Singur, Igor

Patent Trials and Appeals Board

Mar 12, 2020

14123318 - (D) (P.T.A.B. Mar. 12, 2020)

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.
14/123,318 12/02/2013 Igor Singur 40047-171US1 5365
69713 7590 03/12/2020
OCCHIUTI & ROHLICEK LLP
50 Congress Street
Suite 1000
Boston, MA 02109
EXAMINER
FRY, PATRICK B
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
03/12/2020 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):
INFO@ORPATENT.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte IGOR SINGUR
____________

Appeal 2018-005403
Application 14/123,318
Technology Center 3700
____________

Before JOHN C. KERINS, WILLIAM A. CAPP, and
GEORGE R. HOSKINS, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 16–20, 23, 24, 26–32, and 34–43.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies KHS GmbH as the real party in
interest. Appeal Br. 1.
2 Claims 21 and 22 are objected to as being dependent upon a rejected base
claim. Final Act. 17.
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THE INVENTION
Appellant’s invention relates to handling machines for containers such
as bottles. Spec. 1. Claim 16, reproduced below with paragraph indentation
added, is illustrative of the subject matter on appeal.
16. An apparatus comprising a container closing machine,
said container closing machine comprising
a central supporting column,
a manipulation unit connected to said central supporting
column, and
a first direct drive, said first direct drive comprising a stator
and a rotor,
wherein said first direct drive is disposed between said
central supporting column and said manipulation unit connected
to said central supporting column,
wherein said first direct drive is configured to produce
reciprocal relative motion,
wherein said central supporting column defines an interior
space,
wherein a structure selected from the group consisting of
said stator and said rotor is coupled to said central supporting
column,
wherein said manipulation unit comprises a ring,
wherein said ring defines an interior space,
wherein a structure selected from the group consisting of
said stator and said rotor is disposed in said interior space
defined by said ring of said manipulation unit,
wherein said ring of said manipulation unit and said central
supporting column share a common axis of rotation,
wherein said common axis of rotation defines a radial plane
perpendicular thereto,
wherein said rotor and said stator lie in said radial plane
opposite each other, and
wherein said rotor and said stator are separated along said
radial plane by a gap.
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THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
NAME REFERENCE DATE
Vander Bush US 5,419,094 May 30, 1995
Bernhard US 2006/0086410 Al Apr. 27, 2006
Knieling US 2010/0212259 Al Aug. 26, 2010
The following rejections are before us for review:3
1. Claim 42 is rejected under 35 U.S.C. § 112(b) as indefinite for
failing to particularly point out and distinctly claim the subject matter which
the inventor regards as the invention.
2. Claims 16, 17, 19, 20, 23, 24, 26–29, 31, 32, 34–39, and 43 are
rejected under 35 U.S.C. § 103 as being unpatentable over Knieling and
Bernhard.
3. Claims 18, 30, and 40–42 are rejected under 35 U.S.C. § 103 as
being unpatentable over Knieling, Bernhard, and Vander Bush.
OPINION
Indefiniteness of Claim 42
The Examiner takes the position that claim 42 is indefinite because
the phrase “wherein said first direct drive controls the rotation of said
manipulation elements” contradicts the teachings of the Specification. Final
Act. 3. The Examiner points out that the Specification teaches that the
“second direct drive,” not the “first direct drive,” controls rotation of the

3 Certain rejections under Sections 112(b) & (d) have been withdrawn by the
Examiner. Ans. 2.
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manipulation elements. Id. Thus, according to the Examiner, it is unclear
how the first direct drive controls rotation of the manipulation elements. Id.
In traverse, Appellant, in cursory fashion, expresses doubt and
uncertainty as to why there is a contradiction. Appeal Br. 3. Appellant
mentions that it is permissible for a specification to recite more than one
embodiment. Id. Appellant, without further comment, explanation, or
argument, directs our attention to page 14 of the Specification, lines 10
through 12. Id. The referenced passage provides as follows:
The peripheral speed of head plate 4 relative to central
column 6, is in fact, determined with the aid of first direct
drive 7, 8.
Spec. 14, ll. 10–12.
In response, the Examiner reiterates that, to the extent that there is any
independence between the peripheral speed of head plate 4 and rotation of
manipulation elements 3, such is attributable to a second direct drive, not the
first direct drive. Ans. 3. Appellant’s Reply Brief is silent on this issue and
does not address, much less rebut, the Examiner’s position. See generally
Reply Br.
The test for definiteness under 35 U.S.C. § 112, is whether “those
skilled in the art would understand what is claimed when the claim is read in
light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc.,
806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). The PTO can
properly reject a claim as indefinite if the claim is ambiguous, vague,
incoherent, or otherwise unclear. In re Packard, 751 F.3d 1307, 1311 (Fed.
Cir. 2014). During patent prosecution when claims can be amended,
ambiguities should be recognized, scope and breadth of language explored,
and clarification imposed. See In re Zletz, 893 F.2d 319, 321 (Fed.
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Cir. 1989). Section 112 places the burden of precise claim drafting on the
applicant. See In re Morris, 127 F.3d 1048, 1056–57 (Fed. Cir. 1997).
Rigorous application of the statutory standard to particularly point out and
distinctly claim the subject matter regarded to be the invention serves an
important public notice function. See Predicate Logic, Inc. v. Distributive
Software, Inc., 544 F.3d 1298, 1300 (Fed. Cir. 2008).
Appellant’s invention includes a manipulation unit comprised of head
plate 4 and ring 5. Spec. 9–10, Fig 2. Such manipulation unit rotates about
axis R which extends axially through the centerline of column 6. Id. First
direct drive 7, 8 generates a reciprocal relative motion between column 6
and head plate 4. Id. Manipulation elements 3 are circumferentially
arranged on head plate 4 and rotate so as to screw caps 2 onto bottles 1. Id.
With respect to controlling the respective rates of rotation of the drive
elements, Appellant’s drive elements Specification provides as follows:
First direct drive 7, 8 is arranged between column 6 and
manipulation unit 4, 5. Second direct drive 9, 10, on the other
hand, is located between manipulation unit 4, 5 and the one or
plurality of manipulation elements 3 connected to manipulation
unit 4, 5. The two direct drives 7, 8 and 9, 10 are configured
independently of one another and can be self-dependently
controlled/regulated either individually or both together. For
this purpose, there is provided a controller 11 that serves to act
on respective direct drives 7, 8; 9, 10.
Spec. 11 (emphasis added).
As with the Examiner, we are at a loss to understand, in light of the
teachings of the Specification, how the first direct drive controls rotation of
manipulation elements independently of the peripheral speed of head plate 4.
Appellant’s referral to page 14, lines 10–12 fails to clarify the matter as it
merely relates to the first direct drive determining the peripheral speed of
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head plate 4. It says nothing about the first direct drive determining the
rotational speed of manipulation elements 3, much less controlling such
rotational speed independent of the peripheral speed of head plate 4.
We sustain the Examiner’s indefiniteness rejection of claim 42.
Unpatentability of
Claims 16, 17, 19, 20, 23, 24, 26–29, 31, 32, 34–39, and 43
over Knieling and Bernhard
Claim 16
The Examiner finds that Knieling discloses the invention substantially
as claimed except for the first direct drive having a stator and rotor, but that
modifying Knieling’s magnetic drives to be configured as a stator and rotor
would have been an obvious modification. Final Act. 5–7; see also Knieling
¶ 17 (disclosing alternative embodiment with stator and rotor arrangement).
The Examiner further finds that, although Knieling features a central support
column, such column does not define an interior space, for which the
Examiner relies on Bernhard. Id. at 8. The Examiner concludes that it
would have been obvious to a person of ordinary skill in the art at the time
of the invention to modify Knieling by the teachings of Bernhard to
incorporate a center pillar that has an interior space. Id. According to the
Examiner, a person of ordinary skill in the art would have used such space as
a conduit for electrical wires. Id.
In traverse, Appellant raises a plethora of arguments, none of which
we find to be persuasive. We address the more prominent arguments
separately under individual sub-headings below.
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Closing Machine
Appellant argues, at considerable length, that the embodiment of
Knieling relied on by the Examiner is a cleaning machine, not a closing
machine as claimed. Appeal Br. 3–11.
In response, the Examiner directs our attention to paragraph 55 of
Knieling and explains that Knieling is best understood as teaching that the
structural configuration of the Figure 5 embodiment can be implemented as
either a cleaning machine or a closing machine. Ans. 4–5.
In reply, Appellant argues that the Examiner’s position is based on an
unreasonable and incorrect grammatical construction of Knieling
paragraph 55. Reply Br. 1–5.
Knieling is directed to an apparatus for treating containers. Knieling,
Abstract. In Knieling’s apparatus, containers 10 are held by gripping
devices 7. With the containers held in place by gripping devices 7, bottle
caps (screw closures) are placed on the containers by closing head 6 on
carrier 8. Id. ¶¶ 41–42, Fig.1. Knieling discloses an alternative embodiment
in Figure 5. Id. ¶¶ 51–55. The Figure 5 embodiment features line 56 and
spray head 58 for cleaning containers. Id. Figure 6 shows a more detailed
view of the drive unit of the Figure 5 embodiment. Id. ¶ 55, Fig. 6.
Knieling discloses yet another alternative embodiment in Figure 7. Id. ¶ 56,
Fig. 7. The Figure 7 embodiment discloses a closing head 6 arranged on a
carrier 8. Id. Knieling discloses that in contrast to “the above embodiment”
such carrier is arranged in a height displaceable manner. Id. We interpret
“the above embodiment” in paragraph 56 as referring to the Figure 5
embodiment discussed in paragraphs 51–55.
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Much of the dispute between Appellant and the Examiner centers on
the following passage in paragraph 55 of Knieling.
It is pointed out that the embodiments shown in FIGS. 5 and 6
on the one hand and 6 to 7 on the other hand can also be
combined with one another.
Id. ¶ 55. Appellant interprets the foregoing passage such that the
embodiments of Figures 5 and 6 can be combined only with each other and
that the embodiments of Figures 6 and 7 can be combined only with each
other. However, Appellant argues that Knieling does not teach that the
embodiment of Figures 5 and 6 can be combined with the embodiment of
Figures 6 and 7. The Examiner, on the other hand, takes the position that the
two embodiments can be combined.
Having considered the competing positions of Appellant and the
Examiner, we find the Examiner’s position to be more persuasive. Read
together and in context, paragraphs 51 through 61 and Figures 5 through 8
disclose respective cleaning and closing machines that share many of the
same features. The Figure 6–8 embodiment is not described in detail or in
its entirety. Id. ¶ 56, Figs. 6–8. A person of ordinary skill in the art reading
Knieling would understand that the description of the Figure 6–8
embodiment focuses on certain differences between the cleaning version and
the closing version of the same machine, but that the features in Figure 5
relied on by the Examiner in the rejection are also present in the Figure 7
closing machine. Thus, we agree with the Examiner that the features relied
on by the Examiner in the rejection taken from the Figure 5 cleaning
machine embodiment of Knieling are equally applicable to a closing
machine embodiment such as that of Figure 7.
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The Ring Element
Appellant argues that Knieling lacks a ring as claimed. Appeal
Br. 11. Appellant characterizes the structure in Knieling, part of which the
Examiner finds constitutes a ring, as a “socket.” In Appellant’s own words:
Figure 5 of Knieling shows a circular wall that defines a socket.
This socket fits over the top of the column . . . .
. . . .
What the examiner calls a “ring” is actually more like a cup
or bowl that fits over a bearing to enable the carrier 8 to rotate
without falling off the bearing.
Id. at 11–12.
In response, the Examiner takes the position that element 8 of
Knieling’s Figure 5 can be characterized as a structure that has: (1) a plate
component; and (2) a ring component. Ans. 5. The Examiner points out that
claim 16 does not recite that the ring remains unattached or disconnected
from any and every other structure recited in the claim. Id.
In reply, Appellant essentially repeats, with considerable rhetorical
embellishment, its argument from the Appeal Brief. Reply Br. 6–8.
The dispute between Appellant and the Examiner is largely a matter
of claim construction. During examination of a patent application, pending
claims are given their broadest reasonable construction consistent with the
specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004). Under the broadest reasonable interpretation standard, claim
terms are given their ordinary and customary meaning as would be
understood by one of ordinary skill in the art in the context of the entire
disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
Cir. 2007). Construing claims broadly during prosecution is not unfair to the
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applicant, because the applicant has the opportunity to amend the claims to
obtain more precise claim coverage. Am. Acad. of Sci., 367 F.3d at 1364.
In construing claims, we do not look at the ordinary meaning of a term
in a vacuum. E.I. Du Pont De Nemours & Company v. Unifrax I LLC, 921
F.3d 1060, 1068 (Fed. Cir. 2019). The PTO is required to consult the
Specification during examination in order to determine the permissible scope
of the claim. In re Morris, 127 F.3d 1048, 1055 (Fed. Cir. 1997). The use
of the words in the context of the written description and as customarily used
by those of skill in the art reflects both the “ordinary” and “customary”
meaning of the terms in the claims. Ferguson Beauregard/Logic Controls,
Div. of Dover Res., Inc. v. Mega Sys., LLC, 350 F.3d 1327, 1338 (Fed. Cir.
2003). Thus, construing claim terms without considering the context in
which those terms appear is not reasonable. TriVascular, Inc. v.
Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016).
Appellant’s Specification and drawings disclose and depict a
manipulation unit that rotates about axis R on supporting column 6.
Spec. 10, Fig 1. Such manipulation unit is comprised of head plate 4 and
ring 5. Id. Appellant teaches that ring 5 is connected to the underside of
head plate 4. Spec. 9. The precise manner and means of such connection,
such as whether it is relatively permanent, such as by welding, or temporary,
such as by mechanical fasteners (screws or bolts), is not described.
The Figure 5 embodiment of Knieling discloses structure identified as
carrier 8. Knieling, Fig. 5, ¶ 51. The upper portion of carrier 8 reasonably
correlates to head plate 4 of Appellant’s invention. Compare Appellant’s
Figs. 1–3, with Knieling, Fig. 5. The lower portion of Knieling’s carrier 8
reasonably correlates to ring 5 of Appellant’s invention in that it is a
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structure that circumferentially surrounds a cylindrical object. It is clear
from reviewing Appellant’s disclosure that ring 5 is a structure that is
intended to be connected to and interact with other components including,
but not limited to, head plate 4. The mere prospect that Appellant’s
manipulation unit is comprised of components that are separately labeled as
a head plate and a ring fails to patentably distinguish over carrier 8 of
Knieling. We, therefore, agree with the Examiner that the ring limitation of
claim 16 is satisfied by Knieling.
Connection of Manipulation Unit to Support Column
Appellant next argues that Knieling fails to disclose a manipulation
unit that is connected to a central support column as claimed. Appeal
Br. 12–17. Appellant takes the position that Knieling’s carrier 8, which
corresponds to Appellant’s manipulation unit, is merely magnetically
coupled to Knieling’s shaft body (central column) 18. Id. Appellant
attempts to distinguish between objects that are “connected” and objects that
are only “magnetically coupled.” Id.
In response, the Examiner states that the definition of coupling is
broad enough to encompass connecting elements through magnetism.
Ans. 6. The Examiner observes that Appellant’s Specification fails to
provide an operational definition of “connected” that is sufficiently narrow
to exclude magnetically “coupled.” Id. The Examiner further notes that
claim 16 does not require a connection that excludes structure that may be
interposed between the manipulation unit and the support column. Id.
at 6–7. Furthermore, the Examiner explains that, in the modification
proposed in the rejection, Knieling’s shaft body 18 remains stationary. Id.
at 8.
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In reply, Appellant accuses the Examiner of adopting a construction
of “connect” that is so broad that everything in the entire universe is
connected. Reply Br. 9.
[T]he examiner’s interpretation of “connect” would mean that
all objects in the universe are “connected” to everything else by
virtue of their gravitational fields. Thus, given the examiner’s
definition, no two objects could ever be not connected.
Id. Reply Br. 9. However, Appellant’s hyperbole is not helpful in analyzing
the scope of Appellant’s claim language.
Appellant’s Specification teaches that manipulation unit 4, 5 is
“rotatably connected” to column 6. Spec. 8. Inasmuch as the manipulation
unit rotates in relation to column 6 being fixed in place or stationary, a
person of ordinary skill in the art would understand that such “connection,”
is not a fixed connection locking the two components together. Otherwise,
Appellant’s Specification teaches that there is an “unavoidable spacing”
between the outer wall surface of central column and the inner wall surface
of the ring portion of the manipulation unit. Id. at 4.
Appellant’s manipulation unit 4, 5 rotates about column 6. Spec. 10,
Fig 1. In a substantially similar manner, Knieling’s carrier 8 rotates about
sleeve shaped body 20. Knieling ¶¶ 50–51, Figs. 4, 5. In the Examiner’s
proposed modification, carrier 8 also rotates about (now stationary) shaft 18.
Id., Ans. 8. Knieling’s carrier 8 is mounted via bearing 36 so as to rotate
relative to sleeve-shaped body 20. Knieling ¶ 54. Such bearing is supported
against sleeve-shaped body 20. Id. We interpret such bearing being
“supported against” as substantially identical to Appellant’s “rotatably
connected” relationship between the manipulation unit and support
column 6. As we understand the Examiner’s rejection, shaft 18 becomes
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stationary and, therefore, no longer rotates within sleeve 20. Thus,
elements 18 and 20 of Knieling, taken together, effectively become a central
support column. In that regard, we note that the central support column
identified in the Examiner’s rejection is labeled as such by means of an
annotation to Figure 5. See Final Act. 7. Elsewhere in the Final Office
Action, the Examiner refers to the support column as “not labeled.” Id. at 6.
If the Examiner intended for us to understand that the support column is
limited to shaft 18, we would have expected the Examiner to refer to
shaft 18, which is explicitly labeled as such in Figure 5. In any event, we
agree with the Examiner that there is sufficient connection between carrier 8
and (modified stationary) shaft 18, either alone or through sleeve shaped
body 20, that they are sufficiently “connected” to satisfy the language of
claim 16 at issue. Further in that regard, we also agree with the Examiner
that the magnetic coupling between drive elements 22 and 24 is sufficient to
satisfy the “connected” limitation. Thus, whether the connection is made via
bearing 36 or via magnets 32 and 34 of respective drive elements 22 and 24,
the claim language is satisfied.
Direct Drive
Appellant argues that Knieling fails to disclose a direct drive as
claimed. Appeal Br. 17–18. According to Appellant, magnetic coupling of
magnets 32 and 34 in drive elements 22 and 24 of Knieling amounts to
something other than a “direct” drive. Id.
In response, the Examiner directs our attention to the paragraph 17 of
Knieling which provides as follows:
It is provided here that the two coupling devices rotate together,
i.e. that a rotation of the first drive element, which is arranged
outside the sterile chamber, leads to a synchronous rotation of
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the second drive element. However, it would also be possible
that one of the drive elements is a stator and the second drive
element is a rotor which is arranged such as to be able to rotate
relative to this stator. For example, the first drive element
outside the sterile chamber could be configured as the stator,
which in particular comprises a plurality of electromagnets, and
the second drive element could be a rotor arranged inside the
sterile chamber. In this case, such an electric motor could be
constructed either as an external rotor motor or as an internal
rotor motor.
Knieling ¶ 17.
In reply, Appellant argues that even if the magnets of Figure 5 were
replaced with a stator and rotor, the resulting apparatus would still rotate the
carrier 8 and, therefore, would not cause “reciprocal motion” as recited in
the claim. Reply Br. 11.
As we understand the Examiner’s proposed modification, Knieling’s
carrier 8 would rotate relative to stationary central column 18, 20. Ans. 8.
Appellant does not explain how such motion differs from that of its
manipulation unit 4, 5 with respect to column 6. We are unable to discern
any patentable distinction as to how Appellant’s invention discloses a drive
that is “direct,” but Knieling, modified as proposed, is not direct. Thus, we
are not apprised of error with respect to the Examiner’s findings of fact on
this issue.
Support Column
Appellant argues that Knieling fails to disclose a support column as
claimed. Appeal Br. 18–19. Appellant argues that shaft 18 fits inside
sleeve 20 in a manner such that the shaft never touches carrier 8. Id.
Appellant concedes that sleeve 20 supports bearing 36 that supports
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carrier 8. Id. at 18. Appellant does not explain why it focused on shaft 18
as the support column to the exclusion of sleeve 20.
As we understand the Examiner’s rejection, and as discussed in detail
above, the structure in Knieling that satisfies the central support column
limitation of claim 16 includes sleeve 20. Final Act. 7 (annotated Fig. 5).
With the foregoing understanding, we agree with the Examiner that the
claim limitation at issue is satisfied by Knieling.
Column Defining an Interior Space
Appellant argues that a person of ordinary skill in the art would have
lacked motivation to impart interior space to a support column. Appeal
Br. 20–23. In response, the Examiner finds a person of ordinary skill in the
art would have used a support column with an interior space to act as a
conduit for electrical wires, to power the stator disposed at the top of the
stationary central column 18, 20 as an obvious alternative to rotating the
entire shaft body 18 as discussed above. Ans. 10.
The Examiner’s rationale is sufficient to support the rejection. See In
re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring an obviousness
conclusion to be based on explicit articulated reasoning with rational
underpinning) (cited with approval in KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007)).
Gap Separating Stator and Rotor
Appellant argues that the “gap” limitation in claim 16 is not satisfied
by Knieling, because Knieling’s magnets are separated by the wall of
sleeve 20 and, therefore, are separated by “more than a gap.” Appeal
Br. 19–20.
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This argument is without merit. Knieling’s magnets are spaced apart
from each other and, therefore, not in physical contact with each other.
Knieling, Fig. 5. This is sufficient to establish that there is a “gap” between
them. Appellant does not direct us to any language in the Specification that
would require “gap” to be interpreted as the stator and rotor having nothing
more than air or a vacuum interposed between them.
The Examiner’s findings of fact on this issue are supported by the
record before us.
Conclusion – Claim 16
We have considered Appellant’s remaining arguments and find them
to be without merit. In view of the foregoing discussion, we determine the
Examiner’s findings of fact are supported by a preponderance of the
evidence and that the Examiner’s legal conclusion of unpatentability is well-
founded. We sustain the Examiner’s unpatentability rejection of claim 16.
Claim 17
Claim 17 depends from claim 16 and adds the limitation: “further
comprising a manipulation element connected to said manipulation unit, and
a second direct drive disposed between said manipulation unit and said
manipulation element.” Claims App. Appellant argues that this limitation is
not satisfied by Knieling. Appeal Br. 24–25. In traversing the rejection,
Appellant relies on many of the same arguments concerning the Figure 5
embodiment of Knieling not being a “closing machine” that we previously
considered and found unpersuasive with respect to claim 16 and find equally
unpersuasive here. Id.
The Examiner explains that the first drive of Knieling rotates carrier 8
and that the second drive rotates the closing head 6. Ans. 12.
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Operation of the Figure 7 embodiment is described in Knieling
paragraphs 56–58. Knieling ¶¶ 56–58. The Examiner’s finding that
Knieling discloses two direct drives as claimed is supported by a
preponderance of the evidence. Id. We sustain the Examiner’s
unpatentability rejection of claim 17.
Claim 19
Claim 19 depends from claim 17 and adds the limitation: “wherein
said second direct drive comprises a stator and a rotor, wherein said stator is
connected to said manipulation unit and said rotor is movable relative to said
stator.” Claims App. In traversing the rejection, Appellant argues that this
limitation is missing in Knieling. Appeal Br. 30–31. Appellant also repeats
the “no second drive” argument that we previously considered and found
unpersuasive with respect to claim 17 and find equally unpersuasive here.
Id. Appellant also re-argues the “ring” limitation that we rejected in
connection with claim 16. Id.
In response to the argument that Knieling’s second drive lacks a stator
and rotor as claimed, the Examiner explains:
When combining the embodiments shown in Figures 5 and 6
with the embodiments shown in Figures 7 and 8, the closing
system of the embodiments shown in Figures 7 and 8 would be
combined with the carousel system of the embodiments shown
in Figures 5 and 6 to result in a single device. In order for the
stator and rotor of the second drive to rotate the closing head of
the closing system relative to the container, the stator would
have to be situated on the carrier and the rotor situated with the
closing head.
Ans. 15. We note further that Knieling teaches that inner and outer rotating
magnets 32b and 34b cooperate to generate rotational movement of the
(Figure 8) carrier 8 and also of closing head 6. Knieling ¶ 61. Appellant’s
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arguments fail to apprise us of error in the Examiner’s findings of fact or
conclusion of unpatentability. We sustain the Examiner’s unpatentability
rejection of claim 19.
Claim 20
Claim 20 depends from claim 19 and adds the limitation: “wherein
said stator and said rotor of said second direct drive are separated by a gap
along a radial plane defined by said axis of rotation.” Claims App.
Appellant raises a plethora of arguments against the rejection, which have
already been considered above, or which are not directed to the disclosure of
Knieling relied on by the Examiner and, therefore, are not persuasive.
Compare Final Act. 10, with Appeal Br.31–32. A cursory review of
Figure 8 and paragraphs 59–61 of Knieling demonstrates that the
Examiner’s findings are amply supported by the record.
We are not apprised of error and sustain the Examiner’s
unpatentability rejection of claim 20.
Claim 23
Claim 23 depends from claim 16 and adds the limitation: “further
comprising a plurality of manipulation elements disposed at a periphery of
said manipulation unit, and a cam for acting upon said manipulation
elements.” Claims App. Appellant traverses the rejection by arguing that
carrier 8 in Figure 5 of Knieling fails to satisfy the manipulation unit
element of claim 23. Appeal Br. 32.
Appellant’s argument is not persuasive as it mischaracterizes the
teachings of Knieling regarding the Figure 5–6 embodiment, on the one
hand, and the Figure 6–8 embodiment on the other hand, taken as a whole.
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Figures 7–8 of Knieling depict closing head (manipulation element) 6
offset radially from shaft 84, so the manipulation element is peripheral to the
manipulation unit. Knieling, Figs. 7–8. Operation of Knieling’s cam is
described in the following paragraph.
The drive rod 92 is guided in a guide device 78 and comprises
an actuating element 74 which cooperates with a guide cam 72.
This guide cam 72 is arranged on the shaft body 84 in a height-
displaceable manner via a carriage 82, the shaft body being
rotatably mounted in the carriage.
Id. ¶ 58.
The Examiner’s findings are supported by a preponderance of the
evidence. We sustain the Examiner’s unpatentability rejection of claim 23.
Claim 24
Claim 24 depends from claim 16 and adds the limitation: “further
comprising a plurality of manipulation elements, each of which comprises a
drive that controls motion of said manipulation element.” Claims App. In
traversing the rejection, Appellant, once again, confuses the teachings of
Knieling with respect to the cleaning machine embodiment of Figures 5
and 6 as it relates to and shares common features with the closing machine
of Figures 6–8. Appeal Br. 32–33.
Figure 8 of Knieling depicts closing head 6, including magnets 32b
and 34b. Knieling, Fig. 8. A person of ordinary skill in the art would
understand that Knieling’s closing machine features a plurality of such
closing heads. We sustain the Examiner’s unpatentability rejection of
claim 24.
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Claim 26
Claim 26 depends from claim 16 and adds the limitation:
wherein said central supporting column comprises an outer wall
surface, and wherein said structure, which is selected from the
group consisting of said stator and said rotor, is flush with said
outer wall surface of said central supporting column.
Claims App. Appellant argues that Knieling’s inner magnet is flush with
shaft 18, which is not a supporting column. Appeal Br. 33.
As we understand the Examiner’s rejection of claim 16, discussed
above, the central support column of Knieling includes sleeve 20. With such
understanding, we determine that neither the stator nor the rotor of Knieling
is flush with outer wall surface of sleeve 20. See Knieling, Fig. 5.
Consequently, we do not sustain the Examiner’s unpatentability
rejection of claim 26.
Claim 27
Claim 27 depends from claim 16 and adds the limitation: “wherein
said manipulation unit comprises a head plate, and wherein said ring is
connected to an underside of said head plate.” Claims App. Appellant
argues that Knieling’s corresponding structure to Appellant’s head plate and
ring is not “connected” because they are “integral” to each other. Appeal
Br. 33–35.
Appellant’s argument is without merit. As discussed above in relation
to claim 16, Knieling’s ring structure is connected to its head plate structure.
Under the facts and circumstances of this case, we do not draw a patentable
distinction between a permanent connection such as welding or integral one-
piece construction such as die-casting and a more temporary connection
such through mechanical fasteners.
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Consequently, we sustain the Examiner’s unpatentability rejection of
claim 27.
Claim 28
Claim 28 falls with claim 16. Appeal Br. 35. See 37 C.F.R.
§ 41.37(c)(1)(iv) (failure to separately argue claims constitutes a waiver of
arguments for separate patentability).
Claim 29
Claim 29 depends from claim 16 and adds the limitation: “wherein
said first direct drive and a second direct drive are configured to be
rotationally symmetric about a common and coincident central axis.”
Claims App. Appellant argues that this limitation is not met by the
combined Figures 5 and 7 embodiments of Knieling. Appeal Br. 35–36.
In response, the Examiner explains that the Figure 5 embodiment of
Knieling rotates about central axis T and that the Figure 7 embodiment
similarly rotates about central shaft 84. Ans. 21. A person of ordinary skill
in the art would appreciate that when combining the respective embodiments
of Figures 5 and 7, as is expressly suggested by Knieling as discussed above,
that both direct drives in the combination will be rotationally symmetric
about the central axis of the device.
The Examiner is entitled, indeed required, to apply the broadest,
reasonable construction to a claim term that is consistent with the
specification. Am. Acad. of Sci., 367 F.3d at 1364. Appellant fails to offer a
proposed construction of “rotationally symmetric,” supported by the
Specification, that is sufficiently narrow to differentiate the claimed
invention from Knieling. Using a broad but reasonable interpretation, we
fail to see any patentable distinction between Appellant’s invention and
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Knieling based on the respective rotational axis of the various drive units.
We sustain the Examiner’s unpatentability rejection of claim 29.
Claim 31
Claim 31 falls with claim 27. Appeal Br. 37. 37 C.F.R.
§ 41.37(c)(1)(iv).
Claim 32
Claim 32 depends from claim 16 and adds the limitation: “further
comprising a capping head disposed at a periphery of said manipulation
unit.” Claims App. Appellant argues that Knieling fails to disclose that
closing head 6 is at the periphery of the manipulation unit. Appeal Br. 37.
It appears to us that Knieling inadvertently labeled two different
elements as a “carrier 8,” a first such element in Figure 5 and a different
element in Figures 7 and 8. Knieling ¶¶ 51–61, Figs. 5–8. In Figure 5,
carrier 8 sits atop and rotates about central support column 20. Id. at Fig. 5.
In Figures 7 and 8, carrier(s) 8 is associated with closing head(s) 6. Id. at
Figs. 7, 8. Each closing head is displaced laterally from shaft 84. Id. at
Fig. 7. Such lateral displacement is sufficient to satisfy Appellant’s
“disposed at a periphery” limitation. A person of ordinary skill in the art
would have been able to understand Knieling’s invention notwithstanding
this minor, duplicative labeling mistake.
We sustain the Examiner’s unpatentability rejection of claim 32.
Claim 34
Claim 34 falls with claim 24. Appeal Br. 37. 37 C.F.R.
§ 41.37(c)(1)(iv).
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Claim 35
Claim 35 depends from claim 24 and adds the limitation: “wherein
said drive that controls motion of said manipulation element rotates said
manipulation element.” Claims App. Appellant’s traverse mischaracterizes
the Examiner’s rejection as relying on shaft 84 of Knieling to rotate the
manipulation element. Appeal Br. 37–38. The Examiner illuminates
Appellant’s error in the Answer. Ans. 24.
As previously discussed in more detail, Figure 8 of Knieling depicts
magnetic elements 32b and 34b that cause rotation of closing head 6, which
corresponds to Appellant’s manipulation element. Knieling ¶ 61, Fig. 8.
We sustain the Examiner’s unpatentability rejection of claim 35.
Claim 36
Claim 36 depends from claim 16 and adds the limitation: “wherein
said stator is attached to said central supporting column.” Claims App.
Appellant argues that element 22 relied on by the Examiner in the rejection
is not present in the Figure 5 embodiment of Knieling. Appeal Br. 38.
Appellant’s argument is not well taken. Knieling teaches that, in the
Figure 5 embodiment, rotation of carrier about carrier axis T is generated by
a magnetic coupling — “as described in the above-mentioned figures.”
Knieling ¶ 51. Element 22 is depicted in Figures 1–3, which we interpret as
the “above-mentioned figures” referred to in paragraph 51. Moreover, as
discussed in connection with claim 16 above, the Examiner’s determination
of obviousness is premised on replacing the rotating magnetic elements 34
and 34 in Figures 5–6 with a stator-rotor combination, with the stator
attached to the central supporting column 18, 20. We are, thus, not apprised
of error and sustain the Examiner’s unpatentability rejection of claim 36.
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Claim 37
Claim 37 depends from claim 16 and adds the limitation: “wherein
said rotor is attached to said central supporting column.” Claims App. The
Examiner finds that modifying Knieling to attach the rotor to the support
column entails only a simple rearrangement of parts that is within the ambit
of ordinary skill. Final Act. 12–13.
Appellant argues that there is insufficient legal basis for the
Examiner’s findings and conclusion of unpatentability. Appeal Br. 38–40.
In response, the Examiner states:
If the carrier is able to rotate when the stator is attached to the
carrier, then having the stator or the rotor attached to the central
support column produces the same predictable result of rotating
the carrier relative to the central support column by using a
rotor and stator system.
Therefore, since the Specification as originally filed provides
no criticality of having the rotor on the central support column,
it would have been prima facie obvious to modify Knieling et
al. and Bernhard to obtain the invention as specified in
Claim 37 because such a modification would have been
considered a mere design consideration which fails to
patentably distinguish over the prior art.
Ans. 26.
A claim can be obvious even where all of the claimed features are not
found in specific prior art references, where there is a showing of a reason to
modify the teachings of the prior art to achieve the claimed invention. See
Randall Mfg. v. Rea, 733 F.3d 1355, 1361–62 (Fed. Cir. 2013); see also
Broadcom Corp. v. Emulex Corp., 732 F.3d 1325, 1334 (Fed. Cir. 2013).
For this reason, “we do not ignore the modifications that one skilled in the
art would make to a device borrowed from the prior art.” In re ICON Health
& Fitness, Inc., 496 F.3d 1374, 1382 (Fed. Cir. 2007). Here, a person of
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ordinary skill in the art would have rearranged the respective positions of the
rotor and stator in order to impart the correct direction of rotation to the
apparatus. This is a sufficient reason to rearrange the parts.
Appellant’s rebuttal that placing the rotor on Knieling’s central
column 18, 20, and the stator on Knieling’s carrier 8, “means that the
carrier 8 must be stationary” (Appeal Br. 39) is not supported by the
evidence of record. Appellant’s Specification indicates that a rotor may be
placed on the central column, and the stator placed on a manipulation unit,
and still result in a functioning device. Spec. 3:3–29, 4:23–5:5, 10:19–24.
Such disclosure reinforces the Examiner’s determination that there is no
criticality to the respective placement of the rotor and the stator. Further,
Appellant presents neither evidence nor persuasive technical reasoning that
rearranging the relationship of a stator to a rotor requires more than ordinary
skill or produces unexpected results. We are persuaded by the Examiner’s
reasoning and sustain the rejection of claim 37.
Claim 38
Claim 38 falls with claim 16. Appeal Br. 40. 37 C.F.R.
§ 41.37(c)(1)(iv).
Claim 39
Claim 39 depends from claim 16 and adds the limitation: “wherein
said central supporting column comprises an outer wall surface, said outer
wall surface being flush with said rotor.” Claims App. As we understand
the rejection, the outer wall surface of the support column in Knieling is the
outer wall surface of sleeve 20. See, e.g., Final Act. 7. With that in mind,
even under the modification of Knieling proposed by the Examiner, the rotor
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would not be flush with the outer wall surface of sleeve 20. See, e.g.,
Knieling, Fig. 5.
Accordingly, we do not sustain the Examiner’s unpatentability
rejection of claim 39.
Claim 43
Claim 43 depends from claim 16 and adds the limitation: “wherein
said first direct drive is a drive that is operated on a purely electromagnetic
basis and without interposed power-transmission elements between said
stator and said rotor thereof.” Claims App.
Appellant argues that the rejection cites to paragraph 17, which is not
explicitly recited as related to the Figure 5 embodiment of Knieling. Appeal
Br. 42. Appellant further argues that:
In figure 5 [of Knieling], a motor 26 rotates the shaft 18 about
axis T so that an inner magnet 32 on the shaft can drag an outer
magnet 36 along with it, thus rotating the carrier 8. This
involves a magnetic transmission made of inner and outer
magnets 32, 36. Thus, the drive 26 does not directly drive the
carrier 8. It drives it indirectly by rotating the inner magnet 32,
which then couples to the outer magnet 36 and rotates the
carrier 8.
Id.
In response, the Examiner refers to paragraph 17 of Knieling as
teaching that it would be possible that one drive element is a stator and the
second drive element is a rotor, which is arranged to rotate relative to the
stator. Ans. 30. We agree with Examiner that such describes a “direct”
drive as claimed. We disagree with Appellant that paragraph 17 of Knieling
is not applicable to the Examiner’s proposed modification of Knieling.
We sustain the Examiner’s unpatentability rejection of claim 43.
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Unpatentability of Claims 18, 30, and 40–42
over Knieling, Bernhard, and Vander Bush
Claim 18
Claim 18 depends from claim 16 and adds the limitation: “wherein
said first direct drive and said second direct drive are configured to be
operable independently of each other.” Claims App. The Examiner relies
on Vander Bush as disclosing this limitation. Final Act. 15. Appellant
argues that Vander Bush does not satisfy this limitation. Appeal Br. 26–30.
The Examiner directs our attention to a passage in Vander Bush
teaching that:
The improvement of the invention comprising a control means
for directly sensing the instantaneous turret speed and reactively
controlling the rotation means to rotate the spindle shafts at a
constant rotational speed to thread caps onto the bottles with a
constant final torque tightness independent of the turret speed
and the bottle through put rate.
Vander Bush, col. 2, ll. 21–27.
In essence, Appellant argues that such teaching is not reflective of true
“independence.” Appeal Br. 27.
Vander Bush discloses a rotary capping machine. Vander Bush,
Abstract. In Vander Bush, turret 28 rotates about non-rotating center
shaft 26. Id. The rotational speed of turret 28 can be adjusted to alter the
through put rate of the machine. Id. Spindle shafts 44 that rotate capping
heads 48 are controlled to always rotate at a constant speed regardless of
changes to the turret speed. Id. This is sufficient “independence” to satisfy
the claim language of claim 18.
We sustain the Examiner’s unpatentability rejection of claim 18.
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Claim 30
Claim 30 depends from claim 17 and adds the limitation: “further
comprising a controller for triggering said first and second direct drives
independently of each other.” Claims App. The Examiner relies on Vander
Bush as disclosing this limitation. Final Act. 15. Appellant argues that the
claim limitation is not met. Appeal Br. 36. Appellant asserts that
“triggering” refers to starting and stopping the rotation of the direct drives
independent of each other. Id.
We have reviewed Appellant’s Specification, in general, and its
teaching about “triggering” the drives, in particular. Spec. 8, 16. In our
opinion, the Specification does not support Appellant’s narrow construction
of the term “triggering.” In our opinion, one or both of the drives may be
considered “triggered” when the control means changes the rotational speed
of the respective drive. Using such a construction of “triggering,” we agree
with the Examiner that Vander Bush has a control means that “triggers” the
drive for the spindle shafts and capping heads independently of the drive for
the turret.
We sustain the Examiner’s unpatentability rejection of claim 30.
Claim 40
Claim 40 depends from claim 16 and adds the limitation: “further
comprising a controller for triggering said first direct drive independently of
a second direct drive.” Claims App. The Examiner finds Vander Bush
discloses “a controller (76) for triggering said first direct drive
independently of a second direct drive.” Final Act. 16 (citing Vander Bush,
col. 5, ll. 17–24).
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Appellant argues that the Examiner errs, because “control means 76 is
not described as triggering the first drive, which would be drive 30.” Appeal
Br. 41. According to Appellant, Vander Bush’s first drive 30 is controlled
by an operator using control panel 24. Id. Appellant argues that control
means 76 only controls second drive 68. Id.
In answer, the Examiner no longer relies solely on element 76 as the
controller that triggers the first direct drive — that is, motor 30 which rotates
turret 28. Ans. 28–29; see Vander Bush, col. 3, ll. 27–29, 5 ll. 49–58. The
Examiner nonetheless maintains that Vander Bush discloses a controller for
triggering the first direct drive (for turret 28) independently of a second
direct drive (for spindle shafts 44). Ans. 28–29. We agree with those
findings.
Specifically, in Vander Bush, the operator inputs bottle through put
speed into the control panel 24. Vander Bush, col. 5, ll. 49–58. Changes in
turret speed are then directed by the control means in response to change
inputs for bottle through put speed. Id. Vander Bush’s control means
further “sens[es] the instantaneous turret speed and reactively control[s] the
rotation means to rotate the spindle shafts at a constant rotational speed to
thread caps onto the bottles with a constant final torque tightness
independent of the turret speed and the bottle through put rate.” Id. at col. 2,
ll. 21–27 (emphasis added). This is sufficient to satisfy the language of
claim 40. We sustain the Examiner’s unpatentability rejection of claim 40.
Claims 41 and 42
Claims 41 and 42 fall with claim 16. Appeal Br. 42. 37 C.F.R.
§ 41.37(c)(1)(iv).
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CONCLUSION
In summary:
Claims
Rejected
§ Reference(s)/Bases Aff’d Rev’d
42 112b Indefiniteness 42
16, 17, 19, 20,
23, 24, 26-29,
31, 32, 34-39, 43
103 Knieling, Bernhard 16, 17, 19, 20, 23,
24, 27-29, 31, 32,
34-38, 43
26, 39
18, 30, 40-42 103 Knieling, Bernhard,
Vander Bush
18, 30, 40-42
Overall
Outcome
16-20, 23, 24, 27-
32, 34-38, 40-43
26, 39

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED IN PART