Ex Parte Guptail et al

Patent Trial and Appeal Board

Feb 28, 2017

12353603 (P.T.A.B. Feb. 28, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/353,603 01/14/2009 William G. Guptail 2109-0099.01 3152
26568 7590 03/02/2017
TOOK AT F.y T TD
EXAMINER
SUITE 2850 RODRIGUEZ, JOSEPH C
200 WEST ADAMS STREET
CHICAGO, IL 60606 ART UNIT PAPER NUMBER
3653
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM G. GUPTAIL and STEVE C. WIECHMANN
Appeal 2015-002813
Application 12/353,6031
Technology Center 3600
Before STEFAN STAICOVICI, BRANDON J. WARNER, and
FREDERICK C. LANEY, Administrative Patent Judges.
LANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
William G. Guptail and Steve C. Wiechmann (Appellants) appeal
under 35 U.S.C. § 134(a) from the Examiner’s final decision rejecting
claims 1—16 under 35 U.S.C. § 103(a) as being unpatentable over Guptail
(US 2006/0076279 Al, pub. Apr. 13, 2006) and Bishop (US 2,667,969, iss.
Feb. 2, 1954). We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is General Kinematics
Corporation. Appeal Br. 2 (filed August 4, 2014).
Appeal 2015-002813
Application 12/353,603
INVENTION
Appellants’ invention “is directed to a separator attachment for a
vibratory apparatus.” Spec. 12.
Claims 1 and 7 are independent. Claim 1, reproduced below, is
illustrative of the claimed invention.
1. A separator attachment for use with a vibratory apparatus,
the attachment comprising:
a housing adapted to be attached to and detached from a
vibratory apparatus below a material-conveying surface of the
vibratory apparatus, the housing defining a pressure chamber
with an inlet and an outlet,
the housing having at least one wall with a wall surface
having a first end disposed proximate to the outlet of the pressure
chamber and a second end; and
a deflector plate with a deflector plate surface having a
first end disposed proximate to the outlet of the pressure chamber
and a second end, the deflector plate surface facing the wall
surface and spaced from the wall surface to define an air passage
therebetween,
the deflector plate translatable relative to the at least one
wall between a first position, wherein the deflector plate is
translated nearer to the at least one wall so that the first ends and
second ends of the deflector plate surface and the wall surf ace
to define a first width for the air passage therebetween, and a
second position, wherein the deflector plate is translated farther
away from the at least one wall so that the first ends and second
ends of the deflector plate surface and the wall surf ace to define
a second width for the air passage therebetween, the second
width being different than the first width.
Appeal Br. 11 (Claims App.) (emphasis added).
ANALYSIS
Appellants raise a single allegation of error with the Examiner’s
determination that claims 1—16 are unpatentable. Specifically, Appellants
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Appeal 2015-002813
Application 12/353,603
argue the Examiner fails to articulate a reason with a rational underpinning
explaining why a skilled artisan would have selected and separated the
particular parts of the Guptail vibratory material separating apparatus and
included them within a housing/separator attachment adapted to be attached
to and detachable from a vibratory apparatus, which is required by both
independent claims 1 and 7. Appeal Br. 4—9. For the following reasons, we
agree.
Both Guptail and Bishop disclose apparatuses in which a combination
of parts are integrally connected to perform the vibratory and separation
functions within a single housing. See Guptail Tflf 15—26, Figs. 1—3; Bishop,
4:39—7:49, Fig. 1. Nevertheless, finding Guptail does not teach a
housing/separator attachment adapted to be attached to and detached from a
vibratory apparatus, the Examiner finds “Bishop specifically teaches that it
is known in the vibratory air separator arts to construct^ various housing
elements in a detachable and adjustable manner to allow flexibility in the
device’s usage.” Final Act. 4. “It would thus be obvious to one with
ordinary skill in the art to modify the base reference with these prior art
teachings to arrive at the claimed invention by making the separator
attachment separable and thus be capable of being attached and detached,”
the Examiner concludes. Id. at 4—5.2
2 In addition, the Examiner lists several other general rationales that, in
context, have been held supportive of an obviousness determination, but the
Examiner provides no substantive analysis applying them to the facts of this
case; moreover, the Examiner identifies no evidence a skilled artisan would
have had a reason for applying anyone of the rationales listed in this case.
Id. at 5. As such, the Examiner’s use of the jurisprudence amounts to a per
se rule of unpatentability. Federal Circuit precedent, however, does not
establish any per se rules of obviousness, just as those precedents
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Appeal 2015-002813
Application 12/353,603
The Examiner’s conclusion of obviousness is flawed, however,
because the “flexibility” rationale for why a skilled artisan would have
modified Guptail in the claimed manner lacks a rational underpinning. The
Examiner fails to explain persuasively why the ability to adjust parts within
the housing of Bishop and attach/detach parts to that housing logically
translates to evidence that “flexibility” of use would have led a skilled
artisan to reconstruct Guptail’s apparatus so that the vibratory and separator
components are in separate houses, but attachable/detachable, as
Appellants’ claims require. The Examiner offers no evidence, from the time
of the invention, demonstrating a skilled artisan had any particular need or
desire for the type of versatility gained from separating the vibratory and
separator components into different houses, which are adapted to be
attached/detached together. Inversely, the Examiner has also not identified
any known problems of inflexibility caused by the Guptail and/or Bishop
devices having the vibratory/separator components being confined to a
single housing.
The Examiner’s reliance on In re Dulberg, 289 F.2d 522 (CCPA
1961) is misplaced. Although Dulberg establishes there are situations in
which it would have been obvious to modifying an integral part to be a
separable part because to do so is nothing more than an application of
ordinary skill, it is important to note that a factually supportable reason for
making the particular modification was still required. Id. at 523. In that
case, the facts showed there was a known desire to be able to gain access to
the space covered by the integrally connected cap to allow the remnant of
themselves expressly declined to create such rules. See In re Ochiai, 71
F.3d 1565, 1572 (Fed. Cir. 1995).
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Appeal 2015-002813
Application 12/353,603
the old lipstick to be pushed out of the carrier. Id. In other words, even
when a modification simply requires changing an integral part to a separable
part, Dulberg still required a reason with a rational underpinning to explain
why a skilled artisan would have made that particular modification. The
Examiner has not satisfied this requirement. Although the Examiner states,
“the prior art demonstrate [s] that it is known in the air separating arts to
construct various housing elements in a detachable and adjustable manner to
allow flexibility in the device’s usage” (Ans. 6), this does not explain
sufficiently why a skilled artisan would have selected and separated the
particular parts of the Guptail vibratory material separating apparatus and
placed them within a different housing/separator attachment adapted to be
attached to and detachable from a vibratory apparatus. For the reason
discussed above, the Examiner has not explained sufficiently why it would
have been desirable at the time of the invention to segment distinctly the
separator components from Guptail’s device and place them into a wholly
separate housing, which is adapted to connect/disconnect to the housing with
the vibratory components. Therefore, we do not sustain the Examiner’s
rejection of claims 1—16.
DECISION
The Examiner’s rejection of claims 1—16 is reversed.
REVERSED
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