Ex Parte Paillet et al

Patent Trial and Appeal Board

Mar 3, 2016

12432166 (P.T.A.B. Mar. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/432, 166 0412912009
30689 7590 03/03/2016
DEERE & COMPANY
ONE JOHN DEERE PLACE
MOLINE, IL 61265
FIRST NAMED INVENTOR
Frederic Paillet
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.
09940-US 6565
EXAMINER
GERRITY, STEPHEN FRANCIS
ART UNIT PAPER NUMBER
3721
MAILDATE DELIVERY MODE
03/03/2016 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 FREDERIC PAILLET and PASCAL GRES SET
Appeal2013-010970
Application 12/432, 166
Technology Center 3700
Before: JAMES P. CAL VE, WILLIAM A. CAPP and
BRANDON J. WARNER, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the rejection of
claims 1--4, 6, 8, 9, and 11under35 U.S.C. § 102(b) as anticipated by
Underhill (US 4,956,968, iss. Sept. 18, 1990), the rejection as unpatentable
under 35 U.S.C. § 103(a) of claim 5 over Underhill, claims 7 and 10 over
Underhill and Vande Ryse (US 2008/0092756 Al, pub. Apr. 24, 2008), and
of claims 12-14 over Underhill and Underhill '973 (US 5,581,973, iss. Dec.
10, 1996). We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal2013-010970
Application 12/432, 166
THE INVENTION
Appellants' invention relates to a web wrap device for use, among
other things, on an agricultural baler apparatus. Spec. 1. Claim 1, the only
independent claim in Appellants' application, which is reproduced below
with paragraph indentation and italics added, is illustrative of the subject
matter on appeal.
1. A web wrap device having
a web carrier movable between a rest position and a web
delivery position, the web carrier having
two elements between which the web is pinched when
moving towards the delivery position,
at least one of the elements being moveable with respect
to the other and
wherein the moveable element is arranged such, that when
the web is pulled by the web carrier, the web by itself acts on
the moveable element to move the moveable element against
the other element to increase a clamping force on the web.
OPil'.JION
Anticipation of Claims 1--4, 6, 8, 9, and 11
The Examiner finds that Underhill discloses all of the elements of
claim 1. Non-final Action 2-3. In particular, the Examiner finds that there
are no structural differences between Underhill and the claimed invention,
taking into consideration that the italicized limitation recited above is
afforded no patentable weight. Id.
Appellants traverse the Examiner's rejection by arguing that claim 1
requires a moveable element that is arranged such that when the web is
pulled by the web carrier, the web, by itself, acts on the moveable element to
move the moveable element against the other element to increase a clamping
- 2 -
Appeal2013-010970
Application 12/432, 166
force on the web. Appeal Br. 2. Appellants argue that Underhill discloses
no such arrangement. Id.
In response, the Examiner states that Appellants' claim is not
expressed in "means-plus-function" language and that a functional recitation
is not given patentable weight where it is in narrative form. Ans. 7. The
Examiner states that functional language must be tied to some means or
structure to perform the recited function. Id. This statement by the
Examiner constitutes reversible legal error.
In the case of K-2 Corp. v. Salomon S.A., 191F.3d1356, 1363 (Fed.
Cir. 1999), the Federal Circuit reiterated the long-standing legal principle
that "functional language is, of course, an additional limitation in the claim."
See also Wright Med. Tech. Inc. v. Osteonics Corp. 122 F.3d 1440, 1443--44
(Fed. Cir. 1997). It is equally well settled that a patent applicant is free to
recite features of an apparatus either structurally or functionally. See In re
Swinehart, 439 F.2d 210, 212 (CCPA 1971) ("[T]here is nothing
intrinsically wrong with [defining something by what it does rather than
what it is] in drafting patent claims.").
In Swinehart, the court explained that choosing to define an element
functionally, i.e., by what it does, carries with it a risk.
[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 possess the characteristic relied on.
Swinehart, 439 F.2d at 213. However, in the instant case, the Examiner has
articulated no sound reason to believe that the functional limitation asserted
by Appellants to be critical for establishing novelty may be an inherent
- 3 -
Appeal2013-010970
Application 12/432, 166
characteristic of Underhill. See Non-final Act. 2-3 (stating that functional
language was afforded no patentable weight). Neither are we able to find
any such reason, particularly where Appellants point out that the prior art
has different structure that functions differently than the claimed device.
Appellants' Specification explains:
Figs. 4 and 5 show in detail the front area of the stationary
element 56 and of the moveable element 58. As can be seen the
front area of the moveable element 58 has several slots 66
extending along the direction of web movement to form seven
fingers 68. Depending on the number and shape of slots 66 the
fingers 68 are wider or smaller, which can reach from two
pieces in total to a row of fine teeth. While according to the
drawing the fingers 68 are bent downwardly with respect to the
remainder of the moveable element 58, they could as well
extend in the same plane. The downward inclination assists in
clamping the web 32. As can be seen in Fig. 5, a corresponding
set of ribs 70 and apertures 72 is provided. Through which the
comb like front edge of the moveable element 58 may protrude.
Web 32 being located between these two elements 56, 58 will
surely be clamped and hold, when pulled from the roll of
web 32 toward the bale chamber 16.
Spec. 9, 11. 5-17. The foregoing description of structure provides support for
the functional limitation in claim 1 that "when the web is pulled by the web
carrier, the web by itself acts on the moveable element to move the
moveable element against the other element to increase a clamping force on
the web." Claims App. The Examiner finds no disclosure in Underhill that
corresponds to the functional limitation at issue in claim 1, neither does the
Examiner articulate a sound basis for believing that Underhill is capable of
performing the function. See Br. 3; Howmedica Osteonics Corp. v. Zimmer,
Inc. Nos. 2015-1498, 2015-1503, 2016 WL 760552, *6-7 (Fed. Cir. Feb. 26,
2016) (non-precedential).
- 4 -
Appeal2013-010970
Application 12/432, 166
\Ve agree with Appellants that the recited language in claim 1
patentably distinguishes over Underhill. We, therefore, conclude that the
Examiner erred in assigning no patentable weight to the functional language
in claim 1.
We do not sustain the anticipation rejection of claim 1, neither do we
sustain the rejection of claims 2--4, 6, 8, 9, and 11 that depend therefrom.
Unpatentability of Claim 5
Claim 5 depends from claim 1. Claims App. The Examiner's
rejection of claim 5 suffers from the same infirmity that we identified above
with respect to claim 1 and, for this reason, we do not sustain the
unpatentability rejection of claim 5.
Unpatentability of Claims 7 and 10
Claims 7 and 10 depend indirectly from claim 1. Claims App. The
Examiner's rejection of claims 7 and 10 suffers from the same infirmity that
we identified above with respect to claim 1, which infirmity is not cured by
the Examiner's reliance on Vande Ryse as a secondary reference. Non-final
Action 4. For this reason, we do not sustain the unpatentability rejection of
claims 7 and 10.
Unpatentability of Claims 12-14
Claims 12-14 depend from claim 1. Claims App. The Examiner's
rejection of claims 12-14 suffers from the same infirmity that we identified
above with respect to claim 1, which infirmity is not cured by the
Examiner's reliance on Underhill '973 as a secondary reference. Non-final
Action 4. For this reason, we do not sustain the unpatentability rejection of
claims 12-14.
- 5 -
Appeal2013-010970
Application 12/432, 166
DECISION
The decision of the Examiner to reject claims 1-14 is reversed.
REVERSED
- 6 -