Ex Parte Beesley

Patent Trial and Appeal BoardJun 20, 2017

14250703 (P.T.A.B. Jun. 20, 2017)

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. 14/250,703 04/11/2014 Robert C. Beesley HII-205 (62242-US) 5020 124104 7590 06/22/2017 TKTP-TTWT Tnint Pii stonier Number EXAMINER 301 North Main Street HESS, DOUGLAS A Suite 1101 Greenville, SC 29601 ART UNIT PAPER NUMBER 3651 NOTIFICATION DATE DELIVERY MODE 06/22/2017 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): suzanne@jkiplaw.com docketing @j kiplaw .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROBERT C. BEESLEY Appeal 2016-007971 Application 14/250,7031 Technology Center 3600 Before JOHN A. EVANS, LARRY J. HUME, and JAMES W. DEJMEK, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. Â§ 134(a) of the Final Rejection of claims 1â€”5, 7â€”15, and 17â€”20. Appellant has canceled claims 6 and 16. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. 1 According to Appellant, the real party in interest is Illinois Tool Works Inc. App. Br. 4. Appeal 2016-007971 Application 14/250,703 STATEMENT OF THE CASE2 The Invention Appellant's disclosed and claimed inventions "relate[] generally to the field of conveyor belts. More particularly, the disclosure relates to conveyor belts with removable tops." Spec. 12. Exemplary Claim Claim 1, reproduced below, is representative of the subject matter on appeal (emphasis added to contested limitation): 1. A conveyor belt for conveying articles having a width comprising: an interconnected series of relatively pivotable body members; and a plurality of platform members, each platform member attached to a respective one of the body members, each platform member having an upper surface and a substantially vertical rail member extending upward at one side of the upper surface, the upper surface having a first portion adjacent the rail member, a second portion adjacent the first portion, and a third portion adjacent the second portion, the first portion extending from the rail member toward the second portion at least to a center of the platform member, the second portion extending upward in a direction from the first portion toward the third portion, the first and second portions configured relative to the width of the article such that when placed on the platform member in contact with the rail the article extends to and no further than the second portion. 2 Our decision relies upon Appellant's' Appeal Brief ("App. Br.," filed Jan. 18, 2016); Reply Brief ("Reply Br.," filed Aug. 23, 2016); Examiner's Answer ("Ans.," mailed June 23, 2016); Final Office Action ("Final Act.," mailed July 1, 2015); and the original Specification ("Spec.," filed Apr. 11,2014). 2 Appeal 2016-007971 Application 14/250,703 Prior Art The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: Steeber et al. ("Steeber") US 6,601,697 B2 Aug. 5, 2003 Rejection on Appeal Claims 1â€”5, 7â€”15, and 17â€”20 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Steeber. Ans. 2; Final Act. 2. CLAIM GROUPING Based on Appellant's' arguments (App. Br. 11â€”18), we decide the appeal of the obviousness rejection of claims 1â€”5, 7â€”15, and 17â€”20 on the basis of illustrative claim 1. ISSUE Appellant argues (App. Br. 11â€”18; Reply Br. 3â€”4) the Examiner's rejection of claim 1 under 35 U.S.C. Â§ 103(a) as being obvious Steeber is in error. These contentions present us with the following dispositive issue: Did the Examiner err in finding the cited prior art teaches or suggests "[a] conveyor belt for conveying articles," that includes, inter alia, plural platform members, "each platform member having an upper surface . . . the upper surface having a first portion . . . the first portion extending from the rail member toward the second portion at least to a center of the platform member," as recited in claim 1? 3 Appeal 2016-007971 Application 14/250,703 ANALYSIS We agree with particular arguments advanced by Appellant with respect to claims 1 and 11 for the specific reasons discussed below. We highlight and address specific findings and arguments regarding claim 1 for emphasis as follows. Appellant contends the Examiner has not set forth a prima facie case of obviousness because: With reference to the marked sheets from Steeber et al. provided with the previous Office Action, the noted "1st portion" is less than 20% the width of the platform member 12. The 1st portion is certainly not over halfway across the platform member to the center. Even the 1st portion plus the "2nd portion" together do not even approach a center of the platform member. Fig. 3 of Steeber et al. shows that when article 38 reaches position 50, one side contacts rail member 28 and the other side extends past 2nd portion to the identified "3rd portion." Therefore, Fig. 3 of Steeber et al. teaches exactly the opposite of what is claimed with regard to the dimension/ratios of portions 113/213, 115,215 and 117/119 .... The claimed subject matter is thus a departure from what the reference teaches, and no disclosure or suggestion has been identified for the claimed elements. App. Br. 16. The Examiner's Final Rejection relies almost exclusively upon a marked-up drawing Figure from the front page of the Steeber reference. See Steeber Fig. 5. 4 Appeal 2016-007971 Application 14/250,703 Figure 5 of Steeber, cited and annotated by the Examiner in the rejection of claim 1, "is a front elevation view of another embodiment of a conveyor belt of the present invention. The drawing shows the body members having flanges on either end which ride in channels of a rail member that rest on a base. In this embodiment, the base of the rail member lays flat on the support beam, and the surface platform member itself is inclined in order to provide for a sloped surface." Steeber, col. 4,11. 9â€”16; and see Final Act. 2; Ans. 2. We agree with Appellant the Examiner erred in finding the portion of Steeber identified as the "1st portion" in annotated Figure 5 teaches or suggests, relative to the identification of the claimed "platform member," the claim limitation "the first portion extending from the rail member toward the second portion at least to a center of the platform member," as recited in claim 1. We find on this record the Examiner's mapping of claim 1 to Steeber is deficient, particularly as concerns the claimed extent of the first portion with respect to the platform member, i.e., we find the first portion does not extend "at least to a center of the platform member." With respect to the motivation to modify the teachings of Steeber in this regard, we further find 5 Appeal 2016-007971 Application 14/250,703 the Examiner has not provided the requisite "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, 418 (2007)). Appellant makes further arguments (App. Br. 16â€”18; Reply Br. 3â€”4), which we decline to reach, as we find the issue identified above to be dispositive of this Appeal. Accordingly, based upon the findings above, on this record, we are persuaded of at least one error in the Examiner's reliance on the teachings and suggestions of the cited prior art to teach or suggest the disputed limitation of claim 1, such that we cannot sustain the Examiner's obviousness rejection of independent claim 1 and independent claim 11, which recites commensurate limitations. For the same reasons, we cannot sustain the obviousness rejection of grouped dependent claims 2â€”5, 7â€”10, 12â€”15, and 17â€”20, which stand with claims 1 and 11. See Claim Grouping, supra. CONCLUSION The Examiner erred with respect to the obviousness rejection of claims 1â€”5, 7â€”15, and 17â€”20 under 35 U.S.C. Â§ 103(a) over the cited prior art of record, and we do not sustain the rejection. DECISION We reverse the Examiner's rejection of claims 1â€”5, 7â€”15, and 17â€”20. REVERSED 6