Ex Parte Skavnak

Patent Trial and Appeal Board

Jul 29, 2013

11590240 (P.T.A.B. Jul. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JAMES E. SKAVNAK
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Appeal 2011-006898
Application 11/590,240
Technology Center 3600
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Before EDWARD A. BROWN, LYNNE H. BROWNE and
CARL M. DeFRANCO, Administrative Patent Judges.

BROWNE, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
James E. Skavnak (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 18-37. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
Claim 18 is reproduced below:
18. A container release assembly for use with a
vending machine for vending beverage containers
from a queue, the assembly comprising:
a first release apparatus positioned at an end
of the queue from which beverage containers are
dispensed, the first release apparatus moving
between a retaining position and a retracted
position, the first release apparatus having a first
elongate portion that, when the first release
apparatus is in the retaining position, projects from
a first side of the queue into the queue and contacts
a first-in-line beverage container and, when the
first release apparatus is in the retracted position,
extends along the first side of the queue, the first
release apparatus having a second elongate portion
that, when the first release apparatus is in the
retaining position, projects from a second side of
the queue into the queue and contacts the first-in-
line beverage container and, when the first release
apparatus is in the retracted position, extends along
the second side of the queue; and
a second release apparatus operatively
connected to the first release apparatus, the second
release apparatus moving between a retaining
position and a retracted position, the second
release apparatus having a first elongate portion
that, when the second release apparatus is in the
retaining position, projects from the first side of
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the queue into the queue and contacts a second-in-
line beverage container and, when the second
release apparatus is in the retracted position,
extends along the first side of the queue, the
second release apparatus having a second elongate
portion that, when the second release apparatus is
in the retaining position, projects from the second
side of the queue into the queue and contacts the
second-in-line beverage container and, when the
second release apparatus is in the retracted
position, extends along the second side of the
queue,
wherein the operative connection between
the first release apparatus and the second release
apparatus moves the second release apparatus to
the second release apparatus retaining position
when the first release apparatus is moved from the
first release apparatus retaining position to the first
release apparatus retracted position and moves the
second release apparatus to the second release
apparatus retracted position when the first release
apparatus is moved from the first release apparatus
retracted position to the first release apparatus
retaining position.

PRIOR ART
Rakucewicz US 3,837,528 Sep. 24, 1974
Vogelpohl US 5,497,905 Mar. 12, 1996
Sorensen US 6,230,930 B1 May 15, 2001

GROUNDS OF REJECTION

1. Claims 18-37 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Sorensen and Rakucewicz.
2. Claims 18-37 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Vogelpohl and Rakucewicz.
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OPINION
Rejection based on Sorensen and Rakucewicz
Claims 18 and 29:
The Examiner finds that Sorensen discloses every limitation of
independent claim18 except for “a second dispensing mechanism linked to
and opposing the first.” Ans. 3. The Examiner finds that “Rakucewicz
teaches . . . dispensing mechanism[s] located on both sides of the article
column and linked together to operate cooperatively.” Id. Based on these
findings, the Examiner concludes “[i]t would be obvious to one skilled in the
art to modify the dispenser of Sorensen to include a second opposing
dispensing mechanism because it improves article separation and it is an
obvious duplication of parts.” Id.
Appellant argues that there is no basis for the Examiner’s reasoning
because “[n]othing in the cited references supports a conclusion that using
lever guide arm 110 on both sides of a queue of beverage containers would
improve article separation.” App. Br.1 17; see also Reply Br. 2 and Supp.
Reply Br. 2. Appellant’s argument is not persuasive because there is no
requirement that the Examiner’s reasons for the proposed combination be
drawn from the cited references. “The obviousness analysis cannot be
confined by a formalistic conception of the words, teaching, suggestion, and
motivation, or by overemphasis on the importance of published articles and
the explicit content of issued patents.” KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 419 (2007) (emphasis added). Using common sense, the
Examiner reasons that “the introduction of a second separator would

1 Reference herein to the Appeal Brief is to the Substitute Appeal Brief filed
December 5, 2008.
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physically contact the [second] article [in the queue] on both sides and
further narrow[] the gap through which [the] article could slip through [when
the first article in the queue is released].” Ans. 4. Appellant has not
apprised us of any error in this reasoning.
Appellant argues “[n]o evidence of record indicates what
‘improvement’ would be achieved by the proposed combination, or how that
benefit is achieved.” App. Br. 17-18. Appellant’s argument is not persuasive
because there is no requirement that a proposed combination of references
set forth an “improvement” or achieves a benefit in order for the references
to render the claim obvious. The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results. KSR, 550 U.S. at 416. As discussed supra,
the Examiner has explained that providing a second lever guide arm 110 in
Sorensen would reduce the possibility that a second article would
accidentally be dispensed when the first article is dispensed.
Appellant further contends:
Merely adding a second identical structure (lever
guide arm 110 rotating about hinge pin 111) to the
opposite side of a queue in Sorenson [sic] et al
would not, in fact, narrow the gap through which
an article might slip unless the additional structure
acts in a manner opposite the existing structure.
Merely adding an additional instance of the same
structure on the opposite side of the queue, without
inverting the orientation, does nothing to narrow
the gap through which an article might slip.
Reply Br. 2. However, one having ordinary skill in the art would have
known to invert the orientation of the second lever arm guide in Sorensen’s
apparatus so that it contacts beverage containers and functions in the same
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manner as the disclosed lever arm guide 110. Accordingly, Appellant has
not apprised us of error in the Examiner’s reasoning.
Appellant also argues that “[t]he proposed combination of references
also does not establish a reasonable expectation of success in achieving the
claimed invention based on the combined teachings.” App. Br. 19.
Appellant’s argument is unconvincing as Appellant has not explained why
there would not be a reasonable expectation of success, or why the result of
the Examiner’s combination would not have been predictable.
Appellant argues that “[n]othing in either reference teaches use of first
and second release apparatus portions on opposite sides of a beverage
container queue, cooperatively operated so that both portions either project
into the queue or extend along the side of the queue.” App. Br. 19.
Appellant’s argument is not persuasive because it is not responsive to the
rejection as articulated by the Examiner2. The Examiner does not rely upon
either reference alone to disclose “[both] first and second release apparatus
portions on opposite sides of a beverage container queue” and “portions
[that] either project into the queue or extend along the side of the queue.”
Rather, the Examiner relies on the combined teachings of the references.
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986).

2 We note that claim 18 does not require “first and second release apparatus
portions on opposite sides of a beverage container queue, cooperatively
operated so that both portions either project into the queue or extend along
the side of the queue.”
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Appellant argues that “[n]o basis exists for concluding that the
mechanism of Rakucewicz could be employed to operate first and second
lever guide arms 110 on opposite sides of a tray 42 coordinately. The
proposed combination thus fails to establish the existence of an appropriate
coordinate drive mechanism.” App. Br. 19. Appellant’s argument is
unconvincing because claim 18 does not require “an appropriate coordinate
drive mechanism.” It is well-established that unclaimed features cannot be
relied upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
For these reasons, we find that the Examiner’s reasons for combining
Sorensen and Rakucewicz are supported by rationale underpinning. Thus,
we find no error in the Examiner’s rejection of claim 18.
Appellant further argues that the Examiner has asserted an alternative
reason “duplication of parts” why the invention of claims 18 and 29 is
unpatentable over Sorensen and Rakucewicz. See App. Br. 18-19, Reply Br.
2 and Supp. Reply Br. 2-5. As we have determined that the Examiner has
articulated sufficient reasons with rationale underpinning to reject claim 18
as obvious we need not consider any additional reasons in support of this
rejection.
Accordingly, we sustain the Examiner’s rejection of claim 18 as
unpatentable of Sorensen and Rakucewicz.
Independent claim 29 is directed to a method of vending beverage
containers from a queue and recites limitations similar to those recited in
claim 18. Appellant’s contentions regarding claim 29 are similar to those
discussed supra in regard to claim 18. App. Br. 13-19; Reply Br. 2; Supp.
Reply Br. 2. Accordingly, we also sustain the rejection of claim 29.

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Claims 20, 24, 31 and 35:
Appellant states that
Claims 20, 24, 31 and 35 each recite that the first
and second elongate portions of the first release
apparatus and/or first and second elongate portions
[of] the second release apparatus move pivotally in
opposite directions during movement of the first
release apparatus between the retaining and
retracted positions thereof.

App. Br. 20; Reply Br. 2; Supp. Reply Br. 5. Appellant argues “[s]uch a
feature is not found in the cited references.” App. Br. 20; see also Reply Br.
3, Supp. Reply Br. 5-9. In response to this argument the Examiner finds
“the device as disclosed by Sorensen rotates around the pivot point in a
single direction however the resulting movement of elongate po[r]tions is
the opposite for both ends with respect to the column itself. One moves in to
the column while the other moves out of the column.” Ans. 5. We agree
and note that the Examiner is describing the movement of first and second
elongate portions on a single side of the release apparatuses. When one
considers the movement of two oppositely arranged lever guide arms 110, it
is clear that the first and second elongate portions 113 of the second release
apparatus would move pivotally in opposite directions during movement of
the first release apparatus (i.e., elongate portions 116) between the retaining
and retracted positions thereof. See Sorensen, fig. 11. Thus, Appellant has
not apprised us of error in the Examiner’s rejection.
To the extent that Appellant is arguing that Rakucewicz fails to
disclose this limitation (App. Br. 20), the argument is not responsive to the
rejection as articulated by the Examiner. Further, Appellant’s argument that
“[t]he concession in the Examiner's Answer that ‘the device as disclosed by
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Sorenson [sic] rotates around the pivot point in a single direction’ establishes
that limitation ‘move pivotally in opposite directions’ is not satisfied” (Reply
Br. 3; Supp. Reply Br. 5-9) is not persuasive, because as discussed supra,
the Examiner’s “concession” was directed to movement between the
elongate portions of the first and second assemblies on one side which
respect to each other, while the claim limitation is directed to movement of
the first and second elongate portions of the second assembly.
For these reasons, we sustain the Examiner’s rejection of claims 20
and 31 as unpatentable over Sorensen and Rakucewicz. Claims 24 and 35
depend from claims 23 and 34, respectively. As discussed infra, we do not
sustain the Examiner’s rejection of claims 23 and 34 as unpatentable over
Sorensen and Rakucewicz. Accordingly, we do not sustain the Examiner’s
rejection of claims 24 and 35 because of their dependency from claims 23
and 34.
Claims 23-26 and 34-37:
Appellant states claim 23
recite[s] that the first and second elongate portions
of the second release apparatus move pivotally so
that ends of the first and second elongate portions
of the second release apparatus that contact the
second-in-line beverage container are closer to the
end of the queue than other ends of the first and
second elongate portions of the second release
apparatus.
App. Br. 20. Appellant argues “[s]uch a feature is not found in the cited
references.” App. Br. 20. In response, the Examiner states “Applicant[’]s
arguments were found to [be] persuasive with regards to these claims.” Ans.
5. We agree. Accordingly, we do not sustain the Examiner’s rejection of
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claim 23 and its dependent claims 24-26 and of 34 and its dependent claims
35-37 as unpatentable over Sorensen and Rakucewicz.
Claims 19, 21, 22, 27, 28 and 30-33:
Appellant does not dispute the Examiner’s findings, or provide
separate arguments for patentability, with respect to claims 19, 21, 22, 27, 28
and 30-33, which depend from claim 18 or 29. Accordingly, we sustain the
Examiner’s rejection of claims 19, 21, 22, 27, 28 and 30-33 as unpatentable
over Sorensen and Rakucewicz.
Rejection based on Vogelpohl and Rakucewicz
Appellant’s arguments on pages 26-29 are identical to the arguments
on pages 17-20 of the Appeal Brief and refer to “Sorenson [sic] et al[.]”
referring in particular to “second lever guide arm 110 on the opposite side of
each tray 42.” Appellant also provides no argument in regard to this
rejection in the Reply Brief and Supplemental Reply Brief. As such,
Appellant’s arguments do not address the Examiner’s rejection of claims 18-
37 based on the combined teachings of Vogelpohl and Rakucewicz.
Accordingly, we sustain the Examiner’s rejection of claims 18-37 as
unpatentable over Vogelpohl and Rakucewicz.
DECISION
The Examiner’s rejection of claims 18-22 and 27-33 under 35 U.S.C.
§ 103(a) as unpatentable over Sorensen and Rakucewicz is AFFIRMED.
The Examiner’s rejection of claims 23-26 and 34-37 under 35 U.S.C.
§ 103(a) as unpatentable over Sorensen and Rakucewicz is REVERSED.
The Examiner’s rejection of claims 18-37 under 35 U.S.C. § 103(a) as
unpatentable over Vogelpohl and Rakucewicz is AFFIRMED.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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