Ex Parte Wedel et al

Patent Trial and Appeal Board

Sep 23, 2016

13099885 (P.T.A.B. Sep. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/099,885 05/03/2011
48980 7590 09/27/2016
YOUNG BASILE
3001 WEST BIG BEA VER ROAD
SUITE 624
TROY, MI 48084
FIRST NAMED INVENTOR
Gregory L. Wedel
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
KJI-141-A 1753
EXAMINER
LAU, JASON
ART UNIT PAPER NUMBER
3743
NOTIFICATION DATE DELIVERY MODE
09/27/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
docketing@youngbasile.com
audit@youngbasile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGORY L. WEDEL, ALAN T. IVES,
and TIMOTHYN. HENRY
Appeal2014-008763
Application 13/099 ,885 1
Technology Center 3700
Before MICHAEL C. ASTORINO, KENNETH G. SCHOPPER, and
TARA L. HUTCHINGS, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1, 2, 5-9, and 13-26. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 According to the Appellants, "[t]he real party in interest of the present
appeal is Kadant Johnson, Inc." Appeal Br. 3.
Appeal2014-008763
Application 13/099,885
Claimed Subject Matter
Claims 1, 13, 20, and 21 are the independent claims on appeal.
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. A turbulence bar assembly for a cylinder that extends in an
axial direction, the turbulence bar assembly comprising:
a plurality of bars that extend in the axial direction; and
at least one hoop having:
an arcuate body that extends from a first end to a
second end, wherein the arcuate body is connected to the
plurality of bars, and
a coupler that includes a housing, an adjustment
block that is disposed within the housing, and a threaded
fastener having a head portion and a threaded portion, the
head portion of the fastener is disposed outside of the
housing, and the threaded portion of the fastener is in
engagement with a threaded aperture of the adjustment
block, wherein the first end of the arcuate body and the
second end of the arcuate body are each disposed within
the housing and in engagement with the coupler to expand
and contract a radial dimension of the arcuate body in
response to movement of the adjustment block in the axial
direction in response to rotation of the threaded fastener
with respect to the adjustment block.
Rejections
I. Claims 1, 2, 5, 6, 8, 9, 13-15, 17, 18, 20, and 21-24 are rejected
under 35 U.S.C. § 103(a) as unpatentable over Bamscheidt et al. (US
3,217,426, iss. Nov. 16, 1965, hereinafter "Bamscheidt"), Khodosh et al.
(US 3,550,389, iss. Dec. 29, 1970, hereinafter "Khodosh"), and Baggett et
al. (US H906, pub. Apr. 2, 1991, hereinafter "Baggett").
II. Claims 7, 16, 25, and 26 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Bamscheidt, Khodosh, and Baggett as applied to
2
Appeal2014-008763
Application 13/099,885
claim 1, and further in view ofFlachbarth (US 3,451,033, iss. June 17,
1969).
III. Claim 19 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Bamscheidt, Khodosh, Baggett as applied to claim 1, and further in
view of Park et al. (US 6,991,399 B2, iss. Jan. 31, 2006, hereinafter "Park").
IV. Claim 19 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Bamscheidt, Baggett, and Dawson (US 3,572,779, iss. Mar. 30, 1971)
as applied to claim 1, and further in view of Park.
ANALYSIS
Rejections I-III
The Appellants argue that the Examiner's rejection of independent
claim 1 does not articulate a sufficient rationale, i.e., reasoning with some
rational underpinning, because it is grounded in speculation that a problem
exists in the prior art and fails to eliminate the alleged weak link that the
Office Action uses to justify the modification of Bamscheidt in view of
Khodosh. See Appeal Br. 20-21; see also Reply Br. 4--5. The Appellants'
argument persuades us that the Examiner's rejection of claim 1 includes a
rationale that is inadequate.
The Examiner finds that Bamscheidt teaches a turbulence bar
assembly including a coupler (tum buckle 7), but the coupler fails to include
the remainder of the subject matter required by claim 1. Non-Final Act. 2-3.
To remedy this deficiency, the Examiner relies on the combination of
teachings from Khodosh and Baggett. See id. at 3--4. As for the former
prior art reference, the Examiner finds that "Khodosh teaches a coupler that
includes a housing (21, fig. 2), a wedge-shaped adjustment block (12, fig. 2)
3
Appeal2014-008763
Application 13/099,885
that is disposed within the housing." Id. at 3. The Examiner concludes that
it would have been obvious to one of ordinary skill in the art to replace the
coupler of Barnscheidt's steam heated drying cylinder with Khodosh's
teaching of a coupler because the latter coupler would be "more sturdy and
durable" as compared to the former coupler. See id. at 4.
Notably, the Examiner attempts to bolster the rationale by pointing to
Ives, a prior art reference used as extrinsic evidence.2 Id. at 10-11. The
Examiner finds that Ives discusses Barnscheidt' s turnbuckle and threaded
fastener system and teaches "[ w ]ithout a method for allowing for differential
thermal expansion, the stress in the turnbuckle, the stress in the hoop
segments, and the stress on the dryer shell will increase. This can cause
deformation and long-term loosening of the hoop assembly." Id. (emphasis
omitted) (quoting Ives, para. 16).
The Appellants argue that the stress issue discussed in Ives "is not
occasioned by lack of strength, but by lack of a method for allowing
differential thermal expansion." Appeal Br. 21. In response, the Examiner
speculates that Barnscheidt's coupler is the weakest link and the only area
that needs to be strengthened is the coupler, i.e., the area where failure is
likely to occur. See Ans. 11-12. As pointed out by the Appellants,
however, the Examiner's response is based on "unsupported conjecture."
Reply Br. 5. As such, we determine that the Appellants' argument is
persuasive.
2 Ives (US 2003/0213584 Al, pub. Nov. 20, 2003). See also Appeal Br. 21,
n.1 (stating "[t]he subject matter of this publication [(i.e., Ives,)] shares two
inventors with the Application, Alan J. Ives and Gregory L. Wedel, and is
owned by the assignee of the Application.").
4
Appeal2014-008763
Application 13/099,885
Further, the Examiner's rejection relies on a combination of teachings
from Bamscheidt, Khodosh, and Baggett. As discussed above, the Examiner
surmises that a person of ordinary skill in the art would have sought to
replace Bamscheidt's coupler (tum buckle) 7, which includes a threaded
fastener, because the coupler with its threaded fastener is subject to localized
stress due to differential thermal expansion of the drying cylinder. Non-
Final Act. 3. Then, the Examiner relies on Khodosh' s teaching of a coupler
that lacks a threaded fastener (i.e., wedge shaped member 12 and lever 21)
to replace Bamscheidt's threaded fastener. Id. at 3--4. However, the
Examiner further modifies the coupler with Baggett's teaching of a threaded
fastener (i.e., threaded bolt member 48, plate or washer 44, threaded receptor
40, generally trapezoidal central member 34). Id. at 4. Here, the Examiner's
stated rationale for the rejection undermines itself, because it reintroduces
threading to the coupler. In essence, just as the threads of Bamscheidt's
coupler are subject to localized stress due to differential thermal expansion
of the drying cylinder, so would the threads of the resulting structure of the
combination of teachings from Bamscheidt, Khodosh, and Baggett. In other
words, it appears inconsistent to determine that it would have been obvious
to one of ordinary skill to modify Bamscheidt' s coupler to remove
threading, only to then subsequently reintroduce threading back into the
coupler.
Thus, we do not sustain the Examiner's rejection of independent claim
1, and dependent claims 2, 5, 6, 8, 9, and 22-24 as unpatentable over
Bamscheidt, Khodosh, and Baggett (Rejection I). Additionally, we do not
sustain the Examiner's rejection of independent claims 13, 20, and 21, and
5
Appeal2014-008763
Application 13/099,885
dependent claims 14, 15, 17, and 18 (Rejection l) because it suffers from the
same erroneous reasoning discussed above.
The remaining rejections based on Bamscheidt, Khodosh, and Baggett
in combination with Flachbarth or Park rely on the same erroneous
reasoning discussed above. As such, we do not sustain the rejections under
35 U.S.C. § 103(a) of: claims 7, 16, 25, and 26 as unpatentable over
Bamscheidt, Khodosh, and Baggett as applied to claim 1, and further in view
of Flachbarth (Rejection II); and claim 19 as unpatentable over Bamscheidt,
Khodosh, and Baggett as applied to claim 1, and further in view of Park
(Rejection III).
Rejection IV
The Appellants contend that the rejection of claim 19 "is improper on
grounds that no findings are made with respect to the Dawson reference, or
the combination of Bamscheidt, Baggett, and Dawson." Appeal Br. 29. We
agree with the Appellants' contention and determine that it is persuasive.
Additionally, we note that claim 19 depends from independent
claim 13 (Appeal Br., Claims App.) and that the Examiner's rejection of
claim 19 is based on a rejection of independent claim 1under35 U.S.C.
§ 103(a) as unpatentable over Bamscheidt, Baggett, and Dawson (Non-Final
Act. 9). So, even if we were to consider the reliance of independent claim 1
instead of independent claim 13 as a minor oversight, the Examiner does not
reject either claim 1 or claim 13 under 35 U.S.C. § 103(a) as unpatentable
over Bamscheidt, Baggett, and Dawson in the Non-Final Office Action,
mailed August 26, 2013. Although the Examiner rejected claims 1 and 13
under 35 U.S.C. § 103(a) as unpatentable over Bamscheidt, Baggett, and
Dawson in a Final Office Action, mailed March 11, 2013, that rejection was
6
Appeal2014-008763
Application 13/099,885
not maintained in the later mailed Non-Final Office Action. Thus, we do not
sustain the Examiner's rejection of claim 19 under 35 U.S.C. § 103(a) as
unpatentable over Bamscheidt, Baggett, and Dawson as applied to claim 1,
and further in view of Park (Rejection IV).
DECISION
We reverse the Examiner's decision rejecting claims 1, 2, 5-9, and
13-26.
REVERSED
7