Ex Parte Regan et al

Patent Trial and Appeal Board

Feb 23, 2017

13299934 (P.T.A.B. Feb. 23, 2017)

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.
13/299,934 11/18/2011 Patrick Conall Regan 11-0693/NIKE. 162096 2941
78342 7590 02/27/2017
SHOOK, HARDY & BACON L.L.P.
(NIKE, INC.)
INTELLECTUAL PROPERTY DEPARTMENT
2555 GRAND BLVD.
KANSAS CITY, MO 64108-2613
EXAMINER
PUIG, GABRIELA M
ART UNIT PAPER NUMBER
3652
NOTIFICATION DATE DELIVERY MODE
02/27/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
nike_docketing @ cardinal-ip. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PATRICK CONALL REGAN, KUO-HUNG LEE,
CHIH-CHI CHANG, and MING-FENG JEAN
Appeal 2015-006071
Application 13/299,934
Technology Center 3600
Before STEFAN STAICOVICI, EDWARD A. BROWN, and
ANTHONY KNIGHT, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Patrick Conall Regan et al. (Appellants)1 appeal under 35 U.S.C.
§ 134(a) from the Examiner’s non-final rejection of claims 1, 3—12, and 21
under 35 U.S.C. § 103(a) as unpatentable over Laverriere (US 4,389,064,
issued June 21, 1983), Clark (US 7,296,834 B2, issued Nov. 20, 2007), and
Rabinow (US 3,220,723, issued Nov. 30, 1965). Non-Final Act. 2.2 We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 NIKE, Inc., is identified as the real party in interest. Br. 3.
2 Claims 2 and 13—20 are cancelled. Br. 11—12 (Claims App.).
Appeal 2015-006071
Application 13/299,934
INVENTION
Claims 1 and 21 are independent. Claim 1, reproduced below,
illustrates the claimed subject matter.
1. A vacuum tool comprising:
a vacuum distributor, the vacuum distributor comprised of
an exterior top surface, an interior top surface, an exterior side
surface, and an interior side surface;
a vacuum aperture extending through the exterior top
surface and the interior top surface of the vacuum distributor;
a vacuum generator, wherein the vacuum generator is
directly coupled to the vacuum distributor;
a plate, the plate is comprised of an interior plate surface
and an exterior plate surface, wherein a plurality of apertures
extend through the interior plate surface and the exterior plate
surface;
a vacuum distribution cavity, the vacuum distribution
cavity formed, at least in part, by the interior top surface and the
interior side surface, wherein an obtuse angle is formed between
the interior top surface and the interior side surface and an acute
angle is formed between the interior side surface and the interior
plate surface, and wherein the acute angle is adapted to enclose
an area of low pressure within the vacuum distributor; and
the interior plate surface coupled to the vacuum distributor
enclosing the vacuum distribution cavity within the vacuum
distributor and the plate.
Br. 11 (Claims App.).
ANALYSIS
As to claim 1, the Examiner finds that Laverriere discloses a vacuum
tool comprising, inter alia, vacuum distributor 1, plate 5, and a vacuum
distribution cavity. Non-Final Act. 2—3, 4 (Examiner’s annotated copy of
Figure 1 of Laverriere). The Examiner finds that Laverriere does not
disclose “an acute angle is formed between the interior side surface and the
interior plate surface.” Id. at 3. The Examiner finds that Rabinow teaches a
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Application 13/299,934
suction pick-up tool having an acute angle formed between an interior side
surface and an interior plate surface. Id. at 4 (citing Rabinow, Figs. 1, 3).
The Examiner concludes that it would have been obvious to modify
Laverriere’s vacuum tool to have the acute angle feature taught by Rabinow,
explaining that “Laverriere [as modified] would be angled all the way down
to the plate instead of dropping down after the angled side surface.” Non-
Final Act. 4.
Appellants first contend that the applied references fail to teach or
suggest “an area of low pressure within a vacuum distributor enclosed by an
acute angle formed between the interior side surface and the interior plate
surface.” Br. 7 (emphasis added). Appellants assert that the acute angle
formed between the interior side surface and interior plate surface in
Rabinow encloses an area of high pressure. Id. (citing Rabinow, col. 2,11.
45-59, Fig. 4).
These contentions are not persuasive. Rabinow describes:
In operation (FIGURES 3—5), when head 10 is brought in
confronting relationship to a sheet 12, the area of the sheet
slightly inward of the edges of opening 32 is drawn toward the
interior of the head by the suction of chamber 28, and this is
shown by the longer arrows 52 in [FIGURE] 5. Concurrently,
the area of the sheet adjacent to surface 30 (adjacent to the edge
of opening 32) is acted upon by the air blowing through opening
48 (and 49 when provided), but the total pressure blowing on the
surface of sheet 12 (arrows 54 for apertures 48, and [arrows] 55
for apertures 49) is considerably less than the suction pressure.
Rabinow, col. 2,11. 44—55. Rabinow also describes that “[t]he head [10]
consists of a housing having walls 26 defining a suction or vacuum chamber
28.” Id. at col. 2,11. 17—18 (emphasis added). Although air blowing
downwardly from openings 48, 49 of manifold 46 acts downwardly on an
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Application 13/299,934
area of sheet 12 (arrows 54), opposite to the direction that suction pressure
acts (arrows 52), Appellants do not explain persuasively why an area of low
pressure is not “enclosed” in a region of vacuum chamber 28 above
manifold 46 between the interior side surface of walls 26 and lower surface
30, which form an acute angle between them. See Rabinow, Figs. 3, 4.
Also, the Examiner explains that Rabinow is only relied on for
teaching the recited acute angle and not for changing low pressure to high
pressure in Laverriere. Ans. 3. As such, the Examiner’s proposed
modification of Laverriere would not eliminate the vacuum distribution
cavity, but would only modify the shape of the interior side surface to form
an acute angle, as claimed, “in order to provide a smaller, more compact tool
and save space.” See Non-Final Act. 4.
Second, Appellants contend that Laverriere cannot be combined with
Rabinow and Clark because this would render Laverriere unsuitable for its
intended purpose. Br. 8. Specifically, Appellants assert that Laverriere uses
low density foam to ensure a seal between the device and a load. Id. (citing
Laverriere, col. 2,11. 41—48). Appellants contend that if Laverriere’s 90°
angle enclosing an area of low pressure were modified with Rabinow’s acute
angle enclosing an area of high pressure, the low density foam would not be
able to ensure a seal between the load and his device. Id.
These contentions are not persuasive. The Examiner responds that
“[a]s long as the foam in Laverriere is accessible to the area with low
pressure, then there would not be any alterations to the way the generator
works.” Ans. 4. Appellants do not explain persuasively why only
modifying the shape of the interior side surface of Laverriere, as taught by
Rabinow, would negatively affect the ability of the modified device to
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Application 13/299,934
provide a seal between a load and the foam. Particularly, Appellants do not
explain why the modified device would be unable to produce sufficiently
low pressure within the vacuum distributor to provide this seal.
Third, Appellants contend that Rabinow cannot be combined with
Laverriere and Clark because Rabinow teaches away from the proposed
combination. Br. 9. Particularly, Appellants contend that Rabinow teaches
that a load must not contact its vacuum tool, whereas, in contrast, both
Laverriere and Clark require loads to be in contact with their respective
vacuum tools. Id. at 9—10 (citing Rabinow, col. 1,11. 21—32; Laverriere, col.
1,11. 40-61, col. 2,11. 41—48; Clark, col. 1,11. 34—37).
A prior art reference may be considered to teach away when “a person
of ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant.” In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994). Rabinow discloses that an object of its
invention “is to provide a suction pick up device for sheets, wherein the
sheets are not physically contacted by the suction head.” Rabinow, col. 1,11.
30-32. However, Appellants do not direct us to any teaching in Rabinow
that indicates angled side walls 26 could not be substituted in Laverriere’s
device to form the claimed acute angle. For example, Appellants do not
identify any teaching in Rabinow that would inform one of ordinary skill in
the art that incorporating angled side walls 26 in Laverriere would prevent
the as-modified device from being brought in physical contact with a load.
Absent identification of such teaching, Appellants’ teaching away argument
is not persuasive. See DyStar Textilfarben GmbH v. C.H. Patrick Co., 464
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Application 13/299,934
F.3d 1356, 1364 (Fed. Cir. 2006) (“We will not read into a reference a
teaching away from a process where no such language exists.”).
Thus, we sustain the rejection of claim 1, and claims 3—12 depending
therefrom and which are not separately argued, as unpatentable over
Laverriere, Clark, and Rabinow.
Claim 21
For claim 21, Appellants rely on substantially the same arguments for
patentability as those made for claim 1. Br. 5—10. Accordingly, we sustain
the rejection of claim 21 as unpatentable over Laverriere, Clark, and
Rabinow for the same reasons as for claim 1.
DECISION
The Examiner’s decision rejecting claims 1, 3—12, and 21 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)(l)(iv).
AFFIRMED
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