Stolle Machinery Company, LLC

Patent Trials and Appeals Board

Dec 7, 2020

2020000079 (P.T.A.B. Dec. 7, 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.
15/650,005 07/14/2017 James W. Dominico 291448-01512 9291
3705 7590 12/07/2020
ECKERT SEAMANS CHERIN & MELLOTT LLC
U.S. Steel Tower
600 Grant Street, 44th Floor
Pittsburgh, PA 15219
EXAMINER
THOMAS, BINU
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
12/07/2020 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):
ipmail@eckertseamans.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES W. DOMINICO, WENIEK (REX) E. JABLONSKI,
RUSSELL DIDONATO, and LEONARD A. VERHOVEN
Appeal 2020-000079
Application 15/650,005
Technology Center 1700
Before TERRY J. OWENS, JEFFREY B. ROBERTSON, and
JAMES C. HOUSEL, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–17.2 We have jurisdiction under
35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Stolle
Machinery Company, LLC. Appeal Brief (“Appeal Br.”) filed June 20,
2019, 1.
2 Pending claims 18–20 have been withdrawn from consideration and are not
before us on appeal. Non-Final Office Action (“Non-Final Act.”) dated
December 6, 2018.
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We REVERSE.
CLAIMED SUBJECT MATTER
The invention relates to a pretreatment assembly structured to expose
a printable substrate on a workpiece to ions, wherein the workpiece is in
constant motion. Specification (“Spec.”) filed July 14, 2017, 1:6–8.3
Claims 1, 11, and 17 are independent. Claim 1 recites a product
support assembly, whereas claims 11 and 17 each recites a pretreatment
assembly including a product support assembly.
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the claimed subject matter:
1. A product support assembly for a pretreatment assembly,
said pretreatment assembly structured to process a number of
work pieces, said pretreatment assembly including a number of
ion generating stations, said product support assembly
comprising:
a primary support assembly;
a primary drive assembly;
said primary drive assembly operatively coupled to said
primary support assembly;
wherein said primary drive assembly imparts a constant
motion to said primary support assembly;
a number of secondary support assemblies;
each secondary support assembly structured to support a
number of work pieces;

3 This Decision also cites to the Examiner’s Answer (“Ans.”) dated August
8, 2019, and the Reply Brief (“Reply Br.”) filed October 2, 2019.
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each secondary support assembly movably coupled to
said primary support assembly;
a secondary drive assembly;
said secondary drive assembly operatively coupled to
each secondary support assembly; and
wherein said secondary drive assembly selectively
imparts a motion to each secondary support assembly.

REFERENCES
The Examiner relies on the following prior art:
Name Reference Date
Finan US 6,769,357 B1 Aug. 03, 2004
Chu et al. (“Chu”) US 2008/0136309 A1 June 12, 2008
Perret et al. (“Perret”) US 2015/0004320 A1 Jan. 01, 2015

REJECTIONS
The Examiner maintains, and Appellant requests our review of, the
following rejections:
1. Claims 4 and 14 under 35 U.S.C. § 112(b) as indefinite;
2. Claims 1–3 and 8–104 under 35 U.S.C. § 102(a)(1) as
anticipated by Finan;

4 The Examiner’s statement of rejection erroneously includes claims 18–20,
which were previously withdrawn from consideration as a result of a
restriction requirement. See Non-Final Act. 1, 4. In addition, the Final Office
Action included only claims 1–3 and 8–10 in this rejection. See Final Act. 3–
5. Accordingly, we have corrected the statement to reflect the claims subject
to this rejection consistent with the prosecution record.
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3. Claims 1–4 and 6–17 under 35 U.S.C. § 102(a)(1) as
anticipated by Perret; and
4. Claim 5 under 35 U.S.C. § 103 as unpatentable over Perret
and Chu.
OPINION
Rejection 1: Indefiniteness
The Examiner rejects claims 4 and 14 under 35 U.S.C. §112(b) as
indefinite due to the use of the term “effective.” Ans. 3. The Examiner
determines that it is unclear what would constitute an “effective distance”
because “it [is] unclear what effect that is applied to the workpiece in order
to consider the required amount of ionization of the workpiece to be
effective.” Id. The Examiner states that the Specification’s description of
“effective distance” is not a clear definition because it fails to describe the
effect the required amount of ionization to the workpiece is to provide. Id. at
9.
Appellant asserts that the Specification provides a special definition
for “effective distance,” i.e.,
“. . . the ‘effective distance’ is the distance wherein a specific
ionization surface 94 causes the required amount of ionization
to the work piece. That is, the ‘effective distance’ varies by the
type of ionization surface 94, the material of the work piece and
the rotational speeds of the primary support assembly 22 and/or
the each secondary support assembly 24.”
Appeal Br. 12, quoting Spec. 12:23–27. In addition, Appellant contends that
those skilled in the art would know how to select the ionization surface and
how to place this surface at an “effective distance” from the workpiece to
cause the required amount of ionization. Id. Appellant asserts that the
variables of rotation speed, distance, and ion source strength are all factors
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known to those skilled in the art such that a skilled artisan would understand
the distance an ion generating station should be placed from a workpiece so
as to generate the required amount of ionization to the workpiece. Id. at 13.
Subsection (b) of 35 U.S.C. § 112 requires the specification “conclude
with one or more claims particularly pointing out and distinctly claiming the
subject matter which the applicant regards as his invention.” 35 U.S.C. §
112(b). This portion of the statute requires the claims “be cast in clear—as
opposed to ambiguous, vague, indefinite—terms.” In re Packard, 751 F.3d
1307, 1313 (Fed. Cir. 2014). Although exact precision is not required, the
claim language must be as reasonably precise as the subject matter permits.
Id.; see also In re Moore, 439 F.2d 1232, 1235 (CCPA 1971) (The first
inquiry “is merely to determine whether the claims do, in fact, set out and
circumscribe a particular area with a reasonable degree of precision and
particularity.”). “The standard of indefiniteness is somewhat high; a claim is
not indefinite merely because its scope is not ascertainable from the face of
the claims.” Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313,
1342, 65 USPQ2d 1385, 1406 (Fed. Cir. 2003). Rather, “[a] claim is
indefinite if, when read in light of the specification, it does not reasonably
apprise those skilled in the art of the scope of the invention.” Id.
Claims 4 and 14 each require that each mandrel assembly body
second end path of travel is disposed an effective distance from each
ionization surface. As Appellant asserts, the Specification describes this
relationship, i.e., effective distance, between each mandrel assembly body
second end path of travel and each ionization surface as the distance
between these two structures such that the workpieces receive the required
amount of ionization. However, the Examiner determines that this
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description is insufficient because the Specification fails to describe the
effect of the required amount of ionization.
As we understand the Examiner’s concern, without knowing what
effect the ionization is to provide to the workpieces, it would not be possible
to determine how much ionization is required. This concern is related not to
the definiteness of the relevant claims, but to the breadth of these claims. In
other words, for whatever effect of ionization to a workpiece is desired,
those skilled in the art would be capable of determining the required amount
of ionization. Because neither the Specification nor the claims limit the
effect, the claims are broad in that an effective distance covers any desired
effect due to the ionization. As indicated above, merely because a claim may
be broad in scope does not render the claim indefinite. In re Miller, 441 F.2d
689, 693 (CCPA 1971) (“[B]readth is not to be equated with
indefiniteness.”).
We conclude that the Examiner has not established that claims 4 and
14 are indefinite and, therefore, we do not sustain the Examiner’s rejection
of these claims under 35 U.S.C. § 112(b).
Rejections 2 and 3: Anticipation by Finan or Perret
An anticipating reference must disclose every claim limitation, either
expressly or inherently. E.g., Atofina v. Great Lakes Chem. Corp., 441 F.3d
991, 999 (Fed. Cir. 2006). Inherent disclosure requires that the prior-art
reference “necessarily include the unstated limitation.” Id. at 1000; see also
Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991).
“‘[P]robabilities or possibilities’” are not enough to find that the prior art
inherently discloses something not explicitly present. In re Oelrich, 666 F.2d
578, 581 (CCPA 1981). A claim is anticipated only where “each and every
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limitation is found either expressly or inherently in a single prior art
reference.” Celeritas Techs., Ltd. v. Rockwell Int’l. Corp., 150 F.3d 1354,
1361 (Fed. Cir. 1998). Anticipation is established when a single prior art
reference discloses all features of the claimed invention. In re Spada, 911
F.2d 705, 708 (Fed. Cir. 1990).
The Examiner rejects claims 1–3 and 8–10 under 35 U.S.C.
§ 102(a)(1) as anticipated by Finan. The Examiner finds that Finan teaches a
product support assembly as recited in claim 1, including servo motor 25
that “is capable of imparting a constant motion to the turret [or primary
support assembly 26].” Ans. 3–4.
The Examiner also rejects claims 1–4 and 6–17 under 35 U.S.C.
§ 102(a)(1) as anticipated by Perret. The Examiner finds that Perret teaches a
product support assembly as recited in claim 1, including a support plate
motor 2 for imparting motion to the support plate, wherein the support plate
rotates at a speed to pass a number of articles for a given time past antistatic
and surface treatment stations. Ans. 5–6.
For both of these rejections, the Examiner interprets “constant” to
mean “occurring continuously over a period of time” or “remaining the same
over a period of time.” Ans. 7. The Examiner finds that the Specification
does not provide a special definition for “constant,” and concludes that the
ordinary meaning, i.e., dictionary definition, controls. Id. Moreover, the
Examiner interprets “constant motion” as a functional limitation which
merely requires the ability to so perform. Id. at 10. The Examiner cites a
number of US patent publications in support of finding that Finan’s servo
motor is capable of constant motion. Id. at 8. In addition, the Examiner finds
that the Specification fails to provide a scope for a period of time and,
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therefore, “any reasonable period of time will be applied.” Id. at 9. As such,
the Examiner states that the ordinary artisan “could define the time period
between index positions as the time period for motion which is capable of
being of constant motion/speed.” Id. at 10.
Appellant argues, inter alia, that the Examiner ignores the special
definition of “constant motion” set forth in the Specification. Appeal Br. 14.
Appellant asserts that the Specification defines a “constant motion” as
meaning “that the primary support assembly 22 moves at one of a ‘constant
speed,’ a ‘substantially constant speed,’ or a ‘generally constant speed.’” Id.
at 10, citing Spec. 20:7–9. Appellant further asserts that the Specification
sets forth that “‘constant speed’ means that the primary support assembly 22
moves at a set and sustained speed during operation of the primary drive
assembly 26 with no variation in the speed,” “‘substantially constant speed’
means that the primary support assembly 22 moves at a set and sustained
speed during operation of the primary drive assembly 26 with minimal
variation[, i.e., about 10%,] in the speed,” and “‘generally constant speed’
means that the primary support assembly 22 moves at a set and sustained
speed during operation of the primary drive assembly 26 with some
variation[, i.e., about 20%] in the speed.” Id. at 14–15, citing Spec. 10:24–
11:11. Appellant also emphasizes that the Specification clearly teaches that
“if the primary support assembly 22 ‘indexes,’ then the primary support
assembly 22 is not moving at a ‘constant speed,’ a ‘substantially constant
speed,’ or a ‘generally constant speed.’” Id. at 15.
Appellant next contends that because Finan never teaches that the
servo motor is capable of imparting a constant motion to the turret, the
Examiner is relying on a possibility that Finan is capable of imparting
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constant motion. Appeal Br. 15. To the contrary, Appellant contends that
Finan’s servo motors “rotate and register” the mandrels in front of the print
heads, and Finan’s mandrel turret is rotated by an “indexing drive, such as a
servo motor” that “pauses in front of each print-head for a period of time.”
Id. at 16. Appellant contends that Perret, like Finan, also is directed to an
indexing drive. Id. at 24–25. Appellant reiterates that the claims exclude an
indexing motion by virtue of the Specification’s special definition for
“constant motion.” Id. In addition, Appellant urges that the Examiner’s
additional US patent publications relied on as evidence that servo motors are
capable of constant motion do not make clear that Finan’s servo motor also
possesses this capability. Id. at 19–20.
A central issue before us in this appeal is the meaning of “constant
motion” as used in independent claims 1, 11, and 17, and, in particular, the
meaning of the limitation, “said primary drive assembly imparts a constant
motion to said primary support assembly.” As we note above, the Examiner
interprets this limitation to include indexing motion wherein speed is
constant for the period of time between indexing positions or, alternatively,
as a functional recitation that is met if the prior art teaches a primary drive
assembly that is capable of performing this function. On the other hand,
Appellant contends that the former interpretation is inconsistent with the
special definition for “constant motion.” With regard to the latter
interpretation, Appellant contends that Finan and Perret each teach indexing
drives and neither Finan nor Perret teaches a capability to impart constant
motion as defined in the Specification.
We begin, appropriately, with the claim’s words. See Amazon.com,
Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001)
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(“Only when a claim is properly understood can a determination be made . . .
whether the prior art anticipates and/or renders obvious the claimed
invention.”). The PTO’s traditional pre-issuance approach has been to give
claims “their broadest reasonable construction ‘in light of the specification
as it would be interpreted by one of ordinary skill in the art.’” Phillips v.
AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (emphasis added).
“Therefore, we look to the specification to see if it provides a definition for
claim terms, but otherwise apply a broad interpretation.” In re ICON Health
& Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). Our case law has
recognized that “the specification may reveal a special definition given to a
claim term by the patentee that differs from the meaning it would otherwise
possess.” Phillips, 415 F.3d at 1316. When the patentee acts as its own
lexicographer, that definition governs. See id. “To act as its own
lexicographer, a patentee must ‘clearly set forth a definition of the disputed
claim term’ other than its plain and ordinary meaning.” Thorner v. Sony
Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (quoting
CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir.
2002)). Further, extrinsic evidence such as dictionary definitions may be
utilized when construing claim terms, so long as the extrinsic evidence does
not contradict any definition found in the specification, including the claims
and written description. Cf. Advanced Fiber Tech. (AFT) Trust v. J & L
Fiber Servs., Inc., 674 F.3d 1365, 1374–75 (Fed. Cir. 2012) (internal
citations omitted).
Having considered the Examiner’s and Appellant’s respective
interpretations, we find the broadest reasonable interpretation consistent with
the Specification is that the primary drive assembly imparts a set and
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sustained speed, with at most 20% variability in speed, to the primary
support assembly during operation of the drive assembly. Spec. 10:21–11:3,
20:7–9. In addition, as Appellant urges, the claims specifically exclude
indexing motion, which entails intermittently or periodically stopping
motion of the primary support assembly. See id. at 11:3–7. We do not rely
on the Examiner’s dictionary definition for “constant” because it is
inconsistent with, or at least broader than, the Specification’s special
definition.
Further, although the Examiner applies a broad meaning to the
limitation “imparts a constant motion” to mean “capable of imparting a
constant motion,” we find the ordinary and customary meaning of this
limitation, especially in light of Appellant’s Specification, supports a
narrower meaning for this limitation to require that the primary drive
assembly is specifically designed and constructed to impart constant motion
to the primary support assembly, and not the broader meaning to encompass
primary drive assemblies capable of doing so. Cf. Aspec Eyewear, Inc. v.
Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012) (The phrase
“adapted to” construed narrowly to mean “configured to”, as opposed to
“capable of” or “having the capacity of”.); Boston Scientific Corp. v. Cordis
Corp., 2006 WL 3782840 (N.D. CA. 2006) (“A widely accepted dictionary
definition of the word ‘configure’ means ‘[t]o design, arrange, set up, or
shape with a view to specific applications or uses.’ American Heritage
Dictionary 386 (4th ed. 2000).”). This interpretation is bolstered by the
Specification’s special definition for “constant motion”, which not only
requires a set and sustained speed during operation of the drive assembly,
but also specifically excludes indexing motion.
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Applying this interpretation to the claims, we find that both Finan and
Perret teach indexing drive assemblies, and neither reference teaches that its
indexing drive assembly is capable of imparting “constant motion,” much
less actually imparting such constant motion to the primary support
assemblies. Although the Examiner attempts to establish that the prior art
drive assembly servo motors are capable of imparting “constant motion,” we
note that Finan teaches control and programming signals for the servo
motors and Perret teaches a programmable control system for the motor,
suggesting in each case that neither reference is actually programmed to
impart “constant motion.” Thus, as neither Finan nor Perret meets all the
limitations of claims 1, 11, or 17, we cannot sustain the Examiner’s
anticipation rejections of these claims, nor the claims that depend thereon.
Rejection 4: Obviousness over Perret and Chu
The Examiner rejects claim 5 under 35 U.S.C. § 103 as unpatentable
over Perret and Chu. The Examiner relies on the prior finding that Perret
teaches a primary drive assembly imparting constant motion to a primary
support assembly, which we held above to be erroneous. The Examiner does
not rely on Chu to remedy this deficiency. As such, we likewise cannot
sustain the Examiner’s obviousness rejection of claim 5.
CONCLUSION
Upon consideration of the record and for the reasons set forth above
and in the Appeal and Reply Briefs, the Examiner’s decision to reject claims
1–17 is reversed.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
4, 14 112(b) Indefiniteness 4, 14
1–3, 8–10 102(a)(1) Finan 1–3, 8–10
1–4, 6–17 102(a)(1) Perret 1–4, 6–17
5 103 Perret, Chu 5
Overall
Outcome
1–17

REVERSED