Ex Parte Litwin et al

Board of Patent Appeals and Interferences

Mar 12, 2012

11224188 (B.P.A.I. Mar. 12, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MICHAEL W. LITWIN and JEFFREY YOUNGBLOOD
____________

Appeal 2011-001422
Application 11/224,188
Technology Center 1700
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Before BRADLEY R. GARRIS, CATHERINE Q. TIMM, and
JEFFREY T. SMITH, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejection under 35 U.S.C. § 102 (b) of claims 1-10 as anticipated by Stern
(US 3,202,448, issued Aug. 24, 1965). We have jurisdiction under 35
U.S.C. § 6.
We AFFIRM.
Appellants claim a fixture 10 comprising a web portion 14 and first
and second cups 12 attached to the web portion wherein the cups each have
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a portion capable of being received in cavities of a molding apparatus and
the cups each define a volume 18 for receiving pickups of an arm tool end
(claim 1; Figs. 1-7).
Representative claim 1, the sole independent claim on appeal, reads as
follows:
1. A fixture comprising a web portion, and a first and a second cup
attached to the web portion, wherein: the first and second cups each have a
portion capable of being received in respective first and second cavities
formed in a molding apparatus; the first and second cups each define a
volume for receiving respective first and second pickups of an end of arm
tool; each of the volumes have upper and lower ends that are open; and a
center to center spacing of the first and second cups is substantially equal to
a center to center spacing of the first and second cavities so that the portions
of the first and second cups can be received by the respective first and
second cavities, and the first and second pickups can be received by the
volumes defined by the respective first and second cups only when the end
of arm tool is substantially aligned with the molding apparatus.

Appellants' arguments are directed to independent claim 1 only.
Therefore, dependent claims 2-10 will stand or fall with claim 1.
We will sustain the Examiner's § 102 rejection for the reasons
expressed in the Answer. The following comments are added for emphasis.
The Examiner finds that Stern's rigid carrier for cans satisfies the
structure defined by claim 1 and is capable of performing the functions
recited in this claim (Ans. 3-5).
Appellants disagree with the Examiner's finding that the carrier of
Stern includes the structural features of claim 1. Specifically, Appellants
argue that, "[w]hile the web portion [of Stern's carrier] has circular sections
cut out, there are essentially no volumes because these circular sections are
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cut from sheet materials and form skirts only adapted to fit bottles and cans"
(Br. 5).
This argument is unpersuasive for the reasons given by the Examiner
(Ans. 8, 1st full para.). As most clearly shown in Figures 4 and 5, Stern's
carrier includes skirt portions 12 which create structures indistinguishable
from the cups and volumes defined by claim 1. Appellants have provided
this record with no specific explanation in support of their contrary view.
Appellants also disagree with the Examiner's finding that the Stern
carrier is capable of performing the functions recited in claim 1. According
to Appellants, "[t]ry as one might, they would not be able to use a Stern can
or bottle caddy [i.e., carrier] in this manner [i.e., in the functional manner
recited in claim 1]" (Br. 7).
The Examiner has given detailed reasons throughout the Answer for
believing that the carrier of Stern inherently possesses the capability of
performing the functions recited in claim 1. Appellants do not reveal any
error in the Examiner's reasoning. Under these circumstances, the Examiner
has shifted to Appellants the burden of proving that Stern's carrier does not
possess this capability.
[W]here the Patent Office has reason to believe that a
functional limitation asserted to be critical for establishing
novelty in the claimed subject matter may, in fact, be an
inherent characteristic of the prior art, it possesses the
authority to require the applicant to prove that the subject
matter shown to be in the prior art does not process the
characteristic relied on.

In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) quoting In re
Swinehart, 439 F.2d 210, 212-13 (CCPA 1971). This burden of proof is not
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satisfied by Appellants' unembellished assertion that the Stern carrier could
not be used in the functional manner recited in claim 1.
For the reasons stated in the Answer and emphasized above, we
sustain the § 102 rejection of claims 1-10 as anticipated by Stern.
The decision of the Examiner is 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)(1)(iv).
AFFIRMED

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