Ex Parte Fourney

Patent Trial and Appeal Board

Oct 27, 2016

12894396 (P.T.A.B. Oct. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/894,396 09/30/2010
9748 7590
LAITRAM, L.L. C.
LEGAL DEPARTMENT
200 LAITRAM LANE
HARAHAN, LA 70123
10/31/2016
FIRST NAMED INVENTOR
Matthew L. Fourney
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2422.0 5909
EXAMINER
HARP, WILLIAM RAY
ART UNIT PAPER NUMBER
3651
NOTIFICATION DATE DELIVERY MODE
10/31/2016 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):
jcronvic@laitram.com
cbishop@laitram.com
dgwalker@laitram.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW L. FOURNEY
Appeal2014-005045
Application 12/894,396 1
Technology Center 3600
Before STEFAN STAICOVICI, GEORGE R. HOSKINS, and
AMANDA F. WIEKER, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Matthew L. Foumey (Appellant) appeals under 35 U.S.C. § 134(a)
from the Examiner's final decision rejecting claims 1-23. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b ).
SUMMARY OF DECISION
We AFFIRM.
According to Appellant, the real party in interest is Laitram, L.L.C.
Appeal Br. 3 (filed Nov. 11, 2013).
Appeal2014-005045
Application 12/894,396
INVENTION
Appellant's invention relates to "belt conveyors having actuated, belt-
mounted multi-directional wheels for diverting articles conveyed by the
belt." Spec. 1, 11. 5-7.
Claims 1, 9, and 18 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A conveyor belt comprising:
an endless loop having an outer side and an inner side
defining the thickness of the conveyor belt and a pair of
opposite side edges defining the width of the conveyor belt;
a plurality of multi-directional wheels disposed at spaced
apart locations along the endless loop, each wheel including:
a hub having a central axis of rotation and an outer
periphery;
a plurality of rollers arranged on the periphery of
the hub to rotate on different roller axes transverse to the
central axis of rotation of the hub.
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 1-7, 9-15, and 17-22 under 35
U.S.C. § 103(a) as being unpatentable over Costanzo (US
6,494,312 B2, iss. Dec. 17, 2002), Black (US 3,710,917, iss.
Jan. 16, 1973), and Layne (US 6,874,617 Bl, iss. Apr. 5, 2005).
II. The Examiner rejected claims 8, 16, and 23 under 35 U.S.C.
§ 103(a) as being unpatentable over Costanzo, Black, Layne,
and Bogdanovic (US 7,497,313 B2, iss. Mar. 3, 2009).
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Application 12/894,396
ANALYSIS
Rejection I
Claims 1-5, 7, 18-20, and 22
Appellant has not presented arguments for the patentability of claims
2-5, 7, 18-20, and 22apart from claim 1. See Appeal Br. 5-7. Therefore, in
accordance with 37 C.F.R. § 41.37(c)(l)(iv), we select claim 1 as the
representative claim to decide the appeal of the rejection of these claims,
with claims 2-5, 7, 18-20, and 22standing or falling with claim 1.
The Examiner finds that Costanzo discloses most of the limitations of
claim 1, but does not disclose a plurality of multi-directional wheels. Final
Act. 3 (transmitted June 13, 2013); see also Costanzo, Figs. 2A, 4.
Nonetheless, the Examiner finds that Black discloses a multi-directional
wheel 33, as called for by claim 1, and furthermore finds that Layne
discloses the use of "multi-directional wheels (16) disposed on a belt (10)."
Final Act. 3; see also Black, Abstract, Fig. 6; Layne, col. 2, 11. 37-50, Fig. 1.
Thus, the Examiner concludes that "[i]t would have been obvious [to a
person of ordinary skill in the art] to use the multi-directional wheels of
Black ... in the belt of Costanzo to move articles laterally and expect
predictable results, since Layne teaches the predictability of multidirectional
wheels in a conveyor belt." Final Act. 3.
Appellant argues that because Layne discloses bi-directional rollers
and Black discloses multi-directional rollers, "the teachings of Layne ...
[would not] predict that the multi-directional rollers ... of Black ... would
provide an improvement to the conveyor belt and module of Costanzo."
Appeal Br. 5; see also Reply Br. 2 (filed Mar. 14, 2014). Appellant further
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Application 12/894,396
argues that in contrast to Layne, which discloses passive rollers, the rollers
of Black are powered. See Appeal Br. 5---6, 7. Furthermore, Appellant notes
that Layne's system employs a diverter and its rollers rotate only on an axis
perpendicular to the conveying direction of a belt and not on an axis having
an oblique orientation. Reply Br. 2. Thus, according to Appellant, Layne
"does not suggest using multi-directional rollers as in Black." Appeal Br. 7.
Although we appreciate Appellant's position that there are differences
between the rollers of the conveying systems of Black and Layne, we agree
with the Examiner that Appellant cannot show nonobviousness by attacking
Costanzo, Black, and Layne individually when the rejection as articulated by
the Examiner is based on a combination of Costanzo, Black, and Layne. See
Ans. 8; see also In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986). More specifically, even though Black's rollers are powered and
multi-directional, whereas Layne's rollers are passive and bi-directional, we
are not persuaded by Appellant's arguments because "[w]hen a work is
available in one field of endeavor, design incentives and other market forces
can prompt variations of it, either in the same field or a different one. If a
person of ordinary skill can implement a predictable variation, § 103 likely
bars its patentability." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 419
(2007). The relevant inquiry is whether the Examiner has set forth "some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(cited with approval in KSR, 550 U.S. at 418).
In this case, the Examiner is correct that Costanzo' s rollers 48 "allow
movement in the direction of rotation of the rollers." Ans. 8; see also
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Application 12/894,396
Costanzo, col. 2, 11. 26-29, Fig. 2A. The Examiner is also correct that
Black's roller assembly 33 (having hub 34 and barrel-shaped rollers 35)
"allow[ s] articles to move in a direction parallel to the axis of rotation of the
wheels and in the direction of rotation of the wheels." Ans. 8; see also
Black, col. 6, 11. 30-60, Figs. 1, 6, 7. Furthermore, the Examiner correctly
finds that similar to Black's device, Layne's conveyor belt/chain 10 with
rollers 16, is likewise capable of "allow[ing] articles to move in a direction
parallel to the axis of rotation of the rollers and in the direction of rotation of
the rollers." Ans. 8, see also Layne, col. 2, 11. 37--40. Hence, we agree with
the Examiner that, "incorporating the multi-directional wheels of Black ...
in the belt of Costanzo would have yielded the predictable results of moving
articles in directions other than the conveying direction." Ans. 8. We
further note that Costanzo' s belt 20 is an endless conveyor belt where rollers
48 advance with belt 20. See Costanzo, col. 4, 11. 35-37, col. 4, 1. 67---col. 5,
1. 2, Fig. 5. Therefore, even though we appreciate Appellant's contention
that Black's rollers are powered and do not advance with the belt (see
Appeal Br. 7), nonetheless, as Costanzo' s belt 20 is an endless conveyor
belt, Appellant fails to persuasively explain why when modifying
Costanzo's belt 20 to include Black's roller assembly 33, the rollers of the
resulting system of Costanzo, as modified by Black, would not likewise
advance with belt 20.
The Examiner's modification is an improvement to Costanzo's
conveyor belt 20 to include Black's multi-directional roller assembly 33 in
the same way as Black to lead to a predictable result, namely, to "allow[]
movement of articles in directions parallel to the axis of rotation of the
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Application 12/894,396
wheels and in the direction ... of the wheels." See Ans. 8-9. Although we
appreciate Appellant's position that Layne's system includes a diverter (see
Reply Br. 1 ), nonetheless, Layne's rollers 16 allow movement in different
directions (see Layne, col. 2, 11. 37--40) and furthermore, obviousness does
not require that all of the features of the secondary reference be bodily
incorporated into the primary reference. In re Keller, 642 F.2d 413, 425
(CCPA 1981). Moreover, we note that the Examiner's modification is well
within the skill of a person having ordinary skill in this art. KSR, 550 U.S. at
417 ("[I]f a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.").
Lastly, Appellant argues that, "[ n ]othing in Layne, Black ... or
Costanzo suggests to one of ordinary skill in the art how multi-directional
wheels can replace the cylindrical rollers in the Costanzo belt to allow
diverting wheels to be oriented at diverting angles of greater than 30° for
rotation on a simple ... bearing surface without slip." Reply Br. 3. We are
not persuaded by Appellant's argument because limitations not appearing in
the claims, i.e., diverting angles greater than 30° without slipping, cannot be
relied upon forpatentability. In re Self, 671F.2d1344, 1348 (CCPA 1982).
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103(a) of claim 1, and claims 2-5, 7, 18-20, and 22
falling with claim 1, as unpatentable over Costanzo, Black, and Layne.
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Claims 9--12, 14, 15, and 17
Independent claim 9 recites, inter alia, "a bearing surface underlying
the inner side of the conveyor belt." Appeal Br. 12.
In addition to the arguments presented supra, which we have not
found to be persuasive, Appellant further argues that Layne "does not
mention or suggest actuating his bidirectional rollers with a bearing surface
that the belt rides on." Id. at 7. Thus, according to Appellant, "[t]he effect
of substituting the multi-directional drive rollers of Black et al. for the
cylindrical rollers in a conveyor in which those rollers are actuated by a
bearing surface as the belt advances is not predicted by the teachings of
Layne." Id.
We are not persuaded by Appellant's arguments because the
Examiner did not use the disclosure of Layne to teach the claimed bearing
surface, but rather the disclosure of Costanzo. See Final Act. 4. More
specifically, the Examiner correctly finds that Costanzo discloses a roller
bearing surface 185 that underlies the rollers in rolling frictional contact. Id.
at 4--5; see also Costanzo, col. 6, 11. 57---61, Fig. 20. Appellant has not
persuasively shown error in the Examiner's findings or reasoning in
combining the teachings of Costanzo, Black, and Layne.
As such, we likewise sustain the rejection under 35 U.S.C. § 103(a) of
claims 9--12, 14, 15, and 17 as unpatentable over Costanzo, Black, and
Layne.
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Application 12/894,396
Claims 6, 13, and 21
Each of dependent claims 6 and 13 recites that, "the central axes of
rotation of the hubs are oriented oblique to the edges of the conveyor belt."
Appeal Br. 11-12. Similarly, dependent claim 21 requires that, "the central
axis of rotation of the hub is oriented oblique to the first and second edges of
the module body." Id. at 13.
In addition to the arguments presented supra, which we have not
found to be persuasive, Appellant also argues that because "[t]he
bidirectional rollers of Layne have their central axes perpendicular, not
oblique, to the sides of the belt. ... Layne cannot be said to predict how his
bidirectional rollers, much less the rollers of Black ... , would operate on
oblique central axes." Id. at 8.
We are not persuaded by Appellant's arguments because the
Examiner did not use the disclosure of Layne to teach the claimed oblique
orientation of the rollers' axis of rotation with respect to the conveyor belt's
side edges, but rather the disclosure of Costanzo. See Final Act. 4---6; see
also Reply Br. 1-2. More specifically, the Examiner correctly finds that
Costanzo discloses the claimed oblique orientation. Final Act. 4; see also
Costanzo, Figs. 18, 21, 22. Appellant has not persuasively shown error in
the Examiner's findings or reasoning in combining the teachings of
Costanzo, Black, and Layne.
As such, we likewise sustain the rejection under 35 U.S.C. § 103(a) of
claims 6, 13, and 21 over the combined teachings of Costanzo, Black, and
Layne.
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Application 12/894,396
Rejection II
Claims 8, 16, and 2 3
The Examiner finds that although the combined teachings of
Costanzo, Black, and Layne fail to disclose that "the rollers include structure
to restrict rotation of the rollers ... to one direction," nonetheless,
"Bogdanovic teaches a roller (10) including structure ( 42) to restrict rotation
of the rollers to one direction." Final Act. 7; see also Bogdanovic, col. 3, 1.
64---col. 4, 1. 13, Figs. 9, 10. The Examiner concludes that, "[i]t would have
been obvious to include [Bogdanovic' s] structure to restrict rotation of the
rollers [of Costanzo, Black, and Layne] to one direction [in order] to prevent
motion of articles in an undesired direction." Final Act. 7.
Appellant argues that "there is no suggestion in the prior art to add a
locking mechanism to much smaller conveyor belt wheels." Appeal Br. 9.
Appellant further contends that Appellant recognized the problem of inertia
of conveying articles rotating the rollers "temporarily in an unintended
direction," but "[n]one of the cited references recognized [this] problem or
provided a teaching, suggestion, or the motivation to solve it." Id.
Appellant's arguments appear to be holding the Examiner to the old
teaching, suggestion, or motivation ("TSM") standard, in which the
Examiner must have identified some suggestion or motivation, either in the
references themselves or in the knowledge generally available to one of
ordinary skill in the art, to modify the reference or to combine reference
teachings; such a standard is not required. KSR, 550 U.S. at 415 ("We begin
by rejecting the rigid [application and requirement of a TSM to combine
known elements in order to show obviousness]"). The proper inquiry is
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whether the Examiner has articulated adequate reasoning based on a rational
underpinning to explain why a person of ordinary skill in the art would have
been led to combine Costanzo, Black, Layne, and Bogdanovic. Appellant's
conclusory assertion that there is "no motivation" ignores this inquiry and
fails to point out the error in the rationale provided by the Examiner, namely,
"to prevent motion of articles in an undesired direction." See Final Act. 7.
Given that Bogdanovic discloses "a locking mechanism ... to prevent
reverse rotation," the Examiner's reasoning has a rational underpinning. See
Ans. 9.
In conclusion, for the foregoing reasons, we sustain the rejection of
claims 8, 16, and 23 under 35 U.S.C. § 103(a) as being unpatentable over
Costanzo, Black, Layne, and Bogdanovic.
SUMMARY
The Examiner's decision to reject claims 1-23 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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