11057004 (B.P.A.I. Mar. 17, 2011)

Ex Parte Lewis et al

Board of Patent Appeals and InterferencesMar 17, 2011

11057004 (B.P.A.I. Mar. 17, 2011)

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. 11/057,004 02/11/2005 William Christopher Lewis AFC-102 5017 7590 03/17/2011 Douglas H. Pauley Pauley Petersen & Erickson Suite 365 2800 West Higgins Road Hoffman Estates, IL 60195 EXAMINER SINGH, KAVEL ART UNIT PAPER NUMBER 3651 MAIL DATE DELIVERY MODE 03/17/2011 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 WILLIAM CHRISTOPHER LEWIS, WILLIAM JAMES LEWIS, LAMBERT ALLEN TERPSTRA, and BARTON ROY LEWIS SR. ____________________ Appeal 2009-011527 Application 11/057,004 Technology Center 3600 ____________________ Before: WILLIAM F. PATE III, STEVEN D.A. MCCARTHY, and STEFAN STAICOVICI, 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 2009-011527 Application 11/057,004 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1- 14 and 17-30. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. The claims are directed to conveyor belts with thin film sensor- activating coating. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A conveyor belt device comprising: a conveyor belt substrate having opposed first and second surfaces; and a detectable coating overlying and chemically adhered to a selected portion of the conveyor belt substrate first surface. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Strader Sasahara Takagi Fujimoto US 4,621,727 US 6,127,822 US 6,679,798 B1 US 6,758,779 B2 Nov. 11, 1986 Oct. 3, 2000 Jan. 20, 2004 Jul. 6, 2004 Madaras Levine Stebnicki Armstrong US 2003/0012867 A1 US 2004/0033856 A1 US 2004/0129538 A1 US 2005/0006208 A1 Jan. 16, 2003 Feb. 19, 2004 Jul. 8, 2004 Jan. 13, 2005 REJECTIONS Claims 1-4, 6, 23, 24, 28-30 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Sasahara. Ans. 3. Although the rejection of claims 1, 22-25 and 28 under 35 U.S.C. § 102(b) as being anticipated by Strader appears in the Answer and in the Appeal 2009-011527 Application 11/057,004 3 Final Rejection, the prosecution history indicates the Examiner has withdrawn this rejection. Ans. 3; Final Rej. 3; Interview summary entered April 20, 2007. The details of this rejection are not discussed in the Brief or the Answer. The status of claims 22 and 25 is unknown. Claim 5 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Sasahara and Madaras. Ans. 3. Claims 7, 9 and 11 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Sasahara and Takagi. Ans. 3. Claims 8, 10 and 14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Sasahara, Takagi and Stebnicki. Ans. 3. Claim 10 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Sasahara, Takagi and Strader. Ans. 4. Claim 13 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Sasahara and Fujimoto. Ans. 4. Claims 17-19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Sasahara and Armstrong. Ans. 4. Claims 20, 21, 26 and 27 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Sasahara and Levine. Ans. 4. The Examiner indicated that claims 15 and 16 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112, 2nd paragraph, and to include all of the limitations of the base claim and any intervening claims. Final Rej. 8. However, there is no rejection under 35 U.S.C. 112, 2nd paragraph set forth in the Final Rejection or in the Answer. Thus, the status of claims 15 and 16 is unknown. Claim 12 is not mentioned in the Final Rejection or the Answer. The status of claim 12 is also unknown. Appeal 2009-011527 Application 11/057,004 4 OPINION Appellants argue claims 1-4, 6, 23, 24, and 28-30 as a group. Br. 6. Apparatus claims 1, 24 and 30 are argued together as a subgroup but separate comments are provided regarding claim 30. Method claims 23 and 28 are also argued as a subgroup. The arguments presented regarding claims 23 and 28 are essentially the same as those presented regarding claim 30. We select claim 1 as the representative claim of claims 1-4, 6, 24, and 29, and claim 23 as the representative claim of claims 23, 28 and 30. See 37 C.F.R. § 41.37(c)(1)(vii). Of the remaining claims, only claim 5 is separately argued. The rejections of claims 1-11, 13, 14, 17-21, 24, 26, 27 and 29 are affirmed. The Examiner determined that Sasahara discloses a conveyor belt device including a conveyor belt substrate. Final Rej. 2. The Examiner reads Sasahara’s sheets 32 as the claimed “conveyor belt substrate.” Id. Appellants contend that the Examiner erred in rejecting claim 1 as being anticipated by Sasahara for two reasons. First, Sasahara never mentions “conveyor belts” and second, Sasahara’s sheet 32 is too thin to be reasonably regarded as a “conveyor belt device” or “conveyor belt substrate.” Br. 7-8. Appellants’ arguments are not persuasive. First, claim 1 requires a “conveyor belt device” comprising a “conveyor belt substrate.” Claim 1 does not require a “conveyor belt” itself. Therefore, Appellants’ argument is not commensurate with the scope of claim 1, and, for that reason, does not demonstrate error in the Examiner’s rejection. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (limitations not appearing in the claims cannot be relied upon for patentability). Although a belt may be the structure used as the substrate in Appellants’ preferred Appeal 2009-011527 Application 11/057,004 5 embodiment, limitations from the Specification are not read into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). The Examiner found that Sasahara’s sheet 32 is made of a material commonly used in conveyor belts. Ans. 4; See Sasahara, col. 9, ll. 22-26; Fig. 13. Appellants have not shown this finding to be erroneous. Thus we conclude it was reasonable to read Sasahara’s sheet as a “conveyor belt substrate” forming part of a “conveyor belt device” even though Sasahara does not explicitly mention that the sheet could be used for that particular purpose. Regarding the thickness of Sasahara’s sheet, Appellants contend that a thickness of 300 microns would make the sheet unsuitable for use as a conveyor belt substrate. Br. 7, see Sasahara, col. 9, ll. 22-26. Examples in Appellants’ Specification employ belts having thicknesses between .007 and .014 inches, which corresponds to 178 to 356 microns. Spec. 15:7-11. We decline to interpret the term “conveyor belt substrate” in a manner that may contradict a preferred embodiment in Appellants’ Specification. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (claim interpretation excluding the preferred embodiment is rarely, if ever, correct and would require highly persuasive evidentiary support). Appellants also contend that a length of 60 millimeters would make the sheet unsuitable for use as a conveyor belt. Br. 7. However, as discussed above, a conveyor belt itself is not what is claimed. Furthermore, although Appellants do not specify exemplary lengths in the Specification, the prior art devices upon which they seek to improve have lengths of 1.75 to 2.5 inches, which corresponds to 44 to 64 millimeters. Spec. 3:4, 18. Once again, Appellants are suggesting that the claim should be construed to exclude subject matter that the Specification indicates as within the scope of the invention. Appeal 2009-011527 Application 11/057,004 6 Appellants’ argument concerning claim 5 is premised upon the notion that since Sasahara does not teach a conveyor belt there would be no reason to combine it with Madaras. Br. 9. This argument is also unpersuasive. As discussed above, the claimed invention is not limited to conveyor belts themselves. The scope of the relevant prior art need not be restricted to references dealing only with belts. Both references are generally concerned with providing feedback from within a layer adhered to a substrate. Madaras may list conveyor belts as one of several applications for the invention, but Madaras clearly does not seek to limit application of the invention to conveyor belts. P. 4, para. [0043]. We see no reason to impose a requirement that Sasahara discuss conveyor belts in order to support the conclusion that one of ordinary skill in the art would have found it obvious to combine the teachings of Sasahara and Madaras. In addition, contrary to the Examiner’s finding, Sasahara does, in fact, disclose that glass fiber, or “fiberglass” as recited in claim 5, may form part of the substrate. Col. 9, ll. 3-5. Sasahara therefore anticipates claim 5. Since anticipation is the epitome of obviousness, there is no need to rely upon any teachings from Madaras in order to conclude that the subject matter of claim 5 would have been obvious. See In re Baxter Travenol Labs, 952 F.2d 388, 391 (Fed. Cir. 1991). Since no separate arguments are presented concerning the rejections of claims 7-11, 13, 14, 17-21, 24, 26, 27 and 29, the rejections of these claims are summarily affirmed. The rejections of claims 23, 28 and 30 are reversed. Regarding the rejections of claims 23, 28 and 30, Appellants contend the Examiner erred in rejecting these claims as being anticipated by Sasahara Appeal 2009-011527 Application 11/057,004 7 because Sasahara fails to disclose a “primer.” Br. 8-9. We agree. Sasahara discloses thermosetting adhesives but does not discuss a primer. See col. 3, ll. 48-55. “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987) (citations omitted). “[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). Since the Examiner has not discussed this limitation in the Final Rejection or the Answer and no such structure is apparent in Sasahara, the Examiner has failed to meet this burden. Accordingly, we must reverse the rejection of claims 23, 28, and 30. DECISION The rejections of claims 1-11, 13, 14, 17-21, 24, 26, 27 and 29 are affirmed. The rejections of claims 23, 28 and 30 are reversed. 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). AFFIRMED-IN-PART nlk Appeal 2009-011527 Application 11/057,004 8 Douglas H. Pauley Pauley Petersen & Erickson Suite 365 2800 West Higgins Road Hoffman Estates IL 60195