Ex Parte Sedore

Patent Trial and Appeal Board

Nov 22, 2013

11834247 (P.T.A.B. Nov. 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.
11/834,247 08/06/2007 Kevin J. Sedore 7230 9407
41669 7590 11/22/2013
BABCOCK & WILCOX POWER GENERATION GROUP, INC.
PATENT DEPARTMENT
20 SOUTH VAN BUREN AVENUE
BARBERTON, OH 44203
EXAMINER
SEVERSON, JEREMY R
ART UNIT PAPER NUMBER
3653
MAIL DATE DELIVERY MODE
11/22/2013 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 KEVIN J. SEDORE
____________________

Appeal 2011-013171
Application 11/834,247
Technology Center 3600
____________________

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

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-013171
Application 11/834,247
2
STATEMENT OF THE CASE
Kevin J. Sedore (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 2-35 and 46. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
The Claimed Subject Matter
Claim 46, reproduced below, is illustrative of the claimed subject
matter.
46. A trommel for screening out coins from a non-ferrous
residue throughput comprising:
at least two transverse bracing members; and
a plurality of cylindrically-shaped spaced-apart elongate
members, the plurality of cylindrically-shaped elongate
members having a first longitudinal end and a second
longitudinal end, the first longitudinal end being opposite the
second longitudinal end,
wherein the plurality of cylindrically-shaped spaced-apart
elongate members are oriented in a cylindrical shape and are
held in place by the at least two transverse bracing members,
wherein at least one transverse bracing member is placed
proximate to each longitudinal end of the plurality of
cylindrically-shaped spaced-apart elongate members thereby
yielding a cylindrical drum-shaped screen formed from the
plurality of cylindrically-shaped spaced-apart elongate
members, the cylindrical drum-shaped screen having an inlet
end and an outlet end,
wherein the cylindrical drum-shaped screen is rotatable
along its longitudinal axis and positioned such that the non-
ferrous residue throughput moves from the inlet end to the
outlet end as the cylindrical drum-shaped screen rotates and
tumbles the non-ferrous residue in a progressive helix pattern to
cause the screening out of coins from the non-ferrous residue,
and
wherein the screened coins fall through the space
between the cylindrically-shaped elongate members, with the
Appeal 2011-013171
Application 11/834,247
3
remaining residue throughput being discharged through the
outlet end of the cylindrical drum-shaped screen.
Evidence
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Richard
Schenck
Wygal
Peguy
Weick
Slayer
US 3,827,554
US 5,139,134
US 5,410,954
US 5,522,913
US 5,632,380
US 6,609,617 B1
Aug. 6, 1974
Aug. 18, 1992
May 2, 1995
Jun. 4, 1996
May 27, 1997
Aug. 26, 2003
Bouchette US 2002/0096269 A1 Jul. 25, 2002
Gerrity US 2003/0075414 A1 Apr. 24, 2003

Rejections
Appellant requests our review of the following rejections:
(1) Claims 46, 2-4, 7, 23, 25-27, and 35 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Richard and Slayer.
(2) Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Richard, Slayer, and Gerrity.
(3) Claims 8-10, 13, 15, 16 and 19 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Richard, Slayer, and Bouchette.
(4) Claims 11 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Richard, Slayer, Bouchette, and Gerrity.
(5) Claims 12, 14, 18, and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Richard, Slayer, Bouchette, and Schenck.
(6) Claims 21 and 22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Richard, Slayer, Bouchette, and Weick.
Appeal 2011-013171
Application 11/834,247
4
(7) Claims 24 and 32-34 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Richard, Slayer, and Peguy.
(8) Claims 28-31 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Richard, Slayer, and Wygal.
OPINION
Rejection (1)
Appellant groups all of claims 46, 2-4, 7, 23, 25-27, and 35 together in
contesting this rejection. See App. Br. 13-16. Thus, we decide the appeal of
this rejection on the basis of claim 46, with the remaining claims standing or
falling with claim 46.
The issue presented is whether it would have been obvious to replace
the members 32 of the V-shaped cross section of Richard’s first drum with
cylindrically shaped elongate members as taught by Slayer, as proposed by
the Examiner (Ans. 5).
Appellant argues that the combination of Richard and Slayer would
not have been obvious, because Richard provides no disclosure, teaching, or
suggestion that “only the first drum portion 14 could be separated from the
second drum portion 16 to accomplish the sorting of beans.” App. Br. 12.
This argument is not convincing because the Examiner does not propose
separating the first drum portion of Richard from the second drum portion to
accomplish the sorting. See Ans. 9 (pointing out that claim 46 does not
preclude a second drum).
Appellant argues that Richard discusses neither separating coinage
from a waste residue stream containing non-ferrous metal nor the issues
related thereto. App. Br. 12. This argument is directed to the intended use
of Appellant’s claimed trommel, and thus does not identify error in the
Examiner’s rejection. “It is well settled that the recitation of a new intended
Appeal 2011-013171
Application 11/834,247
5
use for an old product does not make a claim to that old product patentable.”
In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
Appellant asserts that Richard’s V-shaped longitudinal members are
“critical” to the task of sorting desired beans from undersized beans, and
thus cannot be altered without destroying the functionality of Richard’s
device. App. Br. 12. There is no support in Richard for Appellant’s
assertion. The Examiner correctly points out that Richard does not indicate
that the V-shaped members are critical for the sorting task. Ans. 10. While
the particular embodiment disclosed by Richard comprises elongate
members having a V-shaped cross-section, and Richard’s Abstract states that
the longitudinal members “advantageously have a V-shaped cross-section,”
Richard does not specify any particular criticality to this shape nor suggest
that other cross sectional shapes would be unsuitable for achieving the
sorting function.
Appellant also contends that the combination is improper because
Slayer fails to disclose, teach, or suggest a trommel that can sort objects by
rotation alone, a fact which Appellant alleges is made abundantly clear by
Slayer’s statement that “one end 48 of the vibrating rods 42 must be
anchored while the other end [sic.] 46 are permitted to float.” App. Br. 13
(citing Slayer, col. 3, ll. 35-41). Appellant’s allegation mischaracterizes the
cited passage of Slayer, which states:
By anchoring the proximal ends 48 of the vibrating rods 42
while letting the distal ends 46 float, the vibrating rods 42 will
continuously flex like tuning forks while constantly altering the
spaced relationship between themselves and their neighboring
supporting rods 28 within a specified range thusly allowing
preselected maximum sizes of objects to fall between the
spacing of the rods 28 and 42.
Slayer, col. 3, ll. 35-41.
Appeal 2011-013171
Application 11/834,247
6
Thus, while Slayer discloses a trommel comprising a combination of
vibrating rods, which are fixed on one end and free on the other end, and
supporting rods, which are fixed on both ends, Slayer does not disclose that
sorting cannot be achieved without the vibrating rods. Rather, Slayer
discloses that the vibrating motion of the vibrating rods, which continuously
alters the spaced relationship of the vibrating rods to the support rods,
“screens the objects with reduced plugging.” Slayer, col. 2, ll. 3-9; see also
col. 3, ll. 24-27 (stating that the constantly changing spacing between the
vibrating rods and the supporting rods “classifies the articles while
simultaneously reducing clogging”).
Appellant additionally argues that combining Richard with Slayer
would render both devices unsatisfactory for their desired purposes. App.
Br. 14. This argument is premised in part on Appellant’s characterization of
the combination as employing only the first drum (without the second
drum). As discussed above, the Examiner does not propose eliminating the
second drum of Richard. Appellant further contends that use of the vibrating
rods of Slayer would result in desired beans falling through the drum formed
by the plurality of vibrating rods of Slayer. Id. Appellant does not offer any
evidence or technical reasoning to show why this would be the case. As
such, the contention amounts to unsupported attorney argument. Moreover,
in any event, the Examiner does not explicitly propose that the vibrating rod
feature of Slayer be incorporated into Richard. See Ans. 10-11 (stating that
“Slayer is cited for its teaching of the shape of the trommel rods, and the fact
that the device of Richard does not include vibration would not prevent one
of ordinary skill in the art from substituting the rod shapes”). Appellant
further asserts that desired beans could become entrapped between two
adjacent vibrating rods of Slayer. App. Br. 14. This assertion is not
Appeal 2011-013171
Application 11/834,247
7
germane to the rejection, which, as just noted, relies on Slayer for its
teaching of the trommel rods, not for its teaching with respect to vibrating
rods. Further, Appellant’s assertion appears to overlook Slayer’s teachings
that the quantities of supporting rods and vibrating rods and their physical
relationships may be varied as necessary, and that by selectively configuring
the spacing and number of vibrating rods and support rods and the size of
the classifying and discharge zones, the trommel may be scaled to classify
objects into various size fractions with relatively close tolerances. Slayer,
col. 3, ll. 42-45, 56-59.
Appellant also argues that the combination of Richard and Slayer
would change and/or destroy the principle of operation of both references.
App. Br. 14-15. This line of argument is unconvincing, for the reasons
discussed above.
Finally, Appellant argues that Richard and Slayer cannot be made
“without the use of impermissible hindsight.” App. Br. 15. Appellant bases
this argument on the assertion that the combination would require
elimination of the last two-thirds of Richard’s device. Id. Once again,
Appellant is misconstruing the Examiner’s rejection.
For the above reasons, Appellant’s arguments fail to apprise us of
error in the Examiner’s rejection of claim 46 as unpatentable over Richard
and Slayer. We sustain the rejection of claim 46 and of claims 2-4, 7, 23,
25-27, and 35, which fall with claim 46.
Rejections (2) – (8)
In contesting these rejections, Appellant relies on the same arguments
asserted against the rejection of claim 46. See App. Br. 17-39. These
arguments are not convincing, for the reasons discussed above. Thus, we
sustain these rejections as well.
Appeal 2011-013171
Application 11/834,247
8
DECISION
The Examiner’s decision rejecting claims 2-35 and 46 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

mls