Ex Parte Kudia

Patent Trial and Appeal Board

Jun 16, 2016

12178473 (P.T.A.B. Jun. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/178,473 07/23/2008
25541 7590 06/20/2016
NEAL, GERBER, & EISENBERG
SUITE 1700
2 NORTH LASALLE STREET
CHICAGO, IL 60602
FIRST NAMED INVENTOR
Stephen Francis Kudia
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.
6374
EXAMINER
TRUONG, THANH K
ART UNIT PAPER NUMBER
3721
NOTIFICATION DATE DELIVERY MODE
06/20/2016 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):
twilliams@ngelaw.com
tmcdonough@ngelaw.com
ipusmail@ngelaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN FRANCIS KUDIA
Appeal2014-002069
Application 12/178,473 1
Technology Center 3700
Before NINAL. MEDLOCK, BART A. GERSTENBLITH, and
ROBERT L. KINDER, Administrative Patent Judges.
GERSTENBLITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Stephen Francis Kudia ("Appellant") appeals under 35 U.S.C.
§ 134(a) from the Examiner's decision rejecting claims 12-23. We have
jurisdiction under 35 U.S.C. § 6(b).
1 Appellant identifies Best Packaging, Inc. as the real party in interest.
Appeal Br. 1.
Appeal2014-002069
Application 12/178,473
Claimed Subject Matter
Claims 12 and 14 are the independent claims on appeal. Claim 12 is
illustrative of the claimed subject matter and is reproduced below.
12. A process of operating a system for stretch wrapping
having a plurality of stretch wrapping machines, said process
compnsmg:
(a) positioning at least one load to be wrapped in front of
at least one of a first and a second stretch wrapping machines
wherein the first stretch wrapping machine includes a sensing
mechanism electrically coupled to a master control box and
wherein the second stretch wrapping machine includes a second
sensing mechanism electrically coupled to the master control
box;
(b) inputting a start signal through the master control
box·
'
( c) transmitting a signal from the master control box to
each of the sensing mechanisms;
( d) using the sensing mechanisms to determine the
presence or absence of the load within an operational space of
each of the first and second stretch wrapping machines;
( e) when at least one load is determined to be present,
transmitting a start signal only to each respective stretch
wrapping machine that has a present load, based upon sensing
the sensing mechanisms, to start that respective stretch
wrapping machine; and
(f) wrapping each present load by the respective stretch
wrapping machine.
Appeal Br. 11, Claims App.
Rejection
Appellant seeks review of the following rejection:
Claims 12-23 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Plitt (US 4,905,448, iss. Mar. 6, 1990) and Ross (US 5,082,103,
iss. Jan. 21, 1992).
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Application 12/178,473
We AFFIRM.
SUMMARY OF DECISION
ANALYSIS
The Examiner concludes that the combination of Plitt and Ross would
have rendered the subject matter of claims 12-23 obvious to one of ordinary
skill in the art at the time of invention. Final Act. 2--4 (mailed June 6, 2012).
Claim 12
With respect to independent claim 12, the Examiner finds that Plitt
discloses the elements of the claims, but does not disclose "the presence of a
load triggering a start signal for the operation of the system" and "a plurality
of stretch wrapping machines." Id. at 2-3. The Examiner finds that Ross
discloses
"an automatic start-up mode which would be used only if the
associated wrapping machine has an automatic start-up mode.
When the wrapping machine is placed 'on-line' in the
automatic start mode the feeder is automatically armed. If
articles are sitting on the feeder, as retained in the memory of
computer 13, the feeder sends a start signal to the wrapping
machine and triggers" the operation to start.
Id. at 2 (quoting Ross, 6:63---68). The Examiner finds that it would have
been obvious to one of ordinary skill in the art at the time of the invention to
modify Plitt "by causing the presence of a load to trigger a start signal for
the operation of the system ... to increase the speed and therefor[ e]
throughput of the system." Id. at 3. Additionally, the Examiner finds that it
would have been obvious to one of ordinary skill in the art at the time of the
invention "to provide a plurality of stretch wrapping machines, each one as
described in PLITT, in order to increase the throughput of the operations,
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since it has been held that mere duplication of the essential working parts of
a device involves only routine skill in the art." Id.
Appellant raises several arguments in response to the rejection. We
address each. First, Appellant contends that "the Plitt and Ross references
teach away from their being combined" because Plitt's "overhead stretch
film wrapping apparatus 10 does not include an automatic start up mode"
whereas Ross "includes 'an automatic start-up mode which would be used
only if the associated wrapping machine has an automatic start-up mode."'
Appeal Br. 5 (quoting Ross, 6:63---65).
Appellant's argument is unpersuasive. The references do not teach
away from one another simply because one discloses an element that the
other does not. The Examiner's rejection incorporates Ross's teaching of an
automatic start-up mode into Plitt's system. There is nothing in Ross that
would lead one of ordinary skill in the art away from doing so or that would
discourage one of ordinary skill in the art from doing so. Rather, Ross
indicates that if one were to incorporate Ross' s feeder automatic start-up
mode, one should do so with a wrapping machine that has an automatic
start-up mode as well or should add such mode to the wrapping machine.
This is reasonable because it would defeat the full benefit of an automatic
start-up mode if such mode were used only with the feeder, and not the
wrapping machine.
Second, Appellant generally asserts that the applied art fails to show
the "combination of steps and features described in claim 12" and repeats
several of the elements of the claim. Appeal Br. 5. The Examiner's
rejection addresses each of these limitations and Appellant has not identified
any specific deficiency warranting further discussion. See Final Act. 2-3;
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Application 12/178,473
Ans. 5; see also 37 C.F.R. § 41.37(c)(l)(iv) ("The arguments shall explain
why the examiner erred as to each ground of rejection contested by
appellant.").
Third, Appellant argues that "Plitt fails to teach or suggest a step of,
when at least one load is determined to be present, transmitting a start signal
only to each respective stretch wrapping machine that has a present load,
based upon using sensing mechanisms, to start that respective stretch
wrapping machine" and "Plitt fails to teach or suggest de-activating the Plitt
wrapping machine if the load is not present." Appeal Br. 6. Appellant
similarly contends that "Ross ... fails to cure the deficiencies of Plitt." Id.
Additionally, Appellant argues that "[ n ]either Plitt nor Ross contemplate
electrically coupling multiple stretch wrapping machines to a master control
box and transmitting a start signal only to each respective stretch wrapping
machine that has a present load, based upon using sensing mechanisms, to
start that respective stretch wrapping machine." Id. at 7.
Appellant's arguments are not persuasive. Initially, we note that the
claims do not recite de-activating a wrapping machine if a load is not
present. Additionally, Appellant's arguments are directed to each of Plitt
and Ross individually, rather than their teachings as combined in the manner
proposed by the Examiner. As explained in the rejection, the Examiner
relies upon the sensing mechanism of Ross and Plitt's teaching of an
automatic start-up mode. Appellant's argument that Plitt fails to teach
sensing the presence of a load is, thus, not responsive to the rejection. See
Ans. 6 (noting that Ross was relied upon for this element of the claims).
Further, the Examiner persuasively explains why one of ordinary skill in the
art would have been prompted to combine the teachings of the references in
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Application 12/178,473
the manner proposed, including providing reasoning with rational
underpinning as to why one master control switch would have been obvious
to use to connect and control multiple machines. See, e.g., Ans. 7.
Fourth, Appellant asserts that "providing 'a plurality of stretch
wrapping machines, each one as described in PLITT,' as proposed by the
Examiner ... would not result in Appellant's invention, which extends
beyond mere duplication of known machines." Appeal Br. 7.
Although the Examiner states that using a plurality of machines as
opposed to one machine was a mere duplication of parts, the Examiner also
provides an independent reason for adding a plurality of machines-"to
increase the throughput of the operations." Final Act. 3. Appellant has not
directly challenged the Examiner's rationale of increasing the throughput,
focusing instead on the Examiner's duplication of parts finding. See
generally Appeal Br. We find that the Examiner's reason to modify the
combined teachings of Plitt and Ross to a plurality of machines is supported
by rational underpinnings, and we need not address the Examiner's
alternative reasoning of mere duplication of parts. Accordingly, Appellant's
argument is not persuasive.
Finally, Appellant contends that "skepticism of others in the industry
upon hearing of Appellant's invention for using a plurality of stretch
wrapping machines together further confirms that the process of claim 12 is
not obvious." Id. at 8. Appellant provides a declaration by the named
inventor, Mr. Stephen Kudia, in support of its argument. Ex. A.
The Examiner finds that the declaration evidence does not "add
patentable weight to the claims nor detract from the elements of the
rejection." Ans. 8.
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Mr. Kudia's Declaration, particularly paragraphs 14--17, indicates that
"a few stretch wrapping machine manufacturers ... were skeptical" that a
plurality of machines together could wrap a plurality of loads; that despite
this skepticism Mr. Kudia has "sold at least seven (7) stretch wrap systems
as described and claimed in claims 1 and 12 .... in [a] relatively short period
of time"; and that the inventions of claims 1 and 2 have "been a
commercially successful system" and "commercially successful process,"
respectively.
Although we credit Mr. Kudia's testimony, we give it less weight than
if Appellant had submitted declaration testimony by the allegedly skeptical
manufacturers. Additionally, the skepticism noted is of the idea of using a
plurality of machines to wrap a plurality of loads, but does not speak to why
such an idea would have caused skepticism or why using a plurality of
machines was thought to be especially difficult. Further, we give little
weight to Mr. Kudia's testimony regarding alleged commercial success
because Appellant has not provided any indication of whether sales of seven
machines represent a substantial quantity in the relevant market.
"[E]vidence related solely to the number of units sold provides a very weak
showing of commercial success, if any." In re Huang, 100 F.3d 135, 140
(Fed. Cir. 1996); see In re Baxter Travenol Labs., 952 F.2d 388, 392
(Fed. Cir. 1991) ("[I]nformation solely on numbers of units sold is
insufficient to establish commercial success."). Additionally, Appellant has
not provided "factual evidence that demonstrates the nexus between the
sales and the claimed invention." In re Huang, 100 F.3d at 140 (noting, as
an example, that an affidavit from a purchaser explaining that the product
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was purchased due to the claimed features could present evidence of a
nexus).
Accordingly, having fully considered the evidence presented, we find,
on balance, that the Examiner's evidence of obviousness outweighs
Appellant's evidence of nonobviousness. Thus, we sustain the rejection as
applied to claim 12.
Claim 13
Claim 13 depends from claim 12. Appeal Br. 11, Claims App.
Appellant relies on the arguments raised for claim 12 in asserting that
claim 13 is patentable. Appeal Br. 8. For the reasons explained above,
Appellant's arguments are not persuasive. Accordingly, we sustain the
rejection as applied to claim 13.
Claim 14
Claim 14 is directed to a stretch wrap system and recites many
elements similar to claim 12. Appeal Br. 12, Claims App. Appellant raises
the same arguments in response to the rejection of claim 14 that Appellant
raised with respect to claim 12. Id. at 8-9. For the reasons explained above,
Appellant's arguments are not persuasive. Accordingly, we sustain the
rejection as applied to claim 14.
Claims 15-23
Claims 15-23 depend, directly or indirectly, from claim 14. Appeal
Br. 12-13, Claims App. Appellant relies upon the arguments raised for
claim 14 in asserting that claims 15-23 are patentable. Id. at 9. For the
reasons explained above, Appellant's arguments are not persuasive.
Accordingly, we sustain the rejection as applied to claims 15-23.
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Application 12/178,473
DECISION
We affirm the Examiner's decision rejecting claims 12-23.
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).
AFFIRMED
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