SPAN TECH LLC

Patent Trials and Appeals Board

Sep 2, 2021

2021001416 (P.T.A.B. Sep. 2, 2021)

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.
15/551,949 08/18/2017 Stephen C. FYE 924-165 4294
35161 7590 09/02/2021
DICKINSON WRIGHT PLLC - WASHINGTON, DC
1825 EYE ST., NW
SUITE 900
WASHINGTON, DC 20006
EXAMINER
SINGH, KAVEL
ART UNIT PAPER NUMBER
3651
NOTIFICATION DATE DELIVERY MODE
09/02/2021 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):
dwpatents@dickinsonwright.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEPHEN C. FYE, JAMES L. LAYNE, and
SCOTT DAYTON BARBOUR

Appeal 2021-001416
Application 15/551,949
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, MICHAEL C. ASTORINO, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3 and 7–11.2 We have jurisdiction
under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Span Tech
LLC. Appeal Br. 2.
2 The Examiner has withdrawn the rejection of claims 4 and 5 and has
indicated that claim 6 includes allowable subject matter. See Ans. 3; Final
Act. 7.
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We REVERSE.
BACKGROUND
The Specification states that “[t]his disclosure relates to the conveyor
arts and, more particularly, to an enhanced conveyor chain adapted for more
efficiently conveying articles.” Spec. 1.
CLAIMED SUBJECT MATTER
Claim 1 is the only independent claim on appeal and recites:
1. An apparatus for conveying an object in a conveying
direction, comprising:
a conveyor including a plurality of modular links adapted
for forming a chain, at least one of the links comprising a
rounded upper portion for contacting and supporting the object
for conveyance along at least a forward run in the conveying
direction, the at least one link further including a forwardly
projecting portion associated with a first transverse connector, a
rearwardly projecting portion associated with a second
transverse connector, the first and second connectors being non-
collinear;
wherein the first and second connectors contact and
support the object for conveyance.
Appeal Br. 10.
REJECTIONS
1. The Examiner rejects claims 1–3, 9, and 103 under 35 U.S.C. § 102(a)(1)
as anticipated by Menke.4
2. The Examiner rejects claims 7, 8, and 11 under 35 U.S.C. § 103 as
unpatentable over Menke in view of Russell.5

3 The Examiner has withdrawn this rejection as it pertains to claims 4 and 5.
4 Menke et al., US 7,967,132 B2, iss. June 28, 2011.
5 Russell, US 8,522,962 B2, iss. Sept. 3, 2003.
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DISCUSSION
Anticipation
We are persuaded of error in the anticipation rejection of claim 1
because the Examiner has not established that Menke discloses first and
second connectors as required by the claim.
With respect to claim 1, the Examiner finds that Menke discloses an
apparatus as claimed. Final Act. 3–4. In relevant part, the Examiner finds
that Menke discloses modular links with first and second transverse
connectors as shown in Menke’s Figure 6 as annotated by the Examiner and
reproduced below.

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The figure “shows a schematic perspective bottom view of a modular
conveyor mat” that has been annotated to show the locations of the first and
second transverse connectors identified by the Examiner. Menke, col. 2,
ll. 23–26; Final Act. 3.
Appellant argues that the Examiner has not shown that the identified
connectors in Menke are present at the top of the device such that those
connectors would be in contact with an object for conveyance, as recited in
the claim. See Appeal Br. 5. In other words, Appellant argues, “[d]espite
the Examiner’s contention otherwise, the Menke reference provides no
indication whatsoever that the pattern on the underside of the conveyor mat
is duplicated on the upper surface 8, and the module of Menke would
operate as intended without this assumption being true.” Reply Br. 3.
As discussed below, we agree with Appellant that the Examiner has
not established that Menke discloses first and second connectors with the
capability to “contact . . . the object for conveyance” as required by claim 1.
In reaching our determination, we find it prudent to provide an
interpretation of the claim limitation at issue. The claim recites that “the
first and second connectors contact and support the object for conveyance.”
One of ordinary skill in the art would understand that “the object for
conveyance” is not part of the structure of the invention, and that this phrase
includes functional language related to the first and second connectors, i.e.,
the function of the connectors is to contact or support the object for
conveyance. In other words, the claim requires that the first and second
connectors are capable of performing the functions of contacting and
supporting an object for conveyance.
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Further, we note that Appellant and the Examiner appear to
understand the contact required by the claim to be direct contact. We agree
with this understanding, which is consistent with how the term is used in the
Specification. For example, the Specification does not specifically state that
any contact direct or indirect contact, but does, for example, indicate,
without expressly stating, that the rounded surface on the top of the modular
links is in direct contact with a conveyed object. See, e.g., Spec. 6, ll. 5–11
(describing that the rounded surface minimizes contact with the conveyed
article). We have identified no instance in the Specification where the use of
the term “contact” appears to contemplate indirect contact.
Under this interpretation of the claim, we determine that the Examiner
has not identified any connectors in Menke that are necessarily capable of
being in direct contact with an object for conveyance as required by the
claim. We agree with Appellant there is not sufficient evidence to show that
the pattern of connectors shown on the bottom of Menke’s device would be
repeated on the top of the device. The Examiner acknowledges that
Menke’s figures only show the bottom of Menke’s modular links. Ans. 4.
However, the Examiner asserts:
Although as pointed out that Figure 1 shows the underside of the
conveyor mat, it is clear to any one of ordinary skill in the art that
the pattern is replicated to the upper surface 8. Figure 3 of Menke
shows that the apertures shown in Figures 1 and 4 go through the
entire body 2 and the shadowing in Figure 3 depicts the
connectors being on the upper surface 8 as well allowing for the
interpretation within reasonable doubt of the first and second
transverse connectors contact and support the object for
conveyance.
Id. However, we do not see any express disclosure, either in Menke’s
written description or figures that any apertures shown on the bottom of the
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conveyor mat extend through the upper surface of the mat. We disagree
with the Examiner that Figure 3 shows the apertures going through the entire
body of the mat. The Examiner does adequately explain how “the
shadowing in Figure 3 depicts the connectors being on the upper surface” of
the mat. Also, Menke discloses that Figure 3 is a schematic view, indicating
it is a simplified or symbolic view of Menke’s device and lacks the detail
necessary to support the Examiner’s finding.
Further, we cannot determine from the evidence provided that Menke
inherently includes connectors that are capable of being in contact with an
object for conveyance. “Inherency, however, may not be established by
probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.” In re Robertson, 169
F.3d 743, 745 (Fed. Cir. 1999). Thus, although Menke’s figures might
suggest connectors that extend to the upper surface of the device, we are not
persuaded that this is necessarily the case and such a suggestion is not
sufficient to establish anticipation.
For these reasons, we determine that the Examiner erred in rejecting
independent claim 1. For the same reasons, we are persuaded of error in the
rejection of dependent claims 2, 3, 9, and 10.
Obviousness
In rejecting claims 7, 8, and 11, the Examiner does not rely on any
further evidence or analysis that cures the deficiency in the rejection of
claim 1, as discussed above. We also note that the rejection of claims 7 and
8 is not supported because the Examiner has withdrawn the rejection of
claim 4, from which these claims depend. Accordingly, we also do not
sustain the obviousness rejection of claims 7, 8, and 11.
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CONCLUSION
We REVERSE the rejections of claims 1–3 and 7–11.
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1–3, 9, 10 102(a)(1) Menke 1–3, 9, 10
7, 8, 11 103 Menke, Russell 7, 8, 11
Overall
Outcome
1–3, 7–11

REVERSED