Ex Parte Reuteler et al

Board of Patent Appeals and Interferences

Sep 11, 2011

10532528 (B.P.A.I. Sep. 11, 2011)

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.
10/532,528 10/07/2005 Urs Reuteler 045-102 5960
1009 7590 09/11/2011
KING & SCHICKLI, PLLC
247 NORTH BROADWAY
LEXINGTON, KY 40507
EXAMINER
HARMON, CHRISTOPHER R
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
09/11/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte URS REUTELER and CHARLES RAY LANDRUM
________________

Appeal 2009-010737
Application 10/532,528
Technology Center 3700
________________

Before LINDA E. HORNER, JOHN C. KERINS and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE 1
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s 2
final decision rejecting claims 1-6, 9, 106-09 and 111-13. The Examiner 3
rejects claims 109, 111 and 112 under 35 U.S.C. § 112, second paragraph, as 4
being indefinite; claims 109 and 112 under 35 U.S.C. § 102(b) as being 5
anticipated by Steele (US 3,187,483, issued June 8, 1965); claims 1-6, 9, 6
106-08, 111 and 113 under 35 U.S.C. § 103(a) as being unpatentable over 7
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Steele and Disrud (US 5,501,318, issued Mar. 26, 1966); and claims 4, 107 1
and 108 under § 103(a) as being unpatentable over Steele and Moncrief (US 2
5,638,659, issued Jun. 17, 1997). The Examiner has withdrawn claims 10-3
15 and 19. We have jurisdiction under 35 U.S.C. § 6(b). 4
We sustain the rejections of claims 1, 4, 6, 9, 107, 109, 111 and 112. 5
We do not sustain the rejection of claims 2, 3, 5, 106, 108 and 113. 6
Claim 107 is illustrative of the claims on appeal: 7
107. An apparatus for conveying a carton 8
including a lid having at least one flap, 9
comprising: 10
a conveyor assembly including a support 11
surface for supporting the carton and creating a 12
conveying path having an L-shape in plan view, 13
said conveyor assembly comprising 14
an overhead conveyor overlying a 15
first portion of the support surface extending 16
in a first direction and including at least one 17
first lug mounted to a first endless chain for 18
selectively pivoting relative to the first 19
endless chain from a retracted position 20
above the support surface to a depending 21
position in the conveying path for engaging 22
a first end of the carton and conveying the 23
carton along the first leg of the L-shaped 24
path from an infeed end of the overhead 25
conveyor to an outfeed end thereof, and 26
a takeaway conveyor adjacent a 27
second portion of the support surface and 28
the outfeed end of the overhead conveyor 29
for conveying at least one second lug 30
mounted to a second endless chain for 31
selectively pivoting relative to the second 32
endless chain from a retracted position to an 33
upstanding position for engaging and 34
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conveying the carton conveyed by the at 1
least one first lug of the overhead conveyor 2
to the outfeed end of the overhead conveyor 3
in a second direction along the second 4
portion of the support surface, said second 5
direction being generally perpendicular to 6
the first direction; and 7
a folder for folding the at least one flap 8
while the carton is conveyed. 9
10
ISSUES 11
Only issues and findings of fact contested by the Appellants have 12
been considered. See Ex Parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 13
2010). In view of the findings and conclusions of the Examiner, and the 14
arguments of the Appellants, six issues are dispositive of this appeal: 15
First, are claims 109, 111 and 112 indefinite? (See App. 16
Br. 6-8; Ans. 3-4 and 7; Reply Br. 1-2.) 17
Second, did the Examiner properly find that claims 109 18
and 112 are anticipated by Steele? (See App. Br. 8-9; Ans. 4-5 19
and 8; Reply Br. 2-3.) 20
Third, do the evidence and technical reasoning 21
underlying the rejection of representative claim 1 adequately 22
support the conclusion that it would have been obvious to 23
substitute an overhead conveyor, alone or in combination with a 24
lower conveyor, for the belt conveyor c disclosed by Steele? 25
(See App. Br. 10; Ans. 6 and 8; Reply Br. 3.) 26
Fourth, do the evidence and technical reasoning 27
underlying the rejection of claims 2-4 adequately support the 28
conclusion that the limitations separately recited in those claims 29
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would have been obvious? (See App. Br. 10-11 and 12; Ans. 9; 1
Reply Br. 3-4.) 2
Fifth, do the evidence and technical reasoning underlying 3
the rejection of claim 113 adequately support the conclusion 4
that it would have been obvious to modify the apparatus of 5
Steele to position a first folder for folding at least the first flap 6
of a carton while the carton is conveyed by the first conveyor? 7
(See App. Br. 12; Ans. 4 and 6.) 8
Sixth, do the evidence and technical reasoning underlying 9
the rejections of claims 107 and 108 adequately support the 10
conclusion that it would have been obvious to modify the 11
apparatus of Steele so that a portion of the overhead conveyor 12
substituted for the belt conveyor c overlies a portion of the 13
conveyor i? (See App. Br. 10-11; Ans. 4-5 and 6-7.) 14
15
FINDINGS OF FACT 16
The record supports the following findings of fact (“FF”) by a 17
preponderance of the evidence. 18
1. Steele describes a packaging machine which receives filled 19
cartons in continuous succession from a carton end-closing machine; feeds 20
the cartons continuously through stations in which caulk and adhesive 21
compounds are applied to end closure flaps of the cartons; and transfers the 22
cartons to a compression unit in which pressure is applied to ensure proper 23
setting of the end closure flaps. (Steele, col. 1, ll. 39-55.) 24
2. Steele discloses that the cartons a are fed from the carton end-25
closing machine “upon a lugged link belt or other appropriate conveyor c 26
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edgewise, and in uniformly spaced relation, over a dead plate d and onto the 1
conveyor belt e of the apparatus.” (Steele, col. 3, ll. 55-61; see generally id., 2
col. 3, l. 51 – col. 4, l. 8 and figs. 1 and 4.) Steele does not disclose that any 3
folding of the cartons a occurs on either the conveyor belt c or the conveyor 4
belt e. 5
3. Steele also discloses that the cartons a are intermittently fed 6
from the conveyor belt e “by the appropriately timed reciprocation of a 7
pusher plate f over a dead plate g and between the constantly traveling upper 8
and lower lugged link conveyor belts h and i, respectively.” (Steele, col. 3, 9
ll. 61-65 and figs. 3 and 11.) Figure 1 of Steele depicts neither the conveyor 10
belt c nor the conveyor belt e as overlying either the upper conveyor belt h 11
or the lower conveyor belt i. 12
4. Steele describes the upper and lower lugged link conveyors h, i 13
as “serving to advance the cartons in a direction at right angles to their feed 14
by the conveyor belt e.” (Steele, col. 3, ll. 67-69.) Figure 11 depicts the 15
upper lugged link conveyor h as having lugs which depend along the lower 16
flight of the conveyor. Figure 1 of Steele depicts the lugged link conveyor 17
belt c and the conveyor belt e advancing the cartons a in the same first 18
direction. Consequently, the upper and lower lugged link conveyor belts h, i 19
convey the cartons a in a second direction generally perpendicular to the 20
first direction in which the lugged link conveyor belt c conveys the cartons. 21
5. We adopt the Examiner’s findings at page 6, lines 4-8 of the 22
Answer: 23
The first conveyor c which travels along a first 24
portion of the path is not directly disclosed as an 25
overhead conveyor[. H]owever Steele notes that 26
containers are fed from the closing apparatus 27
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‘upon a lugged link belt or other appropriate 1
conveyor c’ (column 3, lines 56+). Disrud 2
provides an overhead lugged conveyor for 3
conveyance of packaging materials along a 4
surface; see figure 1. 5
6. Disrud teaches that a “common problem with article packaging 6
machines, and with beverage container packaging machines in particular, is 7
that the top portions of empty open cartons being conveyed along the path 8
tend to drag or lag behind the bottom portions that are held in place and 9
pushed by the conveyor lugs” of a lower conveyor belt. (Disrud, col. 1, ll. 10
41-45). “This causes the cartons to become deformed as they move along 11
the path.” (Disrud, col. 1, ll. 45-47; see also col. 4, ll. 54-63). Disrud 12
further teaches that Disrud’s overhead lugged conveyor “functions to 13
stabilize and push along the top portions of the cartons to maintain the 14
square geometry of the cartons and avoid problems resulting from 15
misinsertion of articles into deformed cartons.” (Disrud, col. 4, ll. 63-67). 16
7. Disrud describes an overhead conveyor or pusher lug 17
mechanism 11 designed to be incorporated into a packaging machine. In 18
Disrud’s preferred embodiment, the overhead conveyor 11 is used in 19
combination with a lower carton conveyor mechanism 21. (Disrud, col. 4, ll. 20
42-53). Disrud appears to provide no further description of a packaging 21
machine into which the conveyor 11 might be incorporated. 22
8. Disrud’s overhead conveyor 11 includes a plurality of generally 23
triangular pusher lugs 23 pivotally mounted at spaced intervals along an 24
endless conveyor chain 12. (Disrud, col. 5, ll. 9-11). 25
9. Moncrief discloses a packaging machine 5 including a variable 26
pitch lugged conveyor belt assembly 12. (Moncrief, col. 6, l. 64 – col. 7, l. 27
1.) 28
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10. Moncrief’s variable pitch lugged conveyor belt assembly 12 1
includes conveyor chains 61, 62; pop-up lug assemblies 63; an actuating 2
assembly 68; and lower and upper cam tracks 77, 78 which extend 3
approximately in parallel with each other and with the conveyor chains 61, 4
62. (Moncrief, col. 7, ll. 26-32; col. 10, ll. 38-45; col. 13, ll. 9-18; and figs. 5
4A-4C.) 6
11. Moncrief uses the reference numeral 63 to refer to three 7
different lug assemblies. Each of Moncrief’s pop-up lug assemblies 63 8
includes a cam follower 100 for engagement with one of the lower and upper 9
cam tracks 77, 78. (E.g., Moncrief, col. 14, ll. 10-14.) The pop-up lug 10
assembly depicted in Figures 10A and 10B of Moncrief uses a rotatable 11
guide piece 120 as an actuating mechanism for guiding pop-up assemblies 12
63 into the raised position from the lowered position. (Moncrief, col. 15, ll. 13
3-13 and figs. 10A and 10B.) The pop-up lug assembly depicted in Figures 14
12A and 12B of Moncrief uses a guide piece 130 driven linearly by a rod 15
132 to direct a pop-up assembly 63 into the raised position. (Moncrief, col. 16
15, ll. 44-51 and figs. 12A and 12B.) 17
12. The lug assembly 63 depicted in Figures 4A and 4B of 18
Moncrief appears to rely on gravity to retract the pop-up lugs 92. On the 19
other hand, the lug assembly 63 depicted in Figures 10A and 10B, as well as 20
the lug assembly 63 depicted in Figures 12A and 12B, appear to rely on 21
mechanical means independent of gravity for extending and retracting the 22
lugs 92. Turning these assemblies upside-down to allow the lugs 92 to move 23
from retracted to downwardly depending positions would not require any 24
change in design. 25
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13. Moncrief teaches that: 1
flighted conveyors using fixed timing lugs or pins 2
are known, the limitation of these conveyor belts 3
being that the pitch of the flights, the distance 4
between the front of one lug to the front of the next 5
lug, is fixed so that the pitch or distance between 6
flights cannot be changed for groups of containers 7
of varying sizes. As shown schematically in FIGS. 8
4A through 4C, however, each of pop-up lug 9
assemblies 63 can be individually selected for 10
movement into the raised position R from the 11
lowered position L dependent on the needs of the 12
packaging machine, and as determined by the 13
timing requirements of the groups of containers 14
being moved along the path of travel. By using 15
pop-up lug assemblies, the amount of dead space, 16
i.e., space which is taken up by the pop-up lug 17
when it is in the raised position, is reduced which 18
allows either for a higher product throughput for a 19
given conveyor speed, or a lower conveyor speed 20
for a given product throughput based on 21
production needs or requirements. 22
(Moncrief, col. 13, ll. 41-58.) 23
14. Moncrief also teaches that: 24
The unique feature of packaging machine 5 is its 25
ability to adjust for groups of containers, in this 26
instance, bottles or cans, of varying size without 27
the need to stop production or to physically 28
release, move, and reposition any side guides or 29
conveyor chains formed as a part of the packaging 30
machine, thus greatly enhancing the flexibility, 31
efficiency, and performance of packaging machine 32
5 in high speed, high volume packaging 33
operations. 34
(Moncrief, col. 9, l. 65 – col. 6, l. 6.) 35
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ANALYSIS 1
First Issue 2
The Examiner concludes that claim 109 is indefinite because the first 3
and second portions of the “support surface” are not contiguous and because 4
it is unclear “how one portion of the surface overlies the other transverse 5
portion.” (Ans. 3.) As the Appellants point out (see App. Br. 7), claim 109 6
never recites that one portion of the support surface overlies another. 7
The Examiner also concludes that claim 109 is indefinite because it is 8
unclear whether the conveyors identified in the Specification correspond to 9
the two recited means for conveying the carton recited in claim 109. (See 10
Ans. 4.) Claim 109 recites both “means for conveying the carton along the 11
first portion of the support surface from a first end of the first portion of the 12
support surface to a second end of the support surface” and “means for 13
conveying the carton to the second end of the first portion of the support 14
surface along the second portion of the support surface.” The Appellants’ 15
use of the term “means” and failure to recite definite structure for carrying 16
out the recited function gives rise to a presumption that both limitations are 17
subject to interpretation under the sixth paragraph of 35 U.S.C. § 112. B. 18
Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997). 19
The Appellants have not rebutted this presumption. 20
The Appellants fail to identify structure described by the Specification 21
which corresponds to the latter of the two “means for conveying.” Although 22
the Appellants assert that the corresponding structure in the Specification is 23
a takeaway conveyor 16 (see App. Br. 5), the Appellants fail to persuasively 24
explain how the takeaway conveyor 16 performs the identical function of 25
conveying a carton to the second end of the first portion 78 of the support 26
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surface 78, S or is otherwise clearly linked with the “means-plus-function” 1
limitation. The Appellants’ argument that “the ‘means’ conveys the carton 2
once delivered ‘to’ the second end of the first portion along the second 3
portion of the support surface” (Reply Br. 1-2) is based on an unreasonably 4
broad interpretation of claim 109 inconsistent with the ordinary meaning of 5
the language used. 6
Since claim 109 recites a “means-plus-function” limitation with no 7
corresponding structure described in the Specification, claim 109 is 8
indefinite. Aristocrat Techs. Australia Pty. v. International Gaming Tech., 9
521 F.3d 1328, 1333 (Fed. Cir. 2008). Claims 111 and 112, which depend 10
from claim 109 and incorporate the defects of claim 109 by reference, also 11
are indefinite. We sustain the rejection of claims 109, 111 and 112 under 12
§ 112, second paragraph, as being indefinite. 13
The Examiner’s decision not to enter the Appellants’ proffered 14
amendment after final is not appealable to the Board. See In re Berger, 279 15
F.3d 975, 984 (Fed. Cir. 2002). The Examiner’s refusal to enter the 16
amendment is reviewable, if at all, only by means of a timely petition. 17
Nevertheless, we explicitly state pursuant to 37 C.F.R. § 41.50(c) that claim 18
109 may be amended to overcome the rejection of claims 109, 111 and 112 19
under § 112, second paragraph, in the manner set forth by the Appellants in 20
their un-entered amendment dated December 8, 2008: 21
109. An apparatus for conveying a carton 22
including a lid having at least one flap, 23
comprising: 24
a support surface for supporting the carton 25
and creating a conveying path having an L-shape 26
in plan view by including a first portion extending 27
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in a direction generally perpendicular to the second 1
portion; 2
means for conveying the carton along the 3
first portion of the support surface from a first end 4
of the first portion of the support surface to a 5
second end of the first portion of the support 6
surface; 7
means for conveying the carton delivered to 8
the second end of the first portion of the support 9
surface along the second portion of the support 10
surface, said means for conveying along the first 11
portion of the support surface at least partially 12
overlying the second portion of the support 13
surface; and 14
means for folding the at least one flap while 15
the carton is conveyed. 16
17
Second Issue 18
Since the Specification fails to disclose structure corresponding to the 19
“means for conveying the carton to the second end of the first portion of the 20
support surface along the second portion of the support surface” recited in 21
claim 109, any analysis as to whether Steele anticipates claims 109 and 112 22
would be speculative. For this reason, we summarily reverse the rejection of 23
claims 109 and 112 under § 102(b) as being anticipated by Steele. See In re 24
Steele, 305 F.2d 859, 862 (CCPA 1962); In re Wilson, 424 F.2d 1382, 1385 25
(CCPA 1970). Nevertheless, we explicitly state pursuant to 37 C.F.R. 26
§ 41.50(c) that claim 109 may be amended to overcome the rejection of 27
claims 109 and 111 under § 102(b) in the manner set forth by the Appellants 28
in their un-entered amendment dated December 8, 2008 and reproduced in 29
the previous paragraph. 30
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Claim 109 recites “said means for conveying along the first portion of 1
the support surface at least partially overlying the second portion of the 2
support surface.” The Examiner finds that the overhead conveyor h 3
corresponds to the “means for conveying the carton along the first portion of 4
the support surface from a first end of the first portion of the support surface 5
to a second end of the support surface” recited in claim 109 as appealed. 6
Were claim 109 amended in the manner which we have stated under 37 7
C.F.R. § 41.50(c), we would agree with the Appellants that the structure in 8
the Specification corresponding to the “means for conveying the carton 9
along the first portion of the support surface from a first end of the first 10
portion of the support surface to a second end of the support surface” would 11
be the takeaway conveyor 16. 12
Steele’s overhead conveyor h does not perform the identical function 13
of conveying a carton along a first portion of the support surface from a first 14
end of the first portion of the support surface to a second end of the support 15
surface. (See FF 3.) This function is performed by Steele’s conveyors c and 16
e (see FF 2), which do not even partially overlie the second portion of the 17
support surface represented by the conveyor i (see FF 3). We would not 18
sustain the rejection of claims 109 and 112 under § 102(b) as being 19
anticipated by Steele were claim 109 amended as we have stated pursuant to 20
37 C.F.R. § 41.50(c). 21
The Examiner rejects claim 111 under § 103(a) as being unpatentable 22
over Steele and Disrud. We summarily reverse the rejection in view of our 23
decision sustaining the rejection of parent claim 109 under § 112, second 24
paragraph. Steele, Wilson. Nevertheless, the Examiner articulates no reason 25
why it would have been obvious to modify Steele’s packaging machine to 26
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include a means for conveying along the first portion of the support surface 1
which at least partially overlays the second portion of the support surface. 2
(See Ans. 6 (merely stating that “the conveyor c extends beyond the 3
takeaway conveyor e, therefore an overhead conveyor in the same position 4
would overlie the other as claimed”).) Disrud teaches a conveyor (FF 5) but 5
does not address packaging machines as a whole. (FF 7.) As such, Disrud 6
does not remedy the deficiencies in the teachings of Steele for purposes of 7
the rejection of claim 111 under § 103(a). We would not sustain the 8
rejection of claim 111 under § 103(a) as being unpatentable over Steele and 9
Disrud were claim 109 amended as we have stated pursuant to 37 C.F.R. 10
§ 41.50(c). 11
Claim 106 recites a machine “wherein a portion of the overhead 12
conveyor overlies a portion of the takeaway conveyor.” Claim 108 recites a 13
machine “wherein the overhead conveyor at least partially overlies the 14
second portion of the support surface.” We do not sustain the rejection of 15
either claim 106 or claim 108 under § 103(a) as being unpatentable over 16
Steele and Disrud. (See App. Br. 11-12; Reply Br. 9.) 17
The Examiner does not explain how the teachings of Moncrief might 18
remedy this deficiency in the teachings of Steele for purposes of the 19
rejection of claim 108. We do not sustain the rejection of claim 108 as being 20
unpatentable over Steele and Moncrief. 21
22
Third Issue 23
The Appellants separately argue the patentability of each claim 24
rejected under § 103(a) as being unpatentable over Steele and Disrud except 25
claims 6 and 9. Claims 6 and 9 stand or fall with parent claim 1. 26
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With respect to claim 1, the Appellants contend that “the record is 1
void of any reason as to why such an overhead conveyor would be used in 2
the Steele arrangement.” (Reply Br. 3; see also App. Br. 10). The Examiner 3
correctly finds that Disrud describes an overhead lugged conveyor for 4
conveyance of packaging materials along a surface. (FF 5.) As the 5
Examiner points out on page 8 of the Answer, “if a technique has been used 6
to improve one device, and a person of ordinary skill in the art would 7
recognize that it would improve similar devices in the same way, using the 8
technique is obvious unless its application is beyond his or her skill.” KSR 9
Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). Steele itself expressly 10
teaches that another appropriate conveyor may be substituted for the lower 11
conveyor belt c at the first portion of the support surface of Steele’s 12
apparatus. (FF 2 and 5.) The Examiner is correct in reasoning that it would 13
have been obvious “to include the overhead conveyance system of Disrud in 14
the invention of Steele for providing the cartons along the first portion of the 15
surface for supporting the carton.” (See Ans. 6.) 16
Steele discloses feeding cartons a “upon a lugged link belt or other 17
appropriate conveyor c edgewise, and in uniformly spaced relation, over a 18
dead plate d and onto the conveyor belt e of the apparatus.” (Steele, col. 3, 19
ll. 55-61 (emphasis added); see also FF 2.) In other words, the lugs of the 20
conveyors belts c, e engage the bottom portions of the cartons a. Disrud 21
teaches that conveying cartons by means of conveyor belts engaging the 22
bottom portions of the cartons can lead to deformation of the cartons. 23
Disrud further teaches that an overhead lugged conveyor such as that 24
described by Disrud stabilizes and pushes the top portions of the conveyors, 25
thereby addressing the tendency of lower conveyor belts to deform the 26
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cartons. (FF 6.) Since the conveyors c, e described by Steele and the 1
overhead lugged conveyor described by Disrud are similar devices in the 2
sense that both convey cartons over a support surface, these teachings 3
support the Examiner’s conclusion that one of ordinary skill in the art would 4
have recognized substituting an overhead lugged conveyor such as Disrud’s 5
for Steele’s conveyor belts c, e would have improved Steele’s packaging 6
machine by providing support for the containers. (See Ans. 6.) 7
The Appellants do not persuasively argue either that the 8
implementation of the proposed substitution would have been beyond the 9
level of ordinary skill in the art or that the results of the substitution would 10
have been unpredictable. We sustain the rejection of claims 1, 6 and 9 under 11
§ 103(a) as being unpatentable over Steele and Disrud. 12
13
Fourth Issue 14
The Appellants separately argue the patentability of each of claims 2-15
4 and 107. Claims 2-4 depend ultimately from claim 1. Claim 2 recites 16
“wherein the first lug [conveyed by the overhead conveyor] is pivotally 17
mounted to a conveyor chain for moving between the retracted position 18
overlying the support surface and the depending position.” Claim 3 recites 19
“wherein the takeaway conveyor includes a pair of generally parallel 20
conveyor chains, each including at least one second lug, wherein each at 21
least one second lug is pivotally mounted to the corresponding conveyor 22
chain.” Claim 4 recites “wherein each second lug is a pop-up lug movable 23
between a retracted position below the conveying path and an upstanding 24
position.” 25
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The Examiner finds that “[l]ugs are considered retracted and 1
upstanding to selectively engage containers as they travel around 2
cylinders/pulleys into and out of engaging paths.” (Ans. 6.) This finding 3
necessarily assumes an unreasonable interpretation of claims 2-4 and 107. 4
Claim 1 recites that each of the overhead and takeaway conveyors conveys 5
at least one lug. The lugs of any lugged conveyor necessarily will 6
selectively engage containers as they travel around cylinders/pulleys into 7
and out of engaging paths. Consequently, the Examiner’s reasoning implies 8
that claims 2-4 do not further limit the subject matter of claim 1. Since our 9
reviewing court disfavors any claim interpretation which would render claim 10
limitations superfluous, see Stumbo v. Eastman Outdoors, Inc., 508 F.3d 11
1358, 1362 (Fed. Cir. 2007), the Examiner’s finding is based on an 12
unreasonable interpretation of claims 2-4. Likewise, the Examiner’s finding 13
presupposes an unreasonable interpretation which would render limitations 14
of claim 107 superfluous. When reasonably interpreted, claims 2-4 and 107 15
require conveyors with lugs mounted pivotally relative to the recited 16
conveyors. 17
Disrud describes an overhead conveyor with lugs mounted pivotally 18
relative to the conveyor. (FF 8). Nevertheless, the only reason provided by 19
the Examiner for substituting pivotally mounted lugs as taught by Disrud for 20
the fixed lugs of the conveyors described by Steele is that “[o]ne of ordinary 21
skill in the art would have been fully capable of looking to Disrud for a 22
conveyor of a known type to be used in the invention of Steele (as expressly 23
suggested by Steele).” (Ans. 9.) This reasoning says nothing more than that 24
Disrud’s conveyor was known in the art. “[A] patent composed of several 25
elements is not proved obvious merely by demonstrating that each of its 26
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elements was, independently, known in the art.” KSR at 418. The Examiner 1
provides no apparent reason to have combined the known elements in the 2
fashion claimed. (See App. Br. 13.) In particular, the Examiner fails to 3
explain why one of ordinary skill in the art might have recognized Disrud’s 4
overhead conveyor with pivotally mounted lugs to have been an “other 5
appropriate conveyor” for substitution (albeit upside-down) in place of 6
Steele’s conveyor belts c, e. Since the Appellants correctly argue that the 7
Examiner has provided no persuasive reason for providing a conveyor with 8
pivotally mounted lugs in Steele’s machine, we do not sustain the rejections 9
of claims 2-4 and 107 under § 103(a) as being unpatentable over Steele and 10
Disrud. 11
12
Fifth Issue 13
The Appellants argue that the Examiner has provided no reason why 14
one of ordinary skill in the art might have added to Steele’s machine a first 15
folder for folding a first flap of a carton while conveyed by the overhead 16
conveyor. (App. Br. 12.) The Examiner neither responds to the Appellants’ 17
argument nor explains why a machine meeting this limitation would have 18
been obvious. We do not sustain the rejection of claim 113 under § 103(a) 19
as being unpatentable over Steele and Disrud. 20
Claim 5 depends from claim 1 and recites a machine “further 21
including a rotatable wheel having at least one radially extending projection 22
for at least partially closing the at least one flap before or during the 23
engagement of the carton by the depending lug of the overhead conveyor.” 24
The Examiner finds, and the Appellants agree, that “rotatable wheels with 25
radially projecting extensions are well known in the art for at least partially 26
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Application No. 10/532,528

18
closing flaps.” (Ans. 6; App. Br. 11.) That said, the Examiner’s sole reason 1
why the positioning of such as wheel as recited in claim 5 would have been 2
obvious is that it would have been obvious “to close the flaps (at least one 3
partially) of the container of Steele by a rotatable wheel having at least one 4
radially extending projection for closing flaps as the containers passed 5
through the production cycle.” (Ans. 6.) 6
Even assuming for purposes of this appeal only that the Examiner has 7
provided adequate reason why one of ordinary skill in the art might have 8
employed such a wheel at all in the machine described by Steele, the 9
Examiner has provided no persuasive reason why one of ordinary skill in the 10
art might have wanted to position that wheel so as to close “the at least one 11
flap before or during the engagement of the carton by the depending lug of 12
the overhead conveyor.” We do not sustain the rejection of claim 5 under 13
§ 103(a) as being unpatentable over Steele and Disrud. 14
15
Sixth Issue 16
The Examiner concludes that “[o]ne of ordinary skill in the art could 17
[have] easily provide[d] the lugged belt and actuation means (i.e. diverter, 18
motive device, etc.) in the invention of Steele for providing the selective 19
transport of products.” (Ans. 10.) This conclusion is supported by the 20
teachings of Moncrief. Moncrief teaches an advantage of a conveyor having 21
lugs individually selectable for movement into and out of contact with 22
containers, which is that the distance between lugs selected for contact with 23
the containers may be set as determined by the timing requirements of the 24
groups of containers. (FF 13.) Consequently, if the rate at which containers 25
are fed onto a conveyor having individually selectable lugs changes (albeit 26
Appeal No. 2009-010737
Application No. 10/532,528

19
uniformly from carton to carton so as to maintain uniform spacing), the 1
timing of the selection of the lugs selected for contact with the containers 2
may be changed so as to adapt to the change in rate. (See id.) Alternatively, 3
if the sizes of the containers fed to the conveyor change, the distance 4
between the lugs selected for contact with the containers may be changed so 5
as to adapt to the change in carton size. (See FF 14.) 6
The Appellants point out that “[n]either Steele nor Moncrief disclose 7
any lugs in a depending position for engaging and conveying anything.” 8
(App. Br. 17; Reply Br. 9.) The combination of the teachings of Steele and 9
Moncrief proposed by the Examiner in rejecting claims 4 and 107 involves 10
substituting a conveyor of the type described by Moncrief for at least one 11
overhead conveyor. An ordinary layman, not to mention one of ordinary 12
skill in the art, would have recognized as a matter of common sense that in 13
order for lugs carried by an overhead conveyor to engage cartons to be 14
transported by the conveyor, the lugs must extend downwardly from the 15
overhead conveyor. In addition, Figure 11 of Steele depicts downwardly 16
depending lugs on the overhead conveyor h. (FF 4.) One of ordinary skill in 17
the art familiar with Figure 11 of Steele would have to exercise imagination 18
to provide lugs which, if not retracted, extended in a direction other than 19
downwardly in order to contact the cartons to be transported. Turning these 20
assemblies upside-down to allow the lugs 92 to move from retracted to 21
downwardly depending positions would not require substantial change in the 22
design of the conveyor. (See FF 12.) We sustain the rejection of claims 4 23
and 107 as being unpatentable over Steele and Moncrief. 24
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Application No. 10/532,528

20
DECISION 1
We AFFIRM the Examiner’s decision rejecting claims 1, 4, 6, 9, 107, 2
109, 111 and 112. 3
We REVERSE the Examiner’s decision rejecting claim 2, 3, 5, 106, 4
108 and 113. 5
Pursuant to our authority under 37 C.F.R. § 41.50(c), we explicitly 6
state that claim 109 may be amended to overcome all entered rejections of 7
claims 109, 111 and 112 in the manner set forth by the Appellants in their 8
un-entered amendment dated December 8, 2008 and reproduced supra. 9
No time period for taking any subsequent action in connection with 10
this appeal may be extended under 37 C.F.R. § 1.136(a) (2007). 11
12
AFFIRMED-IN-PART 13
14
15
Klh 16