Ex Parte Maguire

Patent Trial and Appeal Board

Jun 29, 2018

14272721 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/272,721 05/08/2014
34661 7590
CHARLES N. QUINN
FOX ROTHSCHILD LLP
997 Lenox Drive, Bldg. #3
Lawrenceville, NJ 08648
07/03/2018
FIRST NAMED INVENTOR
Stephen B. Maguire
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.
040526.14601 7375
EXAMINER
LAU, JASON
ART UNIT PAPER NUMBER
3743
NOTIFICATION DATE DELIVERY MODE
07 /03/2018 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):
ipdocket@foxrothschild.com
cquinn @foxrothschild.com
dmcgregor@foxrothschild.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte STEPHENB. MAGUIRE
Appeal2017-008249
Application 14/272, 721
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Stephen B. Maguire ("Appellant") appeals under 35 U.S.C. § 134(a)
from the Examiner's decision rejecting claims 1---6, 8, 10, and 11, which are
all the pending claims. See Appeal Br. 30; Reply Br. 26. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
Appeal2017-008249
Application 14/272, 721
CLAIMED SUBJECT MATTER
Appellant's disclosed invention "relates to drying granular or powdery
material." Spec. i-f 2. Claims 1, 5, and 10 are independent. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A method for molding batch portions of plastic resin into
finished products comprising the steps of:
a. mixing predetermined weights of plastic resin material
components into a homogeneous blend;
b. sequentially heating and vacuum drying batch portions
of said blend with a next succeeding batch portion being heated
at a first position while a current batch portion is vacuum dried
at a second position vertically lower relative to the first
position; and
c. molding at least one plastic product from said current
portion after vacuum drying.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Smith
Andersen
Maguire
us 3,395,634
us 5,810,961
us 6, 154,980
2
Aug. 6, 1968
Sept. 22, 1998
Dec. 5, 2000
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REJECTION
The following rejection is before us for review: 1 Claims 1---6, 8, 10,
and 11 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Maguire, Andersen, and Smith. Final Act. 3---6.
ANALYSIS
Claims 1 and 5
In rejecting independent claim 1, the Examiner found that Maguire
discloses a method including the steps of "sequentially heating and vacuum
drying batch portions of said blend with a next succeeding batch portion
being heated at a first position while a current batch portion is vacuum dried
(col. 3, lines 1-27; col. 12, lines 13-17)[] and ... molding at least one
plastic product from said current portion after vacuum drying (col. 12,
lines 14-24)." Final Act. 4. The Examiner also found that "Maguire
discloses sequential treatment steps where the hopper carrying batch
portions of resin are sequentially rotated to different treatment positions
(fill and heat-? vacuum drying-? material dispense)." Id.
The Examiner acknowledged that Maguire does not disclose steps of
"mixing predetermined weights of plastic resin material components into a
homogeneous blend ... [and] vacuum drying at a second position vertically
We note that the Final Action included rejections of claims 7, 9, and
12 under 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement, and under 35 U.S.C. § 103(a) as being
unpatentable over Maguire, Andersen, Smith, and Weibel (US 5,527,107,
issued June 18, 1996). Final Act. 2-3, 7. These claims have been canceled
by an After-Final Amendment (dated Jan. 4, 2017), which was entered by
the Examiner per an Advisory Action (dated Feb. 3, 2017).
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lower relative to the first position." Id. However, the Examiner found that
Andersen discloses "mixing (10, fig. IA) predetermined weights of plastic
material components into a homogeneous blend (see claim 1; see also The
Relevant Technology)." Id. The Examiner concluded that, given the
teachings of the prior art, it would have been obvious to modify the method
of Maguire to include a mixing step in order to "selectively mix various
components into a plastic resin blend where the blend has a desired
durability, strength, elasticity, color, etc." Id.
The Examiner also found that "Smith teach[ es] sequentially treating
batch portions of a blend with a next succeeding batch portion being treated
at a first position while a current batch portion is treated at a second position
vertically lower relative to the first position (col. 27, lines 49-61; see also
fig. 19)." Id. The Examiner concluded that, given the teachings of the prior
art, it would have been obvious "to modify Maguire to include the step of
vacuum drying at a second position vertically lower relative to the first
position" in order to "provide a simplified apparatus to practice the method
disclosed by Maguire and Andersen." Id.; see also id. (explaining that such
a modification would "lower costs associated with manufacturing and
assembling a simpler apparatus").
Appellant argues that Maguire "has no disclosure at all regarding
molding granular resin material." Appeal Br. 9. According to Appellant,
Maguire only discloses "equipment and methods for preparing resin for
molding by heating and drying the resin, not ... molding per se." Reply
Br. 5. This argument is not persuasive.
Maguire discloses "a method for continuously drying granular or
powdery material preparatory to mixing, molding, extruding or other
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processing of that material." Maguire, col. 2, 11. 43--46 (emphasis added).
Maguire also discloses that "dryer 10 embodying the invention can provide
about 100 pounds per hour of dried granular resin material for subsequent
processing by plastic injection molding or extrusion equipment." Id.,
col. 12, 11. 21-24 (boldface omitted; emphasis added). Although we
appreciate Appellant's observation that Maguire's disclosed method is
directed to preparing resin material by drying prior to molding (see Reply
Br. 5), the Examiner's finding that Maguire discloses molding resin material
after drying (see Final Act. 4; Ans. 7) is supported by a preponderance of the
evidence.
To the extent that Maguire's disclosed method may be directed to
drying the resin without an explicit step of molding the dried resin material,
the above-cited portions of Maguire explicitly contemplate performing a
molding step subsequent to the drying. Moreover, one of ordinary skill must
be presumed to know something about the art apart from what a reference
expressly discloses. See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962). In
addition, Appellant does not provide factual evidence or persuasive technical
reasoning to explain how performing a molding step subsequent to
Maguire's drying would be unpredictable or somehow beyond the level of
ordinary skill in the art. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
417 (2007); see also id. at 418 (an obviousness determination "can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ").
Appellant argues that "[ n ]owhere in Maguire can one find disclosure
of mold temperature, mold pressure, molding press plasticizing screw
specification, speed of plasticizing screw rotation, frequency of plasticizing
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screw reciprocation, molding cycle time, plasticizing screw barrel
temperature, suitable molding equipment, molded product cooling time,
mold ejection time, and the like." Reply Br. 4--5. This argument is
unpersuasive because it is not commensurate with the scope of claim 1,
which does not require any specific molding parameters. See In re Self, 671
F.2d 1344, 1348 (CCP A 1982) (noting that it is well established that
limitations not appearing in the claims cannot be relied upon for
patentability). Instead, claim 1 only broadly recites "molding at least one
plastic product from said current portion after vacuum drying." Appeal
Br. 31, Claims App.
Appellant argues that Andersen is non-analogous art because
"Andersen does not disclose anything as regarding molding or heating or
drying granular plastic resin material." Id. at 9. Appellant asserts that
Andersen relates to forming starch sheets reinforced with fibers and optional
inorganic mineral filler using heated plates that are pressed together. See id.
(citing Andersen, col. 7, 11. 19--24, 27-31 ). According to Appellant,
Andersen "has nothing to do with molding granular resin material, much less
blending, heating, drying, and molding granular resin material in the manner
set forth in the claims at issue." Id. This argument is not persuasive.
Regarding the issue of analogous art, we note that the proper two-
prong test to define the scope of analogous prior art is (1) "whether the art is
from the same field of endeavor, regardless of the problem addressed," and
(2) even "if the reference is not within the field of the inventor's endeavor,
whether the reference still is reasonably pertinent to the particular problem
with which the inventor is involved." In re Klein, 647 F.3d 1343, 1348
(Fed. Cir. 2011) (internal citation omitted). Here, we agree with the
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Examiner's determination that Andersen is analogous art at least because the
reference is reasonably pertinent to the problem facing Appellant. See
Ans. 2-3. The Examiner explains that
[ t ]he inventor was concerned about preparing a granular or
powdery mixture prior to drying and molding of the mixture (see
para. 191 of the [S]pecification). Andersen teaches the step of
mixing/blending a granular material (station 10, see fig. IA)
such as a resin (see claim 80) prior to heating (via heated rollers,
see abstract), drying (see col. 37, lines 40-49), and molding
(diehead 34 and rollers 40/50, see figs[.] IB and 2A).
Id. at 3; see also Spec. i-f 2 ("This invention relates to drying granular or
powdery material ... prior to processing thereof into intermediate or
finished products."). In this regard, Appellant's bare assertion that
"Anderson is not" pertinent to the problem facing Appellant (Reply Br. 13)
does not persuasively refute the Examiner's position that "[t]he inventor
would have logically sought out other granular mixers, such as the one
taught by Andersen, in considering the problem" (Ans. 3).
Appellant asserts that "there is no mention in either Andersen's
claim 1 nor in Andersen's discussion of 'the relevant technology' of mixing
any 'predetermined weights of plastic material components into a
homogeneous blend."' Appeal Br. 15. According to Appellant, "it is clear
[that] the Examiner misread Andersen and then erroneously created verbiage
not present in Andersen to support the rejection of claim 1." Id. To the
extent that Appellant appears to argue that a lack of explicit claim language
in Andersen demonstrates error in the Examiner's rejection, such an
argument is unpersuasive. It is well-settled that "the [prior art] reference
need not satisfy an ipsissimis verbis test" to disclose a claim limitation. In re
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Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). The Examiner also clarifies
that
Andersen teaches the step of mixing various components of
predetermined weights ("mixing together water, unmodified and
ungelatinized starch granules, a cellulosic ether, fibers, and
optionally an inorganic mineral filler in the correct proportions",
see abstract; see also col. 6, lines 24-36). Andersen teaches that
the mixing produces a homogeneous blend (" ... it may be
desirable to mix some of the components together ... in order to
form a more well dispersed, homogeneous mixture ... ",col. 31,
lines 62-64 ). Andersen further teaches that his method can be
practiced using existing plastic manufacturing equipment (col. 9,
lines 14-20).
Ans. 6. In this regard, Appellant's argument does not identify error in the
Examiner's finding that Andersen teaches "mixing different components
into a homogeneous blend" (Ans. 4), which is supported by a preponderance
of the evidence.
Appellant argues that "[t]he Examiner's use of Andersen's mixer 10
to reject the mixing steps of Applicant's claims fails the KSR test" because
"[t]here is no 'predictable use' in claim 1 of Andersen's mixer 10 'according
to the established function' of the mixer." Appeal Br. 10; see id. at 9--10
(asserting that "the Supreme Court[' s] KSR test for whether an element in
the prior art may support an obviousness rejection is whether there is
predictable use (in the claim at issue) of a prior art element according to its
established function"). According to Appellant, Andersen discloses a high-
shear mixer, which one of ordinary skill in the art would never use to mix
thermoplastic resin granules because it would grind the granules into dust
and clog system parts. See id. at 10.
We are not persuaded by Appellant's argument because it appears to
rely on bodily incorporation of specific structural details of Anderson (i.e.,
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mixer 10) into Maguire, which is neither the standard for an obviousness
determination, nor is it an accurate characterization of the rejection
presented. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). Here, as the
Examiner explains, the rejection does not propose incorporating the
structure of Andersen's mixer into the method of Maguire, but, rather,
"Andersen is used to teach the method or step of mixing different
components into a homogeneous blend." Ans. 4. In this regard, Appellant
does not persuasively explain how or why adding a step of mixing
components into a homogenous blend to the method of Maguire in an
operable manner would be beyond the level of ordinary skill in the art. See
KSR, 550 U.S. at 417.
Appellant argues that Smith is non-analogous art because "coffee
bean roasting equipment, utilizing a fluidized bed of coffee beans for the
roaster in which the beans are continuously rotated during the roasting
process, is [not] in the same field of endeavor as the instant invention,
namely molding granular resin material into finished and semi-finished
plastic parts" (Appeal Br. 11 ), and "the problem faced by Applicant is not
one addressed by Smith" (id. at 13). We are not persuaded by Appellant's
argument. Regardless of whether Smith is from the same field of endeavor
as Appellant's claimed plastic resin batch molding method, we agree with
the Examiner that the teachings of Smith relied on in the rejection are
"reasonably pertinent to the problem facing the inventor." Ans. 5. As the
Examiner explains,
[ t ]he inventor was concerned about continuously batch drying
the granular or powdery material (para. 16 of the Spec[.]). The
inventor solves this problem by providing vertically arranged
processing chambers where the batch of granular or powdery
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material is first heated in one processing chamber, drops down to
a lower processing chamber after the heating process, and then
vacuum dried. The inventor would have logically sought out
other continuous or sequential batch processing methods, such as
the one taught by Smith, to find a solution to this problem.
Id.; see id. (explaining that "Smith teaches a fast, economical, and efficient
way of drying batches of material from one station to the next"); see also
Spec. i-f 16 (describing that the "invention provides a method for
continuously batch drying granular or powdery material preparatory to
mixing, molding, extruding or other processing of that material"). In this
regard, Appellant's bare assertion that "Smith does not address or disclose
any solution to the problems faced by Applicant" (Appeal Br. 13) does not
persuasively refute the Examiner's reasoned position.
Appellant asserts that "Smith's charging hopper, reactor, cooler, and
discharge hopper all have somewhat rounded bottoms, flattening out
somewhat at a central discharge orifice," which "differ[s] significantly from
the flat bottom, trap door approach disclosed by Applicant, which is
necessary for the practice of Applicant's methods." Id. at 11 (emphasis
omitted). According to Appellant, "use of the Smith structure would result
in inoperability of Applicant's claimed methods." Id. at 12. We are not
persuaded by these arguments.
First, to the extent that Appellant is arguing that there are structural
distinctions between Smith and Appellant's invention, such an argument is
unpersuasive because it is not commensurate with the scope of claim 1,
which does not recite any specific structural elements used to perform the
claimed method steps. Rather, claim 1 recites, in relevant part, "sequentially
heating and vacuum drying batch portions of said blend with a next
succeeding batch portion being heated at a first position while a current
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batch portion is vacuum dried at a second position vertically lower relative
to the first position." Id. at 31, Claims App. Second, Appellant's argument
appears to rely on bodily incorporation of specific structural details of Smith
into Maguire, which is not the standard for an obviousness determination.
See Keller, 642 F.2d at 425. As discussed supra, the Examiner's rejection is
not based on a bodily incorporation of specific structural features of Smith
(i.e., charging hopper, reactor, cooler, and discharge hopper) into Maguire.
The Examiner found that Maguire teaches steps of sequentially
treating batch portions of resin in different positions, but does not disclose
that a second position is vertically lower than a first position. See Final
Act. 4. The Examiner relied on Smith as evidence that it was known in the
art to batch process material in a second position that is vertically lower
relative to a first position. See id. (citing Smith, col. 27, 11. 49--61; Fig. 19).
Given this disclosure, the Examiner concluded that it would have been
obvious to modify Maguire's method so that the vacuum drying step is
performed at a second position that is vertically lower than the first position.
See id. (reasoning that such a modification would allow the method to be
practiced with an apparatus that is simpler and lower cost). In this regard,
Appellant's arguments do not specifically address or identify error in the
Examiner's reasoning.
After careful consideration of all the evidence, Appellant's arguments
do not apprise us of error in the Examiner's findings or reasoning in support
of the conclusion of obviousness. We sustain the rejection of claim 1 under
35 U.S.C. § 103(a) as being unpatentable over Maguire, Andersen, and
Smith. We also sustain the rejection of independent claim 5, for which
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Appellant relies on the same unpersuasive arguments discussed supra with
respect to independent claim 1. See Appeal Br. 22-23; Reply Br. 18-19.
Claims 2-4
In rejecting dependent claim 2, the Examiner acknowledged that
Maguire does not disclose "performing step 'b' to supply dried material at
the rate of material consumption by step 'c. "' Final Act. 4. However, the
Examiner found that "Anders[ e Jn teaches the technique of a continuous
process where the material is vacuumed (step b) (evacuation chamber 28,
fig. 2A) at the rate of material consumption (molding via die head 34 and
rollers 40+50)." Id. at 4--5. The Examiner concluded that it would have
been obvious to modify Maguire's method to include supplying dried
material at the rate of material consumption for continuous and increased
production. See id. at 5.
Appellant argues that the Examiner erred because, "when the relevant
portion of Andersen is read in context, Andersen seems to disclose just the
opposite, namely an intermittent process, not a continuous process as
asserted by the [E]xaminer." Appeal Br. 18 (citing Andersen, col. 33,
11. 1-8). We are not persuaded by Appellant's assertion that Anderson
teaches only an intermittent process. Rather, we agree with the Examiner
that, "even if the material spends some time in the evacuation chamber, it
does not mean that the process is intermittent." Ans. 7. In other words,
"[ t ]he material could spend time in the chamber as it continuously moves
down to the extruder at the bottom." Id. In this regard, Appellant's
argument does not specifically address the Examiner's position or explain
why it would be in error.
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Moreover, Appellant's argument is unpersuasive because it does not
address the Examiner's reasoning for the conclusion of obviousness
presented in the rejection. As discussed supra, the Examiner articulated
adequate reasoning based on rational underpinnings for modifying the
method of Maguire so that dried material is supplied at the rate of material
consumption. See Final Act. 5. In this regard, Appellant does not provide
factual evidence or persuasive technical reasoning to identify fault in the
Examiner's reasoning, and, thus, does not apprise us of error in the rejection
presented.
Accordingly, we sustain the rejection of claim 2 under 35 U.S.C.
§ 103(a) as being unpatentable over Maguire, Andersen, and Smith.
In contesting the rejection of dependent claims 3 and 4, Appellant
relies on the same arguments set forth with respect to claims 1 and 2. See
Appeal Br. 19--21. For the same reasons that Appellant's arguments do not
apprise us of error in the rejection of claims 1 and 2, these arguments
likewise do not apprise us of error in the rejection of claims 3 and 4, which
we likewise sustain.
Claims 6 and 8
In contesting the rejection of claim 6, which depends from claim 1,
Appellant asserts that "[i]n Maguire's dryer, the first and second positions
are horizontally displaced one from another, not 'vertically aligned."' Id.
at 23. This argument is unpersuasive because it is not responsive to the
rejection presented. Here, the Examiner did not rely on Maguire alone for
disclosing that "the first and second positions are vertically aligned," as
recited in claim 6. Rather, the Examiner relied on Maguire as modified
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according to the teachings of Anderson and Smith in the rejection of claim 1.
See Final Act. 6 ("In regard to claim 6, modified Maguire discloses wherein
the first and second positions are vertically aligned. See rejection of
claim l." (emphasis added)).
The Examiner clarifies that Smith's Figure 19 "show[s] a first
position (310) and a second position (314 or 316) positioned vertically lower
and vertically aligned relative to the first position." Ans. 10. In other
words, the Examiner relied on Smith, not Maguire, for teaching vertically-
aligned first and second positions. Appellant's allegations of differences or
shortcomings of Maguire individually are not responsive to the rejection as
articulated by the Examiner and thus do not apprise us of error. See In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing Keller, 642 F.2d
at 425) (Nonobviousness "cannot be established by attacking references
individually" when the rejection is predicated upon a combination of prior
art disclosures.).
Accordingly, we sustain the rejection of claim 6 under 35 U.S.C.
§ 103(a) as being unpatentable over Maguire, Andersen, and Smith. We also
sustain the rejection of claim 8, for which Appellant relies on the same
unpersuasive argument discussed supra with respect to claim 6. See Appeal
Br. 24.
Claims 10 and 11
In contesting the rejection of independent claim 10, Appellant relies
on the same arguments set forth with respect to independent claims 1 and 5.
See Appeal Br. 24--25 (asserting that Maguire fails to disclose molding,
Smith is non-analogous art, Anderson fails to disclose mixing, and otherwise
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relying on the arguments presented for claims 1 and 5); Reply Br. 21-22.
For the same reasons that Appellant's arguments do not apprise us of error in
the rejection of claims 1 and 5, these arguments likewise do not apprise us of
error in the rejection of claim 10.
Appellant further argues that the Examiner erred in rejecting claim 10
because "neither of the Maguire or Smith references disclose[ s] vacuum
drying at a second position where the material is 'cylindrically restrained'
and vertically downwardly displaced from the first position." Appeal Br. 25.
According to Appellant, Maguire's "first and second positions are
horizontally separated one from another," and "[t]here is no vertical
downward flow of granular plastic resin from the heating position to the
drying position." Id. These arguments against Maguire and Smith are
unpersuasive because they are not responsive to the rejection presented.
Here, the Examiner did not rely on Maguire or Smith alone for
disclosing that the material is cylindrically restrained at a second position
displaced vertically downward from the first position. Rather, the Examiner
found that
modified Maguire discloses ... sequentially heating and vacuum
drying batch portions of said blend with a next succeeding batch
portion being cylindrically restrained and heated at a first
position while a current batch portion is cylindrically restrained
(both Maguire and Smith show cylindrical treatment hoppers)
and vacuum dried at a second positon vertically downwardly
displaced from the first position (see rejection of claim 1).
Final Act. 6 (emphasis added). In other words, the Examiner's rejection of
claim 10 is based on the combined teachings of Maguire, Smith, and
Andersen. See id. at 3--4; see also Ans. 10-11 (explaining that "the
combination of Maguire and Smith disclose[ s] vacuum drying at a second
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position where the material is cylindrically restrained, and vertically
downwardly displaced from the first position"). Appellant's allegations of
differences or shortcomings of each of Maguire and Smith individually are
not responsive to the rejection as articulated by the Examiner and thus do not
apprise us of error. See Merck, 800 F.2d at 1097 (citing Keller, 642 F.2d
at 425).
Appellant also argues that, "Smith's chamber 314 and the use thereof
is completely contradictory to the limitations recited in rejected ...
claim 1 O" because in "cooling chamber 314 the coffee beans are sprayed
with water to cool the beans." Reply Br. 22-23. Appellant asserts that
"Smith's water cooling is inconsistent with and teaches away from the
claimed vacuum drying." Id. at 23. Appellant's argument is unpersuasive
because it appears to rely on bodily incorporation of specific structural
details of Smith (i.e., water cooling chamber 314) into Maguire, which is
neither the standard for an obviousness determination, nor is it an accurate
characterization of the rejection presented. See Keller, 642 F.2d at 425.
Here, the Examiner's rejection does not propose incorporating
Smith's water cooling chamber 314 into the method of Maguire, but, rather,
the Examiner relies on Smith for "teach[ing] the technique of vertically
displacing processing chambers relative to each other (fig. 19)." Ans. 10. In
this regard, Appellant's argument does not specifically address or identify
error in the Examiner's reasoning articulated in support of the conclusion
that it would have been obvious to modify Maguire's method to include
vacuum drying at a second position vertically lower relative to the first
position. See Final Act. 4 (reasoning that such a modification would
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"provide a simplified apparatus to practice the method," which would "lower
costs associated with manufacturing and assembling a simpler apparatus").
Moreover, we are not persuaded by Appellant's contention that Smith
teaches away from vacuum drying. See Reply Br. 23. Appellant does not
point out why a person of ordinary skill, upon reading the reference, would
be led in a direction divergent from the path taken by Appellant. See In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). In addition, Appellant does not
identify, nor do we discern, any passage in Smith that criticizes, discredits,
or otherwise discourages the combination of teachings proposed by the
Examiner in the rejection. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004) (prior art does not teach away from claimed subject matter merely by
disclosing a different solution unless the prior art also criticizes, discredits or
otherwise discourages the solution claimed).
Accordingly, we sustain the rejection of claim 10 under 35 U.S.C.
§ 103(a) as being unpatentable over Maguire, Andersen, and Smith.
In contesting the rejection of claim 11, which depends from claim 10,
Appellant relies on the same argument presented for patentability of
claims 6, 8, and 10, discussed supra. See Appeal Br. 26 (asserting that
Maguire's first and second positions are not axially aligned). For the same
reasons that Appellant's arguments do not apprise us of error in the rejection
of claims 6, 8, and 10, these arguments likewise do not apprise us of error in
the rejection of claim 11.
Further, Appellant asserts that "[a]xial alignment of the first and
second positions is not possible in the Maguire reference." Id. (emphasis
omitted). This assertion is unpersuasive because Appellant does not provide
factual evidence or persuasive technical reasoning to explain why axial
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alignment would be impossible in Maguire. We note that, "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." KSR, 550 U.S. at 417. Here, we see no indication that modifying
the method of Maguire, so that batch portions are axially aligned at first and
second positions, would yield anything other than a predictable result, or that
doing so would be somehow beyond the level of ordinary skill in the art.
Accordingly, we sustain the rejection of claim 11 under 35 U.S.C.
§ 103(a) as being unpatentable over Maguire, Andersen, and Smith.
DECISION
We AFFIRM the Examiner's decision rejecting claims 1---6, 8, 10, and
11under35 U.S.C. § 103(a) as being unpatentable over Maguire, Andersen,
and Smith.
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
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