Ex Parte Krischer

Board of Patent Appeals and Interferences

Aug 30, 2010

10483129 (B.P.A.I. Aug. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/483,129 07/22/2004 Achim Krischer 76775.6 7367
7590 08/30/2010
Francis C Hand
Carella Byrne Bain Gilfillan Cecchi
Stewar & Olstein
5 Becker Farm
Roseland, NJ 07068
EXAMINER
DEUBLE, MARK A
ART UNIT PAPER NUMBER
3651
MAIL DATE DELIVERY MODE
08/30/2010 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ACHIM KRISCHER
____________________

Appeal 2009-004194
Application 10/483,129
Technology Center 3600
____________________

Before: WILLIAM F. PATE III, MICHAEL W. O’NEILL, and
KEN B. BARRETT, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-004194
Application 10/483,129
2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
51, 53, 55, 56, 59, and 61.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

The claims are directed to a chain transport system with add-on
components. Claim 51, reproduced below, is illustrative of the claimed
subject matter:
51. A chain transporter system comprising
a plurality of sequentially arranged chain links;
a plurality of adapter elements, each said adapter element
being mounted on a respective one of said chain links and
including a groove-type recess in an upper part thereof having a
pair of opposed walls, a first undercut in one of said walls and a
second undercut in the other of said walls; and
a plurality of mounting parts, each said mounting part
being received in said groove of a respective one of said adapter
elements and including a first extension matingly received in
said second undercut of a respective one of said adapter
elements and a second extension matingly received in said
second undercut of said one adapter.

2 In the Office Action mailed May 3, 2007, the Examiner finally rejected
claims 51-62. Appellant appealed from this final rejection. In the Answer
mailed August 22, 2008, the Examiner withdrew the following rejections: 1)
claim 58 under 35 U.S.C. § 112, second paragraph; 2) claims 52, 54, 55, 57,
and 58 under 35 U.S.C. § 102(b); and 3) claims 52, 54, 55, 57, 58, 60 and 62
under 35 U.S.C. § 103(a). Thus, the remaining appealed rejections are: 1)
claims 51, 53, 56, and 59 which stand rejected under 35 U.S.C. § 102(b) as
anticipated by Lapeyre; and 2) claims 51, 53, 55, 56, 59, and 61 which stand
rejected under 35 U.S.C. § 103(a) as being obvious over Lapeyre.
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Application 10/483,129
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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lapeyre US 4,832,183 May 23, 1989

REJECTIONS
Claims 51, 53, 56, and 59 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Lapeyre. Ans. 3.
Claims 51, 53, 55, 56, 59 and 61 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Lapeyre. Ans. 4.

OPINION
We have carefully reviewed the rejections on appeal in light of the
arguments of the Appellant and the Examiner. As a result of this review, we
have determined that the Examiner has established that claims 51, 53, 56,
and 59 lack novelty over the Lapeyre reference and that claims 51, 53, 55,
56, and 59, are obvious over Lapeyre. Our reasons follow.
These are our findings of fact with respect to the scope and content of
the Lapeyre reference. With reference to Figure 6, Lapeyre discloses a
plurality of sequentially arranged chain links 102, 104. Lapeyre also
discloses a plurality of adapter elements 96, 98, and 100 being mounted on,
i.e., attached to, a respective one of said chain links. See col. 7, ll. 28-38.
The adapter elements 96, 98, and 100 have a plurality of mounting parts,
each mounting part received in a groove on a respective one of said adapter
elements. As readily seen in Figures 3 and 4a, each of the grooves has a first
and second undercut which matingly receive first and second extensions on
the base of mounting part 39. The mounting parts 39 are constructed of
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Application 10/483,129
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plastic or rubber. See col. 5, ll. 53-63; col. 6, ll. 53-56. Accordingly, it is
our finding that the Lapeyre disclosure anticipates the subject matter of
claim 51. Claim 53 falls with claim 51 as not separately argued. App. Br. 7.
Claim 56 requires each adapter element to be mounted on a plurality
of chain links. As can be seen in Figure 6 of Lapeyre, adapter element 98 is
mounted to chain link 102 and 104. Accordingly, claim 56 lacks novelty
over the Lapeyre disclosure.
With respect to claim 59, while we agree with Appellant that the
Figure 4b embodiment of Lapeyre is generally triangular, we also agree with
the Examiner’s argument on page 5 of the Answer that Lapeyre discloses
upper portions may be of any shape. See Lapeyre col. 6, ll. 55-60. We also
note that Figure 1 of Lapeyre seems to show mounting parts of upstanding
rectangular cross section. In our view, these teachings of Lapeyre
demonstrate that one of ordinary skill could use angle-shaped conveying
elements as the conveying structures in Lapeyre. Accordingly, we reverse
the 35 U.S.C. § 102 rejection of claim 59, but affirm the obviousness
rejection of that claim.
Turning to the rejection of claim 55 under § 103, we will affirm the
rejection of this claim. We agree with the Examiner that making the adapter
element resilient rather than the mounting part is a reversal of parts and
would have been obvious to one of ordinary skill. Whether the adapter
element or the mounting part is the resilient member is choosing from a
finite number of identified predictable solutions with a reasonable
expectation of success. Accordingly, the subject matter of claim 55 is prima
facie obvious.
With respect to claim 61, which requires the mounting part be made
of aluminum, we do not affirm this rejection. The Lapeyre reference is
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silent with respect to aluminum, as the Examiner admits, and we have no
prior art or disclosure that aluminum is suitable for this type of conveyor
part. There must be a sound evidentiary basis for any rejection under 103,
and the Examiner has not provided us with one with respect to the subject
matter of claim 61.
As noted above, we affirm the 35 U.S.C. § 102(b) rejection of claims
51, 53, and 56. We reverse the 35 U.S.C. § 102(b) rejection of claim 59.
We affirm the 35 U.S.C. § 103 rejection of claims 51, 53, and 56,
anticipation being the epitome of obviousness. In re McDaniel, 293 F.3d
1379, 1385 (Fed. Cir. 2002) (citations omitted). We also affirm the rejection
of claim 59 under 35 U.S.C. § 103(a). We reverse the rejection of claim 61
under 35 U.S.C. § 103(a).
We have carefully considered Appellant’s arguments with respect to
the Figure 6 embodiment of Lapeyre in section 1 of the Reply Brief.
However, these remarks do not appear to be responsive to the Examiner’s
rejection based on the Figure 6 embodiment. At any rate, we do not find any
double inclusion of structure as argued by the Appellant. As we have
indicated above in our findings of fact, every element required by claim 51
is found expressly in Lapeyre’s disclosure.

DECISION
The rejection of claims 51, 53, 56 and 59 under 35 U.S.C. § 102 is
affirmed.
The rejection of claims 51, 53, 55, 56 and 59 under 35 U.S.C. § 103 is
affirmed.
The rejection of claim 61 under 35 U.S.C. § 103 is reversed.
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Application 10/483,129
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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)(1)(iv) (2007).

AFFIRMED-IN-PART

nlk

Francis C Hand
Carella Byrne Bain Gilfillan Cecchi
Stewar & Olstein
5 Becker Farm
Roseland NJ 07068