Ex Parte Heitzer et al

Board of Patent Appeals and Interferences

Jun 8, 2009

10344196 (B.P.A.I. Jun. 8, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ALBERT HEITZER and ALOIS SCHMIDBAUER
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Appeal 2009-001713
Application 10/344,196
Technology Center 3600
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Decided1: June 09, 2009
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Before RICHARD E. SCHAFER, JAMESON LEE and SALLY C.
MEDLEY, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge RICHARD E.
SCHAFER.

Opinion Concurring filed by Administrative Patent Judge SCHAFER.

MEDLEY, Administrative Patent Judge.

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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DECISION ON APPEAL
A. Statement of the Case
KRONES AG (“Krones”), the real party in interest, seeks review
under 35 U.S.C. § 134(a) of a Final Rejection of claims 1-23. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
References Relied on by the Examiner
Calhoun 5,979,635 Nov. 9, 1999
Wojtowicz et al. (“Wojtowicz”) 6,321,586 Nov. 27, 2001

Rejections on Appeal
The Examiner rejected claims 1-23 as unpatentable under 35 U.S.C. §
103(a) over Calhoun and Wojtowicz.
Claims 1-23 stand or fall together. Br. 12-17.
The Invention
Krones discloses a method and device for sorting objects on a
transport device, for example, a conveyor belt. The friction between the
object to be sorted and the transport device is determined. Transfer
movement of the object on the transport device is triggered as a function of
the determined friction. Spec. 6-9.
Claim 1, reproduced from the Claim Appendix of the Appeal Brief, is as
follows:
Method for sorting objects (3) on a transport device (2),
comprising:
determining the friction between an object (3) and transport
device (2);
triggering of a transfer movement (7) of the object (3) on the
transport device (2) as a function of the determined friction
between the object (3) and the transport device (2); and
sorting the object (3) from a series of passing objects (3).
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B. ISSUES
1. Has Krones shown that the Examiner incorrectly found that
Wojtowicz describes determining the friction between an object and
transport device?
2. Has Krones shown that the Examiner erred in determining that the
claimed invention would have been obvious because (1) there is no
teaching, suggestion or motivation to combine Calhoun and
Wojtowicz; (2) the only motivation to combine is based on hindsight;
and (3) the combination would render Calhoun unsatisfactory for its
intended purpose?
C. FINDINGS OF FACT (“FF”)
Calhoun
1. Calhoun describes a diverter apparatus for displacement of selected
containers on a conveyor for sorting. Col. 2, ll. 47-49; col. 3, ll. 43-
63.
2. Calhoun does not describe determining the friction between the
containers and the conveyor for moving or sorting the containers.
3. However, Calhoun describes that sorting is not necessarily dependent
on the reject conditions for the containers, but on any other measured
or sensed characteristic indicative of the desired sorting. Col. 7, ll.
57-61.
Wojtowicz
4. Wojtowicz describes the Static Coefficient of Friction (SCOF) as an
important parameter in the design of a certain class of machines
having conveyors. Col. 1, ll. 13-14.
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5. System throughput and sort accuracy are completely dependent on the
established minimum acceptable value of the SCOF. Col. 1, ll. 59-62.
6. The Static Coefficient of Friction (SCOF) is defined as the maximum
value of the force required to move a piece of mail relative to the
conveyor surface, divided by the weight of the mail. Col. 2, ll. 59-61,
col. 8, ll. 32-35.
7. Wojtowicz describes that the SCOF is normally measured statically
and off-line, by either of several standard (manual) methods. Col. 1,
ll. 63-64.
8. Synchronism is maintained throughout the sortation process between
the conveyor and the mail being conveyed by not accelerating (or
decelerating) the conveyor beyond the limits established by the SCOF.
Col. 1, ll. 56-59.
D. PRINCIPLES OF LAW
A prior art reference must be considered for everything it teaches by
way of technology and is not limited to the particular invention it is
describing and attempting to protect. EWP Corp. v. Reliance Universal Inc.,
755 F.2d 898, 907 (Fed. Cir. 1985).
The Supreme Court has rejected the rigid application of the “teaching
suggestion or motivation” (TSM) test, instead favoring the “expansive and
flexible approach” used by the Court. KSR Int’l Co. v. Teleflex Inc., 550 US
398, 415 (2007). It is not necessary to find precise teachings in the prior art
directed to the specific subject matter claimed because inferences and
creative steps that a person of ordinary skill in the art would employ can be
taken into account. Id. at 418.
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Based on its precedent, the Court reaffirmed the principle that “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” Id. at 416.
The Court further explained that “if a technique has been used to improve
one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.” Id. at 417.
“A person of ordinary skill in the art is also a person of ordinary creativity,
not an automaton.” Id. at 421.
E. ANALYSIS
Independent claim 1 recites “determining the friction between an
object (3) and transport device (2); triggering of a transfer movement (7) of
the object (3) on the transport device (2) as a function of the determined
friction . . . and sorting the object (3) . . . .” Br. Claim App’x. A1.
The Examiner finds that Calhoun describes a method for sorting
objects from a series of passing objects based upon reject conditions or any
other measured or sensed characteristics indicative of the desired sorting.
Final Rejection 2; Ans. 3; see FF2s 1, 3. The Examiner does not rely on
Calhoun for determining the friction between the object and transport
device. Final Rejection 2; Ans. 3; see FF 2. The Examiner finds that
Wojtowicz describes determining friction between an object and transport
device for the purpose of maintaining higher throughput and improved sort
accuracy. Final Rejection 2; Ans. 3. The Examiner determined that it would
have been obvious to one with ordinary skill in the art at the time of the
invention to modify Calhoun to include determining the friction between an

2 FF denotes Finding of Fact.
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object and a transport device as taught by Wojtowicz for the purpose of
maintaining higher throughput and improved sort accuracy. Final Rejection
2-3; Ans. 3.
Krones argues that Wojtowicz does not teach determining the friction
between the conveyor and each individual object to be sorted on the
conveyor as recited in the claims. Br. 12. The claims do not recite
determining the friction between the conveyor and each individual object.
Instead, the independent claims recite “determining friction between an
object and transport device . . .” or “the object and the transport
device . . . .” Br. Claims App’x. A1, A2. Accordingly, Krones’ argument is
misplaced since it is not commensurate in scope with the claim limitations.
Thus, the Examiner did not err in not accounting for limitations that are not
claimed.
Krones further argues that in contrast to the claimed invention
Wojtowicz’s invention is directed to determining the friction of a conveyor
belt by measuring the friction between the belt and a friction roller placed
under the conveyor. Br. 13. Krones argues that Wojtowicz’s device has
nothing to do with the pieces of mail on the conveyor surface or determining
the friction between the mail pieces and the conveyor. Br. 13. Krones also
argues that the Examiner improperly relied on one statement in the
background of the invention section of Wojtowicz and does not rely on the
reference as a whole. Br. 13.
In the “Description of the Prior Art” section of Wojtowicz, the Static
Coefficient of Friction (SCOF) is described as an important parameter in the
design of machines with conveyors. System throughput and sort accuracy
are dependent on the established minimum acceptable value of the SCOF.
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The “Description of the Prior Art” describes the Static Coefficient of
Friction (SCOF) as the maximum value of the force required to move a piece
of mail relative to the conveyor surface, divided by the weight of the mail. It
is this description upon which the Examiner relied for “determining the
friction between an object and transport device.” Ans. 3, 10. Krones argues
that the Examiner’s reliance on that description in the prior art section is
misplaced, since it ignores the rest of the description of Wojtowicz’s
invention. There is nothing suspect about the Examiner’s reliance on the
“Description of the Prior Art” description in Wojtowicz.
A prior art reference must be considered for everything it teaches by
way of technology and is not limited to the particular invention it is
describing and attempting to protect. The “Description of the Prior Art”
section of Wojtowicz sheds light on the level of ordinary skill in the art, i.e.,
what one of ordinary skill in the art knew at the time of the invention. Thus,
we are not persuaded that the Examiner cannot properly rely on that
knowledge.
At the time of the invention, one of ordinary skill in the art knew that
the SCOF between a mail piece and conveyor surface could be readily
determined. Based on Wojtowicz, one of ordinary skill in the art would
have appreciated that the SCOF can be determined by measuring the force
applied to a piece of mail to move the mail piece relative to the conveyor
surface and then dividing the measured force by the weight of the particular
mail piece. Wojtowicz describes measuring SCOF using traditional manual
methods. FF 7. Krones’ argument that the description in the background
section is a general definition of SCOF but is silent as to how one would
actually calculate such a SCOF within a conveyor system is not persuasive.
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Br. 13. We note that the language of claim 1 is broad and does not limit the
determination of friction to a particular method. Moreover, Krones does not
direct us to evidence to demonstrate that one of ordinary skill in the art
would not have known how to determine the SCOF between a mail piece
and a conveyor surface or that such a determination would be beyond the
skill level of one with ordinary skill in the art. Contrary to Krones’
attorney’s arguments that one would not have known how to measure the
SCOF, Wojtowicz suggests otherwise, describing that it was known to
measure SCOF “statically and off-line, by either of several standard
(manual) methods.” FF 7.
Next, Krones argues the references themselves do not provide a
suggestion to combine Calhoun and Wojtowicz. Br. 14. Krones argues that
the Examiner’s reliance on Calhoun’s statement that its invention is capable
of sorting based on “other measured or sensed characteristics” does not
provide evidence of a suggestion to combine with Wojtowicz. Br. 15.
Krones’ arguments are rejected. In an obviousness analysis, it is not
necessary to find precise teachings in the prior art directed to the specific
subject matter claimed because inferences and creative steps that a person of
ordinary skill in the art would employ can be taken into account. Calhoun
provides a general teaching that any other measured or sensed characteristics
can be used to sort objects. FF 3. Wojtowicz describes determining the
SCOF between an object and a transport device and that such a
determination is used to control or manage system throughput and sort
accuracy. FFs 5, 8. At the time of the invention, one of ordinary skill in the
art would have recognized that the determination of friction between an
object and transport device would be useful in sorting objects on a transport
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device. The combination of Calhoun and Wojtowicz is no more than the
combination of familiar elements according to known methods which is
obvious unless it yields unpredictable results. Krones does not direct us to
evidence that demonstrates that the determination of friction between an
object and transport device and using that determined friction in the method
of Calhoun for “any other measured or sensed characteristics indicative of
the desired sorting” would yield unpredictable results. If a technique has
been used to improve one device or method, and a person of ordinary skill in
the art would have recognized that it would improve similar devices or
methods in the same way, using the technique is obvious unless its actual
application is beyond his or her skill. Krones also does not direct us to
evidence that demonstrates that utilizing Wojtowicz’s technique with
Calhoun’s method would be beyond the skill of one of ordinary skill in the
art.
Krones further argues that if Calhoun was modified to replace the
Filtec sorting device with Wojtowicz’s friction system, Calhoun would be
rendered inoperable for its intended purpose. Br. 15. This argument is
misplaced. The Examiner does not propose replacing Calhoun’s Filtec
sorting device. Instead, the Examiner determined that it would have been
obvious to modify Calhoun to include (i.e., add) determining the friction
between an object and a transport device as taught by Wojtowicz. Final
Rejection 2-3; Ans. 3. A prior art reference must be considered for
everything it teaches by way of technology and is not limited to the
particular invention it is describing and attempting to protect. EWP Corp. v.
Reliance Universal Inc., 755 F.2d at 907. The intended purpose of Calhoun
need not be preserved. The use of patents as references is not limited to
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what the patentees describe as their own inventions or to the problems with
which they are concerned, as they are a part of the literature and are relevant
for all they contain. In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983), citing
In re Lemelson, 397 F.2d 1006, 1009 (CCPA 1968).
Krones also argues that the Examiner uses hindsight because without
its Application disclosure, there would be no suggestion to sort items on a
conveyor based on the friction characteristics of those items. Br. 14.
Krones’ arguments are rejected because they do not explain how the
Examiner utilizes knowledge gleaned only from its disclosure. In this case,
the Examiner only takes into account knowledge which was within the level
of ordinary skill in the art at the time the invention was made – the
knowledge of one skilled in the art and the ordinary creativity to combine
familiar elements according to known methods.
Last, Krones argues that neither Wojtowicz nor Calhoun describe
determining kinetic friction-dependent magnitude. Br. 15. Krones asserts
that the determined friction between an object and transport device recited in
the claims is a magnitude dependent on the kinetic friction. Br. 15-16.
Krones’ arguments are unpersuasive because they are not commensurate in
scope with the claim limitations. The claims do not recite “kinetic friction”
or a “kinetic friction-dependent magnitude.” For these reasons, the
Examiner did not err in not accounting for limitations that are not claimed.
For all these reasons, Krones does not sufficiently show that the
Examiner erred in determining that claims 1-23 would have been obvious
over Calhoun and Wojtowicz.
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F. CONCLUSION
1. Krones has not shown that the Examiner incorrectly found that
Wojtowicz describes determining the friction between an object and
transport device.
2. Krones has not shown that the Examiner erred in determining that the
claimed invention would have been obvious because (1) there is no
teaching, suggestion or motivation to combine Calhoun and
Wojtowicz; (2) the only motivation to combine is based on hindsight;
and (3) the combination would render Calhoun unsatisfactory for its
intended purpose.
G. ORDER
The decision of the Examiner rejecting claims 1-23 as unpatentable
under 35 U.S.C. § 103(a) over Calhoun and Wojtowicz is affirmed.
No time period for taking any subsequent action in connection with
the appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

SCHAFER, Administrative Patent Judge, concurring.

I can not agree that Claim 1 does not require determining the friction
between each object and the transport device. However, in light of the
combined teachings of Calhoun and Wojtowicz and the level of skill in the
art, it would, in my view, have been obvious to use the friction between the
object and the transport device as a basis for sorting.

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MAT

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