Ex Parte BIERSCHENK et al

Patent Trial and Appeal Board

Oct 23, 2018

14036262 (P.T.A.B. Oct. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/036,262 09/25/2013
110933 7590 10/23/2018
Carstens & Cahoon, LLP
PO Box 802334
Dallas, TX 75380
FIRST NAMED INVENTOR
Patrick J. BIERSCHENK
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.
CFLAY.00896 4736
EXAMINER
TAWFIK, SAMEH
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
10/23/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte PATRICK I. BIERSCHENK, FRANKM. BRENKUS,
JERRY M. REAVES, AMELINDA MELANSON,
LEON J. KRAUSE, and RONALD M. GUST 1
Appeal2017-010571
Application 14/036,262
Technology Center 3700
Before STEFAN STAICOVICI, MICHELLE R. OSINSKI, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 3, 4, 9-13, 17, and 18. 2 We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 Frito-Lay North America, Inc. ("Appellant") is the Applicant as provided
in 37 C.F.R. § 1.46 and is identified as the real party in interest. Appeal Br.
2.
2 Claims 1, 2, 5-8, and 14--16 are withdrawn from consideration. Appeal
Br. 2.
Appeal2017-010571
Application 14/036,262
THE CLAIMED SUBJECT MATTER
Claim 3, the sole independent claim, is reproduced below and is
representative of the claimed subject matter on appeal.
3, An apparatus for compacting a product slug, said apparatus
compnsmg:
a weigher:
a product delivery cylinder;
a settling device; and
a fast acting gate;
wherein said settling device is located between said
weigher and said product de1ivery cylinder, wherein said gate is
located upstream from said product delivery cylinder, vvherein
said product delivery cylinder comprises a fonning collar, and
wherein said product delivery cylinder comprises at least one
vacuum relief hole located above said forming collar.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
McDevitt
Focke
Plahm
us 3,042,103
us 5,125,213
us 5,540,035
THE REJECTIONS
July 3, 1962
June 30, 1992
July 30, 1996
I. Claims 3, 4, and 9--13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Appellant's Admitted Prior Art ("AAPA"), 3
Plahm, and McDevitt. Final Act. 2--4.
II. Claims 17 and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over AAPA, Plahm, McDevitt, and Focke. Id. at 4--5.
3 The Examiner refers to Figure 1 of the Specification as AAP A. Final Act.
2.
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Application 14/036,262
OPINION
Rejection I
The Examiner finds that AAP A teaches most of the limitations of
independent claim 3, except for "a settling device to be located between the
weigher and the product delivery cylinder"; "a fast acting gate"; and "a
vacuum reliefhol[e] located above the former collar." Final Act. 2-3. The
Examiner finds that McDevitt teaches a "similar apparatus comprising a
vacuum hole above a collar ... see for example (Figs. 1 & 4; via many
vacuum relief holes 27 on shoulders 8 above former 5)." Id. at 3 (citing
McDevitt Figs. 1 & 4). The Examiner concludes that it would have been
obvious to "modif[y] AAP A by having a vacuum relief hol[ e] located above
the former collar, as suggested by [Mc ]Devitt, in order to come up with a
novel tube former." Id. ( citing Mc Devitt 1 : 4 3-50). 4 Appellant argues that
the Examiner's articulated reasoning for combining AAPA with McDevitt
"is the type of conclusory statement that the patent examination rules were
intended to prevent." Appeal Br. 15.
We agree with Appellant that the Examiner's articulated reason for
modifying AAPA to include a vacuum relief hole above the forming collar is
4 The Examiner relies on Plahm for teaching the elements of a settling
device and fast acting gate and concludes that it would have been obvious to
use these in AAP A "in order to improve the packing of materials into bags
along with the film feeding and sealing." Final Act. 2 ( citing Plahm 3: 18-
46, Figs. 1, 4--7). Although Plahm's settling device is proximate the sealing
unit, the Examiner concludes that it would have been obvious to locate the
settling device further upstream between the weigher and product delivery
cylinder because "it has been held that rearranging parts of an invention
involves only routine skill in the art." Id. at 3 ( citing In re Japikse, 181 F .2d
1019 (CCPA 1954). We need not address these particular findings and
conclusions in this Decision.
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Application 14/036,262
conclusory and lacks rational underpinnings. As an initial matter, the
Examiner's proffered reasoning, i.e., "to come up with a novel tube former"
states a result of the proposed modification, but fails to provide an apparent
reason explaining why a person having ordinary skill in the art would have
been led to include McDevitt's air ducts 27 above the forming collar of the
tube former of the AAPA. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) (holding that the analysis leading to a determination of an
apparent reason to combine the known elements in the fashion claimed
should be made explicit). As stated in KSR, "a patent composed of several
elements is not proved obvious merely by demonstrating that each of its
elements was, independently, known in the prior art." Id. "Although
common sense directs one to look with care" at patent claims that combine
"two known devices according to their established functions, it can be
important to identify a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements." Id.
To the extent that the Examiner may be suggesting that combining
elements of AAP A and McDevitt utilizes known methods to yield
predictable results or that the use of McDevitt's features would improve
AAP A in the same way it improves McDevitt, the Examiner (i) has not
established by a preponderance of the evidence that McDevitt teaches a
vacuum hole above a forming collar; and (ii) has not provided sufficient
explanation of how McDevitt's air duct 27, added above the former collar of
AAP A, would perform, such that one of ordinary skill in the art would have
recognized the results of the combination to be a desirable modification of
AAPA.
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Application 14/036,262
As to whether the Examiner has established that McDevitt's air duct
27 is above a forming collar of McDevitt's device, the Examiner indicates
only that the air ducts 27 are "on shoulders 8 above former 5." Final Act. 3.
McDevitt describes
provid[ing] a tube former of novel construction having provision
for introducing compressed air into the interior thereof and
directing the same outwardly over the exterior surfaces
contacted by the film as it is being shaped from a moving web
into a tubular form, the air serving to provide an air cushion
between the former and the film and prevent objectionable
clinging of the film to said former surfaces.
Id. at 1:43-50 (emphasis added). More particularly, McDevitt describes the
tube former as having head 6 at an upper end of cylindrical tubular body 5,
with the head having "a straight edge or wall portion 7 for initial
engagement by the web to be formed" and "laterally extending shoulders 8
having downwardly sloping, smoothly rounded upper surfaces 9." Id. at
1 :70-2:4. McDevitt also describes that "the upwardly travelling web portion
15 is drawn over the shoulders at 16 and down into the throat at 1 7, the
edges angling inwardly and downwardly." Id. at 2:16-19. McDevitt further
describes that shoulders 8 of the tube former have air manifolds into which
compressed air is supplied, as well as air ducts 27 through which all of the
air directed into the manifold must pass out. Id. at 2:41--47, 64--66.
Compressed air is supplied "at a pressure which will give just the right
cushioning effect to facilitate passage of the film 15 over the [tube] former
during the formation thereof into a tube without any tendency on the part of
the film to engage in objectionable frictional contact with, or clinging to, the
forming surfaces." Id. at 2:68-3:1. It is clear from the foregoing description
that air ducts 27 are located within surfaces of McDevitt's device that
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Application 14/036,262
engage with the film or web material. Consequently, air ducts 27 appear to
be within the portion of McDevitt's device that acts as a forming collar,
rather than above the portion that acts as a forming collar.
Further, the Examiner has not explained sufficiently how adding a
hole to the product delivery cylinder of the AAP A above the forming collar
of the AAP A (see Spec. Fig. 1) would provide a result that would be
recognized by those of ordinary skill in the art as being a desirable
modification of the AAPA. In particular, it is unclear how adding a hole to
the product delivery cylinder of the AAPA above the forming collar of the
AAP A would function to prevent clinging of packaging film to the tube
former when the packaging film does not engage with the portion of the
product delivery cylinder above the forming collar. It is also unclear how
adding a hole to the product delivery cylinder of the AAP A above the
forming collar of the AAP A would enable the delivery of compressed air
that would pass out through such hole without interfering with the delivery
of product through the product delivery cylinder. Overall, the Examiner
fails to provide sufficiently articulated reasoning with a rational evidentiary
underpinning to explain why McDevitt would have led one of ordinary skill
in the art to modify the AAP A to include a hole above the forming collar.
For the foregoing reasons, we find that the Examiner erred in
concluding that the subject matter of independent claim 3 is rendered
obvious by the combination of AAPA, Plahm, and McDevitt. We do not
sustain the rejection of claim 3, or of claims 4 and 9--13 depending
therefrom, under 35 U.S.C. § 103(a) as unpatentable over AAPA, Plahm,
and McDevitt.
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Rejection II
The rejection of dependent claims 17 and 18 relies on the same
deficient finding that McDevitt teaches a hole above a former collar and the
same deficient reasoning for combining AAP A, Plahm, and McDevitt as
discussed above in connection with the rejection of independent claim 3.
The Examiner does not explain how Focke might remedy this deficiency.
See Final Act. 4--5. Accordingly, for the above reasons, we do not sustain
the rejection of claims 17 and 18 under 35 U.S.C. § 103(a) as unpatentable
over AAP A, Plahm, McDevitt, and Focke.
DECISION
The Examiner's decision to reject claims 3, 4, and 9-13 under
35 U.S.C. § 103(a) as unpatentable over AAPA, Plahm, and McDevitt is
reversed.
The Examiner's decision to reject claims 17 and 18 under 35 U.S.C.
§ 103(a) as unpatentable over AAPA, Plahm, McDevitt, and Focke is
reversed.
REVERSED
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