Robert S. Cutsforth

Patent Trials and Appeals Board

Jul 29, 2019

13587308 - (R) (P.T.A.B. Jul. 29, 2019)

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.
13/587,308 08/16/2012 Robert S. Cutsforth 1099.1118101 5843
28075 7590 07/29/2019
SEAGER, TUFTE & WICKHEM, LLP
100 SOUTH 5TH STREET
SUITE 600
MINNEAPOLIS, MN 55402
EXAMINER
NGUYEN, NGA B
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
07/29/2019 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):
GEN.USPTO@stwiplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERT S. CUTSFORTH
____________

Appeal 2018-002023
Application 13/587,308
Technology Center 3600
____________

Before ST. JOHN COURTENAY III, MARC S. HOFF, and
BETH Z. SHAW, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant1 filed a Request for Rehearing (“Request”) under 37 C.F.R.
§ 41.52(a)(1) for reconsideration of our Decision on Appeal, mailed May 10,
2019 (“Decision”). Our Decision affirmed the Examiner’s decision rejecting
all the claims 1 and 3–27 under 35 U.S.C § 103(a).
We have reconsidered our Decision, in light of Appellant’s arguments
in the Request, and are not persuaded that we misapprehended or overlooked
any points in rendering our Decision. We decline to change or modify our
prior Decision for the reasons discussed infra.

1 According to Appellant, the real party in interest is assigned to Cutsforth,
Inc. App. Br. 4.
Appeal 2018-002023
Application 13/587,308

2
In the Request (2), Appellant contends our decision is incorrect
because we failed to properly understand some of the points raised by
Appellant and that we have overlooked or misapprehended certain
arguments. Appellant advances nine points of argument in the Request
2–10.
Based upon our review of Appellant’s nine points of argument, we
emphasize that the Request for Rehearing is not a second opportunity for
Appellant to reargue points already considered by the Board and previously
found unpersuasive. We have only considered timely arguments actually
made by Appellant. See 37 C.F.R. § 41.52(a)(1).
We have reviewed Appellant’s arguments in the Request, our
Decision, and have again reviewed the Examiner’s obviousness rejections,
and the Examiner’s responses to Appellant’s arguments as set forth in the
Answer. However, after considering Appellant’s arguments in the Request,
we again find Appellant does not proffer sufficient argument or evidence to
persuade us of error regarding the Examiner’s underlying factual findings
and ultimate legal conclusion of obviousness. See Ex parte Frye, 94
USPQ2d 1072, 1075 (BPAI 2010) (precedential).
For the reasons discussed infra, and on this record, we are not
persuaded that we misapprehended or overlooked any points in rendering
our Decision.

Appeal 2018-002023
Application 13/587,308

3
For convenience, we reproduce claim 1 below:
Exemplary Claim
1. A method of performing maintenance of components of
an electrical device, comprising:

[L1] receiving, via a third-party parcel delivery service,
a container of used brush holder assemblies at a remote
location geographically removed from an electrical device
facility from which the used brush holder assemblies were in
service;

[L2] replacing one or more worn components of one or
more of the used brush holder assemblies to prepare unused
brush holder assemblies at the remote location; and

[L3] sending, via a third-party parcel delivery service, a
container of unused brush holder assemblies to the electrical
device facility for installation on an electrical device at the
electrical device facility.
App. Br. 25, “Claims Appendix.” (Emphasis added regarding contested
limitations).
At the outset, we note claim 1 is a method claim that recites only
three steps or acts: [L1] “receiving,” [L2] “replacing,” and [L3] “sending,”
as reproduced above.
Although step L1 recites receiving a container of used brush
assemblies, the actual step or act of receiving a container is not positively
recited as being performed any differently depending on the particular
contents of the container.
Similarly, the actual step or act L3 of sending a container of unused
brush assemblies is not positively recited as being performed any differently
depending on the particular contents of the container.
Appeal 2018-002023
Application 13/587,308

4
Thus, we view Appellant’s arguments (points 1–9) in the Request as
an attempt to distinguish the “receiving” and “sending” steps or acts of
method claim 1 over the teachings and suggestions of the prior art in terms
of structure (i.e., the respective structural contents of the containers)
instead of by distinguishing the actual generic steps or acts of L1
(“receiving”) and L3 (“sending”) over the corresponding steps found by the
Examiner in the cited references. We find such arguments unavailing.
Although it is conceivable that certain types of sensitive container
contents might require particular steps of sending and receiving that involve
special handling (e.g., when shipping hazardous materials, such as lithium
batteries, radioactive and biological materials, or fragile contents), no such
special handling of the recited container contents is claimed regarding the
generic steps or acts of L1 (“receiving”) and L3 (“sending”). See Claim 1.
We emphasize that exactly how the container is received and sent is not
covered within the scope of method claim 1, except that the recited steps or
acts of “receiving” and “sending” must be performed “via a third-party
parcel delivery service.” Claim 1.
Moreover, we find the structure of the container contents (claim 1) is
taught or suggested by Cutsforth ‘040, which is directed to “[m]ethods and
systems for monitoring a component of an electrical device and/or a brush of
a brush holder assembly.” Cutsforth ‘040, Abstract. 2
Regarding Appellant’s point 1, we agree with Appellant that “[w]hat
is deemed a remote location is based on a point of reference.” Request 2
(emphasis added). Moreover, without the addition of the “remote location”

2 We note the named inventor “Robert S. Cutsforth” in this application on
appeal is the same inventor named in Cutsforth ‘040.
Appeal 2018-002023
Application 13/587,308

5
claim limitation, performing all the steps or acts of a given method in
location A should not change when the same method is performed at any
separate “remote” location B.
We emphasize that even without the express reference to a “remote
location” in claim 1, the hypothetical patent owner of method claim 1 could
sue for infringement if three agents acting under the direction and control of
a principal separately performed method steps L1, L2, and L3 at different
locations. See Akamai Techs., Inc v. Limelight Networks, Inc., 786 F.3d 899,
904 (Fed. Cir. 2015) (“direct infringement liability of a method claim under
35 U.S.C. § 271(a) exists when all of the steps of the claim are performed by
or attributed to a single entity — as would be the case, for example, in a
principal-agent relationship, in a contractual arrangement, or in a joint
enterprise.”).
From the above discussion, we infer Appellant has responsively
included the limiting language “remote location” in method claim 1 because
replacement of defective or worn parts at the service location is
notoriously well known in the art.
Thus, as drafted, method claim 1 positively requires the step L2 of
“replacing” to be performed at a location that is geographically “remote”
from the claimed “electrical device facility” where the brush holder
assemblies are in service. But in accord with Appellant’s own statement
(“[w]hat is deemed a remote location is based on a point of reference” —
Request 2), we conclude the claimed “remote location” is remote from the
“electrical device facility” and vice versa.

Appeal 2018-002023
Application 13/587,308

6
As stated in our Decision (6):
[O]ur reviewing court guides: where “the problem is known,
the possible approaches to solving the problem are known and
finite, and the solution is predictable through use of a known
option,” a solution that is obvious to try may indeed be
obvious. Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1351
(Fed. Cir. 2008), citing KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398,421 (2007).
Thus, we restate our view that merely changing the performance
location of a particular method step or act to an alternate location that is
“remote” from the location(s) where the other method steps are performed
would not only realize a predictable result, but would also be “obvious to
try” because “the problem is known, the possible approaches to solving the
problem are known and finite, and the solution is predictable through use of
a known option.” Id.
Referring to Cutsforth ‘040, Figure 2, we note that control unit 100 is
the location where the brush assemblies are remotely monitored for wear:
As shown in FIG. 2, in some embodiments, images
or data signals sent or transmitted from multiple remote
monitoring locations 110, each having one or more, or a
plurality of, imaging devices 30 and/or processing units 40 of
a monitoring system 10, may be sent or transmitted to one or
more central control units 100 for processing and/or
evaluation[.] [W]hen describing the one or more control units
100 as being in a centralized location, it is not intended to limit
the control unit 100 to a location equidistant to all the remote
monitoring locations 110, although this arrangement may be
realized in some embodiments.
Cutsforth ‘040 ¶ 26 (emphasis added).
We emphasize that control unit 100 is depicted in Figure 2 some
geographical distance away from service locations 110 (“multiple remote
monitoring locations 110” ¶ 26). See map of USA, Fig. 2.
Appeal 2018-002023
Application 13/587,308

7
Cutsforth ‘040, paragraph 56, also clarifies that the monitoring is
actually performed at a control center that is geographically remote from the
electrical facility service location:
The control center may be located remote from one or
more electrical facilities (e.g., in a different building, facility,
city, county, state, country, etc.). A processing unit, which
may be located at the control center, may use a software
program and/or a monitor to analyze and/or monitor the
performance of the brushes and/or other components in
operation at the facilities, such as the current state of each brush
in operation and/or an anomalous condition of the brushes. The
software program or monitor may alert an operator, technician
and/or other personnel that a brush at one of the remote
electrical facilities is sufficiently worn and/or needs to be
replaced, a brush at one of the remote electrical facilities is
damaged, failure has occurred or is imminent, or other
maintenance may need to be performed.
Cutsforth ‘040 ¶ 56.
Cutsforth ‘040, paragraph 50, further describes a particular
embodiment in which a replacement brush is delivered to the service
location:
In some embodiments, the output signal from the processing
unit 40 or a technician may schedule maintenance or inspection,
send personnel to perform maintenance or inspection, order
and/or schedule distribution/ delivery of a replacement brush
24 or other part, route maintenance personnel and/or product
delivery to a specified location, or arrange for other
notification and/or scheduling tasks be performed.
Cutsforth ‘040 ¶ 50 (emphasis added).
From the above descriptions, we find at least the unspecified
geographical location (¶ 50) that the replacement brush is sent from
(“product delivery to a specified location”) is necessarily remote from the
electrical facility service location (i.e., where the brushes are in actual use),
Appeal 2018-002023
Application 13/587,308

8
otherwise, there would be no need to ship it to the electrical facility service
location. 3 See Cutsforth ‘040, Fig. 2.
Therefore, the possibility that the originating sending location may or
may not be the same as the geographical location of control center location
100 is immaterial to our analysis. Our analysis here also fully addresses
Appellant’s point 6, which principally asserts that “[n]o component of the
electrical device, namely the brush holder assembly, is located at the
remotely located control center.” Request 6.
Appellant additionally argues: “one of ordinary skill in the art would
understand the ‘product’ to be new or replacement parts. Cutsforth offers no
. . . discussion whatsoever as to what is done with used brush holder
assemblies.” Request 3 (emphasis omitted).
In response, in our analysis, we interpret the claim terms under a
broad but reasonable interpretation (BRI), and then read the disputed claim
language on the corresponding features mapped by the Examiner in the cited
reference(s). 4

3 Our reviewing court has “recognized that inherency may supply a missing
claim limitation in an obviousness analysis.” PAR Pharm., Inc. v TWI
Pharm., Inc., 773 F.3d 1186, 1194–95 (Fed Cir. 2014). See also Decision.
7.
4 Claim construction is an important step in a patentability determination.
Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir. 2003) (“Both
anticipation under § 102 and obviousness under § 103 are two-step inquiries.
The first step in both analyses is a proper construction of the claims . . . . The
second step in the analyses requires a comparison of the properly construed
claim to the prior art.” (internal citations omitted)).

Appeal 2018-002023
Application 13/587,308

9
We emphasize that Appellant’s claims are silent regarding any
mention of the argued word “product.” See Request 2. Moreover, we
interpret “unused brush holder assemblies” as encompassing new brush
holder assemblies, in light of the claims and Specification. Our construction
is fully consistent with the corresponding description in Appellant’s
Specification: “The method also includes sending, via a third-party parcel
delivery service, a container of unused brush holder assemblies to the
electrical device facility for installation on an electrical device at the
electrical device facility.” Spec. 2, ll. 12–14.
From the above discussion, we conclude the claim language
“replacing one or more worn components of one or more of the used brush
holder assemblies to prepare unused brush holder assemblies at the remote
location” (claim 1, step L2 (emphasis added)) encompasses both new brush
holder assemblies (containing all new parts) and brush holder assemblies
that may contain some portion of old or refurbished parts, in the case that not
all the worn components were replaced.
We interpret dependent claim 3 as further limiting the unused brush
holder assemblies of claim 1 to only new parts: “packaging the prepared
unused brush holder assemblies in a container with new brushes pre-loaded
in brush holders of the unused brush holder assemblies.”
Regarding Appellant’s point 4 contention that “[i]ndependent claim 1
effectively recites a method of refurbishing brush holder assemblies [and]
Cutsforth fails to do so” (Request 5), we note Appellant’s claims are silent
regarding the argued refurbishing of brush holder assemblies. Thus,
Appellant’s argument is not commensurate in scope with the claim language.
See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“[A]ppellant’s arguments
Appeal 2018-002023
Application 13/587,308

10
fail from the outset because . . . they are not based on limitations appearing
in the claims.”).
Our above discussion covers Appellant’s arguments for points 1–4
and 6. Regarding Appellant’s point 5, we again emphasize that the
Examiner’s obviousness rejection is based upon the combined teachings and
suggestions of the cited references. Moreover, as stated in our Decision
(13), “the question under 35 USC 103 is not merely what the references
expressly teach but what they would have suggested to one of ordinary skill
in the art at the time the invention was made.” Merck & Co. v. Biocraft
Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re Lamberti, 545
F.2d 747, 750 (CCPA 1976)) (emphasis added); see also MPEP § 2123.
Regarding the focus of Appellant’s point 7 (“Hoy does not teach
placing a plurality of any product into the disclosed container (box)”
(Request 7 (emphasis omitted)), we find loading a container with a plurality
of any product would have merely produced a predictable result, following
the guidance of KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
Moreover, “[i]t is well settled that the mere duplication of parts has no
patentable significance unless a new and unexpected result is produced.”
In re Harza, 274 F.2d 669, 671 (CCPA 1960). See also MPEP
§ 2144.04(VI)(B) (“Reversal, Duplication, Or Rearrangement Of Parts”).
We find Appellant’s point 8 is simply a restatement of point 7
(duplication of parts). See Request 8 (“The Examiner's citation of paragraph
22 of Hoy fails to properly teach or suggest a plurality of brush holder
assemblies (or any other product) packaged in a container.”). We refer to
our response above.
Appeal 2018-002023
Application 13/587,308

11
Likewise, Appellant’s point 9 is a more specific restatement of points
7 and 8 (duplication of parts):
Hoy teaches one electronic device in one container. If the
“safeguarding materials” of Hoy are considered to constitute a
“carrier” as required by the claims (a point not conceded by
Appellant), Hoy still fails to teach a plurality of said carriers in
one container, because one of ordinary skill in the art would not
necessarily package one electronic device of Hoy within
multiple “carriers” where such packaging is not explicitly
disclosed as necessary.
Request 9 (emphasis added).
Regarding the last sentence (shown in emphasis) id., Appellant
provides no objective evidence in support. It is well settled that mere
attorney arguments and conclusory statements, which are unsupported by
factual evidence, are entitled to little probative value. In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997).
Lastly, we note Appellant’s invention is described in the
Specification, inter alia, as merely shipping:
unused brush holder assemblies 10, or components thereof to an
electrical device facility via a third-party parcel delivery service
(e.g., FedEx, UPS, U.S. Postal Service, DHL Global Mail, etc.)
and/or the container 50 may be used to ship used brush holder
assemblies 10, or components thereof, to a remote location via
a third-party parcel delivery service (e.g., FedEx, UPS, U.S.
Postal Service, DHL Global Mail, etc.) to inspect, perform
maintenance on, refurbish, repair, exchange and/or replace the
brush holder assemblies, or components thereof.
Spec. 5, ll. 15–21.
Regarding the Examiner’s proffered combination of references, the
Supreme Court provides clear guidance that “when a patent ‘simply arranges
old elements with each performing the same function it had been known to
Appeal 2018-002023
Application 13/587,308

12
perform’ and yields no more than one would expect from such an
arrangement, the combination is obvious.” KSR, 550 U.S. at 417 (quoting
Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)) (emphasis added).
The Supreme Court further guides:
Invention or discovery is the requirement which
constitutes the foundation of the right to obtain a patent . . .
unless more ingenuity and skill were required in making or
applying the said improvement than are possessed by an
ordinary mechanic acquainted with the business, there is an
absence of that degree of skill and ingenuity which constitute
the essential elements of every invention.
Dunbar v. Myers, 94 U.S. 187, 197 (1876) (citing Hotchkiss v. Greenwood,
52 U.S. 248, 267 (1850)). We note that Hotchkiss was cited multiple times
with approval by the Supreme Court in KSR, 550 U.S. at 406, 415, and 427.
Moreover,
Section 103(a) 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, 550 U.S. at 406 (emphasis added).
This guidance is applicable here. For at least the aforementioned
reasons, and based upon a preponderance of the evidence, we are not
persuaded that Appellant has shown that the Examiner’s legal conclusion of
obviousness is in error. Accordingly, we find unpersuasive Appellant’s nine
points of contention, as advanced in the Request 2–10.
We have reconsidered our Decision in light of Appellant’s arguments
in the Request, and are not persuaded that we misapprehended or overlooked
Appeal 2018-002023
Application 13/587,308

13
any points in rendering our Decision. We decline to change or modify our
prior Decision for the reasons discussed supra.

DECISION
We have granted Appellant’s Request for Rehearing to the extent we
have reconsidered our Decision in light of the arguments in Appellant’s
Request, but we deny Appellant’s Request with respect to making any
modification to our Decision.

DENIED