Ex Parte Pellenc et alDownload PDFPatent Trial and Appeal BoardOct 31, 201412199732 (P.T.A.B. Oct. 31, 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. 12/199,732 08/27/2008 Roger Pellenc 906,013 6484 24106 7590 11/03/2014 EGBERT LAW OFFICES 1314 Texas Avenue, 21st Floor HOUSTON, TX 77002 EXAMINER BUTLER, MICHAEL E ART UNIT PAPER NUMBER 3653 MAIL DATE DELIVERY MODE 11/03/2014 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 ROGER PELLENC and JEAN-MARC GIALIS ____________ Appeal 2012-003606 Application 12/199,732 Technology Center 3600 ____________ Before STEFAN STAICOVICI, MICHAEL L. HOELTER, and BRANDON J. WARNER, Administrative Patent Judges. WARNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Roger Pellenc and Jean-Marc Gialis (Appellants)1 appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 28–38, which are all the pending claims. Appeal Br. 8. Claims 1–27 have been canceled. Id. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is PELLENC (Societe Anonyme), a French corporation. Appeal Br. 5. Appeal 2012-003606 Application 12/199,732 2 CLAIMED SUBJECT MATTER Appellants’ disclosed invention relates to “a sorting table with sorter rolls for the elimination of foreign matter remaining mixed in with the products of the harvest of small fruit.” Spec., ¶ 1. Claim 28, reproduced below with disputed limitations italicized for emphasis, is the sole independent claim appealed and is representative of the subject matter on appeal. 28. A sorting system for removing foreign matter mixed with small fruit, the sorting system comprising: a plurality of cylindrical rolls arranged adjacent to each other in parallel relation to as to form a sorting plane; and a driving means connected to said plurality of cylindrical rolls for rotating the cylindrical rolls in the same direction so as to allow the mixture of the small fruit and foreign matter dumped on an upstream part to be transported along said sorting plane in a direction perpendicular to an axis of rotation of the cylindrical rolls over an entire length of said sorting plane, said plurality of cylindrical rolls being immobilized in translation and fitted together so as to define a number of openings between adjacent cylindrical rolls so as to allow for the passage and dropping of only the small fruit to be sorted while the foreign matter having a size larger than a size of the small fruit remains on a surface of said sorting plane and is evacuated at a downstream end of said sorting plane, said plurality of cylindrical rolls having a succession of circular reliefs separated by circular grooves, the circular grooves having a median circular crest joined to each other at a root of the circular grooves by a concave surface, said plurality of cylindrical rolls being positioned such that the circular grooves of one of the cylindrical rolls forms said number of openings with the circular grooves of an adjacent cylindrical roll, the circular reliefs of the one cylindrical roll being slightly offset in relation to the circular relief of the adjacent cylindrical roll, the circular reliefs of the one cylindrical roll having an outer edge being partially engaged in the circular grooves of the adjacent Appeal 2012-003606 Application 12/199,732 3 cylindrical roll so as to define the size of the openings, the openings being dimensioned so as to allow the passage of the small fruit to be sorted, the dimensions of the openings corresponding to the size of the small fruit, the circular reliefs having spaced stubs or notches or humps formed on a periphery thereof. EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Marriott US 3,804,256 Apr. 16, 1974 Gilmore US 5,051,172 Sept. 24, 1991 Kobayashi US 5,590,792 Jan. 7, 1997 Davis US 6,250,478 B1 June 26, 2001 Kreft US 2004/0035764 A1 Feb. 26, 2004 REJECTIONS The following rejections are before us for review:2 I. Claims 28 and 31–34 stand rejected under 35 U.S.C. § 102(b) as anticipated by Kobayashi. II. Claim 35 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Kobayashi and Marriott. III. Claim 35 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Kobayashi and Kreft. 2 We note that the rejections of claims 28–38 under 35 U.S.C. § 112, first paragraph, as lacking written description, and under 35 U.S.C. § 112, second paragraph, as being indefinite, have been withdrawn by the Examiner and thus are not before us for review as part of the instant appeal. Ans. 2–3. Appeal 2012-003606 Application 12/199,732 4 IV. Claims 29, 30, and 36–38 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kobayashi and Davis. V. Claims 29 and 30 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kobayashi and Gilmore. ANALYSIS Rejection I – Claims 28 and 31–34 as anticipated by Kobayashi Appellants argue the rejection of claims 28 and 31–34 together. See Appeal Br. 16–20. We thus select claim 28 as the representative claim to decide the appeal of the rejection of these claims, with claims 31–34 standing or falling with claim 28. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). The Examiner found that Kobayashi discloses all of the structural limitations as recited in independent claim 28. Non-Final Act. 3 (citing Kobayashi, Fig. 2; col. 5, ll. 22–32).3 As explained by the Examiner, the structure of Kobayashi “is capable of being used for [Appellants’] intended use” of sorting fruit. Ans. 11. Appellants argue that “there are important differences between the Kobayashi patent and the present invention in structure and function relative to the ‘gaps’ of the Kobayashi patent and the ‘openings’ of the present 3 We note that the Grounds of Rejection section presented in the Examiner’s Answer appears to inadvertently refer to rejections of previously pending claims, whereas the Non-Final Action, mailed December 22, 2010, from which the instant appeal is taken, correctly outlines rejections of the presently pending claims. Compare Non-Final Act. 3–4, with Ans. 4–5. We thus make reference herein to the Non-Final Action for the rejections presented against the presently pending claims, and to the Examiner’s Answer for the responses to arguments raised by Appellants in the Appeal Brief. Appeal 2012-003606 Application 12/199,732 5 invention.” Appeal Br. 16. In more detail, Appellants assert that the rolls of Kobayashi “are provided with finger-like protrusions that partially obstruct the gaps,” as opposed to Appellants’ openings, which “allow free passage of fruit in order to avoid crushing of the fruit” and “are ‘dimensioned’ so as to allow for quick exiting of the fruit” therethrough. Id. at 17. We are not persuaded by Appellants’ argument because, as the Examiner correctly notes, “Kobayashi has openings between adjacent rolls.” Ans. 9. The Examiner further explains that “[a] gap between rotors is an opening,” since “there is an absence of rotor material at the gap which forms an opening.” Id.; see also Non-Final Act. 3; Kobayashi, Fig. 2; col. 5, ll. 22–32. As to the assertion that the rolls of Kobayashi also include some protrusions that may partially obstruct the gaps, the Examiner also correctly notes that “[t]here still remains a gap if there is a partial obstruction.” Ans. 9. Thus, Appellants have not apprised us of error in the Examiner’s findings, which are supported by a preponderance of the evidence. We are also not persuaded by Appellants’ argument regarding the asserted intent of the openings to avoid crushing the fruit. See Appeal Br. 17. As the Examiner astutely observes, “[t]here is no structural limitation in the claim specified that is directed at avoiding crushing of fruit.” Ans. 10. As stated by our reviewing court in In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998), “the name of the game is the claim.” It is well established that limitations not appearing in the claim cannot be relied upon for patentability. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Here, the claim only requires, in relevant part, a plurality of cylindrical rolls that are “fitted together so as to define a number of openings between adjacent cylindrical rolls so as to allow for the passage and dropping of only Appeal 2012-003606 Application 12/199,732 6 the small fruit to be sorted.” As discussed supra, the Examiner correctly notes that “Kobayashi meets the structural limitations in the claims.” Ans. 11. Appellants also allege that Kobayashi “is for an entirely different field of purpose,” and is “from a field of use very far removed from the intended purpose of the present invention.” Appeal Br. 17–18 (emphasis omitted). We are not persuaded by Appellants’ position because these allegations are irrelevant in an anticipation rejection. See State Contracting & Eng’g Corp. v. Condotte America Inc., 346 F.3d 1057, 1068 (Fed. Cir. 2003) (The question of whether a reference is analogous art is not relevant to whether that reference anticipates. A reference may be directed to an entirely different problem than the one addressed by the inventor, or may be from an entirely different field of endeavor than that of the claimed invention, yet the reference is still anticipatory if it explicitly or inherently discloses every limitation recited in the claims.). Appellants further content that Kobayashi would crush fruit if used as a fruit sorter. See Appeal Br. 17–20. However, claims directed to an apparatus, as here, must be distinguished from the prior art in terms of structure rather than function. See In re Schreiber, 128 F.3d 1473, 1477–78, (Fed. Cir. 1997); see also Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, (Fed. Cir. 1990) (“apparatus claims cover what a device is, not what a device does”); In re Casey, 370 F.2d 576, 580 (CCPA 1967) (“The manner or method in which such machine is to be utilized is not germane to the issue of patentability of the machine itself.”). In this regard, we agree with the Examiner that because there is no substantial difference between the construction of Appellants’ sorting system and that of Appeal 2012-003606 Application 12/199,732 7 Kobayashi’s screening machine, the operation of Appellants’ sorting system is the same as Kobayashi’s screening machine. In other words, we agree that the Examiner is on solid ground in finding that Kobayashi discloses the structure of the claim and, as such, Kobayashi’s machine is also capable of being used as a fruit sorter, specifically whereby “[i]f fruits were placed on the apparatus of Kobayashi, Kobayashi would keep larger fruits from passing through its slots,” which “would keep larger fruit items on top and pass smaller items.” Ans. 11. Appellants have the burden of establishing that those features would not be present. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“[W]hen the PTO shows sound basis for believing that the products of the applicant and the prior art are the same, applicant has the burden of showing that they are not.”). We note that Appellants have not provided any factual evidence or persuasive technical reasoning to contradict the Examiner’s position regarding this capability and thus do not apprise us of error. Finally, Appellants argue that Kobayashi does not anticipate the claim “because it fails to provide an enabling disclosure.” Appeal Br. 20. This argument is premised on the assertion that “Kobayashi in no way enables the sorting function of the present invention,” as addressed in detail supra. Id. We are not persuaded by Appellants’ argument because, as correctly explained by the Examiner, “Kobayashi is a duly issued patent and is presumed enabled.” Ans. 13. With specific regard to the enablement of Kobayashi to sort fruit, we again agree with the Examiner that “Kobayashi may be used with fruit,” and that “simply placing fruit on the sorter [of Kobayashi] achieves that goal.” Ans. 11. Thus, Appellants do not apprise us of error in the Examiner’s findings or conclusions. Appeal 2012-003606 Application 12/199,732 8 Accordingly, for the foregoing reasons, we sustain the rejection of claim 28, and claims 31–34 falling with claim 28, under 35 U.S.C. § 102(b) as anticipated by Kobayashi. Rejections II–V – Claims 29, 30, and 35–38 as unpatentable over the combinations of Kobayashi and either Davis, Gilmore, Marriott, or Kreft With respect to the rejections of these claims, Appellants do not set forth any additional substantive arguments separate from the arguments discussed supra, instead expressly stating that these “remaining dependent claims are allowable because they depend upon [an] allowable independent claim[].” Appeal Br. 20; see also 37 C.F.R. § 41.37(c)(1)(vii) (2011). Accordingly, Appellants do not apprise us of error in the Examiner’s rejections of these claims. Thus, we sustain the rejections of claims 29, 30, and 35–38 under 35 U.S.C. § 103(a) as being unpatentable over Kobayashi and either Davis, Gilmore, Marriott, or Kreft. DECISION We AFFIRM the Examiner’s decision rejecting claims 28–38. 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/pgc Copy with citationCopy as parenthetical citation