Ex Parte Lam

Patent Trial and Appeal Board

Dec 19, 2017

13137550 (P.T.A.B. Dec. 19, 2017)

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.
13/137,550 08/25/2011 Joe Augustine S. T. Lam 19720 8102
293 7590 12/21/2017
DOWELL & DOWELL, P.C.
2560 HUNTINGTON AVE, SUITE 203
ALEXANDRIA, VA 22303
EXAMINER
CAILLOUET, CHRISTOPHER C
ART UNIT PAPER NUMBER
1745
NOTIFICATION DATE DELIVERY MODE
12/21/2017 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):
DOWELL@DOWELLPC.COM
D Vej erano @ do wellpc. com
wferrebee @dowellpc.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOE AUGUSTINE S. T. LAM1
Appeal 2017-000074
Application 13/137,550
Technology Center 1700
Before BRADLEY R. GARRIS, MARKNAGUMO, and
AVELYN M. ROSS, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Joe Augustine S. T. Lam (“Lam”) timely appeals under
35 U.S.C. § 134(a) from the Final Rejection2 of claims 1, 2, 4, 17, 19, 20,
22, and 23.3 We have jurisdiction. 35 U.S.C. § 6. We reverse.
1 The real party in interest is identified as Lamus Enterprises Inc., which is
said to be owned by the inventor, Joe Augustine S. T. Lam. (Appeal Brief,
filed 19 January 2016 (“Br.”), 1.)
2 Office Action mailed 17 September 2015 (“Final Rejection”; cited as
“FR”).
3 Copending claims 8 and 9 have been indicated allowable, and remaining
copending claims 3, 5—7, and 21 have been objected to by the Examiner as
being drawn to allowable subject matter but depending from a rejected
claim. (FR 1, §§ 6, 8). Claims 3, 5—9, and 21 are not before us.
Appeal 2017-000074
Application 13/137,550
OPINION
A. Introduction4
The subject matter on appeal relates to a device for applying tape to
close cartons. (Spec. 1,1. 1.) According to the '550 Specification,
equipment for applying tape in a “C-clip” configuration5 6are well known, but
suffer from problems such as insufficient tape adhesion on empty, under­
filled, or over-filled cartons, loosely wrinkled tape left on the cartons, and
flagging at the rear comer. (Id. at 11. 8—22.)
In Lam’s words, “the Marchetti reference^ describes the equipment
that has been in use in the industry for about 25 + years and is the piece of
equipment over which the present invention is a significant improvement.”
(Br. 9, last para.) Where Marchetti uses bmshes to press the tape against the
carton, Lam uses a wiper element that comprises a continuous strip formed
from a resilient, semi-rigid, shape retaining material that is deformable,
positioned so that the free end opposite the fixed end extends continuously
across effectively a full width of the tape when the tape is applied to the
carton.
4 Application 13/137,550, Tape applicator, filed 25 August 2011. We refer
to the “'550 Specification,” which we cite as “Spec.”
5 A continuous piece of tape is applied to a leading face of a carton, then to
the surface facing the tape applicator, and then to the trailing face of the
carton, “so the ribbon of take forms a C-shape.” (Spec. 1,11. 13—15.)
6 Marchetti is the principal prior art reference applied by the Examiner.
See n. 10, infra, for the complete citation.
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Application 13/137,550
An embodiment of the wiper element is illustrated as elements 907
(lower left) and 112a (lower center) in Figure 2a, shown below.
(Figure 2a shows a tape applicator with wipers 112a and 90 pressing tape 28
against carton 102, which is moving in direction 100}
Sole independent claim 1 is representative and reads:
A tape applicator for applying a tape to a case moved relative
to said applicator in a forward direction, said applicator
comprising
a base,
a source of tape to be applied by said tape applicator,
said tape having a width, an adhesive side and a non­
adhesive side,
a front applicator and
a rear applicator,
a front arm mounting said front applicator adjacent to a
free end of said front arm and
a rear arm mounting said rear applicator adjacent to a free
end of said rear arm,
a first pivotal mounting mounting said front arm and
7 Throughout this Opinion, for clarity, labels to elements are presented in
bold font, regardless of their presentation in the original document.
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Application 13/137,550
a second pivotal mounting mounting said rear arm,
said first and second pivotal mountings mounting said
front and rear arms on said base for rotation about parallel
spaced axes,
a push bar interconnecting said front and rear arms for
acting together and
means biasing said front and rear arms to a receiving
position with said front applicator positioned to engage a
case to which tape is to be applied by said tape applicator,
a wiper composed of at least one wiper element and each
said wiper element is a continuous strip formed by a resilient,
semi-rigid, shape retaining material that is deformable when
applying pressure to said tape when said applicator is used to
apply said tape to said case,
said strip having a fixed end and a free end remote from
said fixed end,
said wiper element is positioned so that said free end
extends continuously across effectively a full said width
of said tape when said applicator is used to apply said
tape to said case,
a cut off means positioned adjacent to said front applicator
for cutting said tape adjacent to said front applicator when
said tape has been applied to said case, said cut off means
including a cutter and a cut off cam,
said cut-off cam being positioned to engage said case as
it is being taped and
functioning to control operation of said cut-off means
to cut said tape.
(Claims App., Br. 17; indentation, paragraphing8, and emphasis added.)
8 In compliance with 37 C.F.R. §1.75(i) (2014): “Where a claim sets forth a
plurality of elements or steps, each element or step of the claim should be
separated by a line indentation.”
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Application 13/137,550
The Examiner maintains the following grounds of rejection9,10:
A. Claims 1, 2, 4, 19, 20, 22, and 23 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Marchetti* 11 and Carter.12
Al. Claim 17 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Marchetti, Carter, and Warshaw.13
B. Discussion
The Board’s findings of fact throughout this Opinion are supported by
a preponderance of the evidence of record.
Briefly, the Examiner finds, and Lam does not dispute, that Marchetti
describes a taping apparatus that meets the limitations of claim 1, but for the
wiper element required by claim 1. More specifically, in the words of the
Examiner, “Marchetti discloses that the wiper element is a brush, but fails to
teach or disclose that the wiper element may be in the form of an element
that can extend continuously across a tape when pressing said tape, instead
of spreading apart like a brush does when pressing against an object.” The
Examiner finds that, for an apparatus for applying wrap-around body labels
9 Examiner’s Answer mailed 9 August 2016 (“Ans.”).
10 Because this application was filed before the 16 March 2013, effective
date of the America Invents Act, we refer to the pre-AIA version of the
statute.
11 Augusto Marchetti, Automatic taping unit with improved system of
withdrawal of the tape applying rollers for carton sealing machines, U.S.
Patent No. 4,592,188 (1986).
12 Sidney T. Carter, Apparatus for applying wrap-around body labels to
articles, U.S. Patent No. 3,108,033 (1963).
13 Saul Warshaw et al., Tape applying mechanisms of carton sealing
machines, U.S. Patent No. 4,039,367 (1977).
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Appeal 2017-000074
Application 13/137,550
to articles (small bottles), “Carter teaches that using a pressure type wiper
element, such as a flexible resilient rubber pressing pad (column 3, lines 65—
75) which is somewhat more positive in its action, instead of a brush is
advantageous so as to ensure firm adhesion of the adhesive element to the
article (column 2, lines 45—65).” (Ans. 3, 2d para.) The Examiner reasons
that it would have been obvious “to substitute the brushes of Marchetti with
a flexible resilient rubber pressing element” to obtain the better adhesion of
the adhesive element to the article. (Id.)
The substitution of one structure by another structure that would have
been recognized as equivalent, in that it performs the same function in a
similar way is generally prima facie obvious. However, Lam urges that
“Marchetti and Carter relate to two significantly different arts that face
totally different problems.” (Br. 8,11. 21—22.) More particularly, Lam urges
that Carter describes the flexible resilient presser pad D (Carter, col. 3,
11. 65—75), which is illustrated in figure 6, reproduced below,
(Carter figure 6 shows wiper arms 10, 11, with flexible pad D pressing
label L against a bottle (center, unlabeled)}
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Application 13/137,550
as having “a totally different action than the wiping action of the br[u]sh of
Marchetti. or the brush-based wipers described by Carter in an earlier
patent. (Br. 12,11. 15—16.) “Clearly,” Lam urges, “D is a pressure pad not a
wiper and must embrace the bottle through a 180° arc i.e. applies pressure
essentially perpendicular to the circumference of the bottle to press the label
against the bottle—this is a totally different action than the wiping action of
the br[u]sh of Marchetti. . . .” (Id. at 11. 12—16; emphasis added.) Lam
concludes that “[t]here simply is no teaching in Carter 3,108,033 that a blade
type wiper could be used in place of brushes and/or a better result obtained.”
(Id. at 12,11. 26-27.)
The Examiner responds that the ordinary worker “would still
recognize that the wiping element of Carter [would] still be capable of
performing a wiping and pressing motion upon an adhesive material on an
article whether the article is moved relative to the wiping element or if the
wiping element is moved relative to the article.” (Ans. 9,11. 12—15.)
Moreover, the Examiner explains, Lam’s argument that “there is no simple
substitution of a pressure wiper for bristle brushes since Carter '033 invented
a whole new machine to overcome the problems with the bristle brushes” is
not persuasive because, inter alia, “a blade type wiper has not been claimed
by Applicant or rejected in the rejection above.” (Id. at 10,11. 12—13.)
The Examiner’s statements leave us uncertain what combinations of
what teachings form the basis of the appealed rejection. Claim 1 requires
that the wiper must be “formed by a resilient, semi-rigid, shape retaining
material that is deformable when applying pressure to said tape when said
applicator is used to apply said tape to said case.” Claim 1 also requires that
the tape be applied to a case that is moved relative to the applicator in a
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Application 13/137,550
forward direction. Moreover, claim 1 recites that the wiper is composed of a
“strip having a fixed end and a free end remote from said fixed end . . .
positioned so that said free end extends continuously across effectively a full
said width of said tape when said applicator is used to apply said tape to said
case.” (Claims App., Br. 17.) Such a strip corresponds, reasonably, to a
“blade,” particularly a blade that is to replace a brush such as brush 27 in the
taping apparatus shown in Figure 1 of Marchetti.
In any event, the Examiner has not explained why the flexible resilient
presser pad D described by Carter, even if made to have a planar face, would
have been expected to function in a manner similar to brush 27 of Marchetti.
As Lam points out, the motion of presser pad D relative to the label [tape]
applied to the bottle [case] is such as to “appl[y] pressure essentially
perpendicular to the circumference of the bottle to press the label against the
bottle.” In contrast, the motion of the tape relative to brush 27, is lateral.
Similarly, the motion of the rotating brushes in the device described in the
earlier Carter patent, which the device of Carter '033 is meant to replace,
relative to the tape, is essentially lateral, not perpendicular. Although
brush 27 (and the rotating brushes described in the earlier Carter patent)
exert a force perpendicular to the plane of the tape (or label), it is difficult to
say that that force arises from a motion of the brush perpendicular to the
plane of the tape. Thus, Lam’s argument that the principle of action of
presser D is “totally different” from the action of brush 27 of Marchetti (or
from the action of brushes in the earlier Carter patent), though somewhat
overstated, is generally well-taken.
Put another way, the Examiner has not shown that the “wiper”
described by Carter would have been understood to be an equivalent in
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Application 13/137,550
structure, function, and mode of action, to brush 27 described by Marchetti.
Nor has the Examiner explained adequately, on the basis of the present
record, why the routineer would have had a reasonable expectation of
reshaping the material (rubber) of the presser pad to form a wiper similar to
brush 27 of Marchetti. The Examiner’s further findings regarding the
teachings of Warshaw and the limitations of claim 17 do not cure the
deficiencies of the findings and analysis regarding independent claim 1.
In conclusion, we are persuaded that the Examiner failed to establish a
prima facie case of obviousness based on the teachings of Marchetti and
Carter, and we therefore reverse the rejection for obviousness.14
14 In the present posture of the case, we need not analyze the Declaration of
Mr. Lam, which was submitted during examination as evidence of
unexpected results. However, as the Examiner indicates (Ans. 7—8), the
arguments are not commensurate in scope with the claimed subject matter.
For example, the evidence appears to relate to a particular configuration—
taping closed an under-filled carton or case made of a porous material
(perhaps cardboard). But no corresponding limitations are present in
claim 1. While the application of the same tape to the same substrates by
different tap applicators alleviates some of these concerns, it is well-settled
that patentability cannot be premised on limitations that are not present in
the claims. In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“Many of
appellant’s arguments fail from the outset because . . . they are not based on
limitations appearing in the claims.”). Many of the other arguments raised
by Lam for patentability, which we have not discussed, also have this defect.
Moreover, most of the illustrations and graphs presented in Exhibits 1—3 are
difficult to read, and it is not clear what is shown. In the event of further
examination, we trust these matters will be addressed as appropriate.
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Application 13/137,550
C. Order
It is ORDERED that the rejection of claims 1, 2, 4, 17, 19, 20, 22,
and 23 is reversed.
REVERSED
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