Ex Parte Hansen

Patent Trial and Appeal Board

Mar 7, 2019

12452283 (P.T.A.B. Mar. 7, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/452,283 12/23/2009
513 7590 03/11/2019
WENDEROTH, LIND & PONACK, L.L.P.
1030 15th Street, N.W.,
Suite 400 East
Washington, DC 20005-1503
FIRST NAMED INVENTOR
Bernd Hansen
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.
56767 6295
EXAMINER
DEXTER, CLARK F
ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
03/11/2019 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):
eoa@wenderoth.com
kmiller@wenderoth.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BERND HANSEN
Appeal2018-006680 1
Application 12/452,283 2
Technology Center 3700
Before KENNETH G. SCHOPPER, AMEE A. SHAH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of
claims 12-16. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Our decision references the Appeal Brief ("Appeal Br.," filed Nov. 17,
2017), the Reply Brief ("Reply Br.," filed June 14, 2018), the Examiner's
Answer ("Ans.," mailed Apr. 26, 2018), the Final Office Action ("Final
Act.," mailed June 1, 2017), and the Specification ("Spec.," filed Feb. 18,
2015).
2 According to Appellant, the real party in interest is Bernd Hansen. Appeal
Br. 2.
Appeal2018-006680
Application 12/452,283
BACKGROUND
According to Appellant, "[t]he invention relates to a separating device
for separating individual container products from a frame assembly of a
plastic material, particularly of polypropylene." Spec. 1.
ILLUSTRATIVE CLAIM
Claim 12 is the only independent claim on appeal and recites:
12. A combination of a separating device and a frame
assembly, comprising:
the frame assembly including a closed and sealed hollow
container with frame waste of plastic material formed therewith,
said frame waste at least partially surrounding said hollow
container; and
the separating device including a stamping device
receiving and at least partially separating the hollow container
from the frame waste of the frame assembly, said stamping
device having a first free fall body movable from an initial
position spaced from the frame assembly to a separating position
engaging the frame assembly to at least partially separate the
frame waste from the hollow container in a free fall movement.
Appeal Br., App'x. Ai.
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REJECTION3
The Examiner rejects claims 12-16 under 35 U.S.C. § 103(a) as
unpatentable over Brown 4 in view of Dennis, 5 Smith, 6 Mihalov, 7
Hetherington, 8 and Thanhauser. 9
DISCUSSION
Claim 12
With respect to claim 12, the Examiner finds that Brown discloses a
combination of a separating device and a frame assembly as claimed, except
that Brown does not disclose the frame assembly including a closed and
sealed hollow container or a free fall body in the separating device. Final
Act. 4. The Examiner relies on official notice as evidenced by Dennis,
Smith, Mihalov, Hetherington, and Thanhauser to show that the claimed
subject matter would have been obvious to a person of ordinary skill in the
art. Id. at 5---6.
For the reasons discussed below, we are not persuaded of error in the
rejection of claim 12.
Appellant argues that the taking of official notice "does not provide
the required motivation or reason for combining [ the cited art] as required to
present a prima facie case of obviousness." Appeal Br. 4. Similarly,
3 The Examiner has withdrawn a rejection under 35 U.S.C. § 112, first
paragraph. Ans. 2.
4 Brown et al., US 5,249,492, iss. Oct. 5, 1993 ("Brown").
5 Dennis et al., US 3,713,944, iss. Jan. 30, 1973 ("Dennis").
6 Smith, US 3,334,580, iss. Aug. 8, 1967.
7 Mihalov et al., US 6,070,507, iss. June 6, 2000 ("Mihalov").
8 Hetherington et al., US 4,357,294, iss. Nov. 2, 1982 ("Hetherington").
9 Thanhauser, US 3,514,299, iss. May 26, 1970.
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Application 12/452,283
Appellant asserts that the Examiner "has not pointed to any specific
principle or motivation in the prior art that would lead one skilled in the art
to arrive at the invention as claimed." Id. at 7. We are not persuaded of
error by this argument. The specific reasoning to support the conclusion
regarding obviousness need not come explicitly from the art relied upon.
See, e.g., In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000); see also KSR
Int'!. Co. v. Teleflex, Inc., 550 U.S. 398,418 (2007). Rather, the reasoning
may be implicit based on what the combined teachings, knowledge of one of
ordinary skill in the art, and the nature of the problem to be solved as a
whole would have suggested to those of ordinary skill in the art. Kotzab,
217 F. 3d at 1370. Here, the Examiner reasons that the claimed combination
would have been obvious because the use of a free fall body in a separating
device is a well-known alternative means for moving the stamping structure
in a separating device. Final Act. 5. The Examiner also reasons that
because separating sealed, hollow containers is well-known, one of ordinary
skill in the art with the need to separate such containers would logically look
to a separating device, as in Brown, "to separate such products to gain the
well known benefits including those described in Mahalov [sic]." Id.
Further, in the Answer, the Examiner explains that one of ordinary skill in
the art would have recognized the use of a drop hammer as a simpler
mechanism for performing the stamping operating in Brown. Ans. 10.
Finally, the Examiner relies on Mihalov and Thanhauser as further evidence
that it was well-known to stamp containers, such as those claimed, with a
force-provided body that is moved by a "suitable mechanism." Ans. 11-12
(citing Mihalov col. 27, 11. 25-27; Thanhauser Fig. 1; col. 3, 11. 60-63).
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We are not persuaded that further reasoning is necessary to support
the Examiner's conclusion. Rather, we agree with the Examiner that one of
ordinary skill would recognize based on the art of record that containers in a
frame assembly could be stamped or cut by a suitable mechanism, including
a mechanism disclosed by Brown. Further, one of ordinary skill would
recognize that substituting a free fall mechanism into Brown's device would
represent a simple substitution of parts with predictable results.
Appellant also generally argues that none of the art cited is analogous.
See Appeal Br. 4. And more specifically, Appellant argues that Dennis "is
not shown to have a common subject matter or common problem with
Brown and does not provide a reason for using the alleged Dennis free fall
body in the Brown apparatus or a way for using it in the Brown apparatus."
Id. at 4--5.
We are not persuaded by the general allegation that the art is not
analogous. We also disagree that Dennis is not analogous art.
A reference is analogous if it is either from the same field of endeavor
as the claimed invention, or if it is reasonably pertinent to the particular
problem with which the inventor is involved. In re Klein, 647 F.3d 1343,
1348 (Fed. Cir. 2011 ). Dennis discloses a method of manufacturing printed
circuits by die stamping. See Dennis Abstract. Dennis discloses that the
printed circuits include a first sheet of electrically conductive material and a
second sheet of non-conductive polyester material, and Dennis discloses that
the circuits are stamped with a cutting die that uses a drop hammer. See id.
at col. 2, 11. 32-37; col. 3, 11. 31-38. We find that Dennis is at least
reasonably pertinent to the particular problem with which the inventor was
involved here. In particular, the Specification indicates that an object of the
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claimed "invention is to provide an improved separating device for
separating products at high speed, regardless of their type of plastic material,
from the frame assembly." Spec. 3. Similarly, Dennis is concerned with
manufacturing circuit boards "more rapidly and economically than has been
possible heretofore" and uses a device for stamping plastic circuit boards.
Dennis col. 1, 11. 57---61.
Further, Appellant also appears to argue that Smith is not analogous
art. See Reply Br. 3. However, even if we were to agree that Smith is not
analogous, we find that the rejection, with respect to the claimed separating
device using free fall movement, is adequately supported by Dennis alone,
which discloses the use of a drop hammer, i.e., a free-fall body, in a
stamping process, as discussed above.
Finally, Appellant argues that the Examiner is using hindsight to
conclude that the claimed combination would have been obvious. We are
not persuaded. Appellant does not point to anything in the rejection before
us that suggests the Examiner is relying on knowledge gleaned only from
Appellant's disclosure in rejecting the claims. See In re McLaughlin, 443
F.2d 1392, 1395 (CCPA 1971).
Based on the foregoing, we are not persuaded of error in the rejection
of claim 12. Accordingly, we sustain the rejection.
Claim 13
Claim 13 depends from claim 12 and further requires that the plastic
material of the frame is polypropylene. The Examiner finds that the use of
polypropylene would have been obvious in the combined device in view of
either Hetherington or Thanhauser. Final Act. 6. Appellant argues that
these references do not involve containers with frame waste or "have
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properties that make them suitable for having parts of their products to be
removed by a free fall body." Appeal Br. 5. We are not persuaded for the
reasons provided by the Examiner. See Ans. 12. We note that Thanhauser
discloses forming containers made of polypropylene, which are "carried into
suitable apparatus D where the containers are blanked out or separated from
the scrap 14." Thanhauser col. 3, 11. 32--42, 60-63. Thus, without further
explanation, we fail to see how Thanhauser, at least, is not related to
separating containers from frame waste using a suitable cutting apparatus,
which may employ a free fall body, as discussed above with respect to
claim 12. Accordingly, we sustain the rejection of claim 13.
Claim 14
Claim 14 depends from claim 12 and further recites "said stamping
device comprises a lifter engageable with said free fall body when moving
said free fall body from the separating position to the initial position."
Appeal Br., App'x. Ai. The Examiner indicates that lifters are old and well-
known, as shown in Smith. Final Act. 5. Appellant argues that Smith's
lifters are not engageable with a free fall body and that Dennis does not
disclose a lifter, and more generally, Appellant indicates that Dennis and
Smith are not analogous art. Appeal Br. 6. We are not persuaded of error at
least because, for example, Dennis discloses a "means for lifting the head
22[, which forms part of a drop hammer,] is represented by an upstanding
post 23." Dennis col. 3, 11. 31-38; see also Ans. 14--15. Also, for the
reasons discussed above, we are not persuaded by Appellant's non-
analogous art assertions.
Claim 15
Claim 15 depends from claim 12 and recites:
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15. A combination according to claim 12 wherein
the frame assembly is card-shaped with a plurality of
individual containers separating a head part and a bottom part of
the frame waste; and
a separate, second free fall body is provided for each of the
head part and the bottom part, each said free fall body being
arranged in succession along a transport line.
Appeal Br., App'x. A ii.
The Examiner finds that Brown discloses a card shaped frame
assembly but lacks a second free fall body. Final Act. 6. Further, the
Examiner finds that including a second free fall body would have been
obvious in order to perform multiple stamping operations simultaneously.
Id. at 6-7. Appellant argues only that nothing "is cited as disclosing
multiple, independent stamping devices in succession along a transport line
for stamping different parts." Appeal Br. 6. However, we are not persuaded
because this argument does not address the rejection before us, which
acknowledges that the art does not expressly disclose a second free fall body
but indicate the use of a second free fall body would have obvious based on
the general knowledge of a person of ordinary skill in the art. Further, we
agree with the Examiner that such duplication of parts would have been
obvious in light of the general knowledge of a person of ordinary skill in the
art. Thus, we are not persuaded of error in the rejection of record, and
therefore, we also sustain the rejection of claim 15.
Claim 16
Claim 16 depends from claim 12 and recites "said stamping device
comprises an angled base having a base body with a horizontally arranged
base part guiding and supporting the frame assembly to extend parallel to
said free fall body and with a vertically extending guide part guiding vertical
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movement of said free fall body." Appeal Br., App'x. A ii. The Examiner
finds that the use of an angled base is old and well known and has "well
known benefits including providing a sturdy, reliable and durable base
support structure/configuration," and the Examiner concludes that it would
have been obvious to provide an angled base in Dennis to gain these
benefits. Final Act. 7.
Appellant argues that "[n]o guide part for a free fall body is shown to
be disclosed in Brown or any of the other citations." Appeal Br. 7. We
agree. The Examiner does not explain how any of the cited references
disclose the claimed arrangement of a base with a base body and a
horizontally arranged guiding part. In the Answer, the Examiner finds "that
the broad recitations of 'angled base,' 'base body,' and 'horizontal base part'
are met by at least the base reference to Brown." Ans. 17. However, the
Examiner's general assertion that Brown teaches these parts fall short of
providing a sufficient showing that these parts are actually taught or
suggested by Brown, which is required to establish a prima facie case of
obviousness. See In re Royka, 490 F.2d 981, 985 (CCPA 1974). Thus, we
are persuaded of reversible error and we do not sustain the rejection of
claim 16.
CONCLUSION
We AFFIRM the rejection of claims 12-15. We REVERSE the
rejection of claim 16.
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-IN-PART
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