Ex Parte HERZOG

Patent Trials and Appeals Board

May 28, 2019

13488951 - (D) (P.T.A.B. May. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/488,951 06/05/2012 KENNETH J. HERZOG
2352 7590 05/30/2019
OSTROLENK FABER LLP
845 THIRD A VENUE
NEW YORK, NY 10022
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.
P/2780-147 (V23353) 8284
EXAMINER
HARMON, CHRISTOPHER R
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
05/30/2019 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):
pat@ostrolenk.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENNETH J. HERZOG
Appeal2017-009270
Application 13/488,951
Technology Center 3600
Before JOHN C. KERINS, BENJAMIN D. M. WOOD, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) from the
Examiner's Final Office Action (June 16, 2016) ("Final Act.") rejecting
claims 1-6 and 8-17, which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Claimed Subject Matter
The claimed subject matter relates to "a cap stabilizer device for use
in a capping device that can be easily removed and replaced without tools."
Appeal2017-009270
Application 13/488,951
Spec. ,r 1. Claims 1 and 10 are independent. Claim 1, reproduced below
with selected limitations emphasized, illustrates the claimed subject matter.
1. A cap stabilizer for use in a capping device including a cap
stabilizer mounting element, the cap stabilizer comprising:
at least one fastening element configured to connect the
cap stabilizer to the cap stabilizer mounting element such that the
cap stabilizer is removable from the cap stabilizer mounting
element by sliding the cap stabilizer in a first direction,
wherein the cap stabilizer has a longitudinal axis aligned
with a direction of travel of containers in the capping device, and
wherein the first direction is a direction opposite that of
the direction of travel of the containers in the capping device,
wherein the cap stabilizer is configured to mount caps on
the containers in a vertical direction.
Rejections
I. Claims 1--4, 8-13, 16, and 17 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Monti (US 7,735,297 B2, issued June 15,
2010) and Suzuki (US 2003/0115836 Al, published June 26, 2003). Final
Act. 2-3.
II. Claims 4, 5, 13, and 14 stand rejected under 35 U.S.C. § I03(a)
as unpatentable over Monti, Suzuki, and Kan (US 6,994,564 Bl, issued Feb.
7, 2006). Final Act. 3.
III. Claims 6 and 15 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Monti, Suzuki, and Rouse (US 2,954,874, issued Oct. 4,
1960). Final Act. 3--4.
DISCUSSION
In rejecting claim 1, the Examiner finds Monti teaches a capping
device with capping element 70 and "cap stabilizer 88 mounted upstream as
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Application 13/488,951
claimed and configured to mount caps in a vertical direction." Final Act. 2
(citing Monti Fig. 3B). The Examiner finds Monti's cap stabilizer 88 is
mounted to lower section 800 of vertical wall 80, but "not necessarily in a
sliding configuration in an opposite direction" than the direction that the
containers move. Id. ( citing Fig. 3B, col. 3, 11. 48 et seq.). For this
limitation, the Examiner relies on Suzuki, finding Suzuki teaches a cap
stabilizer 12 08 mounted on a mounting element 1214 in the manner claimed,
i.e., cap stabilizer 1208 is removable from mounting element 1214 by sliding
the cap stabilizer upwards, opposite the downward direction that the
containers move in Suzuki. Id. ( citing Suzuki Figs. 62, 86-88, ,r,r 415--423).
The Examiner finds one of skill in the art would have had reason to "provide
the mounting system of Suzuki et al. for the cap stabilizer of Monti," namely
"for sliding removal in a second direction opposite the first," thus
concluding that claim 1 would have been obvious. Id.
Appellant argues, among other things, that the cited art does not teach
that "the cap stabilizer is removable from the cap stabilizer mounting
element by sliding the cap stabilizer in a first direction" that is "opposite that
of the direction of travel of the containers in the capping device." Appeal
Br. 3. In particular, Appellant contends (1) Suzuki "describes cap holder
1208 and its relationship to the movement of cap 30, not to the movement of
the relationship of the containers onto which cap 30 are mounted," (2) "there
is no disclosure in Suzuki of removing the cap holder 1208, much less that
such removal occurs by sliding in any particular direction," and (3) Suzuki's
cap holder 1208 "is round, or nearly round, and thus, does not include any
particular longitudinal axis." Id. at 4.
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Appeal2017-009270
Application 13/488,951
The Examiner responds that the disputed limitations "focus on the
orientation/position of the cap stabilizer in relation to directions defined by
products/containers to be processed in the capping device," and that "the
manner of operating a claimed device does not differentiate an apparatus
from the prior art." Ans. 6-7. We agree with Appellant, however, that the
claim limitations related to the direction of removal of the cap stabilizer are
structural limitations. See Reply Br. 2. Claim 1 requires that the cap
stabilizer be configured to be removed from a capping device in a particular
direction, and, one of skill in the art also would have understood the capping
device to be configured to move containers in a particular direction when
being capped. See Spec. ,r 13 ("Bottles B, or other containers, travel through
the device 1 in the direction of arrow A [in Figures 1 and IA].").
Regarding the direction Suzuki's containers travel (Appellant's
argument 1 ), the Examiner finds Suzuki provides for travel of the containers
vertically downward, which is opposite the direction that cap holder 1208
( considered the claimed "cap stabilizer") must move in relation to cap
support 1214 ( considered the claimed "mounting element") in order to
separate the two components. Ans. 9; Final Act. 2. Regarding Appellant's
contention that Suzuki's cap holder 1208 does not have a longitudinal axis
(argument 3), the Examiner finds Monti provides the axis as claimed, and
that Suzuki's upward extending slot shown in Figure 88 defines a
longitudinal axis. Ans. 7. The Examiner also determines, regarding the
claimed direction of travel, that "claim 1 does not set forth a specific
condition of travel of the containers such as during capping, etc. which
might specifically define this direction," and that "[o]ne of ordinary skill in
the art could easily modify any capping device to provide container transport
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Application 13/488,951
in any arbitrary direction due to a plurality of considerations including
maintenance accessibility, safety, workspace limitations." Ans. 8. In
addition, the Examiner finds:
Id.
Even so, the proposed modification of the invention to Monti is
exactly as claimed, ie. a post mounting element on frame element
80 and corresponding hole/slot on the secured portion of cap
stabil[i]zer 88 providing a sliding connection away from wheel
87 in a removing direction opposite the container travel direction
V; see figure 1.
We agree with Appellant that the Examiner has not shown one of
ordinary skill in the art would have found it obvious to have combined
Monti and Suzuki in the manner claimed. See Reply Br. 2-3. Although the
Examiner states that the proposed modification involves "a post mounting
element on frame element 80 and corresponding hole/slot on the secured
portion of cap stabil[i]zer 88" of Monti to provide for removal in the claimed
direction, Ans. 8, it is unclear where such a post would be located on
Monti's frame element 80 in particular, and how such a post would hold
sheet 88, cited as corresponding to the claimed cap stabilizer, securely. In
addition, the Examiner's explanation for why one of ordinary skill in the art
would have modified Monti in view of Suzuki does not address this
particular manner of combining the teachings of the references.
In view of the foregoing, we do not sustain the rejection of claim 1,
and claims 2-9 and 1 7, which depend therefrom. Independent claim 10
similarly requires that "the cap stabilizer is removable from the mounting
element by sliding the cap stabilizer in a second direction" that is opposite
the direction in which the conveyor is operable to move the containers
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Application 13/488,951
through the device. Accordingly, we do not sustain the Examiner's rejection
of claim 10, and dependent claims 11-16, for the same reasons as claim 1.
DECISION
We reverse the Examiner's decision to reject claims 1-17.
REVERSED
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