Ex parte SUNDBERG

Board of Patent Appeals and Interferences

Dec 17, 1997

08209260 (B.P.A.I. Dec. 17, 1997)

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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JAMES A. SUNDBERG
_____________
Appeal No. 96-3845
Application 08/209,2601
______________
HEARD: December 11, 1997
_______________
Before COHEN, MEISTER and CRAWFORD, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 3, 19, and 21 through 24. Claims 4 through 18, the only
other claims remaining in the application, stand allowed.
Appellant’s invention pertains to a method of handling
capsules, a capsule handling system, and to a capsule handling
method. An understanding of the invention can be derived from a
Application for Patent filed March 14, 1994. This1
document was submitted by appellant in parent application Serial
No. 07/841,475, filed February 26, 1992, now U.S. Patent No.
5,321,932, issued June 21, 1994 and was listed as “Marketing
Literature for FETON Int’l” on an “INFORMATION DISCLOSURE
CITATION” form (Paper No. 2).
2
Appeal No. 96-3845
Application Nol 08/209,260
reading of exemplary claims 1, 3, and 21, copies of which are
appended to the main brief (Paper No. 13).
As evidence of obviousness, the examiner has applied the
following documentation:
Feton International brochure (known capsule handling system; as 1
acknowledged in appellant’s specification, page 1)
Norelli 2,348,749 May 16, 1944
Inman 3,552,095 Jan. 5, 1971
Austin 3,675,390 Jul. 11, 1972
The following rejections are before us for review.
Claim 21 stands rejected under 35 USC § 103 as being
unpatentable over the Feton International brochure.
Claims 1 through 3, 19, and 22 through 24 stand rejected
under 35 USC § 103 as being unpatentable over the Feton
International brochure in view of any of Norelli, Inman, or
Appeal No. 96-3845
Application No. 08/209,260
As to claim 1, we understand the recited method as2
implicitly including a step of positioning said first capsule
receiving plates within said opener/encapsulater component since
the step of “removing said first capsule receiving plates from
said opener/encapsulater component” is expressly set forth.
In our evaluation of the applied teachings, we have3
considered all of the disclosure of each teaching for what it
would have fairly taught one of ordinary skill in the art. See
In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA 1966).
Additionally, this panel of the board has taken into account not
only the specific teachings, but also the inferences which one
skilled in the art would reasonably have been expected to draw
Cont...
from the disclosure. See In re Preda 401 F.2d 825, 826, 159 USPQ
342, 344 (CCPA 1968).
3
Austin.
The full text of the examiner's rejections and response to
the argument presented by appellant appears in the final
rejection and answer (Paper Nos. 10 and 14), while the complete
statement of appellant’s argument can be found in the main and
reply briefs (Paper Nos. 13 and 15).

OPINION
In reaching our conclusion on the issues raised in this
appeal, this panel of the board has carefully considered
appellant’s specification and claims, the applied teachings,2 3
Appeal No. 96-3845
Application No. 08/209,260
4
and the respective viewpoints of appellant and the examiner. As
a consequence of our review, we make the determinations which
follow.
We do not sustain the examiner’s respective rejections of
appellant’s claims under 35 USC §103.
At the outset, this panel of the board points out that we
fully appreciate the examiner’s point of view as expressed in the
answer. However, for the reasons articulated, infra, we are of
the opinion that the evidence before us does not support a
conclusion of obviousness relative to the claimed subject matter.
The rejection of claim 21
Simply stated, it is our view that the Feton brochure would
not have been suggestive of the capsule handling method of claim
21. Setting aside appellant’s own disclosure, a review of the
English language portion of the Feton document and related
pictorial portions (Figures A, B, and 1 through 8) does not
reveal to us any suggestion for effecting a method wherein first
and second opener/encapsulater components, associated with “a”
Appeal No. 96-3845
Application No. 08/209,260
5
loader component, respectively separate capsules having top
portions with an appearance different from one another and
wherein the filled bottom portion of first capsules are connected
to the top portions of second capsules, as claimed. The Feton
document is simply silent on the method, as claimed. We
recognize that another pictorial showing in the brochure portrays
capsules wherein the bottoms differ from top portions thereof.
However, for all we can tell, these capsules were simply supplied
by a manufacturer as shown, for subsequent filling on the Feton
machine. For these reasons, we determine that the evidence
relied upon does not support a conclusion of obviousness under 35
USC §103.
The rejection of claims 1 through 3, 19, and 22 through 24
We understand from our analysis of the Feton reference that
the disclosed automatic loading device and automatic capsule
filling machine are specifically designed for “one single capsule
size”. In other words, the document instructs that a separate
loading device and filling machine would be required for each of
the capsule sizes 000, 00, 0, 1, 2, 3, and 4 mentioned therein.
The relatively sparse disclosure of the Feton brochure does
Appeal No. 96-3845
Application No. 08/209,260
6
inform us that the automatic capsule filling machine includes an
upper white sheet, a detachable black sheet, a middle white
sheet, and a bottom part with four studs, a frame, and screws.
We also fully appreciate that the particular capsule filling
apparatus of Norelli (page 3, lines 4 through 11) can be provided
with alternative elements for addressing capsules of a different
size, that the manual capsule filling apparatus of Inman (column
4, lines 48 through 52) can be used with a variety of capsule
sizes by providing additional body section parts and cap section
plates, and that the capsule filling apparatus of Austin (column
7, lines 69 through 75) may be adjusted to accommodate different
size capsules by replacing hinged units including bars 326 and
arms 339 on drum 320 (Figure 13).
With the above in mind, we turn now to independent claims 1
and 3.
As to the specific method of handling capsules set forth in
appellant’s claim 1, it is apparent to us that the applied
teachings, collectively considered, would have failed to suggest
the recited positioning and orienting of first and larger second
Appeal No. 96-3845
Application No. 08/209,260
7
capsules by “a” loader component to one having ordinary skill in
the art. Further, we note that the particular structural
configuration of Feton is expressly disclosed as being dedicated
to “one single capsule size”. Of course, we certainly appreciate
that the respective teachings of Norelli, Inman, and Austin
address apparatus modification to handle capsules of different
sizes. However, it must also be kept in mind that each of the
latter teachings address an apparatus structural different from
that found in the Feton brochure. From our standpoint, the
proposed modification of Feton would not have been suggested to
an artisan by the applied teachings since it would have
necessitated an entire reworking thereof, contrary to the single
capsule size teaching thereof, and particularly since the
secondary references each reflect distinctly different structural
apparatus relative to the Feton loading device and capsule
filling machine.
Similarly, we are of the view that the method of independent
claim 3 would not have been obvious, i.e., a method requiring an
opener/encapsulater component including a second capsule
receiving plate displaceable with respect to a first capsule
receiving plate, with the opener/encapsulater being capable of
Appeal No. 96-3845
Application No. 08/209,260
8
handling different sized capsules and including a housing with
means for “slidably receiving” the first and second plates. Once
again, it is clear to us that one of ordinary skill in the art
would not have been motivated to make the proposed modification
since it would have clearly necessitated an entire reworking of
the Feton apparatus, contrary to the single capsule size teaching
thereof, and particularly since the secondary references each
reflect distinctly different structural apparatus relative to the
loading device and capsule filling machine of the Feton Brochure.
In summary, this panel of the board has
reversed the rejection of claim 21 under 35 USC § 103 as
being unpatentable over the Feton International brochure, and
reversed the rejection of claims 1 through 3, 19, and 22
through 24 under 35 USC § 103 as being unpatentable over the
Feton International brochure in view of any of Norelli, Inman, or
Austin.
Appeal No. 96-3845
Application No. 08/209,260
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The decision of the examiner is reversed.
REVERSED
)
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JAMES M. MEISTER )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 96-3845
Application No. 08/209,260
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