Ex Parte Capriotti et al

Patent Trial and Appeal Board

Nov 9, 2018

13328192 (P.T.A.B. Nov. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/328,192 12/16/2011
27526 7590 11/14/2018
HUSCH BLACKWELL LLP
4801 Main Street, Suite 1000
KANSAS CITY, MO 64112
FIRST NAMED INVENTOR
Luciano Capriotti
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
469506.10059 2577
EXAMINER
STINSON, CHELSEA E.
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
11/14/2018 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):
pto-kc@huschblackwell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LUCIANO CAPRIOTTI and ELMAR EHRMANN
Appeal2017-005651
Application 13/328, 192 1
Technology Center 3700
Before CHARLES N. GREENHUT, FRANCES L. IPPOLITO, and
ERIC C. JESCHKE, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Luciano Capriotti and Elmar Ehrmann ("Appellants") seek review
under 35 U.S.C. § 134(a) of the Examiner's decision, as set forth in the Final
Office Action dated November 5, 2015 ("Final Act."), rejecting claims 1-11,
14, 16, 18, and 20-22. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify MUL TIV AC SEPP HAGGENMULLER GMBH
& CO. KG as the real party in interest. Appeal Br. 1.
Appeal2017-005651
Application 13/328,192
BACKGROUND
The disclosed subject matter "relates to a work station for a packaging
machine." Spec. ,r 2. Claims 1, 18, 20 are independent. 2 Claim 1 is
reproduced below:
1. A work station for a packaging machine, the
work station comprising:
a tool structure comprising an upper part and
a lower part, the upper part and the lower part
defining a chamber and being disposed for
movement relative to each other between an open
position and a closed position, the chamber being
hermetically sealed in the closed position;
a tool disposed within the chamber of the
tool structure and the tool being disposed for
movement relative to the tool structure;
a guide disposed for guiding movement of
the tool relative to the tool structure; and
a drive for moving the tool relative to the
tool structure, wherein the drive is operably
connected to the tool with a transfer device, the
drive comprising an electromagnet for selectively
creating an electromagnetic force upon the
application of an electrical current through the
electromagnet, a countermagnet operably
connected to the transfer device, wherein the
countermagnet is disposed for linear movement
between a position of rest and an operating
position, and wherein the countermagnet is
selectively moved between the position of rest and
the operating position to move the tool by
2 Any discussion of the claims refers to the version in the Claims
Appendix filed on July 21, 2016 rather than the version filed on April 4,
2016 (with the Appeal Brief).
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Appeal2017-005651
Application 13/328,192
selectively applying an electrical current through
the electromagnet to apply one of an attraction
force or a repulsion force upon said
countermagnet.
REJECTIONS
1. Claims 1-9, 11, 18, and 20-22 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Bergstrom (US 3,481,100, issued Dec. 2,
1969) and Morita (US 2002/0093408 Al, published July 18, 2002).
2. Claim 10 stands rejected under 35 U.S.C. § I03(a) as
unpatentable over Bergstrom, Morita, and Hardy (US 6,538,544 Bl, issued
Mar. 25, 2003).
3. Claims 14 and 16 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Bergstrom, Morita, and Baumann (US 4,965,695, issued
Oct. 23, 1990).
DISCUSSION
Rejection 1- Claims 1-9, 11, 18, and 20---22
For independent claim 1, the Examiner relied on Bergstrom for certain
limitations but stated that Bergstrom fails to satisfy the final clause, which
begins "a drive for moving the tool relative to the tool structure" ("the drive
clause"). See Final Act. 3--4. The Examiner found, however, (1) that
"Bergstrom does teach that the tool is moved relative to the tool structure
'by any convenient means'" (citing Bergstrom, 5:73-74) and (2) that Morita
teaches the drive clause. Final Act. 4. According to the Examiner,
Given the teachings of Morita, it would have been
obvious to one of ordinary skill in the art at the time the
invention was made to modify the "any convenient means" for
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Application 13/328,192
Id.
driving the tool structure of Bergstrom with the electromagnetic
arrangement of Morita so that the operator may have better
control over the tool due to the controllable magnetic field.
Doing so would also provide for an easily manipul[]able means
to moving the tool a set distance via electromagnetic forces.
For independent claims 18 and 20, the Examiner similarly relied on
Bergstrom for certain limitations, and relied on Morita for: ( 1) in claim 18,
the clause beginning "a drive operably connected to the tool by a transfer
device" and (2) in claim 20, the clause beginning "a drive for moving the
tool relative to the tool structure within the chamber." See Final Act. 8-11.
The Examiner provided similar reasoning for claims 18 and 20 as for claim
1. Compare id. at 4 ( claim 1 ), with id. at 10 ( claim 18), 11 ( claim 20).
Appellants argue that the relied-on structure from "Morita is not a
'convenient means' to drive the heat sealing head 82 [ of Bergstrom] because
the actuator of Morita is incapable of driving the heat sealing head 82 as
arranged in Bergstrom through an entire sealing operation cycle." Appeal
Br. 11 (quoting Bergstrom, 5:73-74 & Final Act. 4). More specifically,
Appellants argue that "[t]he actuator taught in Morita is configured solely to
be used in applications where a biasing load W is applied in an upwardly
direction to the coupling member 7 (see Figs. 1 and 5, paras. [0042],
[0049])" whereas "the exact opposite condition would be present when the
heat sealing head 82 of Bergstrom is connected to the actuator of Morita" as
proposed by the Examiner. Appeal Br. 12. Appellants contend that "Morita
teaches that the actuator of Morita uses the electromagnet to pull the iron
core 1 downward for the downward stroke, but is used just to apply enough
current in the electromagnet to overcome the permanent magnet to allow
biasing load W to move the plunger upward during the upward stroke" and
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Application 13/328,192
that, "[a]s such, Morita requires the upwardly directed load W to be applied
in order for the iron core 1 to travel through its entire upstroke." Id. at 13.
As an initial matter, we agree with Appellants' understanding of the
teachings of Morita. See Morita ,r,r 41--49, Fig. 1-5. Further, for the reasons
stated by Appellants ( as summarized above) and for the reasons discussed
below, we determine that the Examiner has not adequately explained how
Bergstrom would be modified in view of Morita so as to arrive at the
claimed invention in which, for example, "the countermagnet is selectively
moved between the position of rest and the operating position to move the
tool." Claims App. 24 (claim 1), 26 (claims 18 and 20).
We understand the Examiner to take the position that, in the modified
device, the actuating rod above heat sealing head 82 in Bergstrom (see, e.g.,
Fig. 6) would move in a manner similar to coupling member 7 in Morita.
See, e.g., Final Act. 4 (discussing Morita Figs. 1-5 and ,r,r 41, 42, 45, 46).
As noted by Appellants, however, in the relied-on embodiment of Morita,
moveable core 1 moves upwards only when the upward-directed bias
force-which is external and not provided by the relied-on structures-
exceeds the combined downward-directed forces (FO and Fr in Figure 5)
provided by the relied-on structures. See Morita ,r 49 ( discussing Figure 5
and providing "the attracting force FO exerted to the end face of the plunger
5 is decreased, and therefore, the movable iron core 1 is moved upward by a
loadforce" (emphasis added)), discussed at Appeal Br. 12-13. Indeed, as
disclosed in Morita, switching the direction of the current through coil 3
does not generate an upward force on core 1; rather, it merely creates a
magnetic field (Be) that cancels some of the magnetic field provided by
permanent magnet 12 (Bm) to make the overall downward force (from FO
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Appeal2017-005651
Application 13/328,192
and Fr in Figure 5) less than the upward-directed bias force ("LOAD
FORCE" in Figure 5). See Morita ,r 49 ("The release operation is effected
by passing a current through the coil 3 in a direction reverse to that of the
current applied during the attracting operation. A magnetic field produced
by this coil current runs through the magnetic path 02 so as to cancel out the
magnetic field Bm produced by the permanent magnet 12.").
As noted by Appellants, however, the upward-directed bias force
acting on coupling member 7 in Morita would not be present in the context
of the modified device. See Appeal Br. 12-13. Instead, in the context of the
modified device, heat sealing head 82 in Bergstrom would provide a
downward-directed bias force (from gravity) on coupling member 7 from
Morita. Id. at 12 (discussing how "biasing load Wis applied in an upwardly
direction to the coupling member 7" in Morita and how "the exact opposite
condition would be present when the heat sealing head 82 of Bergstrom is
connected to the actuator of Morita"). This downward-directed bias force on
the coupling member in the modified device would be in addition to the
downward-directed forces already provided by the relied-on structures from
Morita-all of which act to maintain core 1 in the downward position. In
the context of the modified device, the Examiner has not adequately
explained how core 1 of Morita would move to the upward position (see,
e.g., Morita, Fig. 1) so as to satisfy, for example, the limitation reciting that
"the countermagnet is selectively moved between the position of rest and the
operating position to move the tool." Claims App. 24 ( claim 1 ), 26 ( claims
18 and 20); see also Reply Br. 4 (arguing that "in view of the teachings of
Morita, combining the drive of Morita in Bergstrom would not result in a
functioning device").
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Application 13/328,192
In the Answer, the Examiner states that "an upwardly directed biasing
load is not a claimed limitation." Ans. 16. Whether an upwardly directed
biasing force is recited is not the issue. For example, Appellants are not
arguing that the prior art lacks an upwardly directed biasing force when such
a limitation is not actually recited. See e.g., In re Self, 671 F.2d 1344, 1348
(CCP A 1982) (rejecting arguments "not based on limitations appearing in
the claims"). Instead, as discussed above, the issue is how the modified
device would result in the claimed invention when the upward-directed bias
force present in Morita is replaced by a downward-directed bias force in the
context of the modified device. See Reply Br. 4 ( arguing that "even though
[the] claim[s] do[] not address a biasing load, this teaching of Morita must
be considered, particularly because it would lead away from the asserted
combination because it evidences that the drive of Morita is not a
'convenient means' to drive the sealing head 82 of Bergstrom through its
entire range of motion").
For these reasons, we do not sustain the rejection of claims 1, 18, and
20, and also do not sustain the rejection of claims 2-9 and 11 (which depend
from claim 1) and claims 21 and 22 (which depend from claim 20). 3
Rejections 2 and 3 - Claims 10, 14, and 16
Claims 10, 14, and 16 depend from claim 1. Claims App. 25. The
Examiner's added reliance on Hardy (regarding Rejection 2) and Baumann
(regarding Rejection 3) does not remedy the deficiencies in the rejection
based on Bergstrom and Morita, discussed above, regarding claim 1 (see
3 Although claim 21 currently depends from itself, Appellants state
that claim 21 will be amended to depend from claim 20. Appeal Br. 27.
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Application 13/328,192
Rejection 1 ). Thus, for the same reasons discussed above, we do not sustain
the rejection of claims 10, 14, and 16.
DECISION
We reverse the decision to reject claims 1-11, 14, 16, 18, and 20-22
under 35 U.S.C. § 103(a).
REVERSED
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