Ex Parte Hogg et al

Patent Trial and Appeal Board

Jan 23, 2015

12133754 (P.T.A.B. Jan. 23, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MERRILL WILSON HOGG and
ALLEN BRADLEY HAGEN
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Appeal 2013-004498
Application 12/133,754
Technology Center 1700
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Before BEVERLY A. FRANKLIN, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 15–21 and 23–26. We have jurisdiction under 35 U.S.C.
§ 6.
STATEMENT OF THE CASE
Claim 15 is representative of the subject matter on appeal and is set
forth below:
15. A method for laying tape on a workpiece, the method
comprising:
placing the workpiece into proximity of an apparatus, the
apparatus comprising a constellation frame, a plurality of
mounting structures attached to the constellation frame, and a
plurality of tape-laying heads attached to the constellation
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frame, each of the plurality of tape-laying heads being attached
to the constellation frame via a corresponding one of the
plurality of mounting structures and comprising a supply reel, a
take-up reel, and a compaction roller;
laying tape on the workpiece simultaneously by the
plurality of tape-laying heads; and
controlling movement of the plurality of mounting
structures such that each of the plurality of tape-laying heads
independently rotate, pitch, yaw, and translate with respect to
the constellation frame while simultaneously laying tape on the
workpiece.

The Examiner relies upon the following prior in rejecting the claims
on appeal:
Stevens et al. US 5,820,728 Oct. 13, 1998
(hereafter “Stevens”)
Slyne US 2009/0032195 A1 Feb. 5, 2009
Wampler et al. US 7,591,294 B2, Sept. 22, 2009
(hereafter “Wampler”)
THE REJECTION
Claims 15–21 and 23–26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Wampler in view of Stevens and in further view of Slyne.
ANALYSIS
Appellants have not presented separate arguments for each of the
rejected claims. Rather, Appellants’ arguments are principally directed to
the rejection of independent claim 15; Appellants use the same arguments
for independent claim 23 as used for independent claim 15. App. Br. 15–16.
Any claim not separately argued will stand or fall with its respective
independent claim. See 37 C.F.R. § 41.37(c)(1)(iv) (2013).
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Appellants set forth their arguments on pages 5–15 of the Appeal
Brief, and on pages 2–5 of the Reply Brief. Therein, Appellants argue, inter
alia, that motivation is lacking regarding the Examiner’s proposed
modification, particularly with regard to the Examiner’s reliance upon
Stevens.1 Appellants explain that only one of the tape dispensers described
in Stevens can be held and manipulated in the hand at any one time. App.
Br. 11; Reply Br. 3. Appellants also argue that one skilled in the art would
not consider the human hand in Stevens to be structurally or functionally
similar to either the holding device for a plurality of tape laying heads in
Wampler or the constellation frame featured in their claims. Reply Br. 3.
Appellants argue that a person of ordinary skill in the art would not consider
an object that is “held” in the hand to be “attached” to the hand. App.
Br. 13; Reply Br. 3. As such, Appellants conclude that one skilled in the art
would not have been motivated to modify Wampler according to Stevens
because in order for the teachings of Stevens to be properly combinable with
Wampler’s teachings, there must be some suggestion that the hand-held tape
dispenser disclosed in Stevens may be attached to a holding device for
holding and manipulating a plurality of tape-laying heads as disclosed in
Wampler. App. Br. 10–11; Reply Br. 2–3.
It is the Examiner’s position that it would have been obvious to have
incorporated Stevens’s movement into Wampler’s method:
[i]t would have been obvious to one of ordinary skill in the art
at the time of the invention to combine the method in Wampler
with the movement from Stevens. The rationale to do so would
have been the motivation provided by the teaching of Stevens
that to do so would predictably allow greater range of motion of

1 Appellants also present a non-analogous art argument which we discuss
infra. App. Br. 11–14; Reply Br. 4.
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the tape laying heads (column 4 lines 1-51). The invention of
Stevens shown in figure 1 is a tape laying head that is not
attached to a constellation frame. The frame used to guide the
tape laying head is seen to be a human hand in figure 4.
Stevens shows that it is known in the art for the tape laying
head to include take up and supply reel and is able to move and
rotate from the constellation frame (hand). It would have been
obvious to include all of the parts combined together so as to
make a compact and simple design. Including all of the parts in
the tape laying head (which both references show that it is
known to do) decreases the distance the tape has to travel and
decreases the time and space the tape has in order for something
to go wrong (snagged or accidentally cut for example). Also
putting all the parts together means that less guide means would
be necessary to guide the parts and have them interact with each
other which would decrease on the overall cost of the device.
Ans. 4.
In the Reply Brief, Appellants ague, inter alia, that the Examiner is
suggesting that the human hand in Stevens corresponds to the holding device
for holding and manipulating a plurality of tape laying heads in Wampler.
Reply Br. 3. Appellants reiterate their position that the human hand does not
correspond to either a holding device for a plurality of tape laying heads (as
in Wampler) or the constellation frame (as featured in their claims) because
in both of these structures a plurality of tape-laying heads are attached to a
structure. Appellants reiterate that only one of the tape dispensers described
in Stevens could be held and manipulated in the hand at any one time. Id.
We are not convinced by such argument made by Appellants. “The
test for obviousness is not whether the features of a secondary reference may
be bodily incorporated into the structure of the primary reference. . . .
Rather, the test is what the combined teachings of those references would
have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981). In the instant case, the
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Examiner adequately explained how the applied art’s teachings would have
suggested Appellants’ claimed invention to one of ordinary skill in the art, as
discussed supra. We add that “[a] person of ordinary skill in the art is also a
person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 421 (2007). “[I]n many cases a person of ordinary skill
will be able to fit the teachings of multiple patents together like pieces of a
puzzle.” Id. at 420. In making the rejection, the Examiner appropriately
took into account “the inferences and creative steps that a person of ordinary
skill in the art would employ.” Id. at 418. Appellants’ arguments of record
have not persuaded us otherwise.
With regard to the non-analogous art argument set forth by Appellants
(mentioned in footnote 1, supra), we incorporate the Examiner’s position on
this issue as presented in the record. Ans. 13. We add that the non-
analogous art test considers the threshold question whether a prior art
reference is “‘too remote to be treated as prior art.’” In re Clay, 966 F.2d
656, 658 (Fed. Cir. 1992) (quoting In re Sovish, 769 F.2d 738, 741 (Fed. Cir.
1985)). The two separate tests for determining whether a prior art reference
is analogous are: (i) whether the art is from the same field of endeavor,
regardless of the problem addressed; and (ii) if the reference is not within the
inventor’s field of endeavor, whether the reference is reasonably pertinent to
the particular problem with which the inventor is involved. Clay, 966 F.2d
at 658–659. In the instant case, the Examiner applies the first test. With
regard to the first test, Appellants argue that Stevens is directed towards a
hand-held tape dispenser for applying a single strip of tape and that this is
not the same field of endeavor as the subject matter of claim 15 for the
reasons stated on pages 12‒14 of the Appeal Brief. However, we agree with
the Examiner that Stevens is directed to a tape dispensing device which is
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within the same field of endeavor as the subject matter claimed by
Appellants which involves dispensing tape. Ans. 13. Because the
Examiner’s finding that Stevens is analogous art under the first test,
Appellants’ additional arguments, App. Br. 13–14, with regard to the second
test are not persuasive of error.
We thus affirm the rejection.
CONCLUSIONS OF LAW AND DECISION
The rejection is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

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