Ex Parte LONGO et al

Patent Trial and Appeal Board

Dec 17, 2018

14881267 (P.T.A.B. Dec. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/881,267 10/13/2015
86378 7590 12/19/2018
Pearne & Gordon LLP
1801 East 9th Street
Suite 1200
Cleveland, OH 44114-3108
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Salvatore LONGO
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.
BUGB-55238 7058
EXAMINER
PAYER, HWEI-SIUC
ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
12/19/2018 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):
patdocket@pearne.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SALVATORE LONGO and ENRICO CIGARINI 1
Appeal2018-004256
Application 14/881,267
Technology Center 3700
Before JAMES P. CAL VE, GEORGE R. HOSKINS, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Office Action
rejecting claims 1--4 and 6-10. Claim 5 has been cancelled. Supp. Appeal
Br. 2 (Claims Appendix) (filed Nov. 9, 2017). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 TECOMEC S.R.L. is identified as the real party in interest (Appeal Br. 1)
and also is the applicant pursuant to 37 C.F.R. § 1.46.
Appeal2018-004256
Application 14/881,267
CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim, is reproduced below.
1. A head for edge trimmer comprising a casing ( 1 ),
destined for containing at least a cutting wire reel and to be set in
rotation about an axis of rotation (X), said casing exhibiting an
outer surface (11 ), characterized in that it comprises a plurality
of blind recesses (12) distributed in a pre-established manner on
the outer surface ( 11) of the casing ( 1 ), wherein at least some of
the recesses (12) exhibit a rounded bottom.
Supp. Appeal Br. 2 (Claims Appendix).
REJECTIONS
Claims 1--4 and 6-9 are rejected under 35 U.S.C. § 103 as
unpatentable over Proulx '295 (US 2011/0214295 Al, pub. Sept. 8, 2011)
and Morabit (US 5,996,233, iss. Dec. 7, 1999).
Claims 1 and 7-10 are rejected under 35 U.S.C. § 103 as unpatentable
over Proulx '301 (US 2011/0214301 Al, pub. Sept. 8, 2011) and Morabit.
ANALYSIS
Claims 1-4 and 6-9
Rejected Over Proulx '295 and Morabit
The Examiner finds that Proulx '295 discloses a head, as recited in
claim 1, including a plurality of blind recesses (dimples 202) distributed in a
predetermined manner, but Proulx '295 does not disclose that the recesses
"exhibit a rounded bottom" as recited in claim 1. Non-Final Act. 2. The
Examiner finds that Morabit discloses aerodynamic elements 111 formed on
outer surface 112 of rotatable member 110 in the form of recesses 111, at
least some of which exhibit a rounded bottom as claimed to reduce the drag
force on rotatable member 110 during rotation. Id. at 3.
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Application 14/881,267
The Examiner determines that it would have been obvious to modify
Proulx '295 by making recesses 202 with a rounded bottom to reduce drag
as taught by Morabit. Id. at 3. The Examiner finds that Morabit evidences it
is well-known in the art to use textured surfaces to reduce drag on rotatable
members, and the textured surfaces comprise a plurality of blind recesses in
various shapes including a rounded bottom as claimed. Ans. 9.
Appellants argue there would have been no reason to modify dimples
202 of Proulx '295 because they already provide substantial and significant
reduction in drag, vibration, and noise on the trimmer head. Appeal Br. 3.
Appellants argue that Morabit discloses textured surfaces reducing drag in
comparison to a smooth outer surface rather than in comparison to textured
surfaces such as blind recesses 202 of Proulx '295. Reply Br. 2. Appellants
also argue that Proulx '295 states that blind recesses 202 reduce drag on a
trimmer, and Morabit teaches blind recesses with rounded bottoms as a way
to decrease drag in comparison to smooth surfaces, but neither reference
teaches or suggests that modifying Proulx '295's blind recesses 202 to have
rounded bottoms would reduce drag as proposed by the Examiner. Id.
Appellants also argue the Examiner has not established a reasonable
expectation of success in modifying dimples 202 to have rounded bottoms
while reducing drag, vibration, and noise. Appeal Br. 3--4. Appellants argue
that these benefits result from the air volume directed by dimples 202 on the
lower housing compared to the air moved by troughs on the upper housing
of the trimmer head. Id. According to Appellants, because the Examiner
did not explain how modifying dimples 202 would affect the difference in
the relative air flow directed by the troughs and the dimples, the Examiner
has not established a reasonable expectation of success. Id. at 4.
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Appeal2018-004256
Application 14/881,267
The Examiner's reason to modify Proulx '295 to form dimples 202
with rounded bottoms, as claimed, is supported by a rational underpinning
based on Morabit's teaching that rounded bottoms dimples 111 reduce the
coefficient of drag of the object. Morabit, 13:35---62, 14: 15-19; Ans. 9.
Like Morabit, Proulx '295 is directed to improving the aerodynamics
of a trimmer head to reduce drag while also reducing the vibration of the line
and noise. Proulx '295 ,r,r 3, 4. Proulx '295 teaches several ways of doing
this including an embodiment in Figures 23A and 23B, which the Examiner
cites in the rejection. Non-Final Act. 2. In this design, trimmer head 10 has
aerodynamic elements in upper and lower housing portions 214a and 214b.
Proulx '295 ,r 82. Arcuate troughs 200 are formed in a turbine-like pattern
on outer surface 24 of upper housing 214a to direct air flow away from the
outer edge of trimmer head and away from outwardly extending cutting line
17 toward the center axis to cool the rotary trimmer gear box. Id. ,r,r 74, 82,
83. This redirection of air reduces drag on the rotating head and the line. Id.
Troughs 200 are generally V-shaped and may include recesses that are
curvilinear or generally U-shaped in cross-section as illustrated in the cross
section of Figure 17C. Id. ,r,r 35, 74, 77. Proulx '295 also teaches a range of
curvatures, widths, and depths for the troughs. Id. ,r 77.
The surface of lower housing 214b can be provided with a plurality of
dimples 202, preferably of a circular configuration as illustrated in Fig. 23B.
Id. ,r,r 75, 83. Proulx '295 discloses that each dimple has a diameter in the
range of0.090--0.125 inches and depth of0.009---0.015 inches. Id. ,r,r 77, 85.
Proulx '295 discloses that various modifications can be made to the
shape, size, and location of these aerodynamic elements consistent with the
invention to include scoring lines (versus deeper cavities). Id. ,r,r 78, 86.
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Appeal2018-004256
Application 14/881,267
Proulx '295 also discloses that raised ridges 200 and bumps 202 in a
wide variety of shapes and sizes can be used as aerodynamic features in lieu
of immersed cavities such as troughs and dimples to provide the desired air
movement and reduction of drag on the head and line. Id. ,r 79, Fig. 21.
The Examiner reasonably concludes that a skilled artisan would have
been motivated by Morabit's teaching to use circular dimples 111 to reduce
drag to form Proulx '295's dimples 202 with such round bottoms to reduce
drag along the surface of bottom housing 214b of the edge trimmer. Absent
a teaching in Proulx '295 to use a particular bottom cross sectional shape for
dimples 202, the Examiner correctly finds that Morabit's rounded bottom
dimples 111 also would reduce drag on Proulx '295's edge trimmer head in
a similar manner based on Morabit's teachings that this shape reduces drag.
Proulx '295 improves the aerodynamics of a trimmer head by forming
curved bottom troughs 200 in upper housing 214a and circular dimples 202
in a smooth surface of lower housing 214b. Id. ,r,r 74--77, 82-84, Figs. 23A,
23B. Proulx '295 teaches that a wide variety of sizes and shapes can be used
for these features. Id. ,r,r 78, 79, 86. To the extent circular dimples 202 do
not have rounded bottoms inherently or like U-shaped troughs 200, the
Examiner relies on Morabit's teachings to use circular dimples 111 with
rounded bottoms, as claimed, to reduce drag on Proulx '295's trimmer head.
Appellants agree that Morabit's dimples 111 reduce drag. Reply Br.
2. Morabit's teaching thus provides a rational underpinning for the proposed
modification of Proulx '295. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S.
398, 417 (2007) (explaining that a simple substitution of one known element
for another or application of a known technique to a piece of prior art ready
for improvement is obvious unless it is beyond the level of skill in the art).
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Appeal2018-004256
Application 14/881,267
Appellants' argument that the proposed modification of Proulx '295
would not have been obvious because it has not been shown to reduce drag
on the trimmer head compared to dimples 202 is not persuasive for several
reasons. First, Proulx '295 discloses dimples 202 as circular with a range of
diameters and depths but without details of the bottom's shape. Morabit
teaches rounded bottom dimples 111 as a suitable way to reduce drag.
A skilled artisan is a person of ordinary creativity (KSR, 550 U.S. at
421) who would have applied Morabit's teaching within the parameters of
Proulx '295' teachings of dimple diameters and depths to provide rounded
bottom dimples 202 that reduce drag. Morabit's teaching are consistent with
Proulx '295's teaching to move air with troughs formed in the upper housing
214a surface. Proulx '295 also provides motivation for the modification by
teaching that the sizes and shapes of the troughs and dimples can be altered.
Second, Morabit provides evidence that "dimples" would have been
understood in the art of aerodynamics and drag reduction to have rounded
bottom recesses as claimed. See Morabit, 13:54---62, Figs. 21, 22. Morabit
illustrates "dimples" 111 with rounded bottoms in Figures 21 and 22.
Third, Proulx '295 teaches that the troughs and dimples can be raised
instead of recessed. Proulx '295 illustrates raised troughs 200 with rounded
tops and raised dimples 202 with rounded, semi-spherical tops in Figure 21.
Proulx '295 teaches that it is less expensive to make these shapes recessed
rather than raised because less material is used. See Proulx '295 ,r 79.
We also are unpersuaded of error by Appellant's assertion that the
Examiner has not established a reasonable expectation of success in
modifying dimples 202 to have rounded bottoms while still reducing drag,
vibration, and noise. Appeal Br. 3--4.
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Application 14/881,267
"The reasonable expectation of success requirement refers to the
likelihood of success in combining references to meet the limitations of the
claimed invention." Intelligent Bio-Systems, Inc. v. Illumina Cambridge
Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016). Appellants do not dispute that a
skilled artisan would have been able to modify Proulx '295 's dimples 202 to
have a rounded bottom as taught by Morabit. That is all claim 1 requires.
Instead, Appellants argue that the Examiner's proposed modification
of Proulx '295 's dimples 202 lacks a reasonable expectation of success in
reducing drag, noise, and vibration. Appeal Br. 3--4; Reply Br. 2. However,
this argument is not commensurate with claim 1. Modifying Proulx '295 's
dimples 202 with rounded bottoms has a reasonable expectation of success
given the teachings of Morabit of making dimples in such shapes. Claim 1
does not require the blind recesses to reduce drag, noise, or vibration by any
amount. It would be error to impose such a requirement under a reasonable
expectation of success analysis. Intelligent Bio-Sys., 821 F.3d at 1367.
In view of the foregoing, Appellant has not persuaded us that the
Examiner erred in combining the teachings of Proulx '295 and Morabit. The
proposed modification of Proulx '295's dimples 202 with Morabit's rounded
bottom dimples is particularly appropriate given Proulx '295 's teaching that
different shapes and sizes of troughs and dimples can be used to achieve the
desired reduction in drag, noise, and vibration. Choosing Morabit' s rounded
bottom dimples 111 is not based on hindsight when Morabit uses this shape
to reduce drag, which Proulx '295 also desires to do by forming dimples 202
in lower housing swface in Figure 23B. See In re Cree, Inc., 818 F.3d 694,
702 n.3 (Fed. Cir. 2016). Thus, we sustain the rejection of claim 1 and
claims 2--4 and 6-9, which are not argued separately. See Appeal Br. 4.
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Appeal2018-004256
Application 14/881,267
Claims 1 and 7-10
Rejected Over Proulx '301 and Morabit
Proulx '301 has a similar disclosure to Proulx '295. The Examiner
relies on Proulx '301 to teach an edge trimmer head as recited in claim 1
with blind recesses 300, 301 and Morabit to teach aerodynamic recesses 111
that exhibit a rounded bottom as claimed to reduce draft force as Morabit
teaches. Non-Final Act. 5-6; Ans. 10.
Appellants argue that a skilled artisan would not have been motivated
to provide Proulx '301 's score lines 300, 301 with rounded bottoms because
Proulx '301 teaches that score lines 300, 301 reduce drag substantially and
significantly. Appeal Br. 5---6. Appellants also argue that Proulx '301 uses
shallower score lines 300, 301 in lieu of deeper cavities or depressions to
reduce drag on the head. Id. at 6.
This argument is not persuasive for the reasons discussed above for
the first rejection, namely, that Proulx '301 uses score lines 300, 301 to
reduce drag, and Morabit teaches that circular bottomed dimple recesses 111
achieve that objective. Proulx '301 ,r 95; Morabit, 13:54--62, Figs. 21, 22.
Like Proulx '295, Proulx '301 teaches the use of troughs 100, 200 that
have rounded bottoms (Fig. 17C) and circular dimples 102, 202 to reduce
drag and also teaches that the dimensions shapes, sizes, and combinations of
such troughs and dimples can be varied. Proulx '301 ,r,r 79-86. Also raised
bumps and ridges with rounded tops can be used. Id. ,r 87, Fig. 21. Proulx
'301 discloses that score line recesses 300, 301 reduce the air flow below
that of deeper troughs 100 and dimples 102. Id. ,r 95. Thus, the Examiner's
proposed modification to make score lines with a rounded bottom would
increase the air flow and reduce drag compared to the shallower score lines.
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Application 14/881,267
Therefore, the Examiner's proposed modification of Proulx '301 to
have rounded bottom score lines is supported by a rational underpinning
based on the express teachings of Morabit that rounded bottoms reduce drag
as discussed in the previous rejection.
Thus, we sustain the rejection of claim 1 and dependent claims 7-10,
which are not argued separately. See Appeal Br. 6.
DECISION
We affirm the rejections of claims 1--4 and 6-10.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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