Ex Parte Leyens et al

Patent Trial and Appeal Board

Oct 23, 2017

13515831 (P.T.A.B. Oct. 23, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/515,831 06/14/2012 Norbert Leyens 01710033US 5288
62008 7590 10/25/2017
MAIER & MAIER, PLLC
345 South Patrick Street
ALEXANDRIA, VA 22314
EXAMINER
ALIE, GHASSEM
ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
10/25/2017 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):
patent @ maierandmaier. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NORBERT LEYENS and STEFAN LENNARTZ
Appeal 2016-005464
Application 13/515,831
Technology Center 3700
Before LYNNE H. BROWNE, JILL D. HILL, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Norbert Leyens and Stefan Lennartz (Appellants) appeal under 35
U.S.C. § 134 from the rejection of claims 1—9. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
Appeal 2016-005464
Application 13/515,831
CLAIMED SUBJECT MATTER
The claims are directed to a device for splitting foam bodies. Spec. 1.
Independent claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A device for splitting foam material bodies, comprising an
endless band-knife which has a cutting edge for splitting off
a layer from the foam material body, and further comprising
a take-off device for removing the layer from the foam
material body,
wherein the take-off device comprises an electrostatically
chargeable conveyor element oriented obliquely to a surface
of the foam material body that removes the split-off layer
from the foam material body in an upward direction at the
cutting position where the cutting edge engages, wherein the
layer is subsequently lifted and removed from the material
body, wherein at least a portion of the chargeable conveyor
element is positioned almost tangentially to the surface of the
foam material body, and
wherein the foam material is grounded through contact
with the knife or a knife guide guiding the knife and
electrostatically neutral.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kivimaa US 4,621,669 Nov. 11, 1986
Dover US RE 34,827 Jan. 17, 1995
Watanabe US 6,145,561 Nov. 14, 2000
Desmarais US 6,209,430 B1 Apr. 3,2001
Sabatelli US 6,269,724 B1 Aug. 7, 2001
Calvert US 6,820,671 B2 Nov. 23, 2004
Miller US 2009/0152173 A1 June 18, 2009
2
Appeal 2016-005464
Application 13/515,831
REJECTIONS
I. Claims 1—9 stand rejected under 35U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement.
II. Claims 1—9 stand rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
III. Claims \-A and 7—9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sabatelli, Calvert, Dover, and Desmarais.
IV. Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sabatelli, Calvert, Dover, Desmarais, and
Miller.
V. Claims \-A and 7—9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sabatelli, Calvert, Watanabe or Kivimaa,
Dover, and Desmarais.
VI. Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sabatelli, Calvert, Watanabe or Kivimaa,
Dover, Desmarais, and Miller.
DISCUSSION
Rejection I
The Examiner determines that “[t]he original disclosure does not
disclose ‘at least’ a portion of the conveyor element is positioned
tangentially to the surface of the foam material body.” Ans. 10. The
Examiner finds that “[t]he original disclosure specifically disclose[s] only a
portion as ‘the guide roller 23 ’ is being positioned almost tangentially to the
3
Appeal 2016-005464
Application 13/515,831
surface of the foal [sic] material body 11.” Id. (citing Spec. 122). The
Examiner explains that this disclosure “[a]t least implies that there are other
portions of the conveyor that are positioned tangentially to the surface of the
foam material body.” Id. Based on this finding and explanation, the
Examiner rejects claims 1—9 as failing to comply with the written description
requirement. See id.
Appellants contend that “the term ‘at least’ explicitly defines that at a
minimum some portion of the conveyor element is almost tangential to the
foam material body.” Reply Br. 3. In support of this contention, Appellants
argue that:
while a person of ordinary skill would understand that this term
encompasses devices where more than a portion (e.g. up to and
including all) of the conveyor element could be almost tangential
to the foam material body, the Office seems to imply that this
term means that there must be more than a portion of the
conveyor element almost tangential to the foam material body.
In other words, under the Office’s interpretation, “at least a
portion,” should be read as “more than a portion”, which is
clearly contrary to the plain meaning of the term “at least” and
would amount to reading additional limitations into the claimed
invention.
Id. at 3^4 (emphases omitted) (footnote omitted).
Appellants are correct that the scope of the limitation at issue
“encompasses devices where more than a portion (e.g. up to and including
all) of the conveyor element could be almost tangential to the foam material
body.” Id. (emphases omitted). However, we do not agree that the
Specification provides support for the scope of this limitation. Rather, as
noted by Appellants, the Specification merely describes a
take-off device [that] comprises a belt conveyor 21 with an
endless conveyor element 22 circulating around guide rolls 23,
4
Appeal 2016-005464
Application 13/515,831
24. [Wherein] [t]he belt conveyor 21 is oriented obliquely, with
the lower guide roll 23 being positioned almost tangentially to
the surface of the foam material body 11 before the layer 16 is
split.
Spec. 5:3—7; see also Reply Br. 2. Appellants do not identify, nor do we
discern where the Specification describes a conveyor element wherein in
“more than a portion (e.g. up to and including all) of the conveyor element”
is positioned almost tangentially to the surface of the foam material body.
Reply Br. 4. Moreover, Appellants do not explain how it would be possible
for all of the conveyor elements to be positioned almost tangentially to the
surface of the foam material body while also “oriented obliquely to a surface
of the foam material body” as required by claim 1. Appeal Br. 12 (Claims
App.). Thus, the Specification as originally filed fails to provide support for
this limitation.
For these reasons, we sustain the Examiner’s decision rejecting claims
1—9 as failing to comply with the written description requirement.
Rejection II
The Examiner determines that “[regarding claims 1 and 8, ‘at least a
portion of the conveyor element is positioned almost tangentially to the
surface of the foam material body’ is confusing.” Ans. 10. The Examiner
explains that “[i]n this case, ‘almost’ is a relative term. It is not clear to
what degree a portion of the conveyor element is tangential to the surface of
the foam body, that it could be considered as being ‘almost’ tangential to the
surface of the foam body.” Id.
Noting that “[u]nder M.P.E.P. 2173.05(b): Terms of degree are not
necessarily indefinite,” Appellants contend that “a person of ordinary skill in
5
Appeal 2016-005464
Application 13/515,831
the art would understand that this means that the lower guide roll (and thus
the conveyor element 22 circulating around lower guide roll 23) is close but
not actually tangential to the foam material body 11 when the layer 16 is
split.” Reply Br. 5 (emphasis omitted). In support of this contention,
Appellants direct our attention to page 5 of the Specification. See id.
Appellants explain that “a person of ordinary skill in the art would readily
understand, based upon the device at hand, how close the conveyor element
would have to be to the foam material body as to perform the useful
operation.” Id. at 6. Given this understanding, Appellants argue that claims
1 and 8 are not indefinite.
We agree. As correctly noted by Appellants, “[cjlaim language
employing terms of degree has long been found definite where it provided
enough certainty to one of skill in the art when read in the context of the
invention.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370 (Fed.
Cir. 2014). In this instance the Specification provides sufficient certainty for
one skilled in the art to understand what the relative term “almost”
encompasses.
For this reason, we do not sustain the Examiner’s decision rejecting
claims 1 and 8, and their respective dependent claims 2—7 and 9 as
indefinite.
Rejection III
Appellants argue claims 1—4 and 7—9 together. See Appeal Br. 8—9.
We select independent claim 1 as the illustrative claim, and claims 2—4 and
7—9 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
6
Appeal 2016-005464
Application 13/515,831
The Examiner determines that the combined teachings of Sabatelli,
Calvert, Dover, and Desmarais disclose or suggest all of the limitations of
claim 1. See Non-Final Act. 2-4. Specifically, the Examiner finds that
Sabatelli discloses all the limitations of claim 1 except for a “conveyer
element [that] is an electrostatically chargeable conveyor element,” that “is
oriented obliquely to a surface of the foam material body,” and having a
portion that “is positioned almost tangentially to the surface of the foam
material body.” Id. at 3. The Examiner finds that “Calvert teaches a
conveyor device 302 having a conveyor belt which use electrostatic charge
or vacuum to hold workpiece 106,” “Dover teaches a conveyor 80, 86
oriented obliquely to a surface of a workpiece being cut by a blade 52,” and
“Desmarais teaches a conveyor element 12 is positioned almost tangentially
to the surface of the foam material body 3 while a cutting edge 7 splitting off
a layer 11 from the foam material body 3.” Id. at 3, 4. Based on these
findings, and the reasoning explained in the rejection, the Examiner
determines that claim 1 is unpatentable. See id. at 2-4.
Appellants contend that “Sabatelli does not teach or suggest wherein
the take-off device comprises an electrostatically chargeable conveyor
element oriented obliquely to a surface of the foam material body that
removes the split-off layer from the foam material body in an upward
direction” and that “Sabatelli [fails to] teach or suggest wherein at least a
portion of the chargeable conveyor element is positioned almost tangentially
to the surface of the foam material body.” Appeal Br. 5 (emphasis omitted).
However, as discussed supra, these facts are not in contention. Thus,
Appellants do not apprise us of error.
7
Appeal 2016-005464
Application 13/515,831
Appellants further contend that “like Sabatelli, Calvert does not teach
or suggest ‘wherein at least a portion of the chargeable conveyor element is
positioned almost tangentially to the surface of the foam material body, ’ as
required by claim 1 ” and that “Calvert is likewise silent with respect to
lifting and removing the split-off layer in an upward direction at the cutting
position, as required by the claimed invention.” Id. at 6 (emphasis omitted).
Again, these facts are not in contention. As discussed supra, the Examiner
determines that Calvert does not disclose these limitations. Rather, Calvert
is relied upon for its teaching of an electrostatically chargeable conveyor
element. See Non-Final Act. 3. Appellants do not contest the Examiner’s
findings pertaining to this feature of Calvert. Thus, Appellants do not
apprise us of error.
In addition, Appellants contend that “Dover does not teach or suggest
‘wherein at least a portion of the chargeable conveyor element is positioned
almost tangentially to the surface of the foam material body.” Appeal Br. 6
(emphasis omitted). However, Dover is not relied upon to teach or suggest
this limitation. Thus, Appellants do not apprise us of error. Regarding
Dover, Appellants also argue that “it is not clear from the record how
Dover’s conveyors could be incorporated into the combined Sabatelli and
Calvert device,” because “[t]he arrangement of the conveyors of Dover is
explicitly designed to roll a layer of sod upon itself.” Id. at 7. However, “it
is not necessary that the inventions of the references be physically
combinable to render obvious the invention under review.” In re Sneed, 710
F.2d 1544, 1550 (Fed. Cir. 1983). The relevant inquiry is whether the
claimed subject matter would have been obvious to those of ordinary skill in
the art in light of the combined teachings of those references. See In re
8
Appeal 2016-005464
Application 13/515,831
Keller, 642 F.2d 413, 425 (CCPA 1981). “Combining the teachings of
references does not involve an ability to combine their specific structures.”
In reNievelt, 482 F.2d 965, 968 (CCPA 1973). Appellants do not explain
why one skilled in the art would be unable to apply Dover’s teachings to
other devices such as Sabatelli’s conveyor element. Thus, Appellants do not
apprise us of error.
Next, Appellants argue that “[t]he record, however, fails to provide
the required evidence of a motivation for a person of ordinary skill in the art
to” position Sabatelli’s conveyor element almost tangentially to the surface
of the foam material. Appeal Br. 7 (emphasis omitted). However,
Appellants do not identify what evidence is missing or contest the
Examiner’s finding that “Desmarais teaches a conveyor element 12 is
positioned almost tangentially to the surface of the foam material body 3
while a cutting edge 7 splitting off a layer 11 from the foam material body
3.” Non-Final Act. 4. To the extent that Appellants are arguing that the
rejection must include explicit evidence of a teaching, suggestion, or
motivation for the proposed combination, this argument is foreclosed by
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), in which the Court
rejected the rigid requirement of a teaching or suggestion or motivation to
combine known elements in order to show obviousness. KSR, 550 U.S. at
415. The Court noted that an obviousness analysis “need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” Id. at 418. Similarly, we
are unaware of any requirement that a prior art reference “suggest that
further improvement is desired, or that another feature should be added to
9
Appeal 2016-005464
Application 13/515,831
further improve” the subject matter described in that reference. Appeal Br.
7. The Examiner articulates reasoning with rational underpinning in finding
one of skill in the art would have wanted “to position a conveyor closer to a
material that is being transported in order to facilitate removal or transport of
the material.” Ans. 11. Appellants do not persuasively challenge this
reasoning. Thus, Appellants do not apprise us of error.
Then, Appellants argue that “it is not clear from the record how
Desmarais’ horizontal conveyor could be incorporated into the Sabatelli
device.” Appeal Br. 8. However, as discussed supra, the references need not
be physically combinable without modification in order to render the
invention obvious. Appellants do not explain why Desmarais’ teachings are
not applicable to Sabatelli. Thus, Appellants do not apprise us of error.
Furthermore, the Supreme Court, in KSR, provided guidance when addressing
a concern about picking and choosing elements from the prior art.
For over a half century, the Court has held that a “patent for a
combination which only unites old elements with no change in
their respective functions ... obviously withdraws what already is
known into the field of its monopoly and diminishes the
resources available to skillful men.” [Great Atlantic & Pacific
Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152—
153 (1950)]. This is a principal reason for declining to allow
patents for what is 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 415-16.
Finally, Appellants argue that “Miller does not cure the deficiencies of
the aforementioned references.” Appeal Br. 8. However, Miller is not relied
upon in the rejection of claim 1. Accordingly, Appellants’ argument cannot
apprise us of error.
10
Appeal 2016-005464
Application 13/515,831
For these reasons, we sustain the Examiner’s decision rejecting claim
1, and claims 2-4 and 7—9, which fall therewith as unpatentable over
Sabatelli, Calvert, Dover, and Desmarais.
Rejection IV
Claims 5 and 6 depend from claim 1. Appellants do not present
separate arguments for the patentability of claims 5 and 6. See Appeal Br. 8.
Accordingly, we sustain the Examiner’s decision rejecting claims 5 and 6 as
unpatentable over Sabatelli, Calvert, Dover, Desmarais, and Miller for the
reasons discussed supra.
Rejection V
Appellants argue claims 1—4 and 7—9 together. See Appeal Br. 10.
We select claim 1 as the illustrative claim, and claims 2-4 and 7—9 stand or
fall with claim 1.
The Examiner presents an alternative rejection of claims 1—4 and 7—9
based on the combined teachings of Sabatelli, Calvert, Watanabe or
Kivimaa, Dover, and Desmarais. See Non-Final Act. 6—8. The Examiner
explains that:
It could be argued that Sabatelli in view of Calvert does not
explicitly teach that the foam material is grounded through
contact with the knife or a knife guide guiding the knife and
electrically neutral. However, the use of grounding for
electrically ground a workpiece via a plate or a knife which
contacts the workpiece is old and well known in the art as taught
by Watanabe and Kivimma [sic].
Id. at 7. Thus, this rejection is similar to Rejection III and we understand it
to be proffered in case it is determined that the combined teachings of
11
Appeal 2016-005464
Application 13/515,831
Sabatelli and Calvert do not teach a device “wherein the foam material is
grounded through contact with the knife or a knife guide guiding the knife
and electrostatically neutral” as required by claim 1. Appeal Br. 12 (Claims
App.). However, Appellants do not contest the Examiner’s determination
that the combined teachings of Sabatelli and Calvert teach a device “wherein
the foam material is grounded through contact with the knife or a knife guide
guiding the knife and electrostatically neutral.” See generally Appeal. Br.
Rather, Appellants argue that:
Watanabe does not disclose a take away device at all. Rather,
after tape T is cut to a predetermined length, the tape T is merely
sent out of the entire apparatus at tape exit 13. Similarly,
Kivimaa merely discloses a procedure for prolonging tool life in
wood cutting, but does not teach or suggest any take away device
for the veneer 3 a once it is detached from the billet 3 by knife 1.
Appeal Br. 9. However, these facts are not in contention. Neither Watanabe
nor Kivimaa are relied upon to teach a take away device, as a take away
device is taught by Sabatelli. See Non-Final Act. 6. Furthermore, Watanabe
and Kivimaa are not relied upon to teach “wherein at least a portion of the
chargeable conveyor element is positioned almost tangentially to the surface
of the foam material body.” Appeal Br. 9 (emphasis omitted). Thus,
Appellants do not apprise us of error.
We sustain the Examiner’s decision rejecting claim 1, and claims 2-4
and 7—9 which fall therewith, as unpatentable over Sabatelli, Calvert,
Watanabe or Kivimaa, Dover, and Desmarais.
Rejection VI
Appellants do not present separate arguments for the patentability of
claims 5 and 6. See Appeal Br. 10. Accordingly, we sustain the Examiner’s
12
Appeal 2016-005464
Application 13/515,831
decision rejecting claims 5 and 6 as unpatentable over Sabatelli, Calvert,
Watanabe or Kivimaa, Dover, Desmarais, and Miller for the reasons
discussed supra.
DECISION
The Examiner’s rejection of claims 1—9 under 35 U.S.C. § 112, first
paragraph is AFFIRMED.
The Examiner’s rejection of claims 1—9 under 35 U.S.C. § 112,
second paragraph is REVERSED.
The Examiner’s rejections of claims 1—9 under 35 U.S.C. § 103(a) are
AFFIRMED.
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)(l)(iv).
AFFIRMED
13