Ex Parte Weir

Board of Patent Appeals and Interferences

May 21, 2003

09348400 (B.P.A.I. May. 21, 2003)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 28
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HENRY JOHN WEIR
____________
Appeal No. 2002-2047
Application No. 09/348,400
____________
HEARD: April 8, 2003
____________
Before ABRAMS, FRANKFORT, and McQUADE, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-5,
22-24, 28-30, 54, 77-84, 90, 96, 113 and 114. Claims 6-21, 25-27, 31-53, 55-76, 85-
89, 91-95 and 97-112 have been withdrawn from consideration as being directed to a
non-elected invention.
We AFFIRM-IN-PART AND ENTER A NEW REJECTION UNDER
37 CFR 1.196(b).
Appeal No. 2002-2047
Application No. 09/348,400
Page 2
1Our understanding of this foreign language document was obtained from a PTO translation, a
copy of which is enclosed.
BACKGROUND
The appellant's invention relates to a method and apparatus for separating
laundry. An understanding of the invention can be derived from a reading of exemplary
claims 1 and 28, which have been reproduced below.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Rosenfeld 4,036,365 Jul. 19, 1977
Robin et al. (Robin) 5,168,645 Dec. 8, 1992
Heinz et al. (Heinz) 6,089,810 Jul. 18, 2000
(filed Mar. 6, 1998)
Umeda (Japanese Kokai) 56-33315 Apr. 3, 19811
Claims 1-5, 22-24, 28-30, 54, 81-84, 113 and 114 stand rejected under
35 U.S.C. § 103 as being unpatentable over Robin in view of Umeda and Heinz.
Claims 77-80, 90 and 96 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Robin in view of Umeda, Heinz and Rosenfeld.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the Answer
(Paper No. 21) for the examiner's complete reasoning in support of the rejections, and
to the Brief (Paper No. 20) and Reply Brief (Paper No. 23) for the appellant's arguments
thereagainst.
Appeal No. 2002-2047
Application No. 09/348,400
Page 3
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
Claims 1 and 28
1. Laundry separating apparatus for separating an article of laundry
from a bundle of laundry articles, the apparatus comprising:
a frame;
a grip device mounted for guided movement towards and
away from a bundle of laundry;
a wheeled laundry truck in which the laundry articles are, in
use, located;
drive means for moving said grip device towards and away
from said laundry; and
moving means associated with the wheeled laundry truck for
causing the truck to move relative to the frame beneath the
grip device during the operation of the apparatus, the
moving means operable to release the wheeled laundry
truck.
28. A laundry separation method for positioning a laundry truck
containing at least one laundry article for gripping, the method
comprising the steps of:
(a) placing the at least one laundry article in the laundry
truck;
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Application No. 09/348,400
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2The test for obviousness is what the combined teachings of the prior art would have suggested to
one of ordinary skill in the art. See, for example, In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981). In establishing a prima facie case of obviousness, it is incumbent upon the examiner to
provide a reason why one of ordinary skill in the art would have been led to modify a prior art reference or
to combine reference teachings to arrive at the claimed invention. See Ex parte Clapp, 227 USPQ 972,
973 (Bd. Pat. App. & Int. 1985). To this end, the requisite motivation must stem from some teaching,
suggestion or inference in the prior art as a whole or from the knowledge generally available to one of
ordinary skill in the art and not from the appellant's disclosure. See, for example, Uniroyal, Inc. v. Rudkin-
Wiley Corp., 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
(b) placing the laundry truck from a first position spaced
away from a gripping device to a second position adjacent
the gripping device; and
(c) moving the laundry truck relative to movement of the
gripping device.
The Rejections Based Upon Robin, Umeda and Heinz
The examiner has concluded that the subject matter recited in independent
apparatus claims 1, 22, 54, 81 and 82, independent method claim 28, and dependent
claims 2-5, 23, 24, 29, 30, 83, 84, 113 and 114, would have been obvious2 in view of
the combined teachings of Robin, Umeda and Heinz. It is the examiner’s view that
Robin discloses all of the subject matter recited in these claims except for the means to
move the cart and the nip conveyor. However, the examiner takes the position that it
would have been obvious to one of ordinary skill in the art to provide means to move
the cart in the Robin system in view of the teachings of Umeda and the nip conveyor in
view of Heinz, with Heinz also cited by the examiner as providing the suggestion to add
the Umeda cart to the Robin system.
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Looking first to claim 1, Robin is directed to a method and apparatus for
separating laundry in that it removes a flat sheet from a bin, grasps two adjacent
corners of the sheet, shakes it out, and then conveys it for further treatment, such as
drying and pressing. Robin discloses a frame (2), a wheeled laundry truck (1) within
which the sheets are located, a suction device (4) for removing sheets from the
wheeled laundry truck, and drive means (3) for moving the suction device towards and
away from the sheets in the wheeled laundry truck. Robin does not disclose or teach
“moving means associated with the wheeled laundry truck for causing the truck to move
relative to the frame beneath the grip device during the operation of the apparatus, the
moving means operable to release the wheeled laundry truck,” as is recited in claim 1.
Umeda is directed to an apparatus for loading box-like containers (C) containing
a substance such as rice from a roller conveyor (B) onto a wheeled truck (E). Arms
(24) are provided to hold the truck adjacent to the end of the conveyor, and to move it
laterally after each box is loaded to allow a pusher mechanism (20-22) to sequentially
load a plurality of boxes onto the truck next to one another in response to a control
device. The loading mechanism can be moved vertically so that several layers of boxes
can be loaded, and upon completion of the loading operation the truck is released from
the arms (translation, pages 4 and 5). There is no disclosure of a mechanism for
unloading boxes from the truck.
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As is best shown in Figure 7 and explained in column 9, Heinz discloses an
apparatus for removing items of laundry from a container (51) that is mounted on a
frame (52) that is vertically and horizontally movable beneath a gripper (23). The
container is “moved to and fro” and “up and down” (column 9, lines 35-40) by the frame,
in order to allow the gripper to reach into any part of the container so that all laundry
items can be removed therefrom. Heinz further discloses a pivotable conveyor arm (30)
which carries on its distal end a roller (28) that can mate with a second roller (26) to
form a nip that closes on a laundry article that has been picked up by the gripper and
moves the article laterally and deposits it on another conveyor 33 (Figure 3).
The appellant has argued that Umeda is non-analogous art and therefore cannot
properly be combined with Robin. The test for analogous art is first whether the art is
within the field of the inventor's endeavor and, if not, whether it is reasonably pertinent
to the problem with which the inventor was involved. See In re Wood, 599 F.2d 1032,
1036, 202 USPQ 171, 174 (CCPA 1979). A reference is reasonably pertinent if, even
though it may be in a different field of endeavor, it logically would have commended
itself to an inventor's attention in considering his problem because of the matter with
which it deals.See In re Clay, 966 F.2d 656, 659, 23 USPQ2d 1058, 1061 (Fed. Cir.
1992). Umeda clearly is not directed to laundry separating devices, and therefore is not
in the field of the appellant’s endeavors. Since Umeda is directed to loading boxes on a
truck, we share the appellant’s view that it would not have commended itself to the
Appeal No. 2002-2047
Application No. 09/348,400
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attention of an inventor who is attempting to solve problems related to removing laundry
articles from a truck. This being the case, it is our conclusion that Umeda fails to meet
either of the tests, and therefore this rejection is defective on the basis that Umeda
does not constitute analogous art.
However, even considering, arguendo, Umeda to be analogous art, we do not
agree with the examiner’s theory that Heinz would have suggested to one of ordinary
skill in the art that the Robin apparatus be provided with the wheeled truck moving
means disclosed by Umeda in order to allow all of the articles in the truck to be
accessed for removal by the Robin suction device. In arriving at this conclusion, we
first note that Robin evidences no concern for the suction cup being unable to access
all of sheets in the truck perhaps because, as is shown in Figure 4 and explained in
column 2, the sheets are in an essentially flat orientation in the truck, and the necessity
to search around in the truck in order to access the sheets does not exist. Even if there
were such a problem in the Robin system, it is our view that the solution suggested to
the artisan by Heinz would be to mount the laundry truck in a frame that can be moved
“to and fro . . . [and] up and down,” which is the manner in which Heinz solves this
problem. We fail to perceive any teaching, suggestion or incentive in Heinz which
would have led one of ordinary skill in the art to modify the Robin system by providing a
means for moving gripping the truck and causing it to move horizontally, as is disclosed
in the Umeda loading system, if for no other reason than this one-dimensional
Appeal No. 2002-2047
Application No. 09/348,400
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movement would not allow the suction device to access the entire floor area of the
truck. From our perspective, the only suggestion for modifying Robin in the manner
proposed by the examiner is found in the hindsight afforded on who first viewed the
appellant’s disclosure.
For the reasons set forth above, Robin, Umeda and Heinz fail to establish a
prima facie case of obviousness with regard to the subject matter recited in
independent claim 1, and we will not sustain the rejection of this claim or of claims 2-5,
which depend therefrom.
Independent claim 22 requires that there be a drive operatively connected with
the laundry truck to moveably position the truck with respect to the frame, and also
stands rejected on the basis of Robin, Umeda and Heinz. On the basis of the
reasoning applied above with regard to claim 1, we also will not sustain the rejection of
claim 22 or of claims 23, 24 and 113, which depend therefrom and are rejected on the
same grounds.
We shall, however, sustain the examiner’s rejection of independent method
claim 28, for in our view all of the steps recited in this claim are taught by Robin, and
anticipation is the epitome of obviousness. See In re Fracalossi, 681 F.2d 792, 215
USPQ 569 (CCPA 1982). However, since the reasoning we advance for sustaining this
Appeal No. 2002-2047
Application No. 09/348,400
Page 9
3Since Robin discloses all of the claimed subject matter, the fact that Umeda is not analogous art
is of no consequence.
rejection differs from that set out by the examiner, we designate the rejection to be a
new rejection made under 37 CFR 1.196(b).3
Robin discloses a laundry separation system in which the laundry to be
separated is in a wheeled truck, with the apparatus being disclosed as being particularly
suitable for operation “after the washing phase and before the finishing phase” (column
1, lines 21 and 22). In our view, it is clear from this recitation, and the presence of
wheels on the truck, that this reference teaches that the laundry articles are placed in
the truck at a first location, where they had been washed, and then are moved in the
truck to a second location, where they are removed from the truck and further acted
upon by the disclosed apparatus. This being the case, the step in claim 28 of “placing
the laundry truck from a first position spaced away from a gripping device to a second
position adjacent the gripping device” is part of the Robin teachings. As for the step of
“moving the laundry truck relative to movement of the gripping device,” it is our view that
the movement of the Robins laundry truck also is “relative to movement of the gripping
device” in that the movement of the gripping device is vertical and the movement of the
truck is horizontal.
Claim 29 adds to claim 28 the step of releasably clamping the truck to a movable
carriage mounted to the frame, with the gripping device being operatively connected to
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Application No. 09/348,400
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4See, for example, Webster’s New Collegiate Dictionary, 1976, page 776.
the frame, and claim 30 adds to claim 28 moving the truck long at least one rail. It is
our opinion that this rejection fails for the same reasons as were advanced above in our
action on the like rejection of claim 1. Likewise, we will not sustain the rejection of
dependent claim 114, which adds to claim 28 the requirement that movement of the
truck be “both forward and reverse relative to the gripping device in the second
[adjacent] position,” which we do not find to be rendered obvious by the applied
references.
Independent claim 54 includes a movable carriage and means for connecting the
truck to the carriage and moving the carriage, features for which the examiner relied
upon Umeda. Since we have determined that Umeda is non-analogous art, the
rejection cannot be sustained on that basis. We also point out, however, that the claim
further requires “a conveyer comprising a shaft pivotally connected with the frame,” “a
nip formed with the conveyor,” and “means for oscillating the conveyor and the nip
about the shaft” (emphasis added). The common applicable definition of a “nip” is the
region of a squeezing or crushing device where the rolls or jaws are closest together.4
This being the case, while a nip is created when the pivotal action of Heinz’ conveyor
25 causes roller 27 to be placed in juxtaposition with roller 26, it is only conveyor 25 and
not the conveyor and the nip that oscillates about a shaft, as is required by this claim.
Thus, contrary to the examiner’s opinion, Heinz does not teach this feature.
Appeal No. 2002-2047
Application No. 09/348,400
Page 11
5In order to meet a means-plus-function limitation, the prior art must perform the identical function
recited in the means limitation, and perform that function using the structure disclosed in the appellant’s
specification or an equivalent structure. See Valmont Indus. Inc. v. Reinke Mfg. Co., 983 F.2d 1039,
1042, 25 USPQ2d 1451, 1454 (Fed. Cir 1993).
Independent claim 81 does not recite the movable truck, but sets forth “a nip
roller mounted adjacent the conveyor to define therebetween a nip,” and “transfer
means for transferring a portion of said article of laundry into said nip.” The transfer
means is disclosed by the appellant as being an air jet (14) that blows the suspended
laundry article into the nip (Figures 1 and 8-10). In response to the appellant’s
argument regarding the absence of this structure in the references, the examiner has
merely pointed out that Robin “discloses transfer means #10 and #11 for feeding the
laundry” (Answer, page 7), and we note that these items comprise, respectively, a
suction pipe and a blower nozzle. The examiner has not explained how the blower
nozzle and the suction pipe “transfer” the laundry item “into” a nip, as is required by this
claim, and it appears to us that they merely function to hold, rather than transfer, the
laundry item beneath suction device 4 until gripper 5 comes along the track to grip it,
whereupon the suction and blower are inactivated to allow the laundry item to be taken
from their grasp (column 5, line 19 et seq.). Moreover, the appellant has asserted that
this limitation is a “means-plus-function” structure under the sixth paragraph of Section
112 (Brief, page 18, Reply brief, page 7), but the examiner has neither considered it in
this fashion,5 nor replied to the appellant’s argument that it should be so considered.
We therefore are of the view that the evidence adduced by the examiner does not
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Application No. 09/348,400
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establish a prima facie case of obviousness with regard to the subject matter of claim
81, and we will not sustain the rejection.
Independent claim 82 includes a truck and means for moving it, and therefore
suffers from the problem of Umeda being non-analogous art. In addition, however,
claim 82 requires the transfer means discussed above with regard to claim 81. For the
reasons we set forth in refusing to sustain the rejections of claim 1 and 81, we also will
not sustain the rejection of claim 82 or, it follows, of claims 83 and 84, which depend
from claim 82 and stand rejected on the same grounds.
The Rejection Based Upon Robin, Umeda, Heinz and Rosenfeld
This rejection is directed to independent claims 77, 78, 90 and 96, and
dependent claims 79 and 80. It is the examiner’s view in this rejection that all of the
subject matter recited would have been obvious in view of the combined teachings of
Robin, Umeda and Heinz, except for the requirement that the gripping device have first
and second pairs of gripping jaws. However, the examiner has taken the position that
this structure is taught by Rosenfeld, and it would have been obvious to one of ordinary
skill in the art to replace the suction device for removing laundry articles disclosed in
Robin with the Rosenfeld device. As was the case with the other rejection, our
conclusion that Umeda is non-analogous art causes this rejection also to be fatally
defective.
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Application No. 09/348,400
Page 13
However, we further point out that the examiner’s contention that Rosenfeld
discloses two sets of grippers is in error, and therefore even if all of the references were
properly combinable the result would not be the invention recited in these claims.
Rosenfeld discloses a linen sorter provided with grippers 50 equipped with
gripper arms (Figures 2 and 3, unnumbered) for grasping individual pieces of linen and
removing them from a hopper. “Pins” 74 and 76 are mounted within the operating arcs
of the gripper arms, and pin 76 is pivotable. As a suction device removes linen from the
hopper, the linen contacts pins 74 and 76, whose function is to sense whether one
piece (desired), or more than one piece (undesired), is being pulled upwardly by the
suction. We agree with the appellant that it is clear from the explanation of this
mechanism which begins at line 59 of column 6, that pins 74 and 76 do not grip the
linen pieces, but merely sense the presence of linen pieces, and therefore the
Rosenfeld apparatus has only one pair of gripping jaws. Since all of the claims under
this rejection require the presence of two sets of gripping jaws, the combined teachings
of the four references could not, in our view, establish a prima facie case of
obviousness with regard to the subject matter recited in claims 77-80, 90 and 96.
In any event, the rejection of claims 77-80, 90 and 96 is not sustained.
CONCLUSION
The rejection of claims 1-5, 22-24, 29-30, 54, 81-84, 113 and 114 as being
unpatentable over Robin in view of Umeda and Heinz is not sustained.
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Application No. 09/348,400
Page 14
The rejection of claims 77-80, 90 and 96 as being unpatentable over Robin in
view of Umeda, Heinz and Rosenfeld is not sustained.
The rejection of claim 28 as being unpatentable over Robin in view of Umeda
and Heinz is sustained. However, this is designated to be a new rejection by this panel
of the Board of Patent Appeals and Interferences under 37 CFR 1.196(b).
In view of our action concerning claim 28, this decision contains a new ground of
rejection pursuant to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final rule
notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark
Office 63,122 (Oct. 21, 1997)). 37 CFR § 1.196(b) provides, “A new ground of rejection
shall not be considered final for purposes of judicial review.”
Regarding any affirmed rejection, 37 CFR § 1.197(b) provides:
(b) Appellant may file a single request for rehearing within two months
from the date of the original decision . . . .
37 CFR § 1.196(b) also provides that the appellant, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the following two options
with respect to the new ground of rejection to avoid termination of proceedings (37 CFR
§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the claims so rejected or
a showing of facts relating to the claims so rejected, or both, and have the
matter reconsidered by the examiner, in which event the application will
be remanded to the examiner. . . .
(2) Request that the application be reheard under § 1.197(b) by the
Board of Patent Appeals and Interferences upon the same record. . . .
Appeal No. 2002-2047
Application No. 09/348,400
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Should the appellant elect to prosecute further before the Primary Examiner
pursuant to 37 CFR § 1.196(b)(1), in order to preserve the right to seek review under 35
U.S.C. §§ 141 or 145 with respect to the affirmed rejection, the effective date of the
affirmance is deferred until conclusion of the prosecution before the examiner unless,
as a mere incident to the limited prosecution, the affirmed rejection is overcome.
If the appellant elects prosecution before the examiner and this does not result in
allowance of the application, abandonment or a second appeal, this case should be
returned to the Board of Patent Appeals and Interferences for final action on the
affirmed rejection, including any timely request for reconsideration thereof.
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, 37 CFR 1.196(b)
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
Appeal No. 2002-2047
Application No. 09/348,400
Page 16
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
NEA:pgg
CRAIG A. SUMMERFIELD
BRINKS, HOFER, GILSON & LIONE
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