Ex Parte 6230930 et al

Patent Trial and Appeal BoardJul 30, 2013

90009374 (P.T.A.B. Jul. 30, 2013)

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. 90/009,374 01/14/2009 6230930 CRAN01-00315 1519 23990 7590 07/31/2013 DOCKET CLERK P.O. DRAWER 800889 DALLAS, TX 75380 EXAMINER JASTRZAB, JEFFREY R ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 07/31/2013 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE 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. 90/010,114 02/29/2008 6230930 CRAN01-00292 9510 23990 7590 07/31/2013 DOCKET CLERK P.O. DRAWER 800889 DALLAS, TX 75380 EXAMINER JASTRZAB, JEFFREY R ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 07/31/2013 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte CRANE MERCHANDISING SYSTEMS, INC.1 ____________________ Appeal 2012-012308 Reexamination Control 90/009,374 and 90/010,114 Patent No. US 6,230,930 B12 Technology Center 3900 ____________________ Before DANIEL S. SONG, WILLIAM V. SAINDON, and BRETT C. MARTIN, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL 1 Crane Merchandising Systems, Inc. is the real party in interest. App. Br. 1. 2 Issued May 15, 2001 to Sorensen et al. (hereinafter “’930 patent”). Appeal 2012-012308 Reexamination Control 90/009,374 and 90/010,114 Patent No. US 6,230,930 B1 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. §§ 134(b) and 306 from the Examiner’s rejection of claims 1-22, 24-26, 28-46, 48-50, 53-56, 58-67, 71, 72, 83-85, 87, 129, 130, 134, 136, 138-141, 143-145, 147, and 159-169. We have jurisdiction under 35 U.S.C. §§ 134(b) and 306. This appeal stems from a merged reexamination proceeding of Application Control Nos. 90/009,374 and 90/010,114. Further, this Board entered a new ground of rejection, upon which much of the Examiner’s rejection in this proceeding is based, in an appeal of the Examiner’s decision in reexamination Application Control No. 90/010,115 of U.S. Patent No. 6,328,180 C1, which is a continuation-in-part of U.S. Application No. 08/949,366, the application that led to the issuance of the ’930 patent at issue in this appeal. In addition to the Appeal Brief, the Patent Owner relies upon a Reply Brief and two declarations of Dr. Mitchell W. Pryor. The ’930 patent was also the subject of litigation entitled Crane Co. and Dixie-Narco, Inc. v. Sandevendo America, Inc. and Royal Vendors, Inc., 2:07-cv-42-CE (E.D. Tex. October 15, 2009 ), which has been dismissed after settlement agreement was reached, where numerous claim terms were construed by the District Court. We AFFIRM. THE INVENTION Appellant’s invention is directed “generally to vending machines, and more particularly to an improved method and apparatus for vending multi- Appeal 2012-012308 Reexamination Control 90/009,374 and 90/010,114 Patent No. US 6,230,930 B1 3 sized and fragile products and in particular bottled or canned beverages of varied sizes and shapes.” Spec. col. 1, ll. 5-8. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for vending beverages packaged in sealed containers, comprising: a. storing a plurality of packaged beverages in upright standing manner in selectable queues of containers of such beverages within a vending machine; b. visually presenting said selectable queues of such beverage containers for viewing by a customer through a glass wall panel of the vending machine; wherein the customer can visually select a beverage container from one of said selectable queues; c. aligning a robotic assembly in the machine in registration with a customer selected one of said beverage container queues; d. transferring the visually selected beverage container from the selected container queue in said upright standing manner to the robotic assembly; e. carrying the transferred beverage container to a delivery port of the vending machine; and f. presenting the carried beverage container at the delivery port for customer removal from the vending machine; wherein the entire process is performed without subjecting the container to severe impact forces and while maintaining the selected beverage container in said upright standing manner. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Woodruff Falk Taylor O’Neil US 2,735,578 US 4,108,333 US 4,483,459 US 4,812,629 Feb. 21, 1956 Aug. 22, 1978 Nov. 20, 1984 Mar. 14, 1989 Appeal 2012-012308 Reexamination Control 90/009,374 and 90/010,114 Patent No. US 6,230,930 B1 4 Hieb Trouteaud Vogelpohl (No Inventor Disclosed) Kishimoto US 4,986,615 US 5,121,854 US 5,505,332 GB 1,000,605 JP 52-38296 Jan. 22, 1991 Jun. 16, 1992 Apr. 9, 1996 Aug. 11, 1965 March 24, 1977 THE REJECTIONS ON APPEAL The Examiner made the following rejections: 1. Claims 1-3, 5-7, 9-14, 17-21, 24, 25, 28-30, 32-45, 53, 54, 58- 60, 62-66, 71, 72, 83, 84, 129, 130, 134, 138-140, 143, 144, 147, 160, and 163 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over GB ’605. Final Rejection mailed Dec. 20, 2011 (hereafter “Fin. Rej.”) at 3. 2. Claim 161 stands rejected under 35 U.S.C §103(a) as being unpatentable over GB ’605 and Admitted Prior Art or Kishimoto. Fin. Rej. 17. 3. Claims 26, 46, and 136 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over GB ’605 in view of Taylor. Fin. Rej. 18. 4. Claims 31, 61, and 141 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over GB ’605 and O’Neil. Fin. Rej. 19. 5. Claims 61 and 67 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over GB ’605 and Falk. Fin. Rej. 20. 6. Claim 61 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over GB ’605 and Trouteaud. Fin. Rej. 21. 7. Claims 1-3, 5-7, 9, 10, 12, 13, 18-21, 24, 25, 28, 31-35, 37, 41- 43, 53-55, 58, 60, 62-65, 71, 72, 83, 84, 129, 130, 134, 138-141, 143, 145, and 160-168 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kishimoto and GB ’605. Fin. Rej. 22. Appeal 2012-012308 Reexamination Control 90/009,374 and 90/010,114 Patent No. US 6,230,930 B1 5 8. Claims 4, 8, 14-17, 22, 26, 44-46, 48, 55-57, and 136 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kishimoto, GB ’605, and Taylor. Fin. Rej. 30. 9. Claims 4, 8, 14, 44, 48-50, 55, and 85 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kishimoto, GB ’605, and Vogelpohl. Fin. Rej. 32. 10. Claims 4, 8, 48, and 85 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kishimoto, GB ’605, and Woodruff. Fin. Rej. 33. 11. Claims 29, 30, 59, 61, 66, 67, 144, and 147 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kishimoto, GB ’605, and Falk. Fin. Rej. 35. 12. Claims 29, 30, 59, 61, and 144 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kishimoto, GB ’605, and O’Neil. Fin. Rej. 37. 13. Claim 61 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Kishimoto, GB ’605, and Trouteaud. Fin. Rej. 39. 14. Claim 87 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Kishimoto, GB ’605, Vogelpohl or Woodruff, and Hieb. Fin. Rej. 40. 15. Claims 159 and 169 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kishimoto, GB ’605, and Hieb. Fin. Rej. 41. Appeal 2012-012308 Reexamination Control 90/009,374 and 90/010,114 Patent No. US 6,230,930 B1 6 ANALYSIS Rejection 1 Appellant argues the claims subject to this rejection over a lengthy argument section spanning over eighty pages of the opening brief. See App. Br. 30-113. Although Appellant initially, and correctly, identifies that the claims are subject to a single-reference obviousness rejection, at the end of each subsection of argument as to how the rejection is allegedly improper in relation to specific claims, Appellant concludes by stating, e.g., that the rejection of the claims “as being anticipated by GB ’605 is improper.” App. Br. 89 (emphasis added); see also App. Br. 92, 97, 100, 110, 112, 113. While an erroneous concluding statement such as this alone could be considered an oversight, Appellant’s arguments throughout this section relating to the first ground of rejection deal mainly with how features are allegedly either not recited in or not inherent to GB ‘605. Such arguments are essentially irrelevant because the nature of an obviousness rejection concedes that a reference fails to teach certain subject matter and the Examiner has not taken the position that the subject matter at issue was inherently disclosed. In particular, the Examiner’s rejection does not rely on what GB ’605 teaches alone, but what the teachings of GB ‘605, along with what one of ordinary skill in the art would have known at the time of the invention, to conclude that the claimed subject matter would have been obvious to a person of ordinary skill in the art. The erroneous nature of Appellant’s arguments is best summed up in one of Appellant’s own statements attempting to explain why the Examiner’s obviousness rejection is incorrect due to certain beverage Appeal 2012-012308 Reexamination Control 90/009,374 and 90/010,114 Patent No. US 6,230,930 B1 7 containers having a high center of gravity (App. Br. 44) allegedly not being disclosed in GB ‘605: “As such, reliance on the purported existence of such containers is improper in a rejection for anticipation (as opposed to obviousness) since the cited reference does not describe or suggest use of the system disclosed to dispense such containers.” App. Br. 44-45. As the Examiner points out, Appellant’s “arguments are moot” because the rejection at issue is neither an obviousness rejection relying on explicit or inherent disclosure in GB ’605, nor an anticipation rejection. Ans. 2. Rather, the rejection is based on obviousness of modifying the device of GB ’605 so as to dispense beverage containers in the manner recited by the claims. Further to the point regarding the alleged lack of disclosure of beverage containers, Appellant challenges the Examiner’s finding that GB ’605 discloses the vending of beverage containers and goes so far as to say that [t]he sole support for the inference that the structure of GB ’605 may be used to dispense beverage containers is found in []: (a) the presence of bottle-shaped silhouettes on carriers 90 within the dispensing levels in Figures 1-3, and (b) the presence of a bottle-shaped silhouette on a carrier 90 on the elevator 107 within the open-front delivery housing 70 in Figure[] 7. App. Br. 34. As this Board stated in our decision on rehearing in Application Control No. 90/010,115, and which the Examiner quotes in the Answer (Ans. 5): We are not persuaded by Appellant’s arguments and while we agree with Appellant that GB ’605 may not explicitly refer to vending beverage containers, we cannot agree with Appellant that figures 1-3, 5, 7, and 10 do not reasonably Appeal 2012-012308 Reexamination Control 90/009,374 and 90/010,114 Patent No. US 6,230,930 B1 8 disclose beverage containers as presently claimed. (FF 2, 3; See Figs, 1, 3.) Drawings can be relied upon for what they reasonably disclose and suggest to one of ordinary skill in the art. See In re Mraz, 455 F.2d at 1072. Further, “a drawing in a utility patent can be cited against the claims of a utility patent application even though the feature shown in the drawing was unintended or unexplained in the specification of the reference patent.” In re Aslanian, 590 F.2d. 911,914 (CCPA 1979). Appellant’s arguments in the Reply Brief, which focus only on the first ground of rejection, fare no better. After the Examiner notes the deficient nature of the arguments in the Appeal Brief (see Ans. 2-16), Appellant makes what are essentially enablement arguments and variants thereof. See Reply Br. 2-9. As with Appellant’s Appeal Brief arguments, enablement arguments in relation to an obviousness rejection are essentially moot. Furthermore, arguendo, “a non-enabling reference may qualify as prior art for the purpose of determining obviousness under 35 U.S.C. 103.” Symbol Techs. Inc. v. Opticon Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991) (citations omitted). Appellant’s arguments that certain aspects of the claims are not enabled are essentially irrelevant because the Examiner is not using GB ’605 as allegedly teaching every aspect of the claims, but concludes that in light of the teachings of the reference and the knowledge of one of ordinary skill in the art at the time of the invention, the subject matter of the claims would be obvious. See Ans. 2-9. As noted above, the very nature of an Appeal 2012-012308 Reexamination Control 90/009,374 and 90/010,114 Patent No. US 6,230,930 B1 9 obviousness rejection concedes that certain aspects are absent from a reference.3 Overall, nothing in Appellant’s arguments as to the first ground of rejection points to an error in the Examiner’s actual obviousness rejection (as opposed to the arguments made that the rejection is an improper anticipation rejection). Accordingly, we sustain the first ground of rejection. Rejection 2 Appellant argues that “GB ’605 uses individual carriers to support and move products, one product per carrier” and that “[t]he use of partitioned shelves having regions each holding a plurality of products is precluded by the necessity of moving the carriers supporting individual products.” App. Br. 114. As the Examiner points out, “Appellant admitted in the subject patent that partitioned shelving regions were known and conventional for beverage vending machines.” Ans. 16 (citing col. 9, l. 57 et seq.). We agree with the Examiner’s conclusion that “[t]hose having ordinary skill in the art at the time of the invention would have recognized this statement as relating the two options as functional equivalents.” Id. As such, we do not find Appellant’s argument persuasive and sustain the Examiner’s decision to reject claim 161 as unpatentable over GB ’605 and Admitted Prior Art or Kishimoto. 3 We note that Appellant has submitted a pair of declarations by a Dr. Pryor. We find these declarations unpersuasive due to the fact that, as with Appellant’s arguments in general, they discuss what is missing from the GB ’605 reference, e.g., “the mechanism taught in the ’605 Patent does not describe or otherwise disclose several of the operational capabilities claimed in the ’930 patent.” Pryor Dec. ¶ 4. Such evidence of missing aspects is unpersuasive in the context of an obviousness rejection. Appeal 2012-012308 Reexamination Control 90/009,374 and 90/010,114 Patent No. US 6,230,930 B1 10 Rejection 3 Appellant argues that the Examiner fails to make a prima facie case of obviousness in relation to the combination of GB ’605 and Taylor. See App. Br. 116-119. Appellant asserts that the system of Taylor “would not work with the mechanism of GB ’605, which uses – and moves – individual rectangular carriers to deliver articles, rather than merely allowing cylindrical beverage containers to roll off a shelf.” App. Br. 118. As the Examiner responds, and we agree, “[t]hose seeking [to] incorporate such a safety mechanism into the GB ’605 device would have recognized that the stop would need to be oriented in the same way relative to the beverage container” and that “to include a known safety feature for its known intended purpose would have been obvious at the time of the invention.” Ans. 17. Appellant further provides no evidentiary support for the assertion that Taylor would not work with GB ’605 and appears merely to make an argument that the mechanism of Taylor cannot be bodily incorporated into the device of GB ’605. “[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.” In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983). The relevant inquiry is 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). “Combining the teachings of references does not involve an ability to combine their specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). Appeal 2012-012308 Reexamination Control 90/009,374 and 90/010,114 Patent No. US 6,230,930 B1 11 Here, the Examiner has adequately explained how the teachings of Taylor and GB ’605 may be combined to result in the claimed invention, and we do not find Appellant’s argument to the contrary persuasive. As such we sustain the Examiner’s decision to reject claims 26, 46, and 136 as unpatentable over GB ’605 and Taylor. Rejection 4 As with Rejection 3, Appellant bases the argument against the Examiner’s rejection upon a theory that GB ’605 is not combinable with the mechanism of O’Neil. See App. Br. 120-121. To wit, “it is not apparent how [O’Neil’s] mechanism could be incorporated into the elevator of GB ’605.” App. Br. 121. The test for obviousness is not whether the features of one reference may be bodily incorporated into another reference. In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969); In re Maplesden, 329 F.2d 321, 322 (CCPA 1964). Rather, we look to see whether combined teachings render the claimed subject matter obvious. In re Wood, 599 F. 2d 1032, 1037 (CCPA 1979). As the Examiner states, and we agree, “one having ordinary skill in the art would have known and understood from the O’Neil teachings how to utilize rank [sic, rack] and pinion members to direct elevator movement in a vending machine for moving the elevator to the appropriate product.” Ans. 18. Appellant does not persuasively challenge this conclusion. Accordingly, for the reasons stated above, we sustain the Examiner’s decision to reject claims 31, 61, and 141 as unpatentable over GB ’605 and O’Neil. Appeal 2012-012308 Reexamination Control 90/009,374 and 90/010,114 Patent No. US 6,230,930 B1 12 Rejection 5 Appellant argues that the Examiner’s combination of GB ’605 and Falk is improper because by relying on Falk for the disclosure of the recited detection means for detecting the presence or absence of a container, the Examiner has conceded “that articles on the carriers 90 in GB ’605 may fall off those carriers prior to or during movement from the dispensing levels to the delivery station, such that the ‘without dropping’ limitation” of claims 61 and 67 is not met. App. Br. 123. As the Examiner notes, however, “[a] non- detection event need[] not be the result of product dropping, but may result in the instance where the queue is empty and a vend cycle results in no product in the elevator.” Ans. 18. Accordingly, contrary to Appellant’s assertion, the Examiner has provided proper and rational reasoning for combining the references, and we sustain the decision to reject claims 61 and 67 as unpatentable over GB ’605 and Falk. Rejection 6 Appellant repeats the argument above, which we have already found unpersuasive, that the Examiner has conceded that the “without dropping” limitation is not met. App. Br. 123-124. Again, the Examiner points out that non-detection need not be the result of a product dropping. Ans. 19. As to Appellant’s point, without any supporting evidence, that “[i]t is unclear that the switch in Trouteaud could work as intended in the system of GB ’605,” we agree with the Examiner that one of skill in the art “would have understood how to implement the simple switch of Trouteaud in the GB ’605 device regardless of the article shape as a matter of routine engineering Appeal 2012-012308 Reexamination Control 90/009,374 and 90/010,114 Patent No. US 6,230,930 B1 13 design.” Ans. 19. Accordingly, we sustain the Examiner’s decision to reject claim 61 as unpatentable over GB ’605 and Trouteaud. Rejection 7 Appellant presents arguments with respect to this rejection in a similar fashion as to that of the first ground of rejection addressed supra. See App. Br. 126-155. The Examiner adequately addresses Appellant’s arguments in the Response to Arguments section of the Examiner’s Answer and we adopt the Examiner’s response as our own. See Ans. 19-23. We further point out that, as with Appellant’s prior argument, Appellant argues: “conclusive determination is not possible as whether upright standing beverage containers will inherently remain standing upright within the system of Kishimoto during transfer.” App. Br. 135. Such argument is unpersuasive for the reasons already discussed. Accordingly, having considered all of Appellant’s arguments and for the reasons stated herein, we do not find Appellant’s arguments persuasive and sustain the Examiner’s rejection of claims 1-3, 5-7, 9, 10, 12, 13, 18-21, 24, 25, 28, 31-35, 37, 41-43, 53-55, 58, 60, 62-65, 71, 72, 83, 84, 129, 130, 134, 138-141, 143, 145, and 160-168. Rejections 8-15 Regarding the remaining rejections, the issues and arguments presented thereby are generally similar to those already addressed above. We consider the Examiner’s response to address sufficiently each of Appellant’s arguments regarding these rejections and agree with them for reasons similar to those already discussed. See App. Br. 156-174 and Ans. 23-27. As such we sustain each of rejections 8-15 as stated above. Appeal 2012-012308 Reexamination Control 90/009,374 and 90/010,114 Patent No. US 6,230,930 B1 14 DECISION For the above reasons, and after considering all of Appellant’s arguments, we AFFIRM the Examiner’s decision to reject claims 1-22, 24- 26, 28-46, 48-50, 53-56, 58-67, 71, 72, 83-85, 87, 129, 130, 134, 136, 138- 141, 143-145, 147, and 159-169. Requests for extensions of time in this ex parte reexamination proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f). AFFIRMED peb Appeal 2012-012308 Reexamination Control 90/009,374 and 90/010,114 Patent No. US 6,230,930 B1 15 FOR PATENT OWNER: Docket Clerk Munck Wilson Mandala, LLP P.O. Box 802432 Dallas, TX 75380 FOR THIRD-PARTY REQUESTERS: Paul Morico on behalf of SandenVendo America, Inc. Baker Botts LLP 910 Louisiana St. Houston, TX 77002 K. Lee Marshall on behalf of Royal Vendors, Inc. Bryan Cave LLP 211 N. Broadway, Ste. 3600 St. Louis, MO 63102