nullDownload PDFPatent Trials and Appeals BoardNov 29, 201913971686 - (D) (P.T.A.B. Nov. 29, 2019) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/971,686 08/20/2013 Shannon B. Richardson 714152 8098 23460 7590 11/29/2019 LEYDIG VOIT & MAYER, LTD TWO PRUDENTIAL PLAZA, SUITE 4900 180 NORTH STETSON AVENUE CHICAGO, IL 60601-6731 EXAMINER GORMAN, DARREN W ART UNIT PAPER NUMBER 3752 NOTIFICATION DATE DELIVERY MODE 11/29/2019 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): Chgpatent@leydig.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SHANNON B. RICHARDSON, MARK S. HOLLINRAKE, MART E. WARD, and GLENN L. UNGERER Appeal 2019-003783 Application 13/971,686 Technology Center 3700 Before STEFAN STAICOVICI, RICHARD H. MARSCHALL, and BRENT M. DOUGAL, Administrative Patent Judges. MARSCHALL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 24 and 26–43. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “Applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Henderson Products, Inc. Appeal Br. 1. Appeal 2019-003783 Application 13/971,686 2 CLAIMED SUBJECT MATTER The invention relates to an apparatus for spreading granular materials, such as salt or sand, from a vehicle onto roadways. Spec. ¶ 2. Claims 24 and 40 are independent. Claim 24, reproduced below, is illustrative of the claimed subject matter: 24. A material spreader adapted to dispense granular material from a vehicle, the material spreader comprising: a feed chute having a feed chute discharge opening; and a discharge disc assembly disposed below the feed chute, the discharge disc assembly including: a spinner disc arranged with the feed chute discharge opening to receive granular material dispensed from the feed chute, a shroud disposed in at least partial covering relation to the spinner disc and defining a spinner disc discharge opening, a rotational drive operatively connected to the spinner disc such that the spinner disc is rotatable within the shroud about a rotational axis; and wherein at least the shroud of the discharge disc assembly is rotatably mounted with respect to the feed chute such that the spinner disc discharge opening is selectively rotatable through an angle about a pivot axis, and the pivot axis is disposed in offset relationship to the rotational axis. REJECTION ON APPEAL The Examiner rejected claims 24 and 26–43 “on the ground of nonstatutory double patenting as being unpatentable over claims 1–23 of U.S. Patent Now. 8,511,589 [“the ’589 patent”].” Final Act. 4. ANALYSIS The Examiner’s rejection acknowledges that the claims at issue on appeal are not identical to the claims of the ’589 patent, but finds that the Appeal 2019-003783 Application 13/971,686 3 claims “are not patentably distinct from each other because the claims of the [’589] patent include each and every structural feature[] of the instant application claims.” Final Act. 4. With respect to the limitation in independent claims 24 and 40 requiring “the pivot axis is disposed in offset relationship to the rotational axis,” the Examiner finds that the claimed relationship “necessarily follows and is thus an inherent property of the limitations of the patented claims.” Id. at 5. The Examiner also finds that “the rotatability of the discharge disc assembly about the ‘pivot axis’ of the patented claims necessarily results in meeting the ‘selectively rotatable’ ability of the ‘spinner disc discharge opening . . . through an angle about a pivot axis’ of the instant application claims.” Id. The Examiner further relies on the language of claim 1 of the ’589 patent, which recites a “pivot axis” of the “pass-through opening” of the “shroud,” with the opening “at a position radially removed from the rotational axis” of the “spinner disc.” Id. The Examiner finds that “it necessarily follows, and is thus clearly inherent, that the pivot axis . . . is disposed in offset relationship (i.e. ‘at a position radially removed from’) the rotational axis of the spinner” as required by the claims on appeal. Id.; see also Ans. 6–7. Appellant focuses on the above highlighted language of independent claims 24 and 40, and argues that the claims of the ’589 patent fail to disclose those limitations. Appeal Br. 4–5. More specifically, Appellant argues that The “pivot axis” is mentioned in claims 1, 9, 18, and 19 of the ’589 patent. None of these claims recite (or render obvious) the feature that the spinner disc discharge opening “is selectively rotatable through an angle about a pivot axis” and that the “pivot axis is disposed in offset relationship to the rotational axis of the spinner disc,” as recited in claim 24. Appeal 2019-003783 Application 13/971,686 4 Id. at 4. Appellant makes the same argument directed to the same claim language found in claim 40. Id. at 5. Appellant does not raise any additional arguments as to the dependent claims. Id. at 4–5. The outcome in appeal, therefore, turns on the Appellant’s argument quoted above in the context of claim 24. We are not persuaded that the Examiner erred in rejecting the claims for double patenting. Appellant argues that the claims of the ’589 patent fail to recite or render obvious the limitation requiring rotation of the spinner disc discharge opening “about a pivot axis” that “is disposed in offset relationship to the rotational axis of the spinner disc.” Appeal Br. 4. Appellant’s argument does not address the Examiner’s findings or interpretation of what the claims of the ’589 patent inherently disclose, and does not establish error in those findings for that reason alone. Moreover, we agree with those findings. Claim 1 of the ’589 patent recites a “rotational axis” of the spinner disc and a “pivot axis extending through the pass- through opening and the discharge opening.” ’589 patent, 13:3–12. The claim also recites the location of the discharge opening of the feed chute, and thus the “pivot axis” extending through that opening, as “radially removed from the rotational axis.” Id. at 13:8–9. This claimed arrangement necessarily requires an axis of the discharge opening “offset” from the axis of the spinner disc, as required by independent claims 24 and 40 on appeal. Claim 1 of the ’589 also recites rotation of the entire discharge disc assembly “about” the pivot axis of the discharge opening “such that the discharge disc assembly is selectively rotatable through an angle about the pivot axis,” which meets the same language requiring the same pivoting Appeal 2019-003783 Application 13/971,686 5 action “through an angle about a pivot axis” as required by independent claims 24 and 40. Id. at 13:10–15. Because Appellant’s arguments on appeal do not address directly the Examiner’s basis for the rejection, and because Examiner’s findings are supported by the claims of the ’589 patent, we sustain the rejections of claims 24 and 26–43. CONCLUSION The Examiner’s rejection is affirmed. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 24, 26–43 Nonstatutory Double patenting 24, 26–43 Overall Outcome 24, 26–43 FINALITY AND RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation