Ex parte SKOW et al.

Board of Patent Appeals and Interferences

Nov 24, 1997

08078380 (B.P.A.I. Nov. 24, 1997)

Application for patent filed June 22, 1993. According to1
appellants, this application is a continuation-in-part of
Application 07/914,765 filed July 15, 1992, now abandoned.
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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 36
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte LYNN R. SKOW, ARTHUR R. MOORE
and WILLIAM M. DUNBAR
__________
Appeal No. 96-1883
Application 08/078,3801
__________
ON BRIEF
__________
Before LYDDANE, ABRAMS and McQUADE, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner finally
rejecting claims 1, 2, 5, 8, 15, 17, 18, 22, 25, 28 through 32,
Appeal No. 96-1883
Application 08/078,380
Two amendments made after the final rejection were entered2
for purposes of appeal, but did not alter the examiner's position
regarding the patentability of the claims over the cited
reference (see Paper No. 31). Claim 36, which was canceled by
the appellants in Paper No. 30, erroneously was included in the
appendix of claims attached to the Replacement Brief.
2
34 and 35. Claims 3, 4, 12 through 14, 16 and 36 have been2
canceled, and claims 6, 7, 9 through 11, 19 through 21, 23, 24,
26, 27 and 33 stand withdrawn from consideration as being
directed to a non-elected species.
The appellants' invention is directed to an apparatus and
method for handling and operating on an article. The subject
matter before us on appeal is illustrated by reference to claim
1, which reads as follows:
1. An apparatus for handling and operating on an article
comprising a member having a working surface, an opposing
surface, and at least one orifice beginning from at least one
inlet, passing through the member, and having at least one outlet
on the working surface to permit a fluid to enter the member
through the inlet and pass through the orifice, wherein the fluid
passing through the orifice handles and operates on an article
located adjacent the working surface while preventing the article
from contacting the working surface, wherein the member is a web
comprising a plurality of stacked layers having major surfaces
and connected to each other along the major surfaces, wherein the
working surface comprises an outer major surface of one of the
stacked layers, wherein the orifice is formed by respective
openings in adjacent layers and is nonlinear to create an
angular, nonlinear, stepped path for the fluid, and wherein a
direction of any fluid that exits the outlet is caused by the
angular, nonlinear, stepped path.
Appeal No. 96-1883
Application 08/078,380
3
THE REFERENCE
The sole reference relied upon by the examiner to support
the final rejection is:
Whelan 4,299,518 Nov. 10, 1981
THE REJECTIONS
Claims 1, 2, 5, 8, 15, 17, 18, 22, 25, 28 through 32, 34 and
35 stand rejected under 35 U.S.C. § 112, first paragraph, as
being based upon a specification which fails to adequately teach
certain aspects of the invention that are recited in these
claims.
Claims 1, 2, 5, 8, 15, 17, 18, 22, 25, 28 through 32, 34 and
35 also stand rejected under 35 U.S.C. § 112, second paragraph,
as failing to particularly point out and distinctly claim the
subject matter which the appellants regard as their invention.
Claims 1, 2, 8, 15, 17, 18, 22, 25, 34 and 35 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by Whelan.
Claims 5 and 28 through 32 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Whelan.
The rejections are explained in the Examiner's Answer.
The opposing viewpoints of the appellants are set forth in
the Replacement Brief.
Appeal No. 96-1883
Application 08/078,380
4
OPINION
The Rejections Under Section 112
The examiner asserts that certain of the subject matter
recited in the claims fails to find support in the specification,
and therefore the claims run afoul of the first paragraph of
Section 112. It is the examiner's position that
[t]he specification fails to adequately teach in what
respect the path [of the fluid] is "angular" and "non-
linear", and how the path is both "angular" and "non-
linear" (Answer, page 5, emphasis in the original).
We find ourselves in agreement with the appellants that this is
not a valid criticism of the specification. With reference to
Figure 1A and the explanation thereof found in the appellants'
specification, for example, it is our view that one of ordinary
skill in the art would readily have understood the meaning of
these terms. That is, the path of the fluid from plenum chamber
26 into the space between working surface 14 and bottom surface
of the article being conveyed is "angular," in that its overall
direction is upward and downstream. It also is "non-linear" in
that this overall direction is achieved by traveling in several
paths, which are "stepped" with respect to one another. These
are illustrated in Figure 1A by the sinuous arrows from plenum 26
through opening 40 into orifice 18, and between orifice 18
Appeal No. 96-1883
Application 08/078,380
5
through opening 22 into the space between working surface 16 and
the bottom surface of the article being conveyed.
We therefore will not sustain the rejection under 35 U.S.C.
§ 112, first paragraph.
All of the claims also stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite. Here, the examiner's
position is that the terms angular, non-linear and stepped
appear to contradict one another, in that a stepped
path is clearly linear, comprising a plurality of
usually rectilinear lines serially connected at usually
approximately right angles (Answer, sentence bridging
pages 5 and 6).
The comments we made above regarding these terms when discussing
the rejection under the first paragraph of Section 112 also are
relevant here. The purpose of 35 U.S.C. § 112, second paragraph,
is to insure that the public is apprised of exactly what the
patent covers, so that those who would approach the area
circumscribed by the claims of a patent may more readily and
accurately determine the boundaries of protection involved and
evaluate the possibility of infringement and dominance. See In
re Hammack, 427 F.2d 1378, 1382, 166 USPQ 204, 208 (CCPA 1970).
It is our view that the claims of the present application comply
with this requirement, and therefore we will not sustain the
rejection under the second paragraph of 35 U.S.C. § 112.
Appeal No. 96-1883
Application 08/078,380
6
The Rejection Under 35 U.S.C. § 102(b)
Anticipation is established only when a single prior art
reference discloses, expressly or under the principles of
inherency, each and every element of the claimed invention. See
RCA Corp. v. Applied Digital Data Systems, Inc., 730 F.2d 1440,
1444, 221 USPQ 385, 388 (Fed. Cir.), cert. dismissed sub nom.,
Hazeltine Corp. v. RCA Corp., 468 U.S. 1228 (1984). A reference
anticipates a claim if it discloses the claimed invention such
that a skilled artisan could take its teachings in combination
with his own knowledge of the particular art and be in possession
of the invention. In re Graves, 69 F.3d 1147, 1152, 36 USPQ2d
1697, 1701 (Fed. Cir. 1995), cert. denied, 116 S.Ct. 1362 (1996),
quoting from In re LeGrice, 301 F.2d 929, 936, 133 USPQ 365, 372
(CCPA 1962).
The appellants have set out two arguments with regard to the
rejection of claim 1 as being anticipated by Whelan. Both of
these are based upon the appellants’ belief that the holes (148,
150, 152 and 154) which exhaust onto the working surface are
simple cylinders, which are not at an angle to the working
surface (Replacement Brief, page 6). We do not agree. Not only
are these holes illustrated in the drawings as being at an angle
(Figure 5), but they are described in Whelan’s claim 1 as being
Appeal No. 96-1883
Application 08/078,380
7
“slanted.” Moreover, it is clear from the explanation of the
Whelan invention that the holes must be inwardly or outwardly
slanted, so as to be able to move the articles inwardly and
outwardly on the work surfaces (column 5, line 17 et seq.). This
being the case, the appellants’ conclusion that an angular,
nonlinear, stepped path cannot be created is not persuasive. To
the same extent as this is present in the appellants’ invention,
so too, in our view is it present in Whelan. The appellants’
argument that the Whelan holes do not impart direction to the
articles also fails, for it is clear that such is not the case.
The rejection of claim 1 as being anticipated by Whelan is
sustained. Since the appellants have chosen to group claims 2,
8, 15, 17, 18, 22, 25 and 34 with claim 1 (Replacement Brief,
page 6), the rejection is also sustained as to these claims. We
note that the appellants have not mentioned claim 35 in the
required grouping of claims. This claim depends from claim 34,
which has been included in the grouping, and we thus shall assume
this was an inadvertent omission, and will sustain the examiner’s
rejection of claim 35 along with the group.
The Rejection Under 35 U.S.C. § 103
The question under 35 U.S.C. § 103 is not merely what the
references expressly teach but what they would have suggested to
Appeal No. 96-1883
Application 08/078,380
8
one of ordinary skill in the art at the time the invention was
made. See Merck & Co., Inc. v. Biocraft Laboratories, Inc., 874
F.2d 804, 807, 10 USPQ2d 1843, 1846 (Fed. Cir. 1989) and In re
Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). While
there must be some suggestion or motivation for one of ordinary
skill in the art to combine the teachings of references, it is
not necessary that such be found within the four corners of the
references themselves; a conclusion of obviousness may be made
from common knowledge and common sense of the person of ordinary
skill in the art without any specific hint or suggestion in a
particular reference. See In re Bozek, 416 F.2d 1385, 1390, 163
USPQ 545, 549 (CCPA 1969). Further, in an obviousness
assessment, skill is presumed on the part of the artisan, rather
than the lack thereof. In re Sovish, 769 F.2d 738, 742, 226 USPQ
771, 774 (Fed. Cir. 1985). Insofar as the references themselves
are concerned, we are bound to consider the disclosure of each
for what it fairly teaches one of ordinary skill in the art,
including not only the specific teachings, but also the
inferences which one of ordinary skill in the art would
reasonably have been expected to draw therefrom. See In re Boe,
355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA 1966); and In re
Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
Appeal No. 96-1883
Application 08/078,380
9
Claim 5 adds to claim 1 the requirement that the member upon
which the articles are moved be flexible. Here we do not agree
with the examiner’s position. It is our view that this feature
of the appellants’ invention is neither explicitly taught by
Whelan, nor would Whelan have suggested it to one of ordinary
skill in the art.
This rejection of claim 5 is not sustained.
Claims 28 through 32 have been grouped together by the
appellants. Claims 28 through 31 add to claim 1 a limitation
establishing a numerical value for the angle between the outlet
and the working surface (the “effective angle”), and a numerical
relationship between the length and the width of the outlet in
the working surface. Claim 32 defines the effective angle in
terms of the speed at which the issuing stream propels the
article to be transported. In view of their being grouped
together, we need focus only upon claim 28, as being
representative.
We begin our analysis here by noting that the appellants’
have, on pages 1 and 2 of the substitute specification (Paper No.
21), discussed certain patents, after which they acknowledged the
presence in the prior art of article handling devices in which
the fluid issues from openings in the working surface at “smaller
Appeal No. 96-1883
Application 08/078,380
10
acute angles of less than 30E” (page 2), which includes the 20
degree angle specified in claim 28 as well, we might add, as the
lesser angles recited in claims 29 through 31. Thus, it would
appear to us from this statement that one of ordinary skill in
the art would have found it prima facie obvious to utilize the
angles set forth in the appellants’ claims in this type of
article-carrying device, depending upon the results desired, such
as the distance the article is carried from the working surface
and the speed at which it is moved. The same rationale applies
to the ratio between the length and width of the openings. In
arriving at this conclusion, we note that the appellants have not
disclosed in their specification or urged in their Brief that the
values set forth in claim 28 are critical in that they produce
unexpected results. Rather, they distinguished their invention
on the basis of the following statement made on page 2 of the
substitute specification:
None of the known systems . . . is formed of a
plurality of layers . . . which can be made flexible.
None . . . disclose outlets which can have relatively
small length-to-width ratios while ejecting air at
small acute angles, and none discloses outlets that
create an angular, non-linear stepped path for the
fluid.
However, Whelan is not among the references cited as
demonstrating the state of the art, and thus the quoted comment
Appeal No. 96-1883
Application 08/078,380
11
does not apply to its teachings. This is important for, as we
explained above, while Whelan does not teach a flexible working
surface, it does teach any outlets that are not circular and that
eject air at an angle to the working surface, as well as an
angular, non-linear stepped path for the fluid, and these are the
distinctions which the appellants urge are not present in the
prior art.
The rejection of claims 28 through 32 under 35 U.S.C. § 103
is sustained.
We have, of course, carefully considered all of the
arguments raised by the appellants. However, they have not
convinced us that the examiner’s decision with regard to the
rejections which we have sustained were in error. Our position
with respect to each of the appellants’ arguments should be
apparent from the foregoing discussions.
Summary
The rejection under 35 U.S.C. § 112, first paragraph, is not
sustained.
The rejection under 35 U.S.C. § 112, second paragraph, is
not sustained.
The rejection under 35 U.S.C. § 102(b) is sustained.
The rejection of claim 5 under 35 U.S.C. § 103 is not
Appeal No. 96-1883
Application 08/078,380
12
sustained.
The rejection of claims 28 through 32 under 35 U.S.C.
§ 103 is sustained.
The decision of the examiner is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
WILLIAM E. LYDDANE )
Administrative Patent Judge)
)
)
)
NEAL E. ABRAMS ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
JOHN P. McQUADE )
Administrative Patent Judge)
Appeal No. 96-1883
Application 08/078,380
13
Charles D. Levine
3M Office of Intellectual Property Counsel
P.O. Box 33427
St. Paul, MN 55133-3427