 9.
Claims 13 through 16
Appellants identify claim 13 as representative of this group. Claim 13 sets
forth the belt speed within the range of 750 to 1500 feet per minute. The
Examiner posited that Kowalewski is fully capable of achieving the claimed
speed. Ans. 5. Appellants argue the Examiner has ignored the speed
requirement. Appellants argue that structure needs to be present that is
suitable for the claimed function and the claims should be construed to
require an apparatus configured and adapted to achieve the claimed speed.
App. Br. 22-23. Examiner responds that claims are interpreted in light of the
Specification and limitations from the Specification are not read into the
claims. The Reply Brief does not present an argument to the Examiner’s
response with respect to claim interpretation. As such, it appears the
Examiner deduces that when the claim is interpreted in light of the
Specification, the capability of accelerating the belt to an elevated feed belt
velocity from about 750 feet per minute to about 1500 feet per minute would
flow naturally from the combination of Alexander and Kowalewski. Once
the Examiner made findings supporting the claim interpretation and how
using that interpretation permits the prior art to satisfy the claimed speed
range, it was incumbent upon Appellants to provide evidence to the contrary.
Appellants have not provided evidence to the contrary. As such, Appellants
have failed to highlight an error in the Examiner’s conclusion that the
combination of Alexander and Kowalewski renders obvious the claimed
subject matter as set forth in claim 13. Claims 14-16 fall with claim 13.
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Claim 17
The Examiner found that Kowalewski’s figures satisfy the
circumference range claimed. Appellants argue that proportions of features
in drawings are not evidence of actual proportions when the drawings are
not to scale. Appellants are correct. Patent drawings not designated as
being drawn to scale cannot be relied upon to define precise proportions of
elements if the specification is completely silent on the issue. Hockerson-
Halbertstadt, Inc. v. Avia Group Int’l, 222 F.3d 951, 956 (Fed. Cir. 2000).
The figures do not clearly show the circumference range contrary to the
Examiner’s assertion and as required by In re Mraz, 455 F.2d 1069 (CCPA
1972). Therefore, Appellants have highlighted an error in the Examiner’s
rejection of claim 17.
Claims 19-28
The claims are directed to a process. It is incumbent upon the
Examiner to establish that the prior art renders obvious each step of the
process as set forth in the claim. Appellants have particularly argued that
step (b) is not rendered obvious. The Examiner has not cogently explained
how the combination of Alexander and Kowalewski renders obvious at least
step (b). Therefore, Appellants have highlighted an error in the Examiner’s
conclusion of obviousness.

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CONCLUSIONS
We have considered Appellants’ other arguments in the Appeal Brief
and Reply Brief, but do not find them persuasive to demonstrate error in the
Examiner’s conclusion of obviousness other than what we have articulated
above. Therefore, we conclude that:
(1) the combined teachings of Alexander and Kowalewski render
obvious a variable speed drive means capable of accelerating a pervious feed
belt to an elevated velocity, followed by decelerating to a lesser velocity,
followed by having a paperboard blank being released to a die set at a
velocity less than the elevated velocity as called for in claim 1; and
(2) the combined teachings of Alexander and Kowalewski render
obvious:
the cooperation of the pervious belt, vacuum source, and drive means
in order to feed the blank into the die set while the blank is at least partially
engaged with the pervious belt as set forth in claim 2;
providing the pervious belt with a positive engagement means as
called for in claim 3;
an apparatus adapted for feeding the blank in less than one second as
called for in claim 9; and
an elevated belt speed within the range of about 750 feet per minute to
about 1500 feet per minute as called for in claim 13;
however, the combined teachings do not render obvious:
the claimed circumference of the pervious belt set forth in claim 17;
and
the process called for in claim 19.

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DECISION
The Examiner’s decision to reject claims 1-16 and 52 is affirmed.
The Examiner’s decision to reject claims 17 and 19-28 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

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