Ex Parte Lancaster et alDownload PDFPatent Trial and Appeal BoardSep 30, 201612349929 (P.T.A.B. Sep. 30, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/349,929 0110712009 22884 7590 10/04/2016 MIDDLETON & REUTLINGER 401 S. 4th Street, Suite 2600 (2600 Brown & Williamson Tower) LOUISVILLE, KY 40202 FIRST NAMED INVENTOR Patrick R. Lancaster III 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. ZT645-15047 5928 EXAMINER HARMON, CHRISTOPHER R ART UNIT PAPER NUMBER 3649 NOTIFICATION DATE DELIVERY MODE 10/04/2016 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): USPTOmail@middreut.com USPTOmail@middletonlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PATRICK R. LANCASTER III, ROBERT D. JANES, SR., MICHAEL MITCHELL, THOMAS HARRIS, and RICHARD L. JOHNSON Appeal2013-006352 Application 12/349,929 Technology Center 3700 Before ANNETTE R. REIMERS, WILLIAM A. CAPP, and THOMAS F. SMEGAL, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Patrick R. Lancaster et al. (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner's decision to reject claims 1---69, 109-115, and 136-160. Claims 70-108 and 116-135 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b ). We REVERSE and enter NEW GROUNDS OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). Appeal2013-006352 Application 12/349,929 CLAIMED SUBJECT MATTER The claimed subject matter relates to "an apparatus and a method for wrapping a load." Spec. para. 2, Figs. 1-5. Claims 1, 18, 34, 51, 109, 136, 143, and 149 are independent claims. Claims 1, 18, and 136 are illustrative of the claimed subject matter and recite: 1. An apparatus for wrapping a load, comprising: a film dispenser for dispensing a film web, wherein the film dispenser is driven by a film dispensing drive configured to rotate at least one film dispenser roller of the film dispenser; a rotational drive system for providing relative rotation between the load and the dispenser; a sensor sensing a parameter related to demand for the film web at the load; and a controller determining demand in response to the sensed parameter, operatively coupling the film dispensing drive and the rotational drive system, and establishing a ratio between operation of the film dispensing drive and the rotational drive system such that, for at least a portion of a relative revolution between the film dispenser and the load, the film dispenser dispenses a length of the film web based on the determined demand for the film web at the load during the at least a portion of a relative revolution 18. An apparatus for wrapping a load, comprising: a film dispenser for dispensing a film web, wherein the dispenser is driven by a film dispensing drive configured to rotate at least one film dispenser roller of the film dispenser; a rotational drive system for providing relative rotation between the load and the dispenser; and a controller: setting a length of the film web to be dispensed for at least a portion of a relative revolution between the dispenser and the load based on demand for the film web at the load; and driving the rotational drive system and the dispensing drive at a ratio at which the dispenser dispenses the 2 Appeal2013-006352 Application 12/349,929 set length of the film web for the at least a portion of a relative revolution. 136. An apparatus for wrapping a load with packaging material, the apparatus comprising: a packaging material dispenser, wherein the packaging material dispenser is driven to dispense packaging material by a dispensing drive configured to rotate at least one film dispenser roller of the packaging material dispenser; a relative rotation assembly configured to provide relative rotation between the packaging material dispenser and the load, wherein the relative rotation assembly is driven by a rotation drive; and a controller establishing and controlling a ratio between operation of the dispensing drive and the rotation drive such that for at least a portion of a relative revolution between the packaging material dispenser and the load, the packaging material dispenser dispenses a length of packaging material based at least in part on a characteristic of at least a portion of the load. REJECTIONS I. Claims 1-13, 15-29, 31--45, 48-56, 58---60, 62---63, 109-115, and 136- 148 under 35 U.S.C. § 102(b) as anticipated by Lancaster (US 7,779,607 B2; iss. Aug. 24, 2010). II. Claims 1-13, 15-29, 31--45, 48-56, 58---60, 63, 109-115, and 136-148 under 35 U.S.C. § 102(b) as anticipated by Cox (US 7,114,308 B2; iss. Oct. 3, 2006). III. Claims 14, 30, 46, 47, 57, 61, 62, 64--66, 69, and 149-160 under 35 U.S.C. § 103(a) as unpatentable over Cox and Rajala (US 6,314,333 Bl; iss. Nov. 6, 2001). IV. Claims 14, 30, 46, 47, 57, 61, 62, 64---66, 69, and 149-160 under 35 U.S.C. § 103(a) as unpatentable over Lancaster and Rajala. 3 Appeal2013-006352 Application 12/349,929 V. Claims 67 and 68 under 35 U.S.C. § 103(a) as unpatentable over Cox and Fukuda (US 5,524,413; iss. June 11, 1996). VI. Claims 67 and 68 under 35 U.S.C. § 103(a) as unpatentable over Lancaster and Fukuda. ANALYSIS I. Anticipation by Lancaster Claims 1-13, 15-29, 31--45, 48-56, 58-60, 62, 63, 109-115, and 136--148 The Examiner finds that Lancaster discloses the apparatus called for in the claims. According to the Examiner: Lancaster '607 has shared inventorship and the same Assignee as the instant application. No discussion is considered necessary as applicant is familiar with the invention. The claims are considered anticipated by the operation and device as disclosed including load comer sensor for automatic adjustment of the dispensing rate of film (including rollers); see fig. 2; col. 23, lines 38+; and also col. 22, lines 54+ for discussion of two separate linked drive systems; note idle roller/film breaking sensor 194 operates as claimed. Non-Final Act. 4 (emphasis added). Upon review of the record, the Examiner has not met the burden of proof required to show anticipation by Lancaster. "[T]he precise language of 35 U.S.C. § 102 that '(a) person shall be entitled to a patent unless,' concerning novelty and unobviousness, clearly places a burden of proof on the Patent Office which requires it to produce the factual basis for its rejection of an application under sections 102 and 103." In re Warner 379 F.2d 1011, 1016 (CCPA 1967). The Patent Trial and Appeal Board is primarily a tribunal of review. See Ex Parte Frye, 94 USPQ2d 1072, 1075- 1077 (BPAI 2010)(precedential). For that review to be meaningful it must 4 Appeal2013-006352 Application 12/349,929 be based on some concrete evidence in the record to support the Examiner's factual findings and legal conclusions. In re Zurko, 258 F.3d 1379, 1386 (Fed. Cir. 2001). A rejection must be set forth in a sufficiently articulate and informative manner as to meet the notice requirement of§ 132, such as by identifying where or how each limitation of the rejected claims is met by the prior art references. In re Jung, 637 F. 3d 1356, 1363 (Fed. Cir. 2011); see also 37 C.F.R. § 1.104(c)(2) ("When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified."); Gechter v. Davidson, 116 F.3d 1454, 1460 (Fed. Cir. 1997)(PTO must create a record that includes "specific fact findings for each contested limitation and satisfactory explanations for such findings."). It is neither our place, nor Appellants' burden, to speculate as to the basis for rejecting claims. In re Stepan, 660 F.3d 1341, 1345 (Fed. Cir. 201 l)(It is the PTO' s obligation to provide timely notice to the applicant of all matters of fact and law asserted.) In this case, the Examiner rejected a large number of claims in a few sentences and generally cited to large portions of the Lancaster reference. Non-Final Act. 4. The Examiner failed to identify where or how each limitation of the rejected claims is met by Lancaster, stating "[ n Jo discussion is considered necessary as applicant is familiar with the invention." Id. Further, the Examiner's Answer fails to address the explicit claim language argued by Appellants; rather, the Answer provides broad unsupported assertions that all the claim limitations are present in Lancaster. See Ans. 5---6. In particular, the Examiner does not adequately respond to 5 Appeal2013-006352 Application 12/349,929 Appellants' argument that Lancaster lacks a controller that determines demand in response to the sensed parameter (claims 1, 34, 51 and 109). See Appeal Br. 14--15; see also Reply Br. 4--5. Likewise, the Examiner does not point out where Lancaster discloses "setting a length of the film web ... based on demand" (claim 18) and "establishing and controlling a ratio" between the dispensing and rotation drives" (claims 136 and 143). Appeal Br. 15-16. Based on what has been provided by the Examiner, we fail to see where Lancaster discloses a controller that determines demand in response to the sensed parameter as required by claims 1, 34, 51, and 109. As pointed out by Appellants, Lancaster determines demand based off user input, not based off any parameter sensed from "a load comer sensor." See Appeal Br. 15; see also Reply Br. 4; Ans. 5--6. Because the Examiner errs by not setting forth the Lancaster rejection in a sufficiently articulate and informative manner as to meet the notice requirement of§ 132 and fails to create a record that includes specific fact findings for each contested limitation and satisfactory explanations for such findings, the Examiner fails to establish a prima facie case that Lancaster anticipates the subject application as claimed. Accordingly, we do not sustain the Examiner rejection of claims 1-13, 15-29, 31--45, 48-56, 58--60, 62, 63, 109-115, and 136-148 as anticipated by Lancaster. It is noted that claims 18, 136, and 143 do not require demand determined in response to a sensed parameter, discussed supra. NEW GROUNDS OF REJECTION are set forth below for claims 18, 136, and 143. 6 Appeal2013-006352 Application 12/349,929 II. Anticipation by Cox Claims 1-13, 15-29, 31--45, 48-56, 58-60, 63, and 109-115 The Examiner finds that Cox discloses the apparatus called for in the claims. In particular, the Examiner states that "[ r ]egarding the demand, the load rotation on turntable 4 [of Cox], movement of the dispenser along the mast, size of the roll, etc. present variables of tension on the tape/wrap corresponding to the dimensions of the load including the length of the load traversed, girth of the load." Non-Final Act. 3. Appellants contend that Cox lacks specific claims limitations including a controller "determining demand" for the film web in response to the sensed parameter, as recited in claims 1, 18, 34, 51, and 109. See Appeal Br. 12. Appellants argue that determining "demand" is explicitly defined in the Specification as the calculation "load girth multiplied by payout percentage" (Id.; citing Spec. para. 40), and that the controller in Cox does not perform this calculation to determine demand in response to a sensed parameter as required in claims 1, 18, 34, 51, and 109 (Id.; see also Reply Br. 3--4). In the Answer, the Examiner appears to dismiss Appellants' interpretation of determining demand as overly narrow. See Ans. 5. The Examiner states "[ d]etermining demand does not necessarily have to be a calculation performed as claimed." Id. Where an explicit definition is provided by an applicant for a term, the definition will control interpretation of the term as it is used in the claim. Toro Co. v. White Consolidated Industries Inc., 199 F.3d 1295, 1301 (Fed. Cir. 1999). Appellants' controller determines or calculates "demand" using payout percentage and sensed girth. See Spec. 40; see also Appeal 7 Appeal2013-006352 Application 12/349,929 Br. 12. We agree with Appellants that there is "no discussion in [Cox] of determining demand based on load girth or a percentage of load girth." Reply Br. 4. Moreover, it is noted that the Examiner attempts to reject a large number of claims without satisfactorily addressing the claim limitations found in the claims. See Non-Final Act. 2-3. It is not clear from the rejection what features of the prior art are being used to anticipate claim elements. See id. As discussed supra, the Examiner must create a record that includes specific fact findings for each contested limitation and satisfactory explanations for such findings, and set forth the rejection in a sufficiently articulate and informative manner as to meet the notice requirement of§ 132. The Examiner fails to meet this burden in the Cox rejection for claims 1, 18, 34, 51, and 109. For these reasons, we do not sustain the Examiner's rejection of claims 1-13, 15-29, 31--45, 48-56, 58---60, 63, and 109-115 as anticipated by Cox. Claims 136--148 Regarding independent claims 136 and 143, Appellants contend that Cox fails to disclose "a controller establishing and controlling a ratio" between the dispensing and rotation drives. Appeal Br. 11. Appellants also contend that Cox fails to disclose a controller that controls such that a packaging material dispenser "dispenses a length of packaging material based at least in part on a characteristic of at least a portion of the load" or the step of controlling a dispensing drive and a rotational drive such that the packaging material dispenser "dispenses a length of packaging material 8 Appeal2013-006352 Application 12/349,929 based at least in part on a characteristic of at least a portion of the load." Appeal Br. 13. The Examiner does not individually address the claim limitations of claims 136 and 143 in the Non-Final Rejection (see Non-Final Act. 3--4) and does not respond to Appellants' arguments regarding these limitations (see Ans. 3-5). The Examiner again fails to set forth the Cox rejection of claims 136 and 143 in a sufficiently articulate and informative manner as to meet the notice requirement of§ 132 and fails to create a record that includes specific fact findings for each contested limitation and satisfactory explanations for such findings. Accordingly, we do not sustain the Examiner's rejection of claims 13 6-148 as anticipated by Cox. III- VI. Cox or Lancaster and either Rajala or Fukuda Claims 14, 30, 46, 47, 57, 61, 62, 64-69, and 149-160 The Examiner's obviousness rejections of claims 14; 30; 46; 47; 57; 61, 62, 64---66, 69, and 149-160, as well as claims 67 and 68, are each based on the same unsupported findings discussed above. See Non-Final Act. 4---6. The Examiner does not rely on Rajala or Fukuda to remedy the deficiencies of Cox or Lancaster. For the same reasons set forth above, we do not sustain the Examiner's obviousness rejections of these claims. New Grounds of Re} ection Claim 18 Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claim 18 under 35 U.S.C. § 102(b) as anticipated by Lancaster. Specifically, Lancaster discloses an apparatus for wrapping a load with packaging 9 Appeal2013-006352 Application 12/349,929 material, the apparatus comprising an apparatus for wrapping a load (see Lancaster, Abstract; see also id. 6: 1-13, 22:55---66), comprising a film dispenser ("packaging material dispenser" 140) for dispensing a film web ("packaging material" 142), wherein the dispenser is driven by a film dispensing drive ("second rotational drive" id. at 22:60) configured to rotate at least one film dispenser roller ("pre-stretch roller" id. at 22: 60---61) of the film dispenser; a rotational drive system ("rotatable ring ... first rotational drive system" 122, id. at 22:58) for providing relative rotation between the load and the dispenser; and a controller ("electronically linked" id. at 22:62) setting a length of the film web to be dispensed for at least a portion of a relative revolution between the dispenser and the load ("to dispense a predetermined substantially constant length of film for each revolution of the dispenser relative the load" id. at 22:62---66) based on demand for the film web at the load. It is noted that demand is determined using girth and payout percentage, and that demand is equal to the length of packaging material per revolution of the dispenser. Lancaster states that the girth and desired payout percentage are input in order to obtain the length of packaging material per revolution of the dispenser, (i.e., the demand). See Lancaster, 8:36---64, 21:33--45. Once demand has been determined, the controller controls that rotation of the film dispenser and rotational drive system, which in turns sets lengths of the film web for portions of a relative revolution between the dispenser and rotating load. Further, the length of the film web to be dispensed can be varied/reset by the controller. See Lancaster, 23: 11-26. Lancaster further discloses driving the rotational drive system and the dispensing drive at a ratio at which the dispenser dispenses the set length of the film web for the at least a portion of a relative 10 Appeal2013-006352 Application 12/349,929 revolution. Id. at 22:61---66 ("The two rotational drives may be electronically linked such that a ratio of the drive speeds remains constant throughout a primary portion of the wrap cycle in order to permit the pre- stretch assembly to dispense a predetermined substantially constant length of film for each revolution of the dispenser relative to the load"; see also id. 21:48-52). Appellants contend Lancaster lacks "a controller setting a length of the film web ... based on demand" as required by claim 18 and cites to Lancaster's discussion of girth inputs at column 17, lines 44--53, and column 21, lines 44--48. Appeal Br. 15; see also Reply Br. 3--4. This is not considered persuasive. Demand, or how much film is needed per one relative revolution, is input by a user, as pointed out by Appellants. See Appeal Br. 15. Unlike claim 1, discussed above, claim 18 does not require the controller to determine demand in response to a sensed parameter. Claim 18 merely requires "setting a length of the film web to be dispensed for at least a portion of a relative revolution ... based on demand." Lancaster discloses this limitation. See Lancaster, 23: 11-26. For example, if the film web becomes slack (i.e., payout percentage increases while girth remains constant, causing a change in demand), the controller will cause the pre-stretch roller to slow down more rapidly than the rotational drive system to reduce the length of film being dispensed for at least part of the relative revolution based on a change in demand. See id. at 23:24--26. Claim 136 Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claim 136 under 35 U.S.C. § 102(b) as anticipated by Lancaster. Lancaster 11 Appeal2013-006352 Application 12/349,929 discloses an apparatus (see Lancaster, Abstract; see also id. at 5:56-67, 6:1- 13, 22:55---66) for wrapping a load with packaging material, the apparatus comprising: a packaging material dispenser ("packaging material dispenser" 142), wherein the packaging material dispenser is driven to dispense packaging material by a dispensing drive ("second rotational drive" id. at 22:60) configured to rotate at least one film dispenser roller ("pre-stretch roller" id. at 22:60---61) of the packaging material dispenser; a relative rotation assembly ("rotating ring drive" 122) configured to provide relative rotation between the packaging material dispenser and the load, wherein the relative rotation assembly is driven by a rotation drive ("first rotational drive system" id. at 22:58); and a controller establishing and controlling a ratio between operation of the dispensing drive and the rotation drive (id. at 5:56- 67 (emphasis added) ("setting a ratio of relative rotational speed to pre- stretch speed, electronically maintaining the set ratio ... and electronically varying the set ratio")) such that for at least a portion of a relative revolution between the packaging material dispenser and the load, the packaging material dispenser dispenses a length of packaging material based at least in part on a characteristic of at least a portion of the load (the length dispensed is based on girth, id. at 21 :33--45). Regarding claim 136, Appellants contend Lancaster fails to disclose "a controller that establishes and controls a ratio" between the dispensing and rotation drives. Appeal Br. 16. Appellants assert that a user, not the controller, establishes a ratio between the dispensing and rotation drives. See id. We are not persuaded by this narrow interpretation. Appellants' Specification does not provide a lexicographical definition of "establishes" that supports Appellants' narrow reading of the term. As such, the term 12 Appeal2013-006352 Application 12/349,929 "establishes" is not limited to only setting the initial ratio. At column 5, lines 61---65, Lancaster states "setting a ratio of relative rotational speed to pre-stretch speed, electronically maintaining the set ratio ... and electronically varying the set ratio." In Lancaster, the controller electronically maintains/controls the initial set ratio, and varies the ratio, or establishes a new ratio, which is then maintained/controlled. See Lancaster, 23: 11-26. Further, it is noted that unlike claim 1, claim 136 does not require a sensor, a sensed parameter, or the controller determining demand in response to the sensed parameter. Claim 143 Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claim 143 under 35 U.S.C. § 102(b) as anticipated by Lancaster. Claim 143 is similar to claim 136 above, except that it is drawn to a method. For similar reasons as set forth above with regard to claim 136, claim 143 is rejected as anticipated by Lancaster. We are instructed that [mere] reliance by the Board on the same type of rejection or the same prior art references relied upon by the [E]xaminer, alone, is insufficient to avoid a new ground of rejection where it propounds new facts and rationales to advance a rejection - none of which were previously raised by the [E]xaminer. In re Stepan Co., 660 F.3d at 1345. Accordingly, for the foregoing reasons, we enter new grounds of rejection under 35 U.S.C. § 102(b) with respect to claims 18, 136, and 143 in order to afford Appellants a fair opportunity to respond. No inference should be drawn from the failure to make a new 13 Appeal2013-006352 Application 12/349,929 ground of rejection for the other claims. 1 As the Board's function is primarily one of review, we leave it to the Examiner to determine the patentability of the dependent claims in view of the new grounds of rejection and the prior art. DECISION We REVERSE the decision of the Examiner to reject claims 1-13, 15-29, 31--45, 48-56, 58---60, 62---63, 109-115, and 136-148 as anticipated by Lancaster. We REVERSE the decision of the Examiner to reject claims 1-13, 15-29, 31--45, 48-56, 58---60, 63, 109-115, and 136-148 as anticipated by Cox. We REVERSE the decision of the Examiner to reject claims 14, 30, 46, 47, 57, 61, 62, 64--66, 69, and 149-160 as unpatentable over Cox and Rajala. We REVERSE the decision of the Examiner to reject claims 14, 30, 46, 47, 57, 61, 62, 64--66, 69, and 149-160 as unpatentable over Lancaster and Rajala. We REVERSE the decision of the Examiner to reject claims 67 and 68 as unpatentable over Cox and Fukuda We REVERSE the decision of the Examiner to reject claims 67 and 68 as unpatentable over Lancaster and Fukuda. 1 See 37 CPR§ 41.50(b). See also Manual of Patent Examining Procedure (MPEP), 19 ed., rev. Nov. 2015, § 1213.02 ("Since the exercise of authority under 37 CPR§ 41.50(b) is discretionary, no inference should be drawn from a failure to exercise that discretion."). 14 Appeal2013-006352 Application 12/349,929 We enter new grounds of rejection, pursuant to 37 C.F.R. § 41.50(b), of claims 18, 136, and 143 under 35 U.S.C. § 102(b) as anticipated by Lancaster, as set forth supra.2 This decision contains NEW GROUNDS OF REJECTION pursuant to 37 C.F.R. § 41.50(b), which provides that "new ground[s] of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under§ 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure§ 1214.01. 2 See note 1 supra. 15 Appeal2013-006352 Application 12/349,929 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; 37 C.F.R. 41.50(b) 16 Copy with citationCopy as parenthetical citation