11272294 (P.T.A.B. Jan. 29, 2014)

Ex Parte Marbacher

Patent Trial and Appeal BoardJan 29, 2014

11272294 (P.T.A.B. Jan. 29, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte BEAT MARBACHER ____________________ Appeal 2011-012123 Application 11/272,294 Technology Center 3600 ____________________ Before: STEFAN STAICOVICI, JAMES P. CALVE, and WILLIAM A. CAPP, Administrative Patent Judges. Opinion for the Board filed by Calve, Administrative Patent Judge. Concurring Opinion filed by CAPP, Administrative Patent Judge. CALVE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from the rejection of claims 1-17 and 24. App. Br. 5. Claims 18-23 have been cancelled. Id. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2011-012123 Application 11/272,294 2 CLAIMED SUBJECT MATTER Claim 1, the sole independent claim on appeal, is reproduced below. 1. An apparatus for processing flat articles, comprising: a first conveyor adapted to convey the flat articles in a direction of a product flow; and a separator adapted to divide the product flow into at least two partial flows, the separator comprising a plurality of containers arranged in a row, each container adapted to receive a flat article from the first conveyor before the product flow is divided into the at least two partial flows, wherein the containers are displaceable substantially transverse to the direction of the flow to form the partial flows while simultaneously moving substantially parallel to the direction of the product flow. REJECTION Claims 1-17 and 24 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Honegger (US 6,786,328 B2; iss. Sept. 7, 2004) and Aterianus (US 3,933,236; iss. Jan. 20, 1976). ANALYSIS The Examiner found that Honegger teaches a first conveyor adapted to convey flat articles in a direction of flow overlapping one another and a separator adapted to divide the product flow into at least two partial flows by individually gripping elements and displacing transversely to the conveying direction. Ans. 3, 7. The Examiner found that Aterianus teaches a separator comprising a plurality of containers arranged in a row where each container is adapted to receive a flat article from the first conveyor before the product flow is divided into the at least two partial flows. Ans. 3. The Examiner determined that it would have been obvious to use the plurality of containers Appeal 2011-012123 Application 11/272,294 3 in the conveyor of Honegger to replace the grippers 5.1, 5.2 and to provide additional support to the articles. Ans. 4, 7. Appellant argues that the Examiner’s reason for modifying Honegger with Aterianus lacks a rational underpinning because Honegger teaches that the grippers are the most important advantage of the system as they allow all elements of the supply stream to be gripped in essentially the same location, such as a central zone, before the products are moved relative to one another. App. Br. 10-11. Appellant also argues that Honegger discloses the device as being adaptable in a simple manner to vary characteristics of the elements of a supply stream and different requirements of the stream transformation so that grippers 5.1, 5.2 are tailored to hold irregular stacks of objects that do not conform to other holding mechanisms such as standard containers, and therefore a skilled artisan would not have had a reason to modify Honegger with containers. App. Br. 11. As a result, Appellant contends that replacing Honegger’s grippers with containers destroys the purpose or functionality of Honegger’s device because clamping elements 5.1, 5.2 can be used to handle streaming elements other than flat objects and thus provide flexibility in handling various types of stream elements over containers. Reply Br. 5-6. The Examiner has not established, by evidence or technical reasoning, a sufficient factual basis to reasonably support the conclusion that a skilled artisan would have had a reason to replace the grippers of Honegger with the containers of Aterianus when Honegger discloses that the grippers provide important advantages by allowing the system to grip elements of the supply stream in the same location and handle groups of objects with different formats or groups of elements that are irregularly stacked. Col. 4, l. 66 to col. 5, l. 22; see figs. 3-7. The Examiner’s determination that it would have Appeal 2011-012123 Application 11/272,294 4 been obvious to use the container assembly 26 of Aterianus in Honegger’s system because the container assembly 26 will maintain and support an object position as shown in Figure 4 of Aterianus is not supported by a rational underpinning because the containers 26 of Aterianus are used to support single articles such as ice cream bars, whereas Honegger’s grippers 5.1, 5.2 are designed to support irregular stacks of elements like those in Figures 3-7 of Honegger in a fixed relationship. We do not sustain the rejection of claims 1-17 and 24. DECISION We REVERSE the rejection of claims 1-17 and 24. REVERSED mls Appeal 2011-012123 Application 11/272,294 5 CAPP, Administrative Patent Judge, concurring. I write separately to state my reason for concurring in the result reached by my colleagues. Here, Honegger uses grippers throughout the supply stream, including throughout the process of separating from a single stream to two parallel supply streams. See Honegger, Fig. 1. Aterianus transitions from retaining items (ice cream bars) with grippers to depositing the items in containers, but does so without separating the items into two parallel supply streams. See Aterianus, Figs. 1-4. The instant invention contains mechanical features that accomplish two objectives in close succession. First, the items are passed from grippers to containers. See Fig. 1,2. Next, the supply stream is separated into two parallel streams. Id. Our supervising court admonishes us that “invention” is frequently the process of combining prior art in a nonobvious manner. See In re Rouffet, 149 F.3d 1350, 139 (Fed. Cir. 1998). In my opinion, the mechanical configuration in the instant invention of transferring items from grippers to containers and then, shortly thereafter, separating the items into two, parallel supply streams results in a significant difference between the prior art and the claimed invention. See Kegel Co., Inc. v. AMF Bowling, Inc., 127 F.3d 1420, 1431 (Fed. Cir. 1997) (patent non-obvious where there are significant differences between the mechanical configuration of the prior art and the claimed invention); See also In re Bond, 910 F.2d 831, 834 (Fed. Cir. 1990) (reversing Board where there were critical differences between prior art and the claimed invention) . I concur with my colleagues that the Examiner has not established that the subject matter of the claimed invention is obvious.