Derrick CorporationDownload PDFPatent Trials and Appeals BoardJun 2, 20212021002771 (P.T.A.B. Jun. 2, 2021) Copy Citation 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. 16/028,013 07/05/2018 Keith F. Wojciechowski 13912.008US6 4879 39564 7590 06/02/2021 FisherBroyles, LLP - MAIN CN 945 East Paces Ferry Rd. NE Suite 2000 Atlanta, GA 30326 EXAMINER RODRIGUEZ, JOSEPH C ART UNIT PAPER NUMBER 3655 NOTIFICATION DATE DELIVERY MODE 06/02/2021 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): docketing@fisherbroyles.com patent@fisherbroyles.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KEITH F. WOJCIECHOWSKI Appeal 2021-002771 Application 16/028,013 Technology Center 3600 Before JENNIFER D. BAHR, DANIEL S. SONG, and MICHAEL J. FITZPATRICK, Administrative Patent Judges. BAHR, 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 1–30. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Derrick Corporation. Appeal Br. 1. Appeal 2021-002771 Application 16/028,013 2 CLAIMED SUBJECT MATTER Appellant’s invention is directed to screening members and screening assemblies for vibrator screening machines. Spec. 1:10–17. Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A screen assembly, comprising: a thermoplastic screen element including a screen element screening surface having a series of screening openings; and a subgrid including multiple elongated structural members forming a grid framework having grid openings, wherein the thermoplastic screen element spans at least one of the grid openings and is attached to a top surface of the sub grid, wherein multiple independent subgrids are permanently secured to each other to form the screen assembly, wherein the screen assembly is an independent structure configured to be removably secured to a vibratory screening machine, wherein the screen assembly has a continuous screen assembly screening surface having multiple screen element screening surfaces, wherein the thermoplastic screen element includes substantially parallel end portions and substantially parallel side edge portions substantially perpendicular to the end portions, wherein the thermoplastic screen element further includes a first screen element support member and a second screen element support member orthogonal to the first screen element support member, the first screen element support member extending between the end portions and being approximately parallel to the side edge portions, the second screen element support member extending between the side edge portions and being approximately parallel to the end portions, wherein the thermoplastic screen element includes a first series reinforcement members substantially parallel to the side edge portions, a second series of reinforcement members substantially parallel to the end portions, Appeal 2021-002771 Application 16/028,013 3 wherein the screen element screening surface includes screen surface elements forming the screening openings, wherein the end portions, side edge portions, first and second support members, first and second series of reinforcement members structurally stabilize screen surface elements and screening openings, wherein the thermoplastic screen element is a single thermoplastic injection molded piece, and wherein the screening openings are formed between edges of the screen surface elements, and a distance between a first edge of a first screen surface element and a second edge of a second screen surface element adjacent the first screen surface element has a magnitude in a range from approximately 70 microns to approximately 180 microns. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Witsiepe US 3,377,322 Apr. 9, 1968 Schulte, Jr. et al. (“Schulte”) US 7,063,214 B2 June 20, 2006 Trench et al. (“Trench”) US 8,127,932 B2 Mar. 6, 2012 REJECTION Claims 1–30 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Trench, Witsiepe, and Schulte. OPINION We begin by addressing the Examiner’s findings regarding Trench on pages 2 and 5 of the Final Action. The Examiner finds that Trench discloses a screen assembly comprising “a thermoplastic screen element (52).” Final Act. 2. The Examiner finds that Trench discloses “that any flexible polymer including molded polyurethane, may be used in making monolithic Appeal 2021-002771 Application 16/028,013 4 screening elements.” Id. at 5. The Examiner then reasons that, because “certain polyurethanes are thermoplastic[,] it is unclear how the applied prior art can be structurally distinguished from the claimed invention.” Id. To the extent that the Examiner’s position is that Trench’s disclosure that the screen panels may be made of “any suitable polymer material . . . such as moulded elastomeric materials [and] polyurethane elastomer materials” (Trench 3:17– 21) or “are preferably formed of polymeric material such as polyurethane” (id. at 4:3–4) constitutes a disclosure of a thermoplastic screen element, we agree with Appellant that the Examiner erred “by assuming . . . that the polymers described in Trench are thermoplastic and not thermoset” (Reply Br. 2). More specifically, as the Examiner states, certain polyurethanes are thermoplastic, but other polyurethanes are thermosetting and not thermoplastic. Thus, to the extent that the Examiner relies on Trench as disclosing thermoplastic screen panels/elements, this is an unsupported finding and an unsustainable position. Without going into any detail on any particular elements of claims 12–30, the Examiner states that the features of these claims “are rendered obvious by” the combination of Trench, Witsiepe, and Schulte. Final Act. 5. The Examiner lists a number of claimed features of claims 1, 3–7, and 31 that the Examiner finds Trench does not expressly disclose. Id. at 5–6. Next, the Examiner makes findings as to the teachings of Witsiepe and Schulte. Final Act. 6–7. In particular, the Examiner finds that Witsiepe teaches “it is well-known to use thermoplastics with injection molding manufacturing techniques to obtain the desired elastomeric properties during the rapid production of plastic items.” Id. The Examiner finds that Schulte “teaches that it is well known to secure adjacent screen elements directly Appeal 2021-002771 Application 16/028,013 5 together with a variety of methods[, including clips as shown in Figure 15,] to better stabilize and position the respective elements.” Final Act. 7. The Examiner determines that the screening opening dimensions, open screening area, materials, and methods of construction “can be regarded as a mere design choice controlled by the design incentives and/or economic considerations involved,” especially considering that the type of material to be screened will control variations in the specific device dimensions. Final Act. 7. The Examiner next enumerates several well- established obviousness rationales found in legal precedent, including routine optimization of result-effective variables, the use of prior art elements according to their known functions yielding predictable results, and simple substitution of one known element for another to obtain predictable results, and concludes that it would have been obvious to modify Trench with the teachings of Witsiepe and Schulte “to arrive at the claimed invention.” Id. According to the Examiner, [t]he rationale for this obviousness determination can be found in the prior art itself, in legal precedent and from an analysis of the prior art teachings that demonstrates that the modification to arrive at the claimed invention would merely involve the substitution/addition of well-known elements with no change in their respective functions. Id. The Examiner adds that the prior art applied in the rejection demonstrates a level of sophistication that indicates “these modifications are predictable variations that would be within this skill level,” and further concludes that, “[t]herefore, it would have been obvious at the time the invention was made to a person having ordinary skill in the art to modify the invention of Trench for the reasons set forth above.” Id. at 7–8. Appeal 2021-002771 Application 16/028,013 6 In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the initial burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). See also In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). It is incumbent upon the examiner to establish a factual basis to support the legal conclusion of obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so doing, the examiner is expected to make the factual determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17 (1966), viz., (1) the scope and content of the prior art; (2) the differences between the prior art and the claims at issue; and (3) the level of ordinary skill in the art. In addition to these factual determinations, the examiner must also provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Only if this initial burden is met does the burden of coming forward with evidence or argument shift to the appellant. See Oetiker, 977 F.2d at 1445. See also Piasecki, 745 F.2d at 1472. Obviousness is then determined on the basis of the evidence as a whole and the relative persuasiveness of the arguments. See Oetiker, 977 F.2d at 1445; Piasecki, 745 F.2d at 1472. Appellant argues, persuasively, that the Examiner “provides only conclusory statements noting that it ‘would have been obvious . . . to modify the invention of Trench’ with the cited references” with only cursory reference to a series of various boilerplate obviousness rationales from legal precedent. Appeal Br. 14. The Examiner fails to explain in the rejection specifically how the structure of Trench would be modified, much less provide articulated reasoning with some rational underpinning for each such Appeal 2021-002771 Application 16/028,013 7 modification to support the legal conclusion of obviousness. Rather, the Examiner merely sets forth teachings believed to be relevant from each of the references and offers a variety of boilerplate obviousness rationales, without any explanation of how or which of these rationales applies specifically to any of the particular teachings of the references. In essence, the Examiner offers up a menu of identified differences between Trench and the claims on appeal, findings regarding teachings of Witsiepe and Schulte believed to be pertinent to the claims, and a variety of obviousness rationales from legal precedent from which to choose to formulate a story to explain why the claimed subject matter would have been obvious. The Examiner does little in the Answer in attempting to remedy the deficiency in the rejection, particularly with respect to the combination of Trench and Schulte. See Ans. 4–5 (essentially repeating the findings and menu options of legal precedent obviousness rationales set forth in the Final Action). The Examiner emphasizes that Schulte teaches various techniques of securing adjacent screen elements directly to one another “to better stabilize and position the respective elements.” Id. at 5 (emphasis omitted). However, to the extent that the Examiner proposes to combine any of Schulte’s securement techniques to Trench’s screen modules in order to better stabilize and position respective elements, the Examiner does not specify how Trench would be modified (e.g., what elements of Trench would be secured together)2 in order to better stabilize and position these 2 To the extent that the Examiner proposes to modify Trench by securing screen panels 52 (i.e., the structure the Examiner reads on the claimed “screen elements”), we note that this would not satisfy the recitation in independent claims 1, 12, 21, and 27 that the subgrids be permanently Appeal 2021-002771 Application 16/028,013 8 respective elements, much less how such modification would accomplish this. Notably, Trench discloses securing a plurality of screen panels 52 to each panel frame 51, using engagement formations 66 and 67 as shown in Figures 16 and 17, to form each screen module 50, and then securing each screen module 50 to support rails 53 of the vibratory machine, with tapered end faces 54 of panel frame 51 engaging complementary tapers 55 on support rails 53 and outer edges 56 of screen panels 52 engaging formations 58 on support rails 53. Trench 7:57–8:8; see also id., Fig. 14. Further, alignment lugs 53A, shown in Figure 14, on support rails 53 engage indents (shown but not labeled in Figure 19) in the bottoms of end faces 54 of panel frame 51 to align panel frame 51 on support rails 53. Id. at 7:66–67. With this arrangement, screen panels 52 and panel frames 51 appear to be well stabilized and positioned on support rails 53. Further, this arrangement “facilitates easy assembly of the module on the apparatus and economical replacement of wearing parts.” Id. at 2:55–58; see also id. at 8:1–2 (disclosing pry slots 53B on support rails 53 for “facilitat[ing] removal of the panel frames as required”). It is not apparent, and the Examiner does not adequately explain, how the Examiner proposes to modify Trench in view of Schulte to better stabilize and position these elements, much less in a manner that similarly facilitates easy assembly of the modules on the apparatus and economical replacement of wearing parts. To the extent that the Examiner may intend to apply one of the other enumerated obviousness rationales to such a modification, we decline to speculate as to the Examiner’s thinking. secured to or directed connected to each other. See Appeal Br. 21, 24, 25, 27 (Claims App.). Appeal 2021-002771 Application 16/028,013 9 For the above reasons, the Examiner fails to articulate adequate reasoning, with rational underpinnings, to support the conclusion of obviousness of the subject matter of independent claims 1, 12, 21, and 27, or their dependent claims 2–11, 13–20, 22–26, and 28–30. Accordingly, we do not sustain the rejection of claims 1–30 as unpatentable over Trench, Witsiepe, and Schulte. CONCLUSION The Examiner’s rejection of claims 1–30 is REVERSED. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–30 103(a) Trench, Witsiepe, Schulte 1–30 REVERSED Copy with citationCopy as parenthetical citation