Ex Parte Wardak et alDownload PDFPatent Trial and Appeal BoardDec 9, 201412775522 (P.T.A.B. Dec. 9, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ANDREAS WARDAK and PETER XAVIER KEARNEY ____________ Appeal 2012-0123131 Application 12/775,5222 Technology Center 3600 ____________ Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and JAMES A. WORTH, Administrative Patent Judges. WORTH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1–5 and 7–27. We have jurisdiction under 35 U.S.C. §§ 134 and 6(b). We REVERSE. 1 Our decision refers to the Appellants’ Appeal Brief (“Appeal Br.,” filed Apr. 20, 2012) and Reply Brief (“Reply Br.,” filed Sept. 5, 2012), and the Examiner’s Answer (“Ans.,” mailed July 13, 2012). 2 According to Appellants, the real party in interest is BDT AG. (Appeal Br. 1). Appeal 2012-012313 Application 12/775,522 2 Introduction Appellants’ disclosure relates to a system and method for separating an article (e.g. paper) from a stack using suction, and conveying the article along a path (See Spec. ¶¶ 1–2, 42). In particular, the Specification discloses the use of a vortex suction unit (id. at ¶ 1). Claims 1 and 15 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the subject matter on appeal: 1. A system for separating a flat, flexible article from an outer part of a stack and conveying it along a transfer path, the system comprising: a stack assembly configured to receive a stack of flat, flexible articles; and a mounting assembly including at least one vortex suction unit disposable so as to face the stack of articles at at [sic] least one of a leading edge and a trailing edge thereof and configured to attract the flat, flexible article from the stack, the at least one vortex suction unit including a conveyor configured to transport the flat, flexible article along the transfer path. Appeal Br., Claims App. Rejections on Appeal The Examiner maintains, and the Appellants appeal, the following rejections: I. Claims 1–3, 5–7, and 9–27 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Silverberg (US 4,368,973, iss. Jan. 18, 1983) and Illingworth (US 6,565,321 B1, iss. May 20, 2003); II. Claim 4 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Silverberg, Illingworth, and Wirz (US 5,110,110, iss. May 5, 1992); and Appeal 2012-012313 Application 12/775,522 3 III. Claims 1, 8, 12, and 13 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Nakane (US 7,364,150 B2, iss. Apr. 29, 2008) and Illingworth. ANALYSIS Rejections I and II The Examiner concludes that the substitution of Silverberg’s vacuum system with the vortex attraction system of Illingworth would achieve the predictable result of separating a sheet from a stack through suction (Ans. 3). However, we are persuaded by Appellants’ argument that the proposed modification of a conventional sheet feeding apparatus, as taught by Silverberg, to include a vortex attractor, as taught by Illingworth, would render the vortex attractor inoperable (Appeal Br. 6). Appellants refer to La Vos3 for evidence of the direction of air flow in an aeration system, and in particular, rely on Figure 7 of La Vos.4 With respect to La Vos, Appellants assert that air flow 21 (against the edge of the stack) can provide an even flow of aeration, but air flow 23 (directed upwards and across the top of the stack) would disrupt, decrease, and shift the adherence force of a vortex attractor (Appeal Br. 7). Appellants also proffer the Declaration of Peter Xavier Kearney (hereinafter, “Xavier Decl.”), one of the inventors, who avers that a cross-wind to the end of the uppermost sheet would disrupt the helical flow of the vortex suction unit, and the cross-wind would be guided to the helical flow by the drooping edge of the uppermost sheet (Xavier Decl. ¶¶ 11–12 (referring to Ex. A, Fig. 3)). 3 La Vos (US 6,431,538 B1, iss. Aug. 13, 2002). 4 See Evidence App., Attachment 2. Appeal 2012-012313 Application 12/775,522 4 Appellants assert that Silverberg’s nozzle 78, depicted in Figure 4, is directed upwards toward the edge of an uppermost sheet and argue that Silverberg’s nozzle 78 would therefore be inoperable or ineffective with a vortex suction unit (Appeal Br. 6–7). The Examiner determines (Ans. 8) that the airflow of Silverberg’s nozzle 78 could be optimally controlled so that the vortex suction force is not affected. However, the Examiner does not provide evidence or technical reasoning supporting this determination. We conclude that there is an inadequate basis for the conclusion that it would have been obvious to a person of ordinary skill in the art to modify Silverberg to optimally control the air flow as suggested by the Examiner. We, therefore, do not sustain the rejection of claims 1–3, 5–7, and 9–27 under 35 U.S.C. § 103(a) as being unpatentable over Silverberg and Illingworth. Claim 4 stands rejected under 35 U.S.C. §103(a) as being unpatentable over Silverberg, Illingworth, and Wirz. The teaching of Wirz does not remedy the defect in the rejection based on Silverberg. Thus, we do not sustain the rejection of claim 4 under 35 U.S.C. §103(a) as being unpatentable over Silverberg, Illingworth, and Wirz for similar reasons, as above. Rejection III Claims 1, 8, 12, and 13 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Nakane and Illingworth. Appellants’ arguments with respect to the rejection based on Nakane and Illingworth are similar to those with respect to the rejection based on Silverberg and Illingworth. Appellants state that Nakane’s raveling nozzle 8a, as depicted in Figure 2, is Appeal 2012-012313 Application 12/775,522 5 directed upwardly to an edge of the uppermost sheet (Appeal Br. 8). We agree. We therefore do not sustain the rejection of claims 1, 8, 12, and 13 under 35 U.S.C. § 103(a) as being unpatentable over Nakane and Illingworth, for similar reasons as above. DECISION The decision of the Examiner to reject claims 1–5 and 7–27 is reversed. REVERSED Ssc Copy with citationCopy as parenthetical citation