Ex Parte MunroDownload PDFPatent Trial and Appeal BoardApr 3, 201412156399 (P.T.A.B. Apr. 3, 2014) Copy Citation 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. 12/156,399 05/29/2008 Roylston R. Munro 2744 45662 7590 04/04/2014 G. TURNER MOLLER 711 N. CARANCAHUA, SUITE 720 CORPUS CHRISTI, TX 78401 EXAMINER LOWE, MICHAEL S ART UNIT PAPER NUMBER 3652 MAIL DATE DELIVERY MODE 04/04/2014 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 ROYLSTON R. MUNRO ____________ Appeal 2012-009356 Application 12/156,399 Technology Center 3600 ____________ Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and FRANCES L. IPPOLITO, Administrative Patent Judges. IPPOLITO, Administrative Patent Judge DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision finally rejecting claims 1-28. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2012-009356 Application 12/156,399 2 CLAIMED SUBJECT MATTER1 Claims 1, 9, 162, 23 and 28 are the independent claims on appeal. Claim 1 is illustrative of the subject matter on appeal, and recites: 1. A cotton module vehicle comprising a tiltable bed having a chain bed conveyor thereon to transport cotton modules, at least partially covered with a plastic wrapper, along first and second oppositely directed paths of movement onto and off the bed, the chain bed conveyor comprising a load supporting frame, and a multiplicity of endless roller chains providing a series of interconnected link pairs and rollers in engagement with the frame for supporting a cotton module thereon, at least some of the link pairs having an inverted U- shaped pusher element including a central pusher section extending across an upper surface of the link pairs, the pusher element being arcuately convex toward the first direction of travel, the pusher element being arcuately convex toward the second direction of travel, 1 On August 8, 2011, Appellant submitted claim amendments subsequent to the filing of Appellant’s Notice of Appeal. Amendment (filed Aug. 8, 2011). In a follow-up Advisory Action, the Examiner entered the August 8, 2011 amendments and commented that “[t]he entered amendment merely corrects redundancies and minor errors in the claims and specification.” Advisory Action (mailed Sept. 30, 2011). The Claims Appendix in Appellant’s Appeal Brief does not include these amendments. Ans. 3; see App. Br., Claims App’x. In this appeal, we review claims 1-28 presented in the August 8, 2011 Amendment as these amendments were entered by the Examiner. Advisory Action (mailed Sept. 28, 2011). 2 Under “Status of Claims,” Appellant indicates that claims 1-28 are on appeal while at the same time annotating claim 16 as cancelled. App. Br. 5. We include claim 16 in our review as the cancellation appears to be a misstatement. Amendment (filed Aug. 8, 2011). Appeal 2012-009356 Application 12/156,399 3 the central pusher section being arcuately convex upwardly in a plane parallel to a direction of movement of the chains, the pusher element being adapted to support plastic wrapped cotton modules thereon and propel the plastic wrapped cotton modules along the path of movement without tearing the wrapper. App. Br., Claims App’x; see also Amendment (filed Aug. 8, 2011). REJECTIONS3 Claims 1-28 are rejected under 35 U.S.C. § 102(f) on the ground that Appellant did not invent the claimed subject matter, as evidenced by US Application No. 12/156,400. Claims 1-8 and 16-28 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Pereira (US 4,081,094, iss. Mar. 28, 1978), Vidondo (US 6,598,732 B2, iss. Jul. 29, 2003), Middelburg (US 5,806,659, iss. Sept. 15, 1998), Horansky (US 4,541,332, iss. Sept. 17, 1985), and Standlee (US 2005/0055996 A1, pub. Mar. 17, 2005). Claims 9-15 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Pereira, Vidondo, Middelburg, Horansky, Standlee, and Bussiere (US 5,340,040, iss. Aug. 23, 1994). Appellant relies on: (1) Declaration of Jimmy R. Stover (hereinafter “Stover Decl.”); and (2) Declaration of Roylston R. Monroe (“Monroe Decl.”), both of which were filed under 37 C.F.R. § 1.132. 3 The Examiner withdrew rejections under 35 U.S.C. § 101 against claims 1- 28. Ans. 4. Appeal 2012-009356 Application 12/156,399 4 ANALYSIS Rejection of claims 1-28 under section 102(f) The instant case and US Application No. 12/156,400 (hereinafter “the ‘400 patent application”) were both filed on May 29, 2008. See App. Br. 4. Both applications appear to share the same written description and drawings, but differ in recited claims and listed inventorship. The instant case lists Roylston R. Munro as the sole inventor while the ‘400 patent application lists Jimmy R. Stover as the sole inventor. Stover Equipment Company, Inc. is the assignee in both cases. App. Br. 3-4. In both cases, the Examiner has questioned the correctness of the listed inventorship and issued rejections under section 102(f). Applicant in each respective application has appealed the Examiner’s decision rejecting the pending claims. The appeal in the ‘400 patent application has been designated Appeal No. 2012-002893. Under 35 U.S.C. § 102(f), a person shall be entitled to a patent unless he did not himself invent the subject matter sought to be patented. “Where it can be shown that an applicant ‘derived’ an invention from another, a rejection under 35 U.S.C. 102(f) is proper.” MPEP § 2137 (citing Ex parte Kusko, 215 USPQ 972, 974 (Bd. App. 1981) (“most, if not all, determinations under section 102(f) involve the question of whether one party derived an invention from another”).). Section 2137 of the MPEP further provides that [w]here there is a published article identifying the authorship (MPEP § 715.01(c)) or a patent identifying the inventorship (MPEP § 715.01(a)) that discloses subject matter being claimed in an application undergoing examination, the designation of authorship or inventorship does not raise a presumption of inventorship with respect to the subject matter disclosed in the article or with respect to the subject matter disclosed but not Appeal 2012-009356 Application 12/156,399 5 claimed in the patent so as to justify a rejection under 35 U.S.C. 102(f). However, it is incumbent upon the inventors named in the application, in reply to an inquiry regarding the appropriate inventorship under subsection (f), or to rebut a rejection under 35 U.S.C. 102(a) or (e), to provide a satisfactory showing by way of affidavit under 37 CFR 1.132 that the inventorship of the application is correct in that the reference discloses subject matter invented by the applicant rather than derived from the author or patentee notwithstanding the authorship of the article or the inventorship of the patent. In re Katz, 687 F.2d 450, 455, 215 USPQ 14, 18 (CCPA 1982) (inquiry is appropriate to clarify any ambiguity created by an article regarding inventorship, and it is then incumbent upon the applicant to provide “a satisfactory showing that would lead to a reasonable conclusion that [applicant] is the…inventor” of the subject matter disclosed in the article and claimed in the application). MPEP § 2137 (emphasis added). The Examiner found that the ‘400 patent application “has the same written specification and the drawings with all the claimed features and does not have this applicant [Jimmy R. Stover] listed in the oath as an inventor. Further the claims of the other application meet the limitations of this application’s claims.” Ans. 5. Appellant responded by submitting the Declarations of Jimmy R. Stover and Roylston R. Munro under 37 C.F.R. § 1.132. App. Br., Evidence App’x. Mr. Stover’s Declaration states that he met Mr. Munro while traveling in Australia “selling equipment to remove plastic wrapping from round cotton modules.” Stover Decl. at ¶ 2. Mr. Stover goes on to state that [i]n order to reduce the generation of small plastic pieces from the plastic wrapping, Roylston Munro invented the broad idea of a pusher link having a round rod welded to some of the link pairs. App App Stov prov Mun eal 2012-0 lication 12 Roylston conversa his, a c prototyp showing sides of the links After re resulting er Decl. at Mr. Mun ides that I met J equipme modules In order the plast having a I disclo conversa After rec on this d [the ‘399 ro Decl. at 09356 /156,399 R. Munr tion and s opy of w e was basi a welded the roller c . ceiving th in the cha ¶¶ 4-6. ro’s Decla immy R. nt to rem . to reduce ic wrappin round rod sed this c tion and s eiving thi esign resu patent ap ¶¶ 2, 4-6. o disclosed ent me a p hich is a cally as fo chain link hain links is inform in disclos ration ech Stover w ove plas the gener g, I inven welded to oncept to ent him a p s photogra lting in th plication]. 6 this conc hotograph ttached. A llows: cut so the and were ation, I i ed in this a oes Mr. S hen he ca tic wrapp ation of s ted the br some of t Jimmy R hotograph ph, Jimmy e chain dis ept to me of an ear drawing ends slipp welded to mproved pplication tover’s De me to Au ing from mall plast oad idea o he link pa . Stover of an ear R. Stover closed in t in a telep ly prototy of the ed over th the sides o on this de . claration a stralia se round c ic pieces f a pusher irs. in a telep ly prototyp improved his applic hone pe of early e f sign nd lling otton from link hone e. ation Appeal 2012-009356 Application 12/156,399 7 The Examiner reviewed both Declarations, but ultimately found that “Appellant has not provided any factual evidence that [the subject invention] was not invented by another.” See Ans. 9. Appellant relies on the submitted Declarations to argue that Mr. Munro and Mr. Stover are not joint inventors because These efforts were done independently, i.e. Mr. Munro did not discuss his concept with Mr. Stover until a working prototype had been completed. Mr. Stover did not discuss his efforts with Mr. Munro until his efforts were completed. App. Br. 20-21. Initially, we are not apprised of any Examiner error because Appellant’s assertions are not supported by the record. First, the Stover and Munro Declarations establish that Mr. Munro and Mr. Stover communicated on at least three occasions: (1) the parties met in Australia; (2) the parties discussed Mr. Munro’s “concept” in a telephone conversation; and (3) Mr. Munro sent Mr. Stover a photograph of an early prototype. Stover Decl. at ¶¶ 2, 5; Munro Decl. at ¶¶ 2, 5. Looking closely at the Declarations, we do not see where Appellant has established that “Mr. Munro did not discuss his concept with Mr. Stover until a working prototype had been completed,” as asserted by Appellant. The Declarations only indicate that Mr. Stover received a photograph of an early prototype from Mr. Munro, but does not establish that an early prototype was completed before the described telephone conversation. Stover Decl. at ¶ 5; Munro Decl. at ¶ 5. Second, we also do not see where the record supports Appellant’s assertion that “Mr. Stover did not discuss his efforts with Mr. Munro until his efforts were completed.” The Declarations only indicate that after receiving information Appeal 2012-009356 Application 12/156,399 8 regarding Mr. Munro’s “concept” and the photograph of Mr. Munro’s early prototype, Mr. Stover “improved on this design….” Stover Decl. at ¶¶ 5-6; Munro at ¶¶ 5-6. Both the Munro and Stover Declarations are silent on whether Mr. Stover did or did not discuss his efforts with Mr. Munro until his efforts were completed. Id., generally. Appellant additionally contends that “neither party communicated his concept to the other until it was completed or discussed the problem he was then facing with the other.” App. Br. 21. This assertion is also not supported by the record. Collectively, the Munro and Stover Declarations indicate that: (1) Mr. Stover was aware of a problem where conventional chain cut plastic; (2) Mr. Munro conceived an invention to solve this problem; (3) Mr. Stover discussed Mr. Munro’s “concept” in a telephone conversation; and (4) Mr. Stover improved Mr. Munro’s design. Stover Decl. at ¶¶ 2-6; Munro Decl. at ¶¶ 2-6. Nowhere does Mr. Stover state that he and Mr. Munro did not discuss “the problem he was then facing with the other” until “his concept…was completed.” Id., generally. At best, on the record before us, it is unknown if the parties discussed any problems at all or when such discussions took place. Appellant also asserts that Mr. Stover did not like the connection between the ends of the round rod and the outside of the link pairs and refined this invention by lengthening the end pieces 52, 54 along the sides of the link pairs 30 and then bevelling [sic] the ends of the end pieces. App. Br. 20. While it may well be that Mr. Stover “did not like the connection between the ends of the round rod and the outside of the link pairs…,” this Appeal 2012-009356 Application 12/156,399 9 assertion is not supported by the record. In his Declaration, Mr. Stover states only that he “improved on this design resulting in the chain disclosed in this application.” Stover Decl. at ¶ 6. Next, Appellant argues that “[i]t is not understood how the Examiner can come to” the conclusion of joint inventorship “when the only evidence is that Mr. Munro is the inventor of the broad concept and Mr. Stover is the inventor of certain improvements.” App. Br. 21. We are not apprised of any Examiner error by this argument. It is incumbent upon Appellant to “provide a satisfactory showing by way of affidavit under 37 CFR 1.132 that the inventorship of the application is correct . . .” MPEP § 2137 (emphasis added). As discussed supra, Appellant’s arguments are based on asserted facts that are not supported by the record, particularly the Stover and Munro Declarations. Based on the record before us, we are not persuaded that the Examiner erred in finding that “Appellant has not provided any factual evidence that [the subject invention] was not invented by another.” See Ans. 9. Appellant further contends that Mr. Munro “believes the embodiment disclosed in this application is the best mode of carrying out his invention.” App. Br. 21; see also Munro Decl. at ¶ 7. Appellant asserts that Mr. Stover’s invention is an improvement or modification of Mr. Munro’s. See App. Br. 21-25. Appellant appears to be arguing that the instant application and the ‘400 patent application were drafted to share the same specification in order to comply with the best mode requirement. Id. Nevertheless, Appellant’s efforts to comply with best mode does not absolve Appellant from the separate requirement of providing a “satisfactory showing by way of affidavit under 37 CFR 1.132 that the inventorship of the application is Appeal 2012-009356 Application 12/156,399 10 correct….” MPEP § 2137. As such, we are not persuaded of any Examiner error on this basis. Appellant additionally argues that “[t]he Examiner has taken the same position in the application S.N. 12/156,400, the result of which is that no one is the inventor.” App. Br. 23; see also Reply Br. 2. We are not apprised of any Examiner error on this basis. We do not understand the Examiner’s position to be that there is no inventor, but that the listed inventor, Roylston R. Munro, in the instant application did not himself invent the subject matter sought to be patented. It is ultimately incumbent on the Appellant to provide the satisfactory showing of correct inventorship through an affidavit under 37 CFR § 1.132. On the record before us, we are not apprised of any Examiner error in the finding that Appellant has not made this satisfactory showing. See Ans. 9. Appellant also contends that In the event this rejection is continued, it is respectfully requested that someone answer this question: How can an event, such as the filing of an application, well after the fact, have any bearing on who was the inventor? It is submitted that the Examiner did not answer this question because it cannot be answered in any way except by saying “No event after the fact can have any bearing on who was the inventor.” Reply Br. 3; see also App. Br. 23. This is not persuasive because the Examiner has not found that an “event after the fact” has “bearing on who was the inventor.” The Examiner’s position is that based on the record (including the submitted Declarations) inventorship is not correct. Therefore, it is not a question of Appeal 2012-009356 Application 12/156,399 11 whether “an event after the fact” has bearing on inventorship, but whether Appellant has made a satisfactory showing that the listed inventorship is correct based on the claimed subject matter. Appellant also asserts that the Examiner erred in finding that the claims of each of the patent applications “are obvious variant to one of ordinary skill in the art and in view of the prior art.” App. Br. 25. Appellant further contends that the Examiner suggests a disclaimer is necessary. Id. We are not persuaded by these arguments because Examiner commented on the possibility of a double-patenting rejection but did not issue one. See Final Rej. 6. Thus, no such rejection is pending in this appeal for our review. Appellant additionally compares the case at hand to a hypothetical where a joint application is filed and divisional applications having different inventors are examined. App. Br. 26. Appellant asks “[s]o, what is wrong? How does this situation differ from the present one?” Id. We are not persuaded by this argument as the hypothetical facts are not at issue. A joint application and divisional applications have not been filed. No requirement for restriction or election has been made by the Examiner. In the interest of judicial economy, we focus our review on the facts and issues before us in this appeal. Appellant argues that under section 102(f) [i]t is submitted that the subject matter sought to be patented is the claimed subject matter rather than the disclosed subject matter. However, the Examiner focuses on the “disclosed subject matter” and ignores the “subject matter sought to be claimed.” Reply Br. 2. Appeal 2012-009356 Application 12/156,399 12 We are not apprised of error because the Examiner determined that “the claims of the other application meet the limitations of this application’s claims.” Ans. 5 (emphasis added). Appellant adds that the claims in the two applications are clearly different so they cannot have all the claimed subject matter of both applications. Reply Br. 3-4. Appellant contends further that There is not one word in the claims in this application that describes a feature contributed by Mr. Stover. If there is a feature in the claims of this application that describe a feature “contributed” by Mr. Stover, it is an error. Id. at 3. Appellant’s position essentially is that the respective claims in the instant application and the ‘400 patent application were drafted to differentiate the claimed subject matter in one case from the other. Be that as it may, Appellant is still required to provide a satisfactory showing of correct inventorship for whatever the claimed subject matter is in the instant application. As discussed supra, we do not find the record supports Appellant’s assertion that “not one word in the claims in this application describes a feature contributed by Mr. Stover.” See generally Stover Decl. Mr. Stover only states that “I improved on this design resulting in the chain disclosed in the drawings of this application [(i.e. instant application)].” Id. at ¶ 6. As such, we are not persuaded by Appellant’s argument. Appellant also takes issue with the Examiner’s comment that “[e]ven if the person from Australia only ‘contributed’ broad concepts and the U.S. person filled in the details, they both need to be listed as inventors because both ‘contributed to claimed subject matter.’” Reply Br. 4. Appellant contends that Appeal 2012-009356 Application 12/156,399 13 [o]f course, Mr. Stover “could not have filled in the details without getting the general concept to begin with.” How that makes Mr. Stover a joint inventor in Mr. Munro’s invention is beyond Appellant’s understanding. Id. Again, we are not persuaded because Appellant has not made the required satisfactory showing that Mr. Munro is the sole inventor and that Mr. Stover did not contribute to the claimed subject matter. Appellant also argues that [i]f the Declarations filed in this application are not factual evidence that this was not invented by another, Appellant doesn't know what factual evidence would be. The only two people in the world who know what the situation was are Mr. Munro and Mr. Stover. They have filed declarations stating that the original concept was Mr. Munro’s, that Mr. Munro submitted a drawing to Mr. Stover, that Mr. Munro submitted a photograph of his chain and that Mr. Munro sent Mr. Stover a sample of his chain. If one wants to know what Mr. Munro's chain looked like at the time he disclosed it to Mr. Stover, reference is made to the Declaration of Mr. Stover and Mr. Munro. Reply Br. 5-6. We are not persuaded by these arguments because even if Mr. Munro and Mr. Stover are the “only two people in the world who know what the situation was…,” it is still incumbent on Appellant to provide a satisfactory showing that inventorship is correct. As mentioned above, we do not find the Stover and Munro Declarations support Appellant’s assertions. As another example, neither Declarant indicates that “Mr. Munro submitted a drawing to Mr. Stover” or “Mr. Munro sent Mr. Stover a sample of his chain.” See Reply Br. 5-6; see generally Stover Decl.; see also Munro Decl. Appeal 2012-009356 Application 12/156,399 14 Accordingly, for the foregoing reasons, we sustain the Examiner’s decision rejecting claims 1-28 under 35 U.S.C. § 102(f). Rejection of Claims 1-8 and 16-28 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Pereira, Vidondo, Middelburg, Horansky, and Standlee Claim 1 Independent claim 1 requires, among other features, the pusher element being arcuately convex toward the first direction of travel, the pusher element being arcuately convex toward the second direction of travel, the central pusher section being arcuately convex upwardly in a plane parallel to a direction of movement of the chains…. App. Br., Claims App’x; see also Amendment (filed Aug. 8, 2011). The Examiner found Pereira teaches “a tiltable bed with multiple chains usable for conveying cotton modules or other items in a direction of travel, comprising a roller chain (generally 55) providing a series of interconnected link pairs and rollers for engaging a frame for supporting a cotton module thereon, with pusher elements (generally 71).” Ans. 5-6. The Examiner further determined that Vidondo teaches an inverted U-shaped pusher element; Middelburg discloses “round/concave” pusher center sections (citing Middelburg, 38A, 38B and Figs. 3B-D); Horansky teaches that it was known to use beveling/tapering for reducing sharper edges; and Standlee teaches plastic wrapped cotton bales are well known. Id. at 6. Appellant argues that the Examiner has overlooked many limitations in the claims. App. Br. 32. In particular, Appellant contends that the Examiner has not established where the cited references teach or suggest Appeal 2012-009356 Application 12/156,399 15 the pusher element being arcuately convex toward the first direction of travel, the pusher element being arcuately convex toward the second direction of travel, the central pusher section being arcuately convex upwardly in a plane parallel to a direction of movement of the chains…. Id. We are apprised of error by Appellant’s argument. On the record before us, we do not see where the Examiner has established, by technical reasoning or evidence, how the cited references teach the required “pusher element” and “central pusher section” recited in claim 1. The Examiner’s Answer does not address this limitation. Ans., generally. We decline to speculate as to whether the references teach or suggest this limitation and, further do “not resolve doubts in favor of the Patent Office determination when there are deficiencies in the record as to the necessary factual bases supporting its legal conclusion of obviousness.” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). For the foregoing reasons, we do not sustain the Examiner’s decision rejecting independent claim 1 and dependent claims 2-7 as unpatentable under section 103(a). Claim 16, 23, and 28 Independent claim 16 requires, among other limitations, the central pusher section being arcuately convex upwardly in a plane parallel to a direction of movement of the chains, the pusher element being arcuately convex toward the direction of travel…. App. Br., Claims App’x; see also Amendment (filed Aug. 8, 2011). Appeal 2012-009356 Application 12/156,399 16 Similarly, independent claim 23 recites the central pusher section being arcuately convex toward the direction of travel from a first of the end sections to a second of the end sections…. Id. Additionally, claim 28 recites the central pusher section being arcuately convex upwardly in a plane parallel to a direction of movement of the chains…. Id. Looking through the record, we also do not see where the Examiner has addressed these limitations. Ans., generally. Accordingly, we do not sustain the Examiner’s decision rejecting independent claims 16, 23, 28 and dependent claims 17-27. Rejection of claims 9-15 as unpatentable over Pereira, Vidondo, Middelburg, Horansky, Standlee, and Bussiere Independent claim 9 requires the central pusher section being arcuately convex upwardly in a plane parallel to a direction of movement of the chains, the pusher element being arcuately convex toward the direction of travel…. App. Br., Claims App’x; see also Amendment (filed Aug. 8, 2011). The Examiner relies on the same findings discussed supra with the additional finding that Pereira does not mention a disperser but Bussiere shows that mobile dispersers for bales are well known to allow use where needed. It would have been obvious to one of ordinary skill in the art at the time the invention was made to have tried modifying Pereira by Bussiere to have a disperser as claimed in Appeal 2012-009356 Application 12/156,399 17 order to achieve the predictable result of allowing processing where needed. Ans. at 8. For claim 9, Appellant also argues that the Examiner has overlooked limitations for the recited central pusher section and pusher element. App. Br. 32. We agree as we do not see where the Examiner has addressed these limitations and, more importantly, shown where the references teach or suggest the claimed features. Accordingly, we do not sustain the Examiner’s decision rejecting claim 9 and dependent claims 10-15 as unpatentable section 103(a). DECISION We REVERSE the Examiner’s decision rejecting claims 1-28 as being unpatentable under section 103(a). We AFFIRM the Examiner’s decision rejecting claims 1-28 under 35 U.S.C. § 102(f). 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 Klh Copy with citationCopy as parenthetical citation