Ex Parte Wolff

Board of Patent Appeals and Interferences

Mar 23, 2009

10301658 (B.P.A.I. Mar. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEPHAN WOLFF
____________

Appeal 2008-5714
Application 10/301,658
Technology Center 3700
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Decided1: March 24, 2009
____________

Before LINDA E. HORNER, JOHN C. KERINS, and STEVEN D.A.
McCARTHY, Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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Application 10/301,658

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STATEMENT OF THE CASE
Stephan Wolff (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s final rejection of claims 1-33, the only claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We REVERSE.

THE INVENTION
Appellant’s claimed invention is to an apparatus for treating elongated
rods in which a tubular envelope surrounds a rod-like filler, the apparatus
having a means for continuously advancing the filler lengthwise in a
predetermined direction along a predetermined path, a means for draping the
filler into a flexible web in a first portion of the path, the draping means
comprising an endless conveyor belt or garniture, and, in a second portion of
the path downstream of the endless conveyor belt or garniture, a means for
heating the filler comprising a means for generating microwaves for heating,
which is located at a station separate from the draping means. (Appeal Br.,
Claims Appendix, claim 1). Claim 1, reproduced below, is representative of
the claimed subject matter:
1. Apparatus for treating elongated rods wherein a
tubular envelope surrounds a rod-like filler,
comprising

means for continuously advancing the filler
lengthwise in a predetermined direction along a
predetermined path;

means for draping the filler into a flexible web in a
first portion of said path to convert the thus draped
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web into said tubular envelope of the thus obtained
rod, said draping means comprising an endless
conveyor belt or garniture; and

means for heating the filler in a second portion of
said path downstream of said endless conveyor
belt or garniture of said first portion, as seen in
said predetermined direction, said heating means
comprising means for generating microwaves for
heating and being located at a station separate from
the draping means.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Parmele US 3,039,908 Jun. 19, 1962
Cahill US 4,986,284 Jan. 22, 1991
Guesnon US 5,113,681 May 19, 1992
Dall’osso US 5,131,413 Jul. 21, 1992

The Examiner has rejected:
(i) claims 1-5 under 35 U.S.C. § 103(a) as being unpatentable over
Parmele in view of Cahill and Guesnon;
(ii) claims 6-33 under 35 U.S.C. § 103(a) as being unpatentable over
Parmele in view of Cahill, Guesnon, and Dall’osso.

ISSUE
The Examiner concluded that the combined teachings of Parmele,
Cahill and Guesnon render obvious an apparatus that has a means for
heating an advancing filler downstream of, and at a station separate from, a
draping means which comprises an endless conveyor or garniture.
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Appellant urges that the Guesnon patent is not properly combinable
with the Parmele and Cahill patents, and that, even if combined, the resulting
structure fails to render obvious the claimed structure.
The issue joined in this appeal is: has Appellant shown that the
Examiner erred in concluding that the combined teachings of the Parmele,
Cahill and Guesnon patents establish a prima facie case of obviousness with
respect to the claimed invention?

FINDINGS OF FACT
The following enumerated findings of fact (FF) are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
FF 1. The Parmele patent does not disclose a specific means for
continuously advancing a filler. (Parmele, passim; Fig. 1).
FF 2. Appellant equates the term “garniture” with the seemingly more
common term “endless belt.” (Specification, p. 5. l. 5).
FF 3. The Guesnon patent shows and describes a press 17, and does
not disclose that this press is a heating station or heating means (Guesnon,
Fig. 2; col. 2, l. 64-col. 3, l. 19).
FF 4. Guesnon discloses that press 17 is used with forming tools 18,
22, which are not pre-heated. (Guesnon, Abstract; col. 1, ll. 58-59; col. 3, ll.
1-7).
FF 5. In the Guesnon apparatus, subsequent to the initial forming in
the press 17, the formed parts held in press inserts 36 are placed into a
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calibration apparatus and inserted into a furnace. (Guesnon, Fig. 3, col. 3, ll.
28-45).
FF 6. The conveyor 15 in Guesnon is not disclosed as being, and does
not appear to be, capable of moving the material (titanium sheet) being
processed therein either to or from preheat furnace 11. (Guesnon, Fig 2).
FF 7. The conveying device 15 in Guesnon is employed to transfer a
broad, planar sheet of titanium (Guesnon, col. 2, ll. 62-68).
FF 8. The material to be conveyed in Parmele is a relatively small
cross-sectioned fabric/paper assembly of indeterminate rigidity with an
undisclosed means of conveying the same (Parmele, col. 2, l. 42-col. 3, l.
53).
PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, ___,
127 S. Ct. 1727, 1734 (2007). The question of obviousness is resolved on
the basis of underlying factual determinations including (1) the scope and
content of the prior art, (2) any differences between the claimed subject
matter and the prior art, (3) the level of skill in the art, and (4) where in
evidence, so-called secondary considerations. Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1966). See also KSR, 550 U.S. at ___, 127 S. Ct. at 1734
(“While the sequence of these questions might be reordered in any particular
case, the [Graham] factors continue to define the inquiry that controls.”).
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ANALYSIS
Claims 1-5
Independent claim 1 recites that the apparatus for treating elongated
rods (tubular envelopes surrounding rod-like fillers) includes:
… means for continuously advancing the filler
lengthwise … along a predetermined path;

… means for draping the filler … in a first portion
of said path … said draping means comprising an
endless conveyor belt or garniture;

...means for heating the filler in second portion of
said path downstream of said endless conveyor
belt or garniture of said first portion … said
heating means … being located at a station
separate from the draping means.

Appeal Br., Claims Appendix, claim 1.
The Parmele patent does not disclose a specific means for
continuously advancing a filler (FF 1), a fact acknowledged by the
Examiner. (Answer 4). The Examiner asserts that it is nonetheless inherent
that a conveying means is present in Parmele, and that the conveying means
draws the wound strands 13, 14, 15 and “garniture” (paper strip) 22 to cutter
28. (Answer 4). The Examiner further asserts that the Guesnon patent
discloses a “continuous conveying means 15 for conveying work to a
heating station 17” and that the conveying means is “separate from that
heating station 17.” (Id.).
Drawing upon these findings and assertions, the Examiner concludes
that it would have been obvious to provide a means for continuously
advancing the filler as taught by Guesnon in the Parmele apparatus, “in order
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to convey the filler in a known manner.” (Id.). The Examiner further notes
that the heating station 29 in Parmele is separate from its draping means 24.
(Id.).
The assertion underlying this conclusion relative to the teachings of
the Guesnon patent relies upon a misinterpretation of those teachings.
Element 17 shown and described in Guesnon is not a heating station or
heating means; rather it is a press (FF 3), which, according to Guesnon, is
used with forming tools 18, 22, which are not pre-heated. (FF 4).2 As such,
Guesnon does not teach, as asserted by the Examiner, a continuous
conveying means for conveying work to a heating station. Appellant
correctly notes, in this regard, that the preheating furnace disclosed in
Guesnon is outside the path of the conveying means. (Appeal Br. 10). The
disclosed conveyor 15 in Guesnon does not appear to be capable of moving
the material (titanium sheet) being processed therein either to or from the
furnace. (FF 6). This misinterpretation of the teachings of Guesnon leads us
to conclude that a prima facie case of obviousness has not been established.
Above and beyond the misinterpretation of the teachings of Guesnon,
the Examiner has failed to present a sufficient articulation, supported by
rational underpinnings, of the reason to combine the teachings of Guesnon
with those of Parmele. In total, the rationale set forth by the Examiner to
combine the teachings of Guesnon and Parmele is that the Parmele apparatus
would be able to “convey the filler in a known manner” (Answer 4), and that

2 Subsequent to the initial forming in the press, the formed parts held in
press inserts 36, are placed into a calibration apparatus and inserted into a
furnace. (FF 5). Guesnon provides no details about the conveying of the
formed parts held in the press inserts to the calibration apparatus, or about
the conveying of the calibration apparatus to a furnace.
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the “continuously advancing means/conveying means of Guesnon et al.
would also be available to one of ordinary skill in the art for transporting a
product to a heating means.” (Answer 11). Considering that the conveying
device in Guesnon is employed to transfer a broad, flat sheet of substantially
rigid (albeit heated) titanium (FF 7), whereas the material to be conveyed in
Parmele is a relatively small cross-sectioned fabric/paper assembly of
indeterminate rigidity with an undisclosed means of conveying the same (FF
8), the Examiner’s reliance on only the conclusory statements repeated
above evidences a failure to establish a prima facie case of obviousness.
While not indispensable to the decision reached herein, we note that
we disagree with the Examiner’s contention, made in critiquing certain of
Appellant’s arguments, that claim 1 does not require that the heating station
be separate from the endless belt or garniture, but only that it be separate
from the draping means. (Answer 9). Claim 1 recites that the draping
means comprises the endless belt or garniture, thus the limitation requiring
the heating means to be located at a station separate from the draping means
implicitly requires that the endless belt or garniture be separate from the
heating means station. Regardless as to whether the claimed predetermined
path “is defined by the conveyor belt or garniture” (id.), the claim does not
require the conveyor belt or garniture to extend completely along that
predetermined path, a position taken by the Examiner that is in direct
conflict with the language of claim 1.
Claims 2-5, which depend from claim 1, are also rejected as being
obvious over Parmele in view of Cahill and Guesnon. For the same reasons
noted above, we are persuaded that the Examiner has not established a prima
facie case that the subject matter of these claims would have been obvious to
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a person of ordinary skill in the art. We will not sustain the rejection of
claims 1-5 under 35 U.S.C. § 103(a).

Claims 6-33
Claims 6-33 were rejected as being unpatentable over Parmele in view
of Cahill, Guesnon and Dall’osso. All of these claims depend indirectly
from claim 1. The Examiner does not identify any portion of the Dall’osso
patent that remedies the deficiencies of the Parmele, Cahill and Guesnon
references with respect to the subject matter of claim 1, discussed in the
preceding section. Accordingly, the rejection of claims 6-33 under 35
U.S.C. § 103(a) based on the combined teachings of Parmele, Cahill,
Guesnon, and Dall’osso is in error and will not be sustained.

CONCLUSION
Appellant has established that reversible error exists in the rejection of
claims 1-33 under 35 U.S.C. § 103(a).

ORDER
The decision of the Examiner to reject claims 1-33 is reversed.

REVERSED
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