12134641 (P.T.A.B. Dec. 29, 2015)

Ex Parte Noe et al

Patent Trial and Appeal BoardDec 29, 2015

12134641 (P.T.A.B. Dec. 29, 2015)

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. 12/134,641 06/06/2008 Joachim Noe KS-5884US 2048 24314 7590 12/30/2015 JANSSON MUNGER MCKINLEY & SHAPE LTD. 601 Lake Avenue 3rd Floor RACINE, WI 53403 EXAMINER TRUONG, THANH K ART UNIT PAPER NUMBER 3721 MAIL DATE DELIVERY MODE 12/30/2015 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte JOACHIM NOE, MICHAEL KRONAWITTER, RALF HEIM, RITA HAGEL, and ROLF ARMBRUSTER ____________________ Appeal 2013-007254 Application 12/134,641 Technology Center 3700 ____________________ Before JOHN C. KERINS, THOMAS F. SMEGAL, and LISA M. GUIJT, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Joachim Noe et al. (“Appellants”)1 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1, 3–5, and 8–14. App. Br. 2. Claims 2, 6, and 7 have been cancelled. Id. at 2, 20.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 According to Appellants, the real party in interest is Uhlmann Pac- Systeme GmbH & Co. KG. Appeal Br. 2. 2 See also Amendment filed November 19, 2009. Appeal 2013-007254 Application 12/134,641 2 CLAIMED SUBJECT MATTER Claims 1 and 14 are independent. Claim 1, reproduced below with disputed limitations italicized for emphasis, is illustrative of the subject matter on appeal. 1. A system for filling bottle-like or can-like containers with pharmaceutical products, the system comprising: - a device for dosing the pharmaceutical products and for introducing the pharmaceutical products into the containers; - at least three of the following devices: - a device for feeding the containers into the system; - a device for introducing a desiccant into each container; - a device for placing a cap on each container; - a device for sealing the caps onto the containers; and - a device for rejecting certain containers and for discharging the other containers from the system; wherein the system comprises several modular units, each having a separate housing, wherein the housings of the modular units are connected to each other in series in such a way that the system is designed as an integral system; wherein most of said modular units comprise a transport mechanism having at least one screw conveyor for positively guiding the movement of each container by itself in a continuous manner, and the transport mechanisms of the modular units are connected to each other in series, which ensures a positive guidance of each individual container by itself through the entire system, wherein at least the device for dosing the pharmaceutical products and for introducing the pharmaceutical products into the containers comprises a transport mechanism for positively guiding the movement of each container by itself in a clocked manner in certain sections; the connection of the transport mechanisms of adjacent modular units being achieved by a first screw conveyor arranged in an outlet portion of a first housing and by a second screw conveyor arranged in an inlet portion of a second Appeal 2013-007254 Application 12/134,641 3 housing, wherein a portion of the second screw conveyor is arranged parallel to and a predetermined distance way from a portion of the first screw conveyor, so that the parallel portions of the first and second screw conveyors form a means for transferring and handling off the containers between the adjacent modular units. REJECTION Claims 1, 3–5, and 8–14 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Lewis (US 5,713,180; iss. Feb. 3, 1998) and De Cardenas (US 6,523,328 B1 iss. Feb. 25, 2003). ANALYSIS Regarding independent claims 1 and 14, the Examiner finds, inter alia, that Lewis discloses a system for filling bottles with pharmaceutical products, wherein conveyor 16 acts as a transport device to move bottles to various stations. Final Act. 2, 4. The Examiner explains that “[the] Examiner is reading the slats of [the] conveyor as being made of pieces (or modules . . . ) working together.” Ans. 5. The Examiner relies on De Cardenas for disclosing screw conveyors to move items, wherein the screw conveyors extend past the edges of each assembly. Final Act. 2, 4. The Examiner reasons that it would have been obvious “to modify the invention of LEWIS by using screw conveyors in one or more stations, as taught by De CARDENAS [], in order to provide for more positive control over the articles being conveyed.” Id. at 3. The Examiner further “maintains that each station of the combination of LEWIS and De CARDENAS [] is being read as a modular unit,” noting that “the term integral is sufficiently broad to embrace constructions united by . . . fastening and welding.” Id.; see also Ans. 4. Appeal 2013-007254 Application 12/134,641 4 Appellants argue that neither Lewis nor De Cardenas discloses “‘modular units’ with ‘separate housings’ connected as an integral system,” as claimed. Br. 9. Appellants submit that “Lewis discloses an endless conveyor which is constructed of slats which are capable of relative co- planar movement allowing alteration of the angular relationship between the slats, whereby the conveyor can follow a curved path,” concluding that “an endless conveyor with slats cannot be considered the required modular units with separate housings.” Id. Appellants’ argument is persuasive. We agree with Appellants that the individual slats 22 of conveyor 16 do not meet the limitation of “modular units each having a separate housing,” as recited in independent claims 1 and 14, nor does the Examiner make any findings with respect to any housings of the slats. To the extent the Examiner finds that Lewis’ stations 11, 13, and 15 correspond to the claimed modules, the Examiner also fails to identify any housings that separate one station 11, 13, 15 (or module) from another station 11, 13, 15 (or module), in order to connect the modular units together, as claimed. Lewis’ stations 11, 13, and 15 are simply described as part of machine 10 having “a known construction.” Lewis, col. 3, ll. 50–55. Thus, the Examiner has not established by a preponderance of the evidence that Lewis teaches or suggests a system that “comprises several modular units, each having a separate housing,” as recited in independent claims 1 and 14. The Examiner does not rely on De Cardenas for teaching modules. See Final Act. 2 (“De CARDENAS . . . discloses a system for filling containers in which items are moved by means of a screw conveyor . . . ; [t]he screw conveyors extend past the edges of each assembly.”) (citations omitted). The Examiner also does not explain how the slats of Lewis’ Appeal 2013-007254 Application 12/134,641 5 conveyor would be modified to be modules, in view of De Cardenas, to meet the limitations of independent claims 1 and 14. Accordingly, we do not sustain the Examiner’s rejection of independent claims 1 and 14, and claims 3–5 and 8–13 depending therefrom. DECISION The Examiner’s decision to reject claims 1, 3–5, and 8–14 under 35 U.S.C. § 103(a) is REVERSED. REVERSED em