Ex Parte Perini

Patent Trial and Appeal Board

Oct 22, 2013

12054670 (P.T.A.B. Oct. 22, 2013)

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.
12/054,670 03/25/2008 Fabio PERINI 72899 6512
23872 7590 10/22/2013
MCGLEW & TUTTLE, PC
P.O. BOX 9227
SCARBOROUGH STATION
SCARBOROUGH, NY 10510-9227
EXAMINER
WELLINGTON, ANDREA L
ART UNIT PAPER NUMBER
3722
MAIL DATE DELIVERY MODE
10/22/2013 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 FABIO PERINI
____________________

Appeal 2011-007239
Application 12/054,670
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, NEIL T. POWELL, and
BEVERLY M. BUNTING, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Fabio Perini (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1-14. We have jurisdiction under
35 U.S.C. § 6(b). An oral hearing in accordance with 37 C.F.R. § 41.47 was
held on October 17, 2013.
We AFFIRM.
The Claimed Subject Matter
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. An apparatus for moving logs within cutting-off machines,
the apparatus comprising:
a cutting means for cutting uncut logs;
a platform defining one or more longitudinal channels for
receiving uncut logs;
a pusher means movably mounted on said platform such
that said pusher means moves between an initial position
and an uncut log release position, said pusher means
engaging a back end of the uncut logs in said initial position
and pushing each uncut log along one of said one or more
longitudinal channels toward said cutting means such that
said pushing means moves from said initial position to said
uncut log release position in a first direction, said first
direction being defined by said one or more longitudinal
channels, said cutting means being located downstream of
said pusher means;
a clamping means for clamping at least one portion of the
uncut logs received from said one or more longitudinal
channels of said platform with said pusher means in said
uncut log release position and for driving the uncut logs to
said cutting means, said clamping means being disposed
between said pusher means and said cutting means, said
pusher means moving from said uncut log release position to
said initial position in a second direction with said clamping
means clamping said at least one portion of the uncut logs
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such that said pusher means releases the uncut logs, said
second direction being defined by said one or more
longitudinal channels, said first direction being opposite said
second direction.

Rejections
Appellant requests our review of the following rejections under
35 U.S.C. § 103(a):
(1) claims 1-3, 5, and 7 as unpatentable over Murray (US 6,089,135, iss.
Jul. 18, 2000) and Walker (US 5,373,878, iss. Dec. 20, 1994);
(2) claims 4, 9-11, 13, and 14 as unpatentable over Murray, Walker, and
either Mottet (US 2,811,183, iss. Oct. 29, 1957) or Kohn (US
5,109,740, iss. May 5, 1992);
(3) claim 6 as unpatentable over Murray, Walker, and Hutchinson (US
3,045,728, iss. Jul. 24, 1962); and
(4) claims 8 and 12 as unpatentable over Murray, Walker, either Mottet or
Kohn, and Hutchinson.
OPINION
Rejection (1)
Appellant argues that Walker fails to disclose a pusher means
movable from one position to another in a direction toward and away from a
clamping means as claimed. App. Br. 15. According to Appellant, there is
no suggestion to use Walker’s teachings with Murray because Walker only
discloses guiding a log through a cutting means, not to a clamping means as
claimed. Id.; see also Reply Br. 4. Further, Appellant asserts that use of
Walker’s chain 56 in combination with Murray’s apparatus would dull the
cutting blade of Murray as the chain guides the logs through the cutting
means of Murray. App. Br. 15.
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Appellant’s arguments are not convincing, as they are not directed
toward the combination of Murray and Walker proposed by the Examiner.
The Examiner determined it would have been obvious to replace Murray’s
belt conveyor (infeed conveyor 14) with a chain conveyor having pusher
lugs because these two elements are art recognized equivalents, and
recognized as equivalents by Murray. Ans. 5; see Murray, col. 2, ll. 66-67
(disclosing that the infeed conveyor may be a belt or a chain). Murray’s
infeed conveyor 14 does not extend all the way to or through the cut-off saw
26, but, rather, delivers the logs only up to the vertical feed rolls 20, 21, on
which the Examiner reads the claimed clamping means. Thus, the chain
with pusher lugs replacing the infeed conveyor 14 would deliver the logs to
the vertical feed rolls 20, 21, not to the cut-off saw 26. Consequently, the
chain would not be contacted by, and thus would not dull, the saw 26, as
asserted by Appellant.
The fact that Walker’s lug chain 56 delivers the logs all the way
through the cutting mechanism (saws 14) in Walker’s apparatus is in no way
inconsistent with use of such a conveyor as a replacement for Murray’s
infeed conveyor 14 to deliver logs to the vertical feed rolls upstream of the
saw, as proposed by the Examiner. Appellant contends that a person of
ordinary skill in the art would not look to the teachings of Walker because
Walker, unlike Murray, provides no teaching or suggestion for stabilizing a
log during cutting. Reply Br. 3-4. This contention does not show error in
the Examiner’s rejection, which proposes only to replace Murray’s infeed
conveyor 14 with a lug chain as taught by Walker. Murray’s apparatus,
modified as proposed by the Examiner, would still feed the logs to the cut-
off saw 26 via the vertical feed rolls 20, 21.
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Appellant argues that Walker and Murray provide no teaching or
suggestion that would direct a person of ordinary skill in the art to push logs
end to end to prevent logjams as in the present invention. Reply Br. 2. This
argument is not convincing, because “[t]he obviousness analysis cannot be
confined by a formalistic conception of the words teaching, suggestion, and
motivation, or by overemphasis on the importance of published articles and
the explicit content of issued patents.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 419 (2007). Instead, the relevant inquiry is whether the Examiner
has set forth “some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at 418). As pointed
out above, the Examiner reasoned that it would have been obvious to replace
Murray’s infeed conveyor with a lug chain conveyor as taught by Walker,
because these two types of conveyors are art-recognized equivalents, as
evidenced by Murray. “[W]hen a patent claims a structure already known in
the prior art that is altered by the mere substitution of one element for
another known in the field, the combination must do more than yield a
predictable result.” KSR, 550 U.S. at 416. Moreover, Appellant’s argument
is factually incorrect, as Murray explicitly recognizes the importance of
maximizing quantity and throughput and seeks to close the gaps between the
logs on the feed conveyor by operating the infeed and outfeed conveyors
independently of the progress of the log at the sawing station. Col. 1, ll. 18-
47; see Ans. 9-10.
Appellant additionally argues that Walker does not teach or suggest
returning the pusher lugs 54 to an initial or starting position “once at least a
portion of the uncut logs are clamped.” Reply Br. 3. Appellant’s argument
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is not commensurate with the scope of claims 1 and 3, which require return
of the pusher means to the initial position in a second direction “with said
clamping means clamping said at least one portion of the uncut logs” (claim
1) or “after said at least one portion of the uncut logs is held via said
clamping means” (claim 3). Claims 1 and 3 do not require that the return
occur immediately upon clamping of the logs. As explained and illustrated
by the Examiner on page 11 of the Answer, Walker’s pusher lug 54 travels
on the lower course of the endless chain path to return to its initial position.
Appellant does not adequately explain why such an arrangement,
incorporated into Murray’s apparatus in place of infeed conveyor 14, would
not satisfy the afore-mentioned claim limitations.
For the above reasons, Appellant’s arguments do not apprise us of
error in the Examiner’s rejection of claims 1 and 3 as unpatentable over
Murray and Walker. We thus sustain the rejection of these claims.
In contesting the rejection of claim 2, Appellant argues that Murray
does not teach or suggest the advantages of using a pushing means in
combination with a clamping means. App. Br. 16. This argument is not
convincing, because such a teaching is not a prerequisite to obviousness.
Appellant reiterates the argument that Murray does not disclose movement
of the logs such that the logs are in contact with one another as claimed.
App. Br. 17. This argument is not convincing, because, as discussed above,
Murray explicitly seeks to close the gaps between logs on the feed conveyor
to maximize throughput. Moreover, as pointed out by the Examiner,
Murray’s device is capable of having a head portion of a second log
contacting a tail portion of a preceding log, because Murray’s infeed and
outfeed conveyors can be operated independently of the progress of the log
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at the cutting station, “the point being to close the gaps between adjacent
uncut logs.” Ans. 4 (citing Murray, col. 1, ll. 18-47). Thus, we also sustain
the rejection of claim 2 as unpatentable over Murray and Walker.
In contesting the rejection of claim 5, Appellant argues that Murray’s
conveyor 14 “does not define a longitudinal channel as featured in the
present invention.” App. Br. 21. For the reasons set forth by the Examiner
in the paragraph bridging pages 14 and 15 of the Answer, Appellant’s
argument is not convincing. We sustain the rejection of claim 5 as
unpatentable over Murray and Walker.
In contesting the rejection of claim 7, Appellant argues that stabilizing
a log with a pusher lug on a lug chain while the log is passed through the
cutting device is not possible in Murray’s apparatus, because Murray’s
cutting means would be dulled by the lug chain. App. Br. 21-22. This
argument is not convincing because it is not directed to the modification of
Murray proposed by the Examiner, which replaces only the infeed conveyor
14, not the infeed conveyor and feed rolls 21, 22 of Murray, with the lug
chain. We sustain the rejection of claim 7.
Rejection (2)
The Examiner relies on Mottet and Kohn for their teachings directed
to continuous feed of logs with the head portion of one log in contact with
the tail portion of a preceding log in a cutting apparatus. Ans. 6. The
Examiner reasons that it would have been obvious to modify Murray’s
method to incorporate the teachings of Mottet or Kohn to have the logs abut
each other and move continuously during the cutting process, because
“[d]oing so would have increased efficiency by reducing down time between
cuts by reducing the distance between adjacent logs.” Ans. 6.
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Appellant asserts the same arguments for claims 4 and 9. Thus, we
select claim 4 as representative; claim 9 stands or falls with claim 4. 37
C.F.R. § 41.37(c)(1)(vii) (2011).
Appellant argues, in essence, that the teachings of Mottet and Kohn
are not applicable to Murray’s apparatus, because of the differences between
Mottet’s and Kohn’s devices and those of Murray and Walker. App. Br. 23,
24, 26, 28. We do not agree with Appellant. As discussed above, Murray
seeks to close the gaps between logs in the feed, and Mottet and Kohn both
evidence that it was known to feed workpieces seriatim with the head of a
following piece in contact with the tail of a preceding piece. Further, both
Murray and Mottet recognize that feeding workpieces in this manner
increases the production rate. See Murray, col. 1, ll. 18-47; Mottet, col. 4, l.
72.
Appellant also argues that Mottet and Kohn do not disclose a pusher
that moves in a second direction from an ending position to an initial
position after the log has been delivered to a clamping means. App. Br. 24,
25, 27, 28. This argument does not show error in the rejection because it
attacks the references individually, rather than as combined by the
Examiner. See Ans. 15 (stating, “Mottet is not used to provide any teaching
besides it is known to contact work pieces along a conveyance means in a
cutting device”), 16 (stating, “Kohn is not used to teach any structure , but
only the fact it is known to abut adjacent work pieces.”). Nonobviousness
cannot be established by attacking the references individually when the
rejection is predicated upon a combination of prior art disclosures. See In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
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In contesting the rejection of claims 10, 11, and 13, Appellant
reiterates the arguments asserted against claims 1 and 3. App. Br. 29-39.
These arguments are not convincing, for the reasons discussed above.
For the above reasons, Appellant’s arguments do not apprise us of
error in the rejection of claims 4, 9, 10, 11, and 13. We sustain the rejection
of these claims as unpatentable over Murray, Walker, and either Mottet or
Kohn.
In contesting the rejection of claim 14, Appellant argues that the
combination of Murray, Walker, and either Mottet or Kohn fails to teach or
suggest a pushing means comprising a bar structure substantially
perpendicular to one or more longitudinal channels and located adjacent to
one or more longitudinal channels as claimed. App. Br. 40. Appellant
asserts that Walker’s conveyor frame 28 cannot be considered the platform
of the present invention since it does not receive any log as claimed. Id.
This argument is not convincing, for the reasons set forth on page 16 of the
Answer. We sustain the rejection of claim 14 as unpatentable over Murray,
Walker, and either Mottet or Kohn.
Rejection (3)
In contesting the rejection of claim 6, Appellant reiterates the
argument, asserted against the rejection of claim 1, that Murray and Walker
fail to teach or suggest a pushing means that moves between an initial
position and an uncut log release position, and adds that Hutchinson does not
overcome this perceived deficiency. App. Br. 41. The arguments asserted
against claim 1 do not apprise us of error, for the reasons discussed above.
Thus, the argument that Hutchinson does not overcome such perceived
deficiency likewise is not convincing.
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Appellant additionally argues that Hutchinson fails to teach or suggest
the conveyors 34 moving in a direction opposite the clamping means and,
further, that Hutchinson fails to teach or suggest the manufacturing
efficiencies afforded by a pushing means that moves in a second direction
from an ending position to an initial position after at least one log has been
delivered to the clamping means. App. Br. 41-42. These arguments are not
convincing, because the Examiner did not rely on Hutchinson for such a
teaching. Rather, the Examiner relied on Hutchinson for its teaching to use
opposing conveyor belts arranged above and below a log as a clamping and
pulling means to provide a positive grip on the log. Ans. 7. The Examiner
determined it would have been obvious to replace the feed rolls 20, 21 of
Murray with oppositely facing closed loop belts as taught by Hutchinson to
provide a more positive grip on the log. Ans. 7.
For the above reasons, Appellant does not apprise us of error in the
Examiner’s rejection of claim 6 as unpatentable over Murray, Walker, and
Hutchinson. We sustain the rejection.
Rejection (4)
In contesting the rejection of claim 8, Appellant reiterates the
argument that none of the applied references teaches or suggests a pusher
means mounted on a platform that defines one or more longitudinal
channels. App. Br. 43. For the reasons set forth by the Examiner in the
paragraph bridging pages 14 and 15 of the Answer, Appellant’s argument is
not convincing.
Appellant also repeats the argument that none of the applied
references teaches or suggests a pushing means that moves in a first
direction from an initial position and then moves in a second direction to
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return to the initial position after at least one portion of a log is held by a
clamping means, nor recognizes the importance thereof. App. Br. 43-44.
This argument is not convincing for the reasons discussed above with regard
to the rejection of claims 1 and 3.
Appellant additionally asserts that none of the applied references
appreciates the reduced pressure advantage afforded by the claimed pushing
means. App. Br. 44. This argument also is not convincing. “In determining
whether the subject matter of a patent claim is obvious, neither the particular
motivation nor the avowed purpose of the patentee controls. What matters is
the objective reach of the claim. If the claim extends to what is obvious, it is
invalid under § 103.” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 419-20
(2007). Even assuming the particular pushing means disclosed by Appellant
(i.e., the bar 30 movable on carriage 31, as depicted in figure 6) may afford
any reduced pressure advantage not afforded by the lug chain taught by
Walker, such advantage is immaterial to the patentability of claim 8, as this
advantage is not recited in the claim.
For the above reasons, Appellant’s arguments do not apprise us of
error in the Examiner’s rejection of claim 8 as unpatentable over Murray,
Walker, either Mottet or Kohn, and Hutchinson. We sustain the rejection of
claim 8.
In contesting the rejection of claim 12, Appellant argues that
Hutchinson is in a completely different technical field than that of Murray
and Walker and that a person of ordinary skill in the art would not have
looked to the teachings of Hutchinson, because Hutchinson is not concerned
with stabilizing a log while it is cut, as disclosed by Murray and Walker.
App. Br. 45. For the reasons set forth on page 17 of the Answer, Appellant’s
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argument is not convincing. We sustain the rejection of claim 12 as
unpatentable over Murray, Walker, either Mottet or Kohn, and Hutchinson.
DECISION
The Examiner’s decision rejecting claims 1-14 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

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