Ex Parte Reuteler et al

Board of Patent Appeals and Interferences

Jul 29, 2011

11872409 (B.P.A.I. Jul. 29, 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.
11/872,409 10/15/2007 Urs Reuteler 045-102 Div 8794
1009 7590 08/01/2011
KING & SCHICKLI, PLLC
247 NORTH BROADWAY
LEXINGTON, KY 40507
EXAMINER
HARMON, CHRISTOPHER R
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
08/01/2011 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 2009-009470
Application 11/872,409
Technology Center 3700
________________

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

McCARTHY, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

The Appellants have filed a “Request for Rehearing” (“Request”). 1
The Request seeks rehearing of our Decision mailed March 22, 2011 2
(“Decision”). The Examiner rejects claims 1-20 under 35 U.S.C. § 103(a) as 3
being unpatentable over Steele (US 3,187,483, issued Jun 8, 1965) and 4
Moncrief (US 5,638,659, issued Jun. 17, 1997). The Decision sustained the 5
rejections of claims 1-5, 7-9, 11-18 and 20; and did not sustain the rejections 6
of claims 6, 10 and 19. We have jurisdiction over the Request under 35 7
U.S.C. § 6(b).8
Appeal No. 2009-009470
Application No. 11/872,409

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The Appellants present two points which the Appellants contend we 1
have misapprehended or overlooked. We grant the Request to the extent that 2
we have considered the Appellants’ arguments but otherwise deny the 3
Request. 4
The first point which the Appellants contend the Board 5
misapprehended or overlooked is that the Board allegedly failed to articulate 6
a persuasive reason with some rational underpinning why it would have been 7
obvious either to substitute an overhead conveyor similar to the overhead 8
conveyor h, alone or in combination with a lower conveyor similar to the 9
conveyor I, for the lower conveyor c described by Steele. (See Request 7-8.) 10
This point was addressed at pages 6-7 of the Decision. The reason is that, 11
when “a patent claims a structure already known in the prior art that is 12
altered by the mere substitution of one element for another known in the 13
field, the combination must do more than yield a predictable result.” KSR 14
Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). Overhead conveyors 15
were known, at least in combination with lower conveyors, as evidenced by 16
the conveyor h depicted in Figure 11 of Steele. The Appellant does not 17
dispute that the then level of skill in the art was such that one of ordinary 18
skill in the art could have implemented the substitution. Furthermore, the 19
effects of substituting an overhead conveyor, alone or together with a lower 20
conveyor, for Steele’s conveyor c were predictable, even if the substitution 21
might have been found to yield advantages unknown to one of ordinary skill 22
in the art. 23
The second point which the Appellants contend the Board 24
misapprehended or overlooked is that the Board allegedly failed to articulate 25
a persuasive reason with some rational underpinning why it would have been 26
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obvious to substitute a lug selectively movable from a retracted position to a 1
depending position for at least one of the fixed lugs of a conveyor similar to 2
the conveyor h described by Steele. (Request 4-7.) 3
The passage at column 13, lines 41-58 of Moncrief, quoted on page 8 4
of the Decision, teaches at least one advantage of a conveyor having lugs 5
individually selectable for movement into and out of contact with containers 6
being moved by the conveyor. The passage teaches that the distance 7
between lugs selected for contact with the containers may be set as 8
determined by the timing requirements of the groups of containers. 9
Conveyors with fixed lugs also have fixed distances between the lugs 10
selected for contact. Consequently, if the rate at which containers are fed 11
onto conveyor having individually selectable lugs changes (albeit uniformly 12
from carton to carton so as to maintain uniform spacing), the timing of the 13
selection of the lugs selected for contact with the containers may be changed 14
so as to adapt. 15
This passage provides a reason why one of ordinary skill in the art 16
would have had reason to substitute lugs individually selectable for 17
movement into and out of contact with cartons being moved by the conveyor 18
for fixed lugs from an in-feeding station into a carton sealing machine. An 19
ordinary layman, not to mention one of ordinary skill in the art, would have 20
recognized as a matter of common sense that in order for lugs carried by an 21
overhead conveyor to engage cartons to be transported by the conveyor, the 22
lugs must extend downwardly from the overhead conveyor. In addition, 23
Figure 11 of Steele depicts downwardly depending lugs on the overhead 24
conveyor h. One of ordinary skill in the art familiar with Figure 11 of Steele 25
would have to exercise imagination to provide lugs which, if not retracted, 26
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Application No. 11/872,409

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extended in a direction other than downwardly. Therefore, it would have 1
been obvious to substitute lugs individually selectable for movement from a 2
retracted position to a downwardly depending position for contact with the 3
cartons entering Steele’s carton sealing machine via the in-feeding station. 4
At this point, we acknowledge some ambiguity in the Decision, 5
although that ambiguity does not affect our ultimate conclusion that the 6
subject matter of claims 1-5, 7-9, 11-18 and 20 would have been obvious. 7
Page 8 of the Decision states that the passage at column 13, lines 41-58 of 8
Moncrief “would have provided adequate reason for substituting pop-up lug 9
assemblies similar to the assemblies 63 described by Moncrief for the fixed 10
lugs of the lugged link conveyors described or rendered obvious over 11
Steele.” As indicated in FF 7 on page 6 of the Decision, Moncrief uses the 12
reference numeral 63 to refer to three different lug assemblies. The lug 13
assembly 63 depicted in Figures 4A and 4B of Moncrief appears to rely on 14
gravity to retract the pop-up lugs 92. Turning the lug assembly 92 upside-15
down so as to permit the lug 92 to engage with a carton traveling beneath an 16
overhead conveyor would prevent the lug assembly 63 from retracting the 17
lug 92 without a substantial change in design. Neither the Examiner nor this 18
Board has provided a persuasive reason why such a change in the design of 19
the particular lug assembly depicted in Figures 4A and 4B would have been 20
obvious. 21
On the other hand, the lug assembly 63 depicted in Figures 10A and 22
10B, as well as the lug assembly 63 depicted in Figures 12A and 12B, 23
appears to rely on mechanical means independent of gravity for extending 24
and retracting the lugs 92. Turning these assemblies upside-down to allow 25
the lugs 92 to move from retracted to downwardly depending positions 26
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would not require any change in design. Even assuming that it might not 1
have been obvious to substitute lug assemblies 63 for fixed lugs carried by 2
an overhead conveyor, it would have been obvious to substitute either of the 3
lug assemblies 63 depicted in Figures 10A, 10B, 12A and 12B for fixed lugs 4
in an overhead conveyor for conveying cartons to Steele’s sealing machine 5
via the in-feeding station. 6
Therefore, the structure recited in claims 1-5, 7-9, 11-18 and 20 would 7
have been obvious. As pointed out on page 9 of the Decision, the structure 8
is not patentable merely because advantages unappreciated by one of 9
ordinary skill in the art flowed naturally from the use of the otherwise 10
obvious structure. Ex Parte Obiaya, 227 USPQ 58, 60 (BPAI 1985). 11
12
DECISION 13
We grant the Request to the extent that we have considered the 14
Appellants’ arguments but otherwise deny the Request. 15
We recognize that, by clarifying an ambiguity in the Decision, the 16
present opinion may be deemed, in effect, a new decision. In the interest of 17
providing the Appellants a full and fair opportunity to address the 18
patentability of claims 1-5, 7-9, 11-18 and 20, we state pursuant to 37 C.F.R. 19
§ 41.50(a)(1) that a second request for rehearing will be permitted. The 20
second request for rehearing must be filed within TWO MONTHS and must 21
be limited to the Second Issue as set forth in the Decision. We remind the 22
Appellants that any procedural issues relating to the Examiner’s actions 23
carrying into effect a decision ordinarily are reviewable by petition rather 24
than by appeal to this Board. 25
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No time period for taking any subsequent action in connection with 1
this appeal may be extended under 37 C.F.R. § 1.136(a) (2007). 2
3
REQUEST DENIED 4
5
Klh 6