Ex Parte Perecman

Patent Trials and Appeals Board

Apr 30, 2019

12527699 - (D) (P.T.A.B. Apr. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/527,699 11/24/2009
32692 7590 05/02/2019
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
FIRST NAMED INVENTOR
Jack L. Perecman
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.
62957US005 7523
EXAMINER
WILSON, MICHAEL H
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
05/02/2019 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JACK L. PERECMAN
Appeal2017-007671
Application 12/527 ,699
Technology Center 1700
Before JAMES C. HOUSEL, CHRISTOPHER L. OGDEN, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1-3, 6-8, 11, 15-19, and 29, which constitute all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM, and enter NEW GROUNDS OF REJECTION.
1 In our Decision, we refer to the Specification filed Aug. 19, 2009
("Spec."); the Final Office Action dated Oct. 26, 2015 ("Final Act."); the
Appeal Brief filed Nov. 28, 2016 ("App. Br."); the Examiner's Answer
dated Feb. 24, 2017 ("Ans."); and the Reply Brief filed Apr. 24, 2017
("Reply Br.").
Appeal2017-007671
Application 12/527,699
The claims are directed to methods for dispensing vehicle ballasting
weights. Claim 1, reproduced below from the Claims Appendix of the
Appeal Brief, illustrates the claimed subject matter:
1. A method of dispensing a vehicle ballasting weight
having a mass suitable for balancing a portion of a vehicle, said
method comprising:
sandwiching a length of a vehicle ballasting weight
material, which is longer than it is either wide or thick, between
opposing movable surfaces that are movable in the same
direction such that each movable surface makes contact with an
opposite surface of the weight material, wherein the opposing
movable surfaces are spaced apart a distance that is
automatically adjustable to accommodate the thickness of the
vehicle ballasting weight material;
moving a leading end of the length of vehicle ballasting
weight material an incremental distance past a severing position
by moving the opposing movable surfaces in a direction toward
the severing position while the weight material is sandwiched
therebetween; and
severing the vehicle ballasting weight material at the
severing position, during or after said moving, to form an
incremental length of the weight material,
wherein the incremental length corresponds, within a
desired degree of accuracy, to the mass of the vehicle ballasting
weight that is suitable for balancing a portion of a vehicle.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Larsen
Podvin et al.
("Podvin")
Suhling
us 3,616,026
us 4,003,525
us 4,216,689
2
Oct. 26, 1971
Jan. 18, 1977
Aug. 12, 1980
Appeal2017-007671
Application 12/527,699
Freedman us 4,925,714 May 15, 1990
Pilling us 5,060,930 Oct. 29, 1991
Carpenter et al. us 5,445,051 Aug.29, 1995
("Carpenter")
Sander et al. us 5,904,237 May 18, 1999
("Sander")
Y ama ya et al. us 5,959,205 Sept. 28, 1999
("Y amaya")
Michlin US 6,591,074 Bl July 8, 2003
Gross et al. US 6,616,089 B2 Sept. 9, 2003
("Gross")
Anderson et al. US 2004/0109096 Al June 10, 2004
("Anderson")
Elliott US 6,916,354 B2 July 12, 2005
Spaulding et al. US 2006/0016309 Al Jan. 26, 2006
("Spaulding")
Tsuji et al. US 2006/0087546 Al Apr. 27, 2006
("Tsuji")
Weber US 2006/0254402 Al Nov. 16, 2006
"JP '277" JP 3062277 Sept. 28, 1999
Bettchen et al. EP 1 245 318 Al Oct. 2, 2002
("Bettchen")
REJECTIONS
The Examiner maintains the following rejections2 :
A. Under 35 U.S.C. § I02(b)
Al. Claims 1-3 as anticipated by Suhling;
A2. Claims 1-3 as anticipated by Weber;
A3. Claims 1-3 and 7 as anticipated by Tsuji;
A4. Claims 1-3 as anticipated by Carpenter;
2 In the Answer, the Examiner withdrew the rejections of (1) claims 1-3, 6-
8, 15-19, and 29 under 35 U.S.C. § 112, first ,r for lack of written
description and, (2) claim 15 under 35 U.S.C. § 112, second ,r as indefinite.
Ans. 2.
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B. Under 35 U.S.C. § I03(a)
B 1. Claim 6 as obvious over Carpenter in view of Podvin;
B2. Claims 1-3, 15-19, and 29 as obvious over Yamaya in
view of Spaulding, Gross, and Carpenter;
B3. Claim 6 as obvious over Yamaya in view of Spaulding,
Gross, Carpenter, and further in view of Podvin;
B4. Claim 7 as obvious over Yamaya in view of Spaulding
and Carpenter, and further in view ofBettchen;
B5. Claim 8 as obvious over Yamaya in view of Spaulding,
Gross, Carpenter, and further in view of Anderson, Michlin, and
Larsen;
B6. Claims 11/1, 11/2, and 11/3 3 as obvious over Yamaya in
view of Spaulding, Gross, and Carpenter, and further in view of Elliot;
B7. Claim 11/6 as obvious over Yamaya in view of
Spaulding, Gross, Carpenter, and Podvin, and further in view of
Elliott;
B8. Claim 11/7 as obvious over Yamaya in view of
Spaulding, Gross, Carpenter, and Bettchen, and further in view of
Elliott;
B9. Claim 11/8 over Y amaya in view of Spaulding, Gross,
Carpenter, Anderson, Michlin, and Larsen, and further in view of
Elliot;
BIO. Claims 1-3 and 15-19 as obvious over Spaulding in view
of Sander and Pilling;
3 Claim 11 is a multiple-dependent claim, and the Examiner identifies four
separate grounds for rejecting claim 11 with respect to each of its parent
claims (1-3 and 6-8).
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B 11. Claim 6 as obvious over Spaulding in view of Sander and
Pilling, and further in view of Podvin;
B 12. Claim 7 as obvious over Spaulding in view of Sander and
Pilling, and further in view of Bettchen;
B 13; Claim 8 as obvious over Spaulding in view of Sander and
Pilling, and further in view of Michlin and Freedman;
B14; Claims 1-3, 15-17, and 19 as obvious over JP '277 in
view of Sander and Pilling;
B15. Claim 6 as obvious over JP '277 in view of Sander and
Pilling, and further in view of Podvin;
B16: Claim 7 as obvious over JP '277 in view of Sander and
Pilling, and further in view of Bettchen;
B 17: Claim 8 as obvious over JP '277 in view of Sander and
Pilling, and further in view of Michlin and Freedman; and
B18. Claims 18 and 19 as obvious over JP '277 in view of
Sander and Pilling, and further in view of Spaulding.
Final Act. 5-30.
OPINION
Anticipation Rejections
The Examiner finds that each of Suhling, Weber, and Carpenter
teaches all elements of claims 1-3. The Examiner finds that Tsuji teaches
all elements of claims 1-3 and 7. Final Act. 5-8.
The Examiner finds that each of the prior art references teach devices
that cut off a discrete portion of material that expressly or inherently has
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weight, thus it is possible to use such a discrete portion of material to
balance a portion of a vehicle. Ans. 4.
Appellant argues the anticipation rejections as a group. App. Br. 11-
13. Appellant argues that none of the cited references teaches a method of
dispensing a vehicle ballasting material. Id. at 11.
A central issue before us is the meaning of vehicle ballasting material
as used in the claims. As we understand the Examiner's position, any
material that has mass may be a vehicle ballasting material. Final Act. 5-8.
Further, because the claims fail to recite the actual use of the vehicle
ballasting material, the Examiner finds the reference to vehicle and
ballasting to be intended use recitations only. Id.; see also Ans. 4--7. On the
other hand, Appellant contends that vehicle ballasting materials are more
than a mere mass, that such materials must be securely attachable to a
vehicle and durable enough to survive exposure wherever located on the
vehicle, and small and dense so as to concentrate the required balancing
weight at the desired vehicle location. App. Br. 12. Appellant disputes that
any of the masses cut in the methods of the alleged anticipatory references
may be reasonably interpreted to be vehicle ballasting materials. Id.
We begin, appropriately, with the claim's words. See Amazon.com,
Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001)
("Only when a claim is properly understood can a determination be made ...
whether the prior art anticipates and/or renders obvious the claimed
invention."). During examination, claim terms are given their broadest
reasonable construction consistent with the specification. In re Baker
Hughes, Inc., 215 F.3d 1297, 1303 (Fed. Cir. 2000) (the PTO cannot adopt a
construction that is "beyond that which was reasonable in light of the totality
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of the written description"). Accordingly, the specification "is always
highly relevant to the claim construction analysis. Usually, it is dispositive;
it is the single best guide to the meaning of a disputed term." Id. ( quoting
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).
Here, we note the Specification teaches that the field of the invention
relates to "methods ... for dispensing weights used in balancing rotating
portions of a vehicle." Spec. 1 :5-8. Appellant further describes a first
aspect of the invention as "a method ... for dispensing ... a vehicle
ballasting weight for balancing a portion of ( e.g., a wheel or other rotating
portion) of an automobile, other wheeled motor vehicle or other vehicle
( e.g., a car, van, truck, bus, motorcycle, bicycle, airplane, trailer, etc.)." Id.
at 2:5-8. In addition, Appellant describes the vehicle ballasting material as
dimensioned or otherwise operatively adapted so as to be suitable ( e.g., by
being sufficiently loaded with the particulate material to provide as
sufficient density) for use in balancing a wheel of an automobile." Id. at
2:24--27. Moreover, Appellant describes that the vehicle ballasting material
can have a density around that of elemental lead, depending at least in part
on size constraints for applying the weight material. Id. at 2:31-3:1.
Based on these disclosures, we construe the term "vehicle ballasting
material" as a dense and durable material for attachment to a vehicle wheel
or other rotating portion of a vehicle for balancing the rotating portion. This
construction corresponds to Appellant's position and, as such, we agree with
Appellant that none of the applied prior art anticipates the claimed method.
Suhling teaches an apparatus for slicing bread. Suhling Abstract. Weber
discloses an apparatus for cutting food products. Weber Abstract. Tsuji
discloses an inkjet printer apparatus. Tsuji Abstract. Carpenter teaches an
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apparatus for measuring, cutting, and stripping wire. Carpenter Abstract.
None of these references discloses a method that could reasonably be
interpreted to operate on a vehicle ballasting weight material.
We do not sustain the§ 102 rejections.
Obviousness Rejections
The Examiner rejects claim 6 as obvious over Carpenter in view of
Podvin. Final Act. 8-9. Because we find the primary reference Carpenter
does not teach a method for dispensing vehicle ballasting material (see
supra) and the Examiner does not rely on Podvin to remedy this deficiency,
we do not sustain the rejection.
The Examiner rejects each of the pending claims as obvious over each
of three primary references: Yamaya, Spaulding, and JP '277. Final Act. 9-
30. Appellant groups the claims for argument under each of these primary
references. App. Br. 14--22. We consider each of these groups seriatim.
Obviousness Rejections over Yamaya as the Primary Reference
The Examiner rejects claims 1-3, 15-19, and 29 as obvious over
Y amaya in view of Spaulding, Gross, and Carpenter. Final Act. 9.
Appellant argues the rejected claims as a group. We select claim 1 as
representative of the group. 37 C.F.R. § 4I.37(c)(l)(iv).
With regard to claim 1, the Examiner finds that Y amaya discloses
using a severed portion of an elongated balancing material to balance a
wheel. Id. Yamaya teaches manually severing the portion with scissors. Id.
The Examiner finds that Spaulding discloses sandwiching a weighted wheel
balancing strip between opposing movable surfaces to advance the strip
towards a severing station, wherein the desired length of balancing material
is automatically severed. Id. The Examiner concludes that it would have
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been obvious to one of ordinary skill in the art at the time of the invention to
cut Yamaya's weight material with Spaulding's automatic device in order to
improve efficiency and reduce manual labor.
Claim 1 requires that "the opposing movable surfaces are spaced apart
a distance that is automatically adjustable to accommodate the thickness of
the vehicle ballasting weight material." App. Br. 24 (Claims App'x). The
Examiner finds that the combination of Y amaya and Spaulding do not teach
mounting opposing conveying devices an adjustable distance from each
other. Final Act. 9. The Examiner finds, however, that Gross discloses:
[B]y mounting opposing conveying devices for a strip material
an adjustable distance from each other, it is possible to facilitate
the loading of the conveying devices with the strip material ...
Any strip material placed between the opposed conveying
devices is automatically clamped between the opposed
conveying devices under the biasing action imparted by a
spnng ....
Id. at 10 (citations omitted). The Examiner concludes that a skilled artisan
would have found it obvious to make the gap between opposing conveying
devices of Y amaya as modified by Spaulding adjustable for the benefit of
facilitating the feeding of strip material into the device ( as disclosed by
Gross). Id. The Examiner finds that the conveying devices in Gross are
urged toward a strip material (imbalance correction weight) with a spring,
making them automatically adjustable to the thickness of the strip material.
Id. The Examiner finds that, additionally or alternatively to Gross,
Carpenter discloses resiliently urging opposed conveyors toward each other
across an automatically-changeable gap. Id.
Appellant argues that the Examiner employs impermissible hindsight
in combining Spaulding with either Gross or Carpenter. App. Br. 14.
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Appellant argues that both Spaulding and Gross teach a weighted tape that
comprises a plurality of individual weights attached in series along an
adhesive tape which is protected by a backing. Id. at 15. Appellant
contends that the disclosures of Spaulding and Gross diverge in that
Spaulding teaches using rollers to move weighted tape to a desired position
where the entire weighted tape, including backing, is severed and
subsequently removed. Id. Appellant argues that Gross, in contrast,
removes the backing, then moves the weighted tape into a position to be
severed. Id. Appellant argues that the spring loaded structure taught by
Gross is very different from the fixed rollers used by Spaulding to move
weighted tape, and Spaulding' s weighted tape is much thicker and less
pliable that Gross's backing. Id. Appellant argues that the Examiner fails to
identify any teaching from the prior art that would explain why a skilled
artisan would think it necessary or even desirable to alter Spaulding' s roller
to be biased towards each other. Id. at 15-16.
Appellant's argument lacks merit. As the Examiner explains, the strip
material in the combination of references would have been that of Y amaya,
the primary reference. Ans. 10. Gross discloses that any strip material
placed between the opposed conveying devices is automatically clamped
under the biasing action imparted by a spring. Final Act. 10. The Examiner
concludes that a skilled artisan would have found it obvious to make the gap
between opposing conveying devices of Y amaya as modified by Spaulding
adjustable for the benefit of facilitating the feeding or loading of strip
material into the device (as disclosed by Gross). Id. (emphasis added); see
also Ans. 8. Thus, the Examiner provides the required articulated reasoning
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with some rational underpinning to support the conclusion of obviousness.
See In re Kahn, 441 F.3d 997, 988 (Fed. Cir. 2006).
The test for obviousness is not whether the claimed invention is
expressly suggested in any one or all of the references, but whether the
claimed subject matter would have been obvious to those of ordinary skill in
the art in light of the combined teachings of those references. See In re
Keller, 642 F.2d 413,425 (CCPA 1981); see also In re McLaughlin, 443
F.2d 1392, 1395 (CCPA 1971) ("The test for combining references is not
what the individual references themselves suggest but rather what the
combination of disclosures taken as a whole would suggest to one of
ordinary skill in the art."). One of ordinary skill can use his or her ordinary
skill, creativity, and common sense to make the necessary adjustments and
further modifications to result in a properly functioning device. See KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007) ("a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ"). Furthermore, "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." See id. at
417.
Further, as the Examiner suggests, Appellant argues that Gross's
spring loaded pulley and moving belt must be bodily incorporated into the
combination of references. Ans. 8. To justify combining reference
teachings in support of a rejection it is not necessary that a device shown in
one reference can be physically inserted into the device shown in the other.
In re Keller, 642 F.2d at 425. It is well established that the obviousness
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inquiry does not ask "whether the references could be physically combined
but whether the claimed inventions are rendered obvious by the teachings of
the prior art as a whole." In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985); see
also In re Keller, 642 F.2d 413,425 (CCPA 1981) (stating "[t]he test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference"); In re
Nievelt, 482 F.2d 965,968 (CCPA 1973) ("Combining the teachings of
references does not involve an ability to combine their specific structures.").
Appellant also argues the Examiner errs in combining Spaulding and
Carpenter because the references are directed to non-analogous inventions.
App. Br. 16.
With the combination of Y amaya and Spaulding, the Examiner
rejected claim 1 over Carpenter, in addition to or as an alternative to Gross.
Final Act. 10. As such, we do not find Carpenter a necessary reference to
combine with Y amaya and Spaulding.
We thus sustain the rejection of claim 1 over Yamaya in view of
Spaulding and Gross. For the same reasons as given for claim 1, we sustain
the rejection of claims 2, 3, 15-19, and 29. See 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner rejects claims 6-8 and 11 over Yamaya in view of
Spaulding, Gross, and/or Carpenter and additional references. Final Act.
12-20. Appellant groups these rejections together and argues that the
additional references do not address the deficiencies of Y amaya, Spaulding,
and Gross or Carpenter. App. Br. 17-18. Because Appellant relies on the
same argument for patentability of claims 6-8 and 11 as are made in support
of claim 1, Appellant fails to show reversible error in the Examiner's
rejection of these claims. We sustain the rejections of claims 6-8 and 11.
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Obviousness Rejections over Spaulding as the Primary Reference
The Examiner rejects claims 1-3 and 15-19 as obvious over
Spaulding in view of Sander and Pilling. Final Act. 20-21.
Regarding claim 1, the Examiner finds that Spaulding discloses a
device that sandwiches a weighted wheel balancing strip between opposing
moveable surfaces to advance the strip towards a severing station and
conveying different sized weights, but does not disclose mounting opposing
conveying devices an adjustable distance from each other. Final Act. 20-21.
The Examiner finds that Sander discloses that using opposed conveying
devices of automatically adjustable separation allows for work pieces of
varying thickness to be conveyed. Id. The Examiner finds that Pilling
discloses that using a conveying structure in which opposed conveyors are
separated by an automatically-adjustable distance promotes positive
gripping. Id. at 21. The Examiner concludes that a skilled artisan would
have found it obvious to use opposed conveyors of automatically adjusted
separation (as disclosed by Sander and/or Pilling) in order to make the
conveying structure of Spaulding adjustable to weights of varying thickness
and/or to ensure positive gripping for conveyance. Id.
Appellant argues for patentability of the claims as a group. App. Br.
18-20. We select claim 1 as representative of the group. 37 C.F.R.
§ 4I.37(c)(l)(iv).
Appellant argues that the Examiner relies on impermissible hindsight
in combining "the device of Spaulding and the structure of several non-
analogous devices disclosed in Sander and Pilling." App. Br. 18. Appellant
contends that "the combination of references does not result in opposing
movable surface that are spaced apart a distance that is automatically
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adjustable to accommodate varying thicknesses of vehicle ballasting weight
material." Id. Thus, Appellant contends, "the Examiner fails to provide
objective evidence of why a person of ordinary skill in the art of dispensing
vehicle ballasting weights would be motivated to make the noted
combination." Id. at 19. Spaulding is directed to the art of dispensing
vehicle ballasting weights, but Sander and Pilling are directed to the art of
conveying a stack of sheets. Id. According to Appellant, vehicle ballasting
weights are very different from a print sheet, and Spaulding contains no
disclosure of dispensing a "stack" of vehicle ballasting weights. Id.
Appellant contends that automatically adjusting for different thicknesses of
weighted tape is not based on a prior art teaching identified by the Examiner.
Reply Br. 10.
We agree. The Examiner has not shown that the skilled artisan would
have combined the teachings of Spaulding and Sander. Spaulding is
directed to adhesive wheel weight dispensing apparatuses. Spaulding
Abstract. Sander concerns devices for conveying products such as stacks of
printed sheets. Sander col. 1, ln. 66-col. 2, ln. 9. We find the Examiner's
rational for combining the references-allowing for work pieces of varying
thickness to be conveyed-fails to provide "articulated reasoning with some
rational underpinning" ( other than hindsight) for a skilled artisan in
possession of Spaulding to tum to Sander. See In re Kahn, 441 F.3d at 988.
We, therefore, reverse the rejection of claim 1 over the combination of
Spaulding, Sander, and Pilling. The Examiner relies on the same reasoning
for combining Spaulding and Sander to reject claim 1 and to reject claims 2,
3, 6-8, 11, and 15-19 (Final Act. 21-25), thus we reverse the rejection of
these claims over the cited references as well.
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Nonetheless, we find that Spaulding in combination with Pilling alone
renders the claims obvious. Fig. 1 of Spaulding is reproduced below:
12
\
'=
Fig. 1 is a fragmentary perspective view of an apparatus for
dispensing a predetermined amount of adhesive weighted tape in accordance
with Spaulding's invention. Spaulding ,r 9. The apparatus includes motive
apparatus 124 operable to selectively move a supply of weighted adhesive
tape 14. Id. ,r 15. Drive rollers 32 engage a free end of adhesive tape 14 and
move it along track member 34. Id. ,r,r 16-17. A pair of guide rollers 42 are
disposed on a side of track member 34 opposite from drive rollers 32, and
both pair of rollers contact and engage adhesive tape 14. Id. ,r 17. Sensor 46
and cutting member 48 are attached to guide frame 44. Id. A portion 54 of
the second end 40 of the track member 34 may pivot about a pivot point (not
shown). Id. ,r 19. Actuator 58 is disposed adjacent the pivoting portion 54
of the track member 34 and includes extension member 60 in contact with
4 Labels to elements are presented in bold font, regardless of their
presentation in the original document.
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the pivoting portion 54. Id. Controller 72, in communication with motive
apparatus 12, sensor 46, cutting member 48, and actuator 58, receives
signals from wheel balancer 7 4 and sends signals to actuator 58 and cutting
member 48. Id. ,r 20. Actuator 58 moves extension member 60 between an
extended position and a retracted position to cut adhesive tape 14 in
response to the signal sent from wheel balancer 74 to controller 72 that
corresponds to a required amount of weight to balance a tire and wheel
assembly. Id. ,r 21. Blade 49 of cutting member 48 cuts adhesive tape 14 at
a predetermined location. Id.
Spaulding teaches these limitations of claim 1: ( 1) sandwiching a
length of adhesive weighted tape for use as wheel weight ( vehicle ballasting
weight material) (Abstract, Fig. 1 ), which is longer than it is either wide or
thick (Fig. 1 ), between opposing movable surfaces (Fig. 1, rollers 32 and 42)
that are movable in the same direction such that each movable surface makes
contact with an opposite surface of the weight material (Fig. 1 ); (2) moving
a leading end of the length of vehicle ballasting weight material an
incremental distance past a severing position by moving the opposing
movable surfaces in a direction toward the severing position while the
weight material is sandwiched therebetween (i1i1 5, 6, 16, and 17); (3)
severing the vehicle ballasting weight material at the severing position,
during or after said moving, to form an incremental length of the weight
material (i1i15, 6); (4) wherein the incremental length corresponds, within a
desired degree of accuracy, to the mass of the vehicle ballasting weight that
is suitable for balancing a portion of a vehicle (predetermined amount of
adhesive weighted tape, ,r,r 2, 5, and 21 ). Spaulding does not disclose
"wherein the opposing movable surfaces are spaced apart a distance that is
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automatically adjustable to accommodate the thickness of the vehicle
ballasting weight material."
However, we find that Pilling teaches automatically adjusting
opposing movable surfaces to accommodate the thickness of different
articles in order to move them along a transport path. Figure 1 of Pilling is
reproduced below:
Fig. 1 is an exploded view of portions of the invention of Pilling.
Sheet conveying system 4 comprises a pair of belts 5, 6 entrained around
idler rollers 7, 8 respectively and drive rollers 9, 10. Pilling col. 2, 11. 42--47.
The belts define an sheet feed path 11 with adjacent surfaces of the belts
being urged together via idler rollers 8 which are spring biased by means not
shown towards idler rollers 7. Id.
Pilling teaches an article conveyor with opposed conveying surfaces
for conveying articles along a transport path. Pilling Abstract. Pilling
describes "transporting articles such as sheets from one position to another"
and "feeding them to a dispense outlet." Id. col. 1, 11. 10-15. Pilling teaches
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that an article "is firmly held by the opposed conveying surfaces before the
article conveying means is actuated to convey the articles away from the
loading position." Id. col. 1, 11. 5 6-59. The opposed surface are urged
together under spring action in order to ensure a positive gripping of articles
between the opposed surfaces. Id. col. 2, 11. 18-21.
Although Pilling is not in the field of vehicle ballast weighting, we
find it to be reasonably pertinent to the problem of conveying articles of
different thicknesses along a path. See Comaper Corp. v. Antee, Inc., 596
F.3d 1343, 1351 (Fed. Cir. 2010) (Relevant criteria in determining whether
prior art is analogous are ( 1) whether the art is from the same field of
endeavor, regardless of the problem addressed, and (2) 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.). Art is "reasonably pertinent" when it would "logically commend
itself' to an inventor's attention in considering his problem. In re Icon
Health and Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007) (citing In
re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992)); see also In re GPAC Inc.,
57 F.3d 1573 (Fed. Cir. 1995) (holding, for example, that art regarding flaps
for tents could be analogous to asbestos remediation because same problem
addressed). "References are selected as being reasonably pertinent to the
problem based on the judgment of a person having ordinary skill in the mi."
In re Kahn, 441 F.3d at 987. "[l]t is necessary to consider 'the reality of the
circumstances, '-in other words, common sense-in deciding in which
fields a person of ordinary skill would reasonably be expected to look for a
solution to the problem facing the inventor." In re Oetiker, 977 F.2d 1443,
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1447 (Fed. Cir. 1992) (quoting In re Wood, 599 F.2d 1032, l 036 (CCP A
1979)).
Although Pilling describes '"transporting articles such as sheets" from
one place to another (Pilling col. 1, 11. 10-11 ( emphasis added)), a skilled
artisan would not have limited Pilling's teaching as applying solely to
conveying sheets of materials. See In re Preda, 401 F.2d 825, 826 (CCPA
1968) ("[I]n considering the disclosure of a reference, it is proper to take
into account not only specific teachings of the reference but also the
inferences which one skilled in the art would reasonably be expected to draw
therefrom."). One seeking to transport articles having variable thicknesses
would reasonably look to the field of conveyances to solve the problem. See
Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1164 (Fed. Cir. 2006)
("Evidence of a rnotivation to combine prior mi references 'may flow from
the prior mi references themselves, the knowledge of one of ordinary skill in
the art, or, in some cases, from the nature of the problem to be solved.'"
( quoting Brown & f17illiamson Tobacco Corp. v. Philip lvf orris Inc., 229
F.3d 1120, 1125 (Fed. Cir. 2000))).
Having looked at the field of conveying articles, an improvement to
conveying devices would have recornmended itself to the inventor. See
Dystar Textilfarben GmbH & Co. Deutsch/and KG v. CH Patrick Co., 464
F.3d 1356, 1368 (Fed. Cir. 2006):
We have repeatedly held that an implicit motivation to combine
exists not only when a suggestion may be gleaned from the
prior art as a whole, but when the "improvement" is
technology-independent and the combination of references
results in a product or process that is more desirable, for
example because it is stronger, cheaper, cleaner, faster, lighter,
smaller, more durable, or more efficient. Because the desire to
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enhance commercial opportunities by improving a product or
process is universal-and even common-sensical-we have
held that there exists in these situations a motivation to combine
prior art references even absent any hint of suggestion in the
references themselves. In such situations, the proper question is
whether the ordinary artisan possesses knowledge and skills
rendering him capable of combining the prior art references.
Pilling describes urging opposed conveying surfaces together under
spring action in order to ensure a positive gripping of articles between the
opposed surfaces. Pilling col. 2, 11. 18-21. Such "positive gripping" of an
article by spring biasing would have been a technology-independent
improvement of Spaulding' s device by providing a more secure grasp of the
adhesive wheel weight tape, making the resulting product more desirable.
See Dystar, 464 F.3d at 1368. "As long as some motivation or suggestion to
combine the references is provided by the prior art taken as a whole, the law
does not require that the references be combined for the reasons
contemplated by the inventors." In re Beattie, 974 F.2d 1309, 1312 (Fed.
Cir. 1992); see also Cross Med. Prods., Inc. v. Medtronic Sofamor Danek,
Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005) ("One of ordinary skill in the art
need not see the identical problem addressed in a prior art reference to be
motivated to apply its teachings.").
"Moreover, 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 that person's skill." KSR, 550 U.S. at 401. "A
court must ask whether the improvement is more than the predictable use of
prior art elements according to their established functions." Id. Using
springs to bias opposed conveying surfaces would have been within the
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capabilities of the artisan skilled in conveying, and is the predictable use of a
prior art element ( spring biasing of opposed conveying surfaces) according
to its established function.
We conclude that claim 1 is obvious over Spaulding in view of Pilling
for the reasons given. We apply the same reasoning to reject claims 2, 3,
and 15-19 over these combined references. We rely on the Examiner's
reasons in the Final Action regarding additional cited art to reject claims 6-
8. See Final Act. 22-25. Because we have relied on facts and reasoning not
raised by the Examiner, we designate our affirmance as including new
grounds of rejection to safeguard Appellant's procedural entitlements. In re
Leithem, 661 F.3d 1316, 1319 (Fed. Cir. 2011) ("Mere reliance on the same
statutory basis and the same prior art references, alone, is insufficient to
avoid making a new ground of rejection when the Board relies on new facts
and rationales not previously raised to the applicant by the examiner.").
Obviousness Rejections over JP '277
The Examiner rejects claims 1-3, 15-17, and 19 as obvious over JP
'277 in view of Sander and Pilling. Final Act. 25. Appellant argues the
rejected claims as a group. We select claim 1 as representative of the group.
37 C.F.R. § 4I.37(c)(l)(iv).
Regarding claim 1, the Examiner finds that, like Spaulding, JP '277
discloses the limitation of the claim except for "conveyance devices with an
adjustable gap." Final Act. 25. The Examiner finds that Sander and Pilling
disclose the limitation for the same reasons as discussed above in relation to
the combination of Spaulding, Sander, and Pilling. See id. at 25-26.
Appellant does not challenge the Examiner's finding in relation to JP
'277, essentially limiting his argument to that made against Sander and
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Pilling with Spaulding as the primary reference. Compare App. Br. 21-22
with App. Br. 18-20.
For the reasons provided above in relation to Sander, we do not
sustain the rejection of claim 1, or of claims 15-17 or 19 over JP '277 in
combination with Sander and Pilling. We do not sustain the rejection of
claims 6-8, 18, and 19 over JP '277, Sander, Pilling, and additional cited art
because the Examiner relies on the same reasoning for combining JP '277
and Sander as made with respect to claim 1. See Final Act. 27-30.
For the reasons provided above in relation to Pilling, however, we
conclude that JP '277 in combination with Pilling renders the claims
obvious. Here, again, because we rely on facts and reasoning in relation to
Pilling not raised by the Examiner, we designate our affirmance as including
new grounds of rejection. See In re Leithem, 661 F.3d at 1319.
DECISION
The following rejections are reversed:
Al. Claims 1-3 as anticipated by Suhling;
A2. Claims 1-3 as anticipated by Weber;
A3. Claims 1-3 and 7 as anticipated by Tsuji;
A4. Claims 1-3 as anticipated by Carpenter;
B 1. Claim 6 as obvious over Carpenter in view of Podvin;
BIO. Claims 1-3 and 15-19 as obvious over Spaulding in view
of Sander and Pilling;
B 11. Claim 6 as obvious over Spaulding in view of Sander and
Pilling, and further in view of Podvin;
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B 12. Claim 7 as obvious over Spaulding in view of Sander and
Pilling, and further in view of Bettchen;
B 13; Claim 8 as obvious over Spaulding in view of Sander and
Pilling, and further in view of Michlin and Freedman;
B14; Claims 1-3, 15-17, and 19 as obvious over JP '277 in
view of Sander and Pilling;
B15. Claim 6 as obvious over JP '277 in view of Sander and
Pilling, and further in view of Podvin;
B16: Claim 7 as obvious over JP '277 in view of Sander and
Pilling, and further in view of Bettchen;
B 17: Claim 8 as obvious over JP '277 in view of Sander and
Pilling, and further in view of Michlin and Freedman; and
B18. Claims 18 and 19 as obvious over JP '277 in view of
Sander and Pilling, and further in view of Spaulding.
The following rejections are affirmed:
B2. Claims 1-3, 15-19, and 29 as obvious over Yamaya in
view of Spaulding, Gross, and/or Carpenter;
B3. Claim 6 as obvious over Yamaya in view of Spaulding,
Gross, Carpenter, and further in view of Podvin;
B4. Claim 7 as obvious over Yamaya in view of Spaulding
and Carpenter, and further in view ofBettchen;
B5. Claim 8 as obvious over Yamaya in view of Spaulding,
Gross, Carpenter, and further in view of Anderson, Michlin, and
Larsen;
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B6-9. Claim 11 as obvious over Y amaya in view of Spaulding,
Gross, and Carpenter, and further in view of Elliot (via dependency
from claims 1, 2, and 3); as obvious over Yamaya in view of
Spaulding, Gross, Carpenter, and Podvin, and further in view of
Elliott (via dependency from claim 6); as obvious over Yamaya in
view of Spaulding, Gross, Carpenter, and Bettchen, and further in
view of Elliott ( via dependency from claim 7); and over Y amaya in
view of Spaulding, Gross, Carpenter, Anderson, Michlin, and Larsen,
and further in view of Elliot (via dependency from claim 8).
A new ground of rejection pursuant to 37 C.F.R. § 4I.50(b) is entered
as follows:
Claims 1-3 and 15-19 as obvious over Spaulding in view of
Pilling;
Claims 1-3, 15-17, and 19 as obvious over JP '277 in view of
Pilling.
NEW GROUNDS OF REJECTION
This decision contains a new ground of rejection pursuant to 3 7
C.F.R. § 41.50(b), which provides that "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review." Section
41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM
THE DATE OF THE DECISION, must exercise one of the following two
options with respect to the new grounds of rejection to avoid termination of
the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
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reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED; NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R. § 4I.50(b)
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