Ex Parte Griggs et al

Board of Patent Appeals and Interferences

Jan 12, 2009

11187205 (B.P.A.I. Jan. 12, 2009)

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___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte SAMUEL D. GRIGGS and DENNIS J. MAY
___________

Appeal 2008-2440
Application 11/187,205
Technology Center 3700
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Decided: January 12, 2009
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Before WILLIAM F. PATE, III, ANTON W. FETTING, and JOHN C. KERINS,
Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Samuel D. Griggs and Dennis J. May (Appellants) seek review under
35 U.S.C. § 134 of a final rejection of claims 1-21, the only claims pending in the
application on appeal.
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) (2002).
We AFFIRM and DENOMINATE AS A NEW GROUND OF REJECTION
UNDER 37 C.F.R. § 41.50(b).

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The Appellants invented an apparatus that can enclose products in packaging
materials, and may be particularly suitable for enclosing products in clippable
netting material (Specification 1:11-13).
An understanding of the invention can be derived from a reading of exemplary
claims 1, 2, and 5, which are reproduced below [some paragraphing added].
1. A netting product chute adapted to cooperate with a clipper
apparatus, comprising
a chute primary body
with a generally open through cavity,
the body having a generally pentagonal cross-sectional
shape.
2. A netting product chute according to Claim 1,
wherein the cavity has a substantially planar floor
that merges into two upstanding sidewalls,
each merging into respective inclined ceiling
portions
that rise to meet at a peak segment above the
floor
5. A netting product chute according to Claim 2,
wherein the chute has axially opposing ingress and egress
portions,
the chute further comprising
a flared entry portion
that extends around the upstanding sidewalls and
the ceiling of the chute body and
a handle attached to an upper portion of the ingress
portion of the product chute.
This appeal arises from the Examiner’s Final Rejection, mailed January 3,
2007. The Appellants filed an Appeal Brief in support of the appeal on April 10,
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2007. An Examiner’s Answer to the Appeal Brief was mailed on July 30, 2007. A
Reply Brief was filed on October 1, 2007.
PRIOR ART
The Examiner relies upon the following prior art:
Tipper US 3,499,259 Mar. 10, 1970
Smith US Des. 397,002 Aug. 18, 1998
Pollak US Des. 340,467 Oct. 19, 1993
Block US Des. 394,989 Jun. 9, 1998
REJECTIONS 5
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Claims 1-4, 7-19, and 21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Tipper.
Claims 5, 6, and 20 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Tipper and either of Smith or Pollak.
Claims 1-4, 7-19, and 21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Tipper and Block.
Claims 5, 6, and 20 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Tipper, Block, and either of Smith or Pollak.
ISSUES
The issues pertinent to this appeal are
• Whether the Appellants have sustained their burden of showing that the
Examiner erred in rejecting claims 1-4, 7-19, and 21 under 35 U.S.C.
§ 103(a) as unpatentable over Tipper.
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• Whether the Appellants have sustained their burden of showing that the
Examiner erred in rejecting claims 5, 6, and 20 under 35 U.S.C. § 103(a) as
unpatentable over Tipper and either of Smith or Pollak.
• Whether the Appellants have sustained their burden of showing that the
Examiner erred in rejecting claims 1-4, 7-19, and 21 under 35 U.S.C.
§ 103(a) as unpatentable over Tipper and Block.
• Whether the Appellants have sustained their burden of showing that the
Examiner erred in rejecting claims 5, 6, and 20 under 35 U.S.C. § 103(a) as
unpatentable over Tipper, Block, and either of Smith or Pollak.
The pertinent issues turn on whether it would have been predictable to one of
ordinary skill to have a chute with a generally pentagonal cross-sectional shape,
and a flared opening.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be supported
by a preponderance of the evidence.
Facts Related to Appellants’ Disclosure
01. The Specification does not describe any advantage of a pentagonal
cross sectional shape for chutes. The Specification lists a pentagonal
shape among several alternatives to circular cross sections. The other
alternatives described are one with an upper triangular portion, an oval
shape, and a shape with a curvilinear upper portion and planar lower
portion (Specification 3:3-8). The Specification does not describe any
particular advantages for each of these shapes.
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Tipper
02. Tipper is directed to a way of packaging a product in an open weave
or plastic material (Tipper 1:26-37).
03. Tipper uses a feeding chute in which a product, such as a turkey, is
moved from rear to front, where flexible tubular packing material is
wrapped in shirred condition around the outside of the chute. When the
product emerges, it pulls some of the packing material around itself to
encase the product in the wrapping material (Tipper 2:20-45).
04. Tipper shows three different chute cross sections for different
products (Tipper: Figs. 4, 5, and 9).
05. Tipper shows a flared product entry portion (Tipper: Fig. 5 – the
upper portion of chute (3) attaching to flat bar (42)). The flat bar (42)
extends across the chute at the rear behind the product ingress (Tipper
3:43-48), and thus is structurally similar to a handle.
06. Tipper’s chute is open at both ends along its axial direction (Tipper:
Figs. 1 and 9). The product may be pushed through either manually or
with a feeding ram from the rear axial opening (Tipper 3:10-16).
07. Tipper describes product being deposited in the chute either from
above (Tipper 2: 31-33) or from the axial direction (Tipper: Fig. 8:Ref.
101).
Smith
08. Smith is a design patent for a combination funnel and plastic bag
(Smith: Title).
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09. Smith’s funnel has a flared entry portion, as any funnel would, and
also has a handle attached to an upper portion of the ingress portion of
the funnel (Smith: Figs. 3 and 4).
Pollak
10. Pollak is a design patent for a two piece funnel with a long spout
(Pollak: Title).
11. Pollak’s funnel has a flared entry portion, as any funnel would, and
also has a handle attached to an upper portion of the ingress portion of
the funnel (Pollak: Fig. 1).
Block
12. Block is a design patent for a funnel (Block: Title).
13. Block’s funnel has is shown in each of a circular, quadrilateral,
hexagonal, and octagonal shape (Block: Figs. 1-20).
Facts Related To The Level Of Skill In The Art
14. Neither the Examiner nor the Appellants has addressed the level of
ordinary skill in the pertinent arts of chute design, product flow through
analysis in a chute, or structural design. We will therefore consider the
cited prior art as representative of the level of ordinary skill in the art.
See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he
absence of specific findings on the level of skill in the art does not give
rise to reversible error ‘where the prior art itself reflects an appropriate
level and a need for testimony is not shown’”) (quoting Litton Indus.
Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir.
1985).
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Facts Related To Secondary Considerations
15. There is no evidence on record of secondary considerations of non-
obviousness for our consideration.
PRINCIPLES OF LAW
Claim Construction
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Prater , 415 F.2d 1393, 1404-05 (CCPA 1969); In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364, (Fed. Cir. 2004).
Limitations appearing in the specification but not recited in the claim are not
read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed.
Cir. 2003) (claims must be interpreted “in view of the specification” without
importing limitations from the specification into the claims unnecessarily)
Although a patent applicant is entitled to be his or her own lexicographer of
patent claim terms, in ex parte prosecution it must be within limits. In re Corr,
347 F.2d 578, 580 (CCPA 1965). The applicant must do so by placing such
definitions in the Specification with sufficient clarity to provide a person of
ordinary skill in the art with clear and precise notice of the meaning that is to be
construed. See also In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (although
an inventor is free to define the specific terms used to describe the invention, this
must be done with reasonable clarity, deliberateness, and precision; where an
inventor chooses to give terms uncommon meanings, the inventor must set out any
uncommon definition in some manner within the patent disclosure so as to give
one of ordinary skill in the art notice of the change).
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Obviousness

A claimed invention is unpatentable if the differences between it and the
prior art are “such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in the art.”
35 U.S.C. § 103(a) (2000); KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1729-30
(2007); Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966).
In Graham, the Court held that that the obviousness analysis is bottomed on
several basic factual inquiries: “[(1)] the scope and content of the prior art are to be
determined; [(2)] differences between the prior art and the claims at issue are to be
ascertained; and [(3)] the level of ordinary skill in the pertinent art resolved.” 383
U.S. at 17. See also KSR Int’l v. Teleflex Inc., 127 S.Ct. at 1734. “The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR, at 1739.
“When 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.” Id. at 1740.
“For the same reason, if 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.” Id.
“Under the correct analysis, any need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a reason
for combining the elements in the manner claimed.” Id. at 1742.
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ANALYSIS
Claims 1-4, 7-19, and 21 rejected under 35 U.S.C. § 103(a) as unpatentable over
Tipper.
The Appellants argue claims 1-4, 7-19, and 21 as a group (Br. 5-7).
Accordingly, we select claim 1 as representative of the group.
37 C.F.R. § 41.37(c)(1)(vii) (2007).
The Examiner found that Tipper described all of the limitations of claim 1
except for a pentagonal shape. The Examiner found that Tipper described two
different possible shape embodiments for its chute, each for a different type of
product and further found that one of ordinary skill would have known that the
chute ought to be designed to accommodate the characteristics of the product that
is to be sent through the chute, and that a pentagonal shape would be within the
scope of the set of shapes such a person of ordinary skill would envision for
different products. The Examiner concluded that it would have been obvious to a
person of ordinary skill in the art to have designed Tipper’s chute with a
pentagonal shape for products that would warrant such a shape, either to reduce
product sliding friction or to increase netting material holding friction on the chute
corners (Answer 4).
The Appellants argue that it would not have been obvious to apply a
pentagonal shape to Tipper’s chute. They contend that the claimed chute
configuration allows product to be pushed through without undue friction (Br.
6:Top ¶); that Tipper illustrates a rectangular shaped chute with rounded edges and
a floor with vertical walls and a slightly curved ceiling, neither of which suggest
the claimed shape (Br. 6:Second ¶); and that the claimed configuration reduces
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sleeve material costs and provides a desired orientation, and that patentability is
not negated by experimentation (Br. 7:Top ¶).
We agree with the Examiner. The Appellants did not disclose any frictional
advantage, cost advantage, or any other advantages obtained from using a
pentagonal shape in the original disclosure (FF 01). Therefore, to the extent the
Appellants are relying on the knowledge of one of ordinary skill to appreciate such
advantages, the Examiner is equally correct in finding that such a person of
ordinary skill would know that it would have been advantageous to adapt the chute
cross section to whatever product was being packaged to reduce friction and cost
of material. This is simply common sense, not a matter of experimentation.
When there is a design need or market pressure to solve a problem
and there are a finite number of identified, predictable solutions, a
person of ordinary skill has good reason to pursue the known options
within his or her technical grasp. If this leads to the anticipated
success, it is likely the product not of innovation but of ordinary skill
and common sense. In that instance the fact that a combination was
obvious to try might show that it was obvious under § 103.
KSR, 127 S. Ct. at 1742.
While we agree with the Appellants that Tipper illustrates a rectangular shaped
chute with rounded edges and a floor with vertical walls and a slightly curved
ceiling, whether either of these suggests the claimed shape is in itself not the test
for obviousness. The test is whether the art as a whole would have suggested such
a shape. We find that Tipper shows three different chute cross sections for
different products (FF 04). Thus, as the Examiner found, Tipper does suggest
using different chute geometries for different products. As the Examiner implied
in the response (Answer 6-7), a pentagonal shape is among a small set of polygonal
shapes, some of which are shown or implied by Tipper. Such a pentagonal shape,
being one of the few simple geometric shapes generally recognized by anyone
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having had high school geometry, was well within the scope of the configurations
one of ordinary skill would find predictable for surrounding product by a chute
geometry.
The Appellants have not sustained their burden of showing that the Examiner
erred in rejecting claims 1-4, 7-19, and 21 under 35 U.S.C. § 103(a) as
unpatentable over Tipper.
Claims 5, 6, and 20 rejected under 35 U.S.C. § 103(a) as unpatentable over Tipper
and either of Smith or Pollak.
The Appellants argue these claims as a group, and we therefore select claim 5
as representative of the group. The Examiner found that both Smith and Pollak
showed the flared entry portion and handle attached to an upper portion of the
ingress recited in claim 5 (Answer 5).
The Appellants contend that it would not have been obvious to combine Tipper
with either Smith or Pollak (Br. 7:Bottom ¶). The Appellants contend that one of
ordinary skill would not have been motivated to alter heavy-duty industrial
packaging equipment as in Tipper based on teachings of small portable funnels in
Simith and Pollak (Br. 8:Top ¶). The Appellants also argue that Tipper’s flared
end is not at the ingress (Br. 8:First full ¶).
The Examiner responds that claim 5 does not recite heavy-duty industrial
packaging equipment and that Tipper also shows a funnel, implying that one of
ordinary skill would have looked to other funnel designs to augment Tipper
(Answer 7) and that Tipper’s flared portion (Tipper Fig. 1:Ref. 11) is at the ingress
(Answer 5, 8).
We agree with the Appellants that one would not have looked to design patents
for funnels for teachings of how to alter Tipper’s chute and that Tipper’s reference
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11 is actually at the egress rather than the ingress. We further find, however, that
Tipper itself shows the axially opposing ingress and egress portions recited in
claim 5 (FF 03 and 06), and a flared entry portion where product is in some
instances deposited (FF 05). While this flared portion is not for an axially defined
ingress, Tipper does show ingress at either the top or at an axial end (FF 07). We
find that the flare for one such ingress shown by Tipper would have suggested
applying such a flare to the instance disclosed in Tipper in which product is
introduced axially. Finally, we find that the stiffening bar of Tipper is structurally
similar to a handle and is placed at the end of the chute where the two ingress
openings reside (FF 05). Although one of ordinary skill would not likely have
looked to Smith and Pollak for reason to modify Tipper, because the flared portion
of Tipper acts as a funnel structure, we find that Smith and Pollak at least serve as
evidence of a funnel’s structure.
The Appellants have not sustained their burden of showing that the Examiner
erred in rejecting claims 5, 6, and 20 under 35 U.S.C. § 103(a) as unpatentable
over Tipper and either of Smith or Pollak. However, because we have applied a
reasoning different from that of the Examiner, we denominate this as a new ground
of rejection pursuant to 37 C.F.R. § 41.50(b).
Claims 1-4, 7-19, and 21 rejected under 35 U.S.C. § 103(a) as unpatentable over
Tipper and Block.
Claims 5, 6, and 20 rejected under 35 U.S.C. § 103(a) as unpatentable over
Tipper, Block, and either of Smith or Pollak.
As an alternative rejection, the Examiner added Block to Tipper to show that it
was known to use different polygonal shapes for funnel cross sections. The
Appellants made the same arguments as they did with claims 1-4, 7-19, and 21 and
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claims 5, 6, and 20 supra. The Appellants also made the same argument against
applying Block as they did with Smith and Pollak, that one of ordinary skill would
not have looked to a funnel design patent to augment Tipper. We find the
Appellants have not sustained their burden of showing that the Examiner erred in
rejecting claims 1-4, 7-19, and 21 under 35 U.S.C. § 103(a) as unpatentable over
Tipper and Block, or in rejecting claims 5, 6, and 20 under 35 U.S.C. § 103(a) as
unpatentable over Tipper, Block, and either of Smith or Pollak for the same
reasons we found supra. Block at the least provides evidence that tubes which
product would flow through were known to be structured as polygonal in cross
section. We similarly denominate the rejection of claims 5, 6, and 20 as a new
ground for the same reasons we stated supra.
CONCLUSIONS OF LAW
The Appellants have not sustained their burden of showing that the Examiner
erred in rejecting claims 1-21 under 35 U.S.C. § 103(a) as unpatentable over the
prior art.
On this record, the Appellants are not entitled to a patent containing claims 1-
21.
DECISION
To summarize, our decision is as follows:
• The rejection of claims 1-4, 7-19, and 21 under 35 U.S.C. § 103(a) as
unpatentable over Tipper is sustained.
• The rejection of claims 5, 6, and 20 under 35 U.S.C. § 103(a) as
unpatentable over Tipper and either of Smith or Pollak is sustained.
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o We denominate this as a new ground of rejection pursuant to
37 C.F.R. 41.50(b).
• The rejection of claims 1-4, 7-19, and 21 under 35 U.S.C. § 103(a) as
unpatentable over Tipper and Block is sustained.
• The rejection of claims 5, 6, and 20 under 35 U.S.C. § 103(a) as
unpatentable over Tipper, Block, and either of Smith or Pollak is sustained.
o We denominate this as a new ground of rejection pursuant to
37 C.F.R. 41.50(b).
Our decision is not a final agency action.
In addition to affirming the Examiner's rejection(s) of one or more claims, this
decision contains new grounds of rejection pursuant to 37 CFR § 41.50(b). 37
CFR § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph
shall not be considered final for judicial review.” This Decision contains a new
rejection within the meaning of 37 C.F.R. § 41.50(b) (2007).
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the following two
options with respect to the new rejection:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to the
Examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. . . .
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Should the Appellants elect to prosecute further before the Examiner
pursuant to 37 CFR § 41.50(b)(1), in order to preserve the right to seek review
under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection, the effective
date of the affirmance is deferred until conclusion of the prosecution before the
Examiner unless, as a mere incident to the limited prosecution, the affirmed
rejection is overcome.
If the appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this case
should be returned to the Board of Patent Appeals and Interferences for final action
on the affirmed rejection, including any timely request for rehearing thereof.
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv)
(2007).
AFFIRMED 14
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JRG

MYERS BIGEL SIBLEY & SAJOVEC
P.O. BOX 37428
RALEIGH, NC 27627
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