Ex parte Rajala et al.

Board of Patent Appeals and Interferences

Sep 30, 1999

08186352 (B.P.A.I. Sep. 30, 1999)

Application for patent filed January 25, 1994.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte GREGORY J. RAJALA and RICHARD J. MAKOVEC
_____________
Appeal No. 1996-2624
Application No. 08/186,352 1
______________
ON BRIEF
_______________
Before ABRAMS, FRANKFORT and GONZALES, Administrative Patent
Judges
GONZALES, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner's final
rejection of claims 1 and 3 through 22, all the claims
remaining in the application.
Appeal No. 1996-2624
Application No. 08/186,352
2
We REVERSE.
The subject matter on appeal is directed to an apparatus
(claims 1, 3 through 19, 21 and 22) and method (claim 20) for
receiving discrete parts traveling at a first speed and
applying the parts to a web traveling at a different speed.
An under-standing of the invention can be derived from a
reading of exemplary claims 1 and 20, a copy of which are
reproduced in the opinion, below. The other claims on appeal
can be found in the "Appendix" to the brief (Paper No. 10).
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Bosse 3,835,756 Sep. 17,
1974
Ring 3,952,607 Apr.
27, 1976
Radzins 4,364,787 Dec. 21,
1982
Eschler 4,610,751 Sep. 09,
1986
Katori 4,788,891 Dec. 06,
1988
Ujimoto et al. (Ujimoto) 5,091,039 Feb.
25, 1992
Langford et al. (Langford) 5,105,675 Apr. 21,
1992
The following rejections are before us for review:
Appeal No. 1996-2624
Application No. 08/186,352
3
(1) claims 1, 3 through 5, 14 through 16 and 20 through
22 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Bosse in view of Katori;
(2) claims 1, 3 through 6, 14 through 16 and 20 through
22 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Bosse in view of Ring;
(3) claims 7 and 8 stand rejected under 35 U.S.C. § 103
as being unpatentable over Bosse in view of Ring, as applied
to claim 1, and further in view of Langford;
(4) claims 9 and 10 stand rejected under 35 U.S.C. § 103
as being unpatentable over Bosse in view of Katori, as applied
to claim 1, or Bosse in view of Ring, as applied to claim 1,
and further in view of Eschler;
(5) claims 11 through 13 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Bosse in view of Katori, as
applied to claim 1, or Bosse in view of Ring, as applied to
claim 1, and further in view of Radzins; and
(6) claims 17 through 19 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Bosse in view of Ring in
Appeal No. 1996-2624
Application No. 08/186,352
4
combination with Langford and Ujimoto.
The full text of the examiner's rejections and the
responses to the arguments presented by appellants appear in
the Office actions mailed October 4, 1994 (Paper No. 3) and
April 12, 1995 (Paper No. 6) and in the answer (Paper No. 11),
while the complete statement of appellants’ arguments can be
found in the brief (Paper No. 10).
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. Upon evaluation of all the evidence before us, it
is
our conclusion that the evidence adduced by the examiner is
insufficient to establish a prima facie case of obviousness
with respect to claims 1 and 3 through 22. Accordingly, we
will not sustain the examiner's rejections of claims 1 and 3
Appeal No. 1996-2624
Application No. 08/186,352
5
through 22 under 35 U.S.C. § 103. Our reasoning for this
determination follows.
The test for obviousness is what the combined teachings
of the references would have suggested to one of ordinary
skill in the art. See In re Young, 927 F.2d 588, 591, 18
USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981). Furthermore, the
conclusion that the claimed subject matter is obvious must be
supported by evidence, as shown by some objective teaching in
the prior art or by knowledge generally available to one of
ordinary skill in the art that would have led that individual
to combine the relevant
teachings of the references to arrive at the claimed
invention.
See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed.
Cir. 1988). The examiner may not, because of doubt that the
invention is patentable, resort to speculation, unfounded
assumption or hindsight reconstruction to supply deficiencies
in the factual basis for the rejection. See In re Warner, 379
Appeal No. 1996-2624
Application No. 08/186,352
6
F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied,
389 U.S. 1057 (1968). Our reviewing court has repeatedly
cautioned against employing hindsight by using the appellant's
disclosure as a blueprint to reconstruct the claimed invention
from the isolated teachings of the prior art. See, e.g.,
Grain Processing Corp. v. American Maize-Products Co., 840
F.2d 902, 907, 5 USPQ2d 1788, 1792 (Fed. Cir. 1988).
Rejection (1)
Independent claim 1 reads:
1. An apparatus for receiving discrete parts
travelling at a first speed and applying said parts
to a substrate web travelling at a second speed,
said apparatus comprising:
a) at least one rotatable transferring means for
receiving and applying said parts, said transferring
means moving along an orbital path that passes
through a receiving zone and an application zone
when said transferring means rotates;
b) driving means for transmitting rotational
energy, said driving means including at least one
rotatable noncircular drive gear; and
c) at least one driven means for accepting said
energy from said driving means including at least
one rotatable noncircular driven gear, said driven
means configured to rotate said transferring means,
wherein said transferring means is configured to
maintain a substantially constant first surface
speed as said parts are received in said receiving
Appeal No. 1996-2624
Application No. 08/186,352
7
zone and a substantially constant second surface
speed as said parts are applied in said application
zone.
Independent method claim 20 recites:
20. A method for receiving discrete parts
travelling at a first speed and applying said parts
to a substrate web travelling at a second speed,
said method comprising the steps of:
a) providing a rotatable transferring means for
receiving said discrete parts in a receiving zone
and applying said parts to said substrate web in an
application zone; and
b) rotating said transferring means at a
substantially constant first surface speed which
substantially equals said first speed of said
discrete part as said discrete parts are received in
said receiving zone and a substantially constant
second surface speed which substantially equals said
second speed of said substrate web as said discrete
parts are applied to said substrate web in said
application zone wherein said rotating is provided
by a drive means which includes at least one
rotatable noncircular drive gear and a driven means
which includes at least one rotatable noncircular
driven gear, said drive gear being configured to
engage and rotate said driven gear which rotates
said transferring means at a variable speed.
Bosse discloses a bag-making machine for applying handles
and reinforcing sheets at intervals along a traveling web of
bag-making material (col. 1, lines 3-8). The disclosed
machine
Appeal No. 1996-2624
Application No. 08/186,352
By "transfer stations" we mean those locations spaced about the2
periphery of the transfer drum at which the reinforcing sheets [B] and
carrying handles [T] are individually transferred to the transfer drum [18]
and at which the reinforcing sheet-carrying handle combinations are
transferred to the traveling web [32].
8
includes a transfer drum [18] having suction segments [19,
19']
(col. 4, lines 49-53). A pair of feed rollers [34] and a
carrier [5] are operated in sequence with the rotation of the
transfer
drum [18] to supply adhesive-coated reinforcing sheets [B] and
carrying handles [T], respectively, to the suction segments
[19, 19'] of the transfer drum. As the drum rotates, it
applies the reinforcing sheets [B] and carrying handles [T] to
a traveling web [32] of bag-making material (Figures 1 and 2).

In order to increase the pitch [t, Fig. 2] of the handles
on the web [32], the transfer drum is non-uniformly rotated
between the various transfer stations (col. 5, lines 33-51) . 2
In order to provide the desired non-uniform rotation, Bosse
uses a planetary gearing system [33], including planet gears
[45, 46] carried by a rocker arm [48], and a cam plate [49]
Appeal No. 1996-2624
Application No. 08/186,352
9
fixed on input shaft [36]. When cam plate [49] rotates, it
causes rocker arm [50] to oscillate about fixed pivot [p',
Figure 3]. Oscillation of rocker arm [50] is transmitted to
rocker arm [48] by a coupling member [51]. Oscillation of
rocker arm [48] causes the
output shaft [41], on which the transfer drum is fixed, to be
advanced or retarded (depending of the direction of
oscillation). See, col. 6, lines 26-56.
In addition, Bosse teaches that the speed of the transfer
drum between transfer stations, as well as the pitch [t], may
be changed without having to replace the cam plate [49] by
adjusting the attachment point of the coupling member [51]
along the longitudinal grove [53] in rocker arm [50]. See,
col. 7, lines 4-66.
Katori teaches that is was known prior to his invention
to use noncircular gears in a planetary gear device "for
obtaining an unconstant velocity rotational motion useful for
automation and to integrate velocity reduction means and
unconstant velocity means together" (col. 1, lines 53-56).
Appeal No. 1996-2624
Application No. 08/186,352
10
According to Katori, such prior art devices tended to be large
and heavy in order to withstand the pulsating loads caused by
the unconstant velocity (col. 2, lines 6-32). In order to
solve this problem, Katori supports the planetary shaft 5
(i.e., the shaft supporting the planetary gears 7 and 8) at
both ends by means of rotary body 12 and disk-like carrier 4
(col. 3, lines 36-47, and Figures 2 and 3).
It is the examiner's position that
it would have been obvious to one of ordinary skill in
the art to have used complementary non-circular gears in
the apparatus and method of Bosse to provide the non-
uniform driving of the transfer drum as Katori teaches
that the use of noncircular gears in planetary gear
devices for providing unconstant velocity rotation and
velocity reduction is known. [Answer, page 5]
and
that one of ordinary skill in the art would have known
how to have shaped the complementary non-circular gears
such that the gearing not only accelerates and
decelerates the transfer drum but also rotates the drum
at the two different constant mean angular speeds as
required by Bosse. [Id.]
The appellants acknowledge (brief, page 7) that Bosse's
gearing is configured to drive the transfer drum at a first
Appeal No. 1996-2624
Application No. 08/186,352
11
constant angular speed which corresponds to the feeding speed
of the reinforcing sheets and handles and at a second constant
angular speed corresponding to the surface speed of the web
[32] when the reinforcing sheets and handles are transferred
to the web, but that Bosse does so without using noncircular
gears as called for in claims 1 and 20. Appellants also
acknowledge that Katori discloses a planetary gear device
which comprises at least one pair of noncircular gears for
converting a constant velocity rotation to a reduced,
unconstant rotation. However, appellants argue (brief, pages
8 and 9) that one of ordinary skill in the
art would not have been motivated to replace the four-part
linkage and cam plate taught by Bosse with the planetary gear
system taught by Katori.
In our opinion, the examiner's position that it would
have been obvious to replace the planetary gear system taught
by Bosse with the noncircular gear system disclosed in Katori
because
noncircular gears in planetary gear devices for providing
unconstant velocity rotation and velocity reduction were known
Appeal No. 1996-2624
Application No. 08/186,352
12
at the time that appellants made their invention is
insufficient to establish the necessary motivation. One of
the advantages of Bosse's system is the flexibility of
changing the transfer drum speed between transfer stations
without having to replace the cam plate [49]. Bosse
accomplishes this object by adjusting the attachment point of
the coupling member [51] along the longitudinal grove [53] in
rocker arm [50]. We fail to understand why one of ordinary
skill in the art would have been motivated to surrender this
advantage in Bosse's gear system simply because noncircular
planetary gear systems were known.
Since the examiner's proposed combination of Bosse and Katori
would involve a major reconstruction of the Bosse drive system
and would appear to destroy certain desirable advantages
sought by Bosse, we consider that one of ordinary skill in the
art would not have been led by the collective teachings of the
applied references to make the modifications of Bosse urged by
the examiner. In fact, we view the examiner's position to be
based on impermissible hindsight derived from applicants' own
disclosure. Accordingly, we will not sustain the standing 35
U.S.C. § 103 rejection of independent claims 1 and 20 based on
Appeal No. 1996-2624
Application No. 08/186,352
13
the combined teachings of Bosse and Katori.
Claims 3 through 5, 14 through 16, 21 and 22 are
dependent, directly or indirectly, on claim 1 and contain all
of the limitations of that claim. Accordingly, the examiner’s
rejection of claims 3 through 5, 14 through 16, 21 and 22 will
likewise not be sustained.
Rejection (2)
Claims 1, 3 through 6, 14 through 16 and 20 through 22
stand
rejected under 35 U.S.C. § 103 as being unpatentable over
Bosse in view of Ring.
Ring discloses a variable speed drive means useful in
timing mechanisms having a noncircular driver member [12] and
a noncircular driven member [14] wherein both the driver and
driven members are capable of rotating past 360E (col. 1,
lines 13-37 and col. 2, lines 6-8).
As in the reasoning provided by the examiner to support
Rejection (1), the motivation identified by the examiner for
replacing the planetary gear system taught by Bosse with the
noncircular gear system disclosed in Ring is essentially that
Ring's variable speed drive means was known at the time
Appeal No. 1996-2624
Application No. 08/186,352
14
appellants made their invention (answer, pages 7 and 8). We
cannot support the examiner's position for the reasons
identified above with respect to the combination of Bosse and
Katori.
Rejections (3) through (5)
Claims 7 through 13 depend directly or indirectly on
claim 1. We have carefully considered the patents to
Langford, Eschler and Radzins applied by the examiner in the
various rejections of
dependent claims 7 through 13. None of these references
provide the motivation found lacking in our above discussions
of the combined teachings of Bosse and Katori and Bosse and
Ring.
Accordingly, we will not sustain the § 103 rejections of
claims 7 through 13.
Rejection (6)
Independent claim 17 and dependent claims 18 and 19 stand
rejected under 35 U.S.C. § 103 as being unpatentable over
Bosse in view of Ring in combination with Langford and
Ujimoto.
Independent claim 17 is directed to the embodiment
Appeal No. 1996-2624
Application No. 08/186,352
15
illustrated in appellants' Figures 3A-5. Claim 17 calls for,
inter alia, first, second and third rotatable transferring
means; driving means for transmitting rotational energy, said
driving means including a rotatable noncircular drive gear;
first, second and third driven means for accepting said energy
from said driving means, each driven means including at least
one rotatable noncircular driven gear.
Ujimoto does teach four independently rotatable rotor
elements [26] for applying severed pieces onto a continuous
web (col. 3, line 10 et seq.) as described by the examiner
(Paper No. 3, page 7). However, Ujimoto fails to provide the
necessary motivation for modifying Bosse according to the
teachings of Ring. Therefore, the combined teachings of the
applied references are not suggestive of the invention set
forth in claim 17 through 19.
In summary and for the above reasons, the decision of the
examiner:
to reject claims 1, 3 through 5, 14 through 16 and 20
through 22 under 35 U.S.C. § 103 as being unpatentable over
Bosse in view of Katori is reversed;
to reject claims 1, 3 through 6, 14 through 16 and 20
Appeal No. 1996-2624
Application No. 08/186,352
16
through 22 under 35 U.S.C. § 103 as being unpatentable over
Bosse in view of Ring is reversed;
to reject claims 7 and 8 under 35 U.S.C. § 103 as being
unpatentable over Bosse in view of Ring and Langford is
reversed;
to reject claims 9 and 10 under 35 U.S.C. § 103 as being
unpatentable over either Bosse and Katori or Bosse and Ring in
combination with Eschler is reversed;
to reject claims 11 through 13 under 35 U.S.C. § 103 as
being unpatentable over either Bosse and Katori or Bosse and
Ring in combination with Radzins is reversed; and
to reject claims 17 through 19 under 35 U.S.C. § 103 as
being unpatentable over Bosse, Ring, Langford and Ujimoto is
reversed.
The decision of the examiner is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
Appeal No. 1996-2624
Application No. 08/186,352
17
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
vsh
Appeal No. 1996-2624
Application No. 08/186,352
18
Jeffrey B. Curtin
Kimberly-Clark Corporation
401 North Lake Street
Neenah, WI 54956