Ex Parte PERL

Patent Trial and Appeal Board

Mar 24, 2016

12878730 (P.T.A.B. Mar. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/878,730 09/09/2010
23280 7590 03/28/2016
Davidson, Davidson & Kappel, LLC
589 8th A venue
16th Floor
New York, NY 10018
FIRST NAMED INVENTOR
Kurt PERL
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.
5019.1024 5537
EXAMINER
DESAI, HEMANT
ART UNIT PAPER NUMBER
3721
NOTIFICATION DATE DELIVERY MODE
03/28/2016 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):
ddk@ddkpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KURT PERL
Appeal2014-002065
Application 12/878,730 1
Technology Center 3700
Before JOSEPH A. FISCHETTI, BART A. GERSTENBLITH, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
GERSTENBLITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Kurt Perl ("Appellant") appeals under 35 U.S.C. § 134(a) from the
Examiner's decision rejecting claims 1-13. We have jurisdiction under
35 U.S.C. § 6(b).
Claimed Subject Matter
Claims 1 and 11 are the independent claims on appeal. Claim 1 is
illustrative of the claimed subject matter and is reproduced below.
1 Appellant identifies Krones AG as the real party in interest. Appeal Br. 2.
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Appeal2014-002065
Application 12/878,730
1. A method for making packs, each pack having at least
two coupled articles, the method comprising:
laying a strapping means around the articles during a
continuous conveying process having a conveying direction, the
strapping means being arranged horizontally and tensioned onto
outer surfaces of the articles by at least one strapping
applicator, the strapping applicator moving in the conveying
direction to apply the strapping means; and then
fixing the strapping means so that the articles are held
together by the strapping means.
Appeal Br., Claims App. 1 (emphasis added).
Rejection
Appellant seeks review of the following rejection:
Claims 1-13 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Van De Sande2 (US 2006/0196150 Al, pub. Sept. 7, 2006).
SUMMARY OF DECISION
We REVERSE.
ANALYSIS
The Examiner concludes that the teachings of Van De Sande would
have rendered the subject matter of claims 1-13 obvious to one of ordinary
skill in the art as of the time of the invention. Ans. 2---6. The Examiner finds
that Van De Sande discloses each element of claim 1, with the exception of
the emphasized language above. Id. at 3 ("Van De Sandle [sic] is[,]
however, silent about [a] moving strapping applicator in [the] conveying
direction."). The Examiner finds:
2 The Examiner occasionally refers to "Van De Sande" as Van De Sandle."
See, e.g., Ans. 2.
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Appeal2014-002065
Application 12/878,730
it would have been an obvious matter of design choice to a person
of ordinary skill in the art to provide the strapping applicator
which moves in the conveying direction because [Appellant] has
not disclosed that ... providing the moving strapping applicator
provides an advantage, is used for a particular purpose, or solves
a stated problem. One of ordinary skill in the art, furthermore,
would have expected [Appellant's] invention to perform equally
well with either the strapping applicator taught by of [sic] Van
De Sandle [sic] or the claimed moving strapping applicator
because both applicators perform the same function of placing
the strapping means around the pack.
Id. Thus, the Examiner finds that "it would have been an obvious matter of
design choice to modify Van De Sandle [sic] to obtain the invention as
specified in claim 1." Id. The Examiner relies upon the same design choice
finding with respect to independent claim 11, which also recites a "strapping
applicator moving in the conveying direction to apply the strapping means."
Ans. 5.
Appellant contends that the Examiner erred by finding that it would
have been an obvious design choice to modify Van De Sande; s disclosure as
proposed above. Appeal Br. 4. First, Appellant asserts that the Examiner
improperly places the burden of proof on Appellant by relying upon a lack
of disclosure in the Specification regarding some importance of the
limitation that the strapping applicator moves in the conveying direction. Id.
Second, Appellant contends that the Specification discloses a stationary
embodiment and a moving embodiment of the strapping applicator. Id. at 4--
5. In the stationary embodiment, the Specification teaches that the strapping
reels can be provided with a self-powered drive so that the tension forces can
be minimized on the formation in the movement period. Id. (citing Spec.
i-f 36). Appellant explains that an advantage of a strapping applicator
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Appeal2014-002065
Application 12/878,730
moving in the conveying direction is that it does not require self-powered
drives on stationary reels. Id. at 5.
In response to Appellant's argument, the Examiner notes that
Appellant's Specification discloses a stationary embodiment of a strapping
applicator, which is the same as the embodiment taught by Van De Sande.
Ans. 7. The Examiner states: "Van de Sande clearly discloses the solution to
adjust the tension to a minimum by providing the motorized supply reel[s]."
Id. Thus, the Examiner maintains the finding that it would have been an
obvious matter of design choice "to provide the strapping applicator which
moves in the conveying direction." Id.
Design choice may be an acceptable rationale for an obviousness
rejection when a claimed product merely arranges known elements in a
configuration recognized as functionally equivalent to a known
configuration. See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (finding
that the particular placement of an electrical contract was an obvious matter
of design choice). We disagree, however, with the Examiner's finding of
design choice here because Appellant's claimed invention is not merely a
rearrangement of known elements in a configuration recognized as
functionally equivalent to a known configuration. First, Appellant added an
additional element-that the strapping applicator moves in the conveying
direction. Second, the Examiner relies upon the absence of an indication in
the Specification of a specific advantage of a moving strapping applicator as
compared to a stationary applicator, but the Examiner makes no attempt to
explain why one of ordinary skill in the art at the time of the invention, and
without the benefit of Appellant's Specification as a guide, would have
concluded that a strapping applicator that moves in the conveying direction
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Application 12/878,730
is a functional equivalent to a stationary strapping applicator. See Ans. 3
(finding that one of ordinary skill in the art would have expected Appellant's
invention and the device of Van De Sande to function equally, solely
because both place strapping means around a pack).
Thus, for the reasons explained above, and under the facts presented
here, we disagree that design choice was an appropriate basis upon which to
base the rejection of independent claims 1 and 11. Accordingly, we do not
sustain the rejection of claims 1 and 11, and claims 2-10, 12, and 13, which
depend therefrom.
DECISION
We reverse the Examiner's decision rejecting claims 1-13.
REVERSED
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