Ex Parte Hofman et al

Patent Trial and Appeal Board

Apr 19, 2016

13454386 (P.T.A.B. Apr. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/454,386 04/24/2012
5073 7590
BAKER BOTTS L.L.P.
2001 ROSS A VENUE
SUITE 600
DALLAS, TX 75201-2980
04/21/2016
FIRST NAMED INVENTOR
Henk Hofman
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.
076263.0394 7432
EXAMINER
PARSLEY, DAVID J
ART UNIT PAPER NUMBER
3643
NOTIFICATION DATE DELIVERY MODE
04/21/2016 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):
ptomaill@bakerbotts.com
ptomail2@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HENK HOFMAN,
PETER WILLEM VAN DER SLUIS, and YPE GROENSMA
Appeal2014-000718
Application 13/454,386
Technology Center 3600
Before LINDA E. HORNER, CHARLES N. GREENHUT, and
THOMAS F. SMEGAL, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
21-29. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
The claims are directed to an automated system for applying
disinfectant to the teats of dairy livestock. Claim 21, reproduced below,
with emphasis added, is illustrative of the claimed subject matter:
Appeal2014-000718
Application 13/454,386
21. A system for operating a robotic arm, comprising:
a carriage mounted on a track positioned adjacent to a
rotary milking platform having a stall for a dairy livestock, the
carriage operable to move along the track independently of the
rotary milking platform and in a direction corresponding to a
direction of rotation of the rotary milking platform;
a controller communicatively coupled to the carriage and
operable to determine a rate for the carriage to move along the
track based at least in part upon a speed of rotation of the
rotary milking plaiform; and
a robotic arm coupled to the carriage and operable to
extend between the legs of the dairy livestock, wherein the
robotic arm is further operable to remain extended between the
legs of the dairy livestock as the stall rotates adjacent to the
robotic arm.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
van der Lely
Stein
Van Den Berg
Kaever
Kallen
us 6,050,219
us 6,055,930
US 7,299,766 B2
US 2006/0196431 Al
US 2010/0095893 Al
REJECTIONS
Apr. 18, 2000
May 2, 2000
Nov. 27, 2007
Sep. 7,2006
Apr. 22, 2010
Claims 21-29 are provisionally rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over either claims
1-7 and 16-20 of copending Application No. 13/095,963 or claims 21-34 of
copending Application No. 13/454,975. Final Act. 3.
Claims 21, 22, 24--26 28, and 29 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over van der Lely, Stein and Kallen. Final Act. 4.
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Appeal2014-000718
Application 13/454,386
Claim 23 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over van der Lely, Stein, Kallen, and Van Den Berg. Final Act. 6.
Claim 27 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over van der Lely, Stein, Kallen, and Kaever. Final Act. 7.
OPINION
Even with careful attention to the portions of van der Lely cited by the
Examiner (Final Act. 4, citing van der Lely Figure 1, column 3 lines 12-67,
column 4 lines 1---6 an[d] 57-67 and column 5 lines 1-12), we, like
Appellants, do not find any support for the Examiner's finding of a
controller in van der Lely satisfying the limitations italicized above. App.
Br. 15-17. The Examiner does not attempt to defend this finding in the
Answer, instead citing, apparently for the first time in the record before us,
the control 8 and drive 9 units of Kallen. Ans. 5, citing Kallen para. 20.
Kallen, at least by implication, discloses that robot arm 13 and transport
device 14 are actuated when drive mechanism 9, under the control of control
unit 8, stops the rotation motion platform 2. Kallen, paras. 19-22. There
does not appear to be any express disclosure that robot arm 13 and transport
device 14 are also under the control of control unit 8. Even presuming that
is the case, we are not apprised by the Examiner of how or why a controller
that may be operable to determine whether or not to actuate the robot arm 13
and transport device 14 satisfies the claim requirement for the controller to
be "operable to determine a rate for the carriage to move." Without any
facts or reasoning regarding this aspect of the claimed subject matter we are
unable to conclude that the Examiner has met the burden of establishing that
the subject matter of independent claim 21, and therefore that of those
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Appeal2014-000718
Application 13/454,386
claims depending therefrom, would have been obvious to one having
ordinary skill in the art.
Appellants have not presented the Examiner's double patenting
rejection for our review. Ans. 4. "Once the provisional rejection has been
made, there is nothing the examiner and the applicant must do until the other
application issues." In re Mott, 539 F.2d 1291, 1296 (CCPA 1976); see also
MPEP § 804(I)(B)[l].
At this time applications 13/454,975 and 13/454,975 have issued.
However, the claims of both of these applications have been amended
subsequent to the Examiner's answer. Double patenting is a matter of what
is claimed. General Foods Corp. v. Studiengesellschaft Kahle, 972 F.2d
1272, 1277 (Fed. Cir. 1992). Neither the Examiner nor Appellants have
provided us with any discussion regarding the merits of the Examiner's
provisional double-patenting rejection with regard to the issued claims. In
light of these facts, the Examiner's provisional rejection is moot and we
return the case to the Examiner for action as may be deemed appropriate.
DECISION
The Examiner's prior-art rejections are reversed. We do not reach the
merits of the provisional double-patenting rejection.
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)(l )(iv).
REVERSED
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