Ex Parte Mack

Patent Trial and Appeal Board

Nov 20, 2017

14777478 (P.T.A.B. Nov. 20, 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.
14/777,478 09/15/2015 Michael Mack MEP-0002 9158
57700 7590 11/20/2017
THE LAW OFFICE OF JAMES E. RULAND, PLC
P.O. BOX 392
FALLS CHURCH, VA 22040
EXAMINER
SHAPIRO, JEFFREY ALAN
ART UNIT PAPER NUMBER
3653
MAIL DATE DELIVERY MODE
11/20/2017 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL MACK
____________

Appeal 2017-011103
Application 14/777,4781
Technology Center 3600
____________

Before LINDA E. HORNER, THOMAS F. SMEGAL, and
GORDON D. KINDER, Administrative Patent Judges.

HORNER, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 1, 4‒6 and 8‒23. Final Office Action
(September 19, 2016) [hereinafter “Final Act.”]. Claims 2, 3, and 7 are
canceled. Appeal Br. 17 (Claims Appendix). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 Heinemack GmbH (“Appellant”) is the applicant as provided in 37 C.F.R.
§ 1.46 and is identified as the real party in interest. Appeal Brief 2 (March
9, 2017) [hereinafter “Appeal Br.”].
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CLAIMED SUBJECT MATTER
Appellant’s claimed subject matter relates to a restaurant system that
includes a transport system for transporting food and/or drinks from a
working area to a guest area by means of gravity. Specification 1 (filed
September 15, 2015) [hereinafter “Spec.”]. Claims 1, 15, and 22 are
independent. Claim 1 is illustrative of the subject matter on appeal and is
reproduced below.
1. A restaurant system (1) comprising:
a) at least one working area (2) for cooking and/or
preparing food and/or drinks, and
b) at least one guest area (3), comprising one or a plurality
of tables for restaurant guests,
c) wherein the at least one working area (2) and guest area
(3) are connected via a transport system (4) for food and/or
drinks,
d) wherein the transport system (4) is designed to transport
food and/or drinks from the at least one working area (2) to the
at least one guest area (3),
e) wherein the transport of food and/or drinks from the at
least one working area (2) to the at least one guest area (3) takes
place via the transport system (4) at least in sections by means of
the force of gravity,
f) wherein the transport system (4) comprises a sliding rail
system comprising one or a plurality of sliding rail paths and/or
comprising at least one sliding rail (5) wherein the sliding rails
(5) form sliding rail surfaces (6) and a transport means (7),
g) wherein the transport means (7) comprises guide
components (8) comprising a sliding surface (9), wherein the
sliding surface (9) and/or the sliding rail surfaces (6) define a
profile (12) by profile means (13) arranged on or at least partially
in the guide components (8) and/or sliding rails (5), and the
profile (12) is formed by elevations (10), for establishing contact
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between sliding rails (5) and transport means (7), and/or by
depressions (11), for reducing the frictional surface and/or for
discharging dirt and/or abrasion products, and the elevations (10)
and/or depressions (11) are formed parallel or vertical to a center
axis (A) or run helically about a center axis (A).
Appeal Br. 16 (Claims Appendix).
REJECTIONS
The Final Office Action includes the following rejections:
1. Claims 1, 4‒6, 8, and 13‒23 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Mack (US 2009/0101445 A1,
published April 23, 2009) and Bernhard (US 2007/0000207 A1,
published January 4, 2007).2
2. Claims 9‒12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Mack, Bernhard, and Chase (US 2004/0120615
A1, published June 24, 2004).
ANALYSIS
First Ground of Rejection: Obviousness over Mack and Bernhard
Claims 1, 4‒6, 13, 14, and 22
Appellant argues claims 1, 4‒6, 13, 14, and 22 as a group. Appeal
Br. 8‒13. We select claim 1 as representative of this group, and claims 4‒6,
13, 14, and 22 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
We address claims 8, 15‒21, and 23, which were argued separately, infra.

2 Although the general statement of the rejection on page 2 of the Final
Office Action includes canceled claims 2 and 3 and omits claims 22 and 23,
the detailed claim-by-claim discussion of the rejection addresses rejected
claims 1, 4‒6, 8, and 13‒23. Final Act. 2‒7.
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The Examiner finds that Mack discloses a restaurant system
substantially as recited in claim 1, including a sliding rail system and
transport means as illustrated in Figures 25 and 26, except that Mack does
not expressly teach the claimed profile means. Final Act. 2‒4. The
Examiner finds that “Bernhard teaches a profile means (3, 6, 9) as illustrated
in figures 1 and 2 and mentioned at paragraph 33.” Id. at 4. In particular,
the Examiner finds that Bernard teaches “the profile (3, 6, 9) is formed by
elevations (3, 9, 12, 14, 15), for establishing contract [sic, contact] between
sliding rails (2) and transport means 7, and/or by depressions (6), for
reducing the frictional surface and/or for discharging dirt and/or abrasion
products.” Id. The Examiner reasons that it would have been obvious “to
have provided a profile as part of a bearing structure as taught by Bernhard,
between Mack’s guide and rail surfaces for the purpose of reducing friction
while eliminating dirt, dust and debris, as mentioned at paragraphs 5 and 38
of Bernhard . . . .” Id.
Appellant contends that the first ground of rejection of claim 1 should
not be sustained because “Bernhard teaches at least some of the elevated
portions 12 and 14 of the elevated portion 9 [are] for securing the bearing
bushing 1, not facilitating movement” and “[o]ne of skill in the art seeking
to improve the movement of the transport aides of Mack would not add the
elevated portions of Bernhard.” Appeal Br. 9‒10.
Although elevations 12 and 14 of bearing bushing 1 are for radially
and axially securing the bearing bushing 1 to the bearing boring 7, bearing
bushing 1 is not secured relative to guide shaft 2 because guide shaft 2 must
remain free to reciprocate axially within bearing bushing 1. Bernhard ¶¶ 33,
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36, 40‒42; see also Ans. 3 (Examiner noting that Bernhard teaches
movement of shaft 2 with respect to bearing bushing 1 at paragraphs 3, 7,
41, 54, 55, and 56). The recesses 6 on the inner boring 3 of bearing bushing
1 allow for cleaning the interface between shaft 2 and bearing bushing 1. Id.
Thus, one motivated by the suggestion in Bernhard of using elevations
and/or recesses between a bearing bushing 1 and a guide shaft 2 to allow for
cleaning the interface between these components, would be led to add
Bernhard’s recesses 6 and elevations (the lands between recesses 6) to
modify Mack’s similar sliding interface between the sliding rail 7 and
transport aid 58. See Ans. 4 (Examiner providing additional explanation of
reasons for proposed modification). For these reasons, we disagree with
Appellant’s contention that one having ordinary skill in the art would not
have been led to the proposed modification based on the teachings in
Bernhard.
Appellant further argues that “elimination of the projections 12 and 14
would allow the bearing bushing to rotate, and change its operation with
respect to the support bushing.” Appeal Br. 10. The Examiner is not
proposing to modify the bearing bushing 1 of Bernhard. Rather, the
Examiner is applying the technique disclosed in Bernhard, of using
elevations and/or recesses to allow for cleaning of a bearing system, to the
bearing system, i.e., the sliding rails and guide components, of Mack.
Appellant further argues that “[a]dding the elevated portions of
Bernhard to Mack’s guide and rail surfaces would secure them together
frustrating Mack’s purpose of delivering meals to customers via the
transport aides.” Appeal Br. 10. This argument fails to address the
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modification proposed by the Examiner. The Examiner is not proposing to
modify Mack’s transport system with the securing elevations 12 and 14 of
Bernhard because Mack’s system does not have a bearing bushing locked to
the guide component. Instead, in Mack, the guide components 63 slide
directly on sliding rails 7, and the Examiner is proposing to modify Mack’s
sliding interface with the recesses and elevations of Bernhard that are used
for cleaning the bearing system.
In response to a suggestion by the Examiner that the lands of
Bernhard surrounding the grooves 6 inside inner boring 3 of Bernhard’s
bearing bushing 1 could be added to the sliding surfaces Mack, Appellant
contends that “[a]lthough Mack discloses elevations formed directly on the
rail, Mack fails to disclose any desirability to form grooves on the rails or
otherwise jeopardize the integrity of the rails” and “Mack fails to teach or
suggest profile means that can be replaced, repaired, and reused.” Appeal
Br. 11. These assertions directly contradict the explicit teaching of Mack.
Specifically, Mack teaches “[r]ecesses and/or elevations, in particular
ribs and/or grooves, make the contact surface between rail and container
smaller” and “[t]his may bring about improved sliding properties.” Mack
¶ 26 (emphasis added). Thus, Mack explicitly discloses forming grooves on
the rails. Further, Mack discloses that “elevations can be formed directly on
the rail or can be additionally fitted, for example by being adhesively bonded
on.” Id. Thus, Mack suggests that the sliding surfaces, i.e., elevations, can
be formed of a material attached to the underlying surface, i.e., the sliding
rail. Mack further teaches adhering to the rails films or veneers, which can
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be removed and replaced by new ones, to repair or change the gliding
properties of the rail system. Id. ¶ 66.
Further, Mack’s teachings are not limited to modifications to a smooth
rail. Rather, Mack also teaches that the sliding surfaces of the containers,
which slide on the rails, can be provided with a comparable film or veneer,
and that the sliding surfaces of the containers “may have elevations which
improve the sliding properties.” Id. ¶¶ 66, 142. Mack also teaches using
different materials for the sliding surfaces (e.g., the elevations) and the
underlying surface (e.g., the rail or guide component). In particular, Mack
discloses that “only the actual sliding surfaces [of the guide components of
the transport aides] hav[e] to be formed from slidable material and the
remainder may be composed of any desired, even different materials.” Id.
¶ 249. Mack also suggests that “guide components 63 may be equipped on
their inside, in particular on their sliding surface, with wheels, rollers, balls
or (ball or needle) bearings in order to permit sliding even at a relatively
small gradient.” Id. ¶ 270.
Appellant argues that “[a]lthough Mack discloses that the guides can
be modified on their sliding surface with wheels, rollers, balls, or ball or
needle bearings (paragraph 270 at page 22), Mack fails to teach or suggest
modifying its guides with ribs and/or grooves.” Reply Br. 4. Once again,
Appellant has mischaracterized the disclosure of Mack. Mack teaches that
the sliding surfaces of the containers, which slide on the rails, can be
provided with a comparable film or veneer. Mack ¶ 66. Mack further
discloses that the sliding surface of containers transported on the rail system
“may have elevations which improve the sliding properties.” Id. ¶ 142.
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In sum, we find ample suggestion explicit in Mack to add elevations
and/or depressions to the sliding surfaces of the sliding rails and/or the guide
components reducing the frictional surface. Further, we agree with the
Examiner’s findings that Bernhard teaches using elevations and grooves on a
sliding surface for discharging dirt and/or abrasion products from the sliding
shaft and corresponding sliding surface of the bearing bushing, and that such
teaching would have led one having ordinary skill in the art to modify
Mack’s sliding surfaces using the grooves and lands technique of Bernhard.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“if a technique has
been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill”).
For these reasons, we find no error in the Examiner’s proposed
modification of Mack to add the profile means of Bernhard. Accordingly,
we sustain the rejection of claims 1, 4‒6, 13, 14, and 22 as unpatentable over
Mack and Bernhard.

Dependent Claim 8
Claim 8 depends from claim 1 and recites that “the profile means (13)
differ from the guide components (8) and/or sliding rails (5) with regard to
the sliding properties of their material.” Appeal Br. 17 (Claims Appendix).
Appellant argues that “Bernard fails to disclose adding elevated portions or
inserts to a transport aide to change the coefficient of friction between
sliding parts, particularly choosing a material with more friction for heavy
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loads or less friction for light loads, as contemplated in at least one
embodiment of the present invention.” Id. at 11.
The Examiner notes that Mack teaches using various materials to
change the coefficient of friction. Ans. 11 (citing Mack ¶¶ 25‒27, 57‒60,
70, 249, and 268). We agree with the Examiner’s finding. For instance, as
discussed supra, Mack teaches using different materials for the sliding
surfaces (e.g., the elevations) and the underlying surface (e.g., the rail or
guide component). Mack ¶ 249 (teaching that “only the actual sliding
surfaces [of the guide components of the transport aids] hav[e] to be formed
from slidable material and the remainder may be composed of any desired,
even different materials”). For these reasons, we sustain the rejection of
claim 8 as unpatentable over Mack and Bernhard.

Claims 15‒21
Independent claim 15 specifically recites that the profile means is
“arranged on or at least partially in the guide component.” Appellant
presents similar arguments as those addressed supra in our analysis of claim
1, which we find unavailing. Appeal Br. 12. To the extent Appellant’s
arguments are specifically directed to a failure of Mack to disclose “utilizing
grooves and lands on its guides” (id.), such an assertion is directly contrary
to the explicit teachings of Mack. For instance, as discussed in detail supra,
Mack teaches that the sliding surfaces of the containers, which slide on the
rails, can be provided with a comparable film or veneer, and that the sliding
surfaces of the containers “may have elevations which improve the sliding
properties.” Id. ¶¶ 66, 142. This teaching, although directed to containers
27 rather than the transport aides 58 of Figures 25 and 26, at least suggests
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that the grooves and lands can be disposed on the guide component, rather
than on the sliding rails. Dependent claims 16‒21, which were not argued
separately from claim 15, fall with claim 15. See 37 C.F.R.
§ 41.37(c)(1)(iv). For these reasons, we sustain the rejection of claims 15‒
21 as unpatentable over Mack and Bernhard.

Dependent Claim 23
Claim 23 depends from claim 22 and recites “the elevations and/or
depressions are formed with a trapezoidal cross section.” Appeal Br. 20
(Claims Appendix). Appellant argues that the combination of Mack and
Bernhard fail to disclose this feature. Id. at 13. The Examiner responds that
Mack discloses the projections and elevations have shapes such as “studs or
scores or elevations,” and Bernhard illustrates elevations with rectangular
cross-sections, which are a subset of a trapezoid. Ans. 14 (citing Mack
¶ 268). The Examiner further reasons that the claimed trapezoidal cross-
section is “one of a number of limited options available to an ordinarily
skilled artisan.” Id.
We agree with Appellant that Bernhard’s elevations are not
trapezoidal. Even were the elevations between recesses 6 determined to be
rectangular, a rectangle is not a subset of a trapezoid. Rather, a rectangle is
a subset of a parallelogram.
Nonetheless, we agree with the Examiner’s determination of
obviousness based on the claimed trapezoid being one of a number of
limited choices. Appellant argues that a rationale based on design choice is
precluded because the combined teachings of Mack and Bernhard serve to
pass a cleaning and sterilization medium, whereas the claimed trapezoidal
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cross-section of the elevations and/or depressions prevent the profile means
from falling or slipping out and make it possible to click the profile means
into a recess. Reply Br. 6 (citing In re Gal, 980 F.2d 717, 719 (Fed. Cir.
1992)).
Claim 23 does not limit the trapezoidal cross section of the elevations
and/or depressions to a particular orientation such that it necessarily
functions in the manner disclosed in the Specification. For instance, the
claim language also encompasses a depression with a trapezoidal cross-
section in which the wider end of the trapezoid faces outwardly on the
sliding rail. Thus, Appellant’s argument is not commensurate with the scope
of claim 23.
Further, the Examiner’s stated reason to modify Mack with the
elevations and recesses of Bernhard is for reducing friction while
eliminating dirt, dust and debris. Final Act. 4. Appellant has not
demonstrated how an elevation or depression having a trapezoidal cross-
section would perform these functions differently than the recesses and
elevations having the cross-sections shown in Bernhard. For these reasons,
we sustain the rejection of claim 23 as unpatentable over Mack and
Bernhard.

Second Ground of Rejection: Obviousness over Mack, Bernhard, and Chase
Claims 9, 11, and 12
Appellant argues claims 9, 11, and 12 as a group. Appeal Br. 14. We
select claim 9 as representative of the group, and claims 11 and 12 stand or
fall with claim 9. See 37 C.F.R. § 41.37(c)(1)(iv). Claim 9 depends from
claim 1 and recites, in relevant part, that the guide components and/or
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sliding rails “have recesses (14) for receiving the profile means (13).”
Appeal Br. 17 (Claims Appendix). The Examiner proposes to modify Mack
to use profile means received in recesses based on the teaching in Chase to
use profile means (32, 34) received in recesses formed in guide components
(22) and/or sliding rails (16) for the purpose of changing the profiles upon
wear and enabling a longer usage life for the entire bearing structure. Final
Act. 8.
Appellant contends that Chase’s “inserts 32 and 34 are used, at least
in part, to prevent movement,” and “[o]ne of skill in the art seeking to
improve the movement of the transport aides of Mack would not add the
inserts of Chase that are designed to prevent movement.” Appeal Br. 14.
The Examiner finds that “Chase is merely used for its teaching of a
recess (19, 20) into which an insert (32, 34) is placed.” Ans. 15 (“Whether
or not the inserts facilitate transport is not material to the teaching of solving
the problem of providing a recess into which a component may be inserted
or removed for replacing.”). The Examiner further notes that Mack teaches
repairing or replacing the sliding surface. Id. (citing Mack ¶ 66).
Although Chase’s inserts 32, 34 block rotational movement of the
bearing 30 about shaft axis 11a, they are not intended to block sliding
movement of bearing 30 along shaft axis 11a. Chase ¶¶ 33, 35. As such,
implementation of inserts 32, 34 in Mack for the purposes of
accommodating wear, as suggested by the Examiner, would not prevent
movement of the guide components along the sliding rail in Mack’s
transport system. We note, also, that Mack teaches using a different material
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for the sliding surface than for the remainder of the rail and/or guide
component. Mack ¶ 249.
For these reasons, we sustain the rejection of claims 9, 11, and 12 as
unpatentable over Mack, Bernhard, and Chase.

Claim 10
Appellant argues that each of Chase’s inserts have a curved side and
do not have the shape of a trapezoid. Appeal Br. 15. The Examiner relies
on Bernhard for teaching trapezoidal recesses and elevations. Ans. 15.
Claim 10 does not limit the trapezoidal cross section of the recesses to a
particular orientation such that it necessarily functions in the manner
disclosed in the Specification. Thus, Appellant’s argument is not persuasive
for the same reasons discussed above in our analysis of claim 23.

DECISION
The decision of the Examiner rejecting claims 1, 4‒6, and 8‒23 is
affirmed.
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