Ex Parte Dhond et al

Patent Trial and Appeal BoardAug 24, 2017

13573024 (P.T.A.B. Aug. 24, 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. 13/573,024 08/13/2012 Pranesh Raghunath Dhond GCSI 4251 25682 7590 Anne Burkhart, Registered Patent Attorney Excellere IP International 30 North LaSalle Street Suite 1524 Chicago, IL 60602 EXAMINER NICHOLSON III, LESLIE AUGUST ART UNIT PAPER NUMBER 3651 NOTIFICATION DATE DELIVERY MODE 08/28/2017 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): excellereip @ yahoo, com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PRANESH RAGHUNATH DHOND and VISHRAM YESHWANT DHOND Appeal 2017-004452 Application 13/573,0241 Technology Center 3600 Before THU A. DANG, LARRY J. HUME, and JASON M. REPKO, 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€”4. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is P. Dhond et al. Br. 2. Appeal 2017-004452 Application 13/573,024 STATEMENT OF THE CASE2 The Invention Appellants' disclosed embodiments and claimed invention "relate[]to roller elements provided in conveyor systems." Spec. 2 ("Technical Field"). Exemplary Claim Claim 1, reproduced below, is representative of the subject matter on appeal (emphasis and formatting added to contested limitations): 1. A light weight, non-stick, corrosion and wear resistant roller formed for use in a conveyor system comprising: a shaft of glass reinforced material and having a strength comparable to a steel shaft, and a roller barrel configured to house the shaft, the light-weight roller construction reducing weight of the roller which reduces inertia of rotating elements, lesser overall weight and lesser weight of supporting structure, lesser input power requirement and no material built up on rotating parts. Prior Art The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: Noda et al. ("Noda") US 6,918,708 B2 July 19, 2005 Brunone US 7,530,450 B2 May 12,2009 2 Our decision relies upon Appellants' Appeal Brief ("Br.," filed Aug. 8, 2015); Examiner's Answer ("Ans.," mailed Mar. 15, 2016); Final Office Action ("Final Act.," mailed July 9, 2014); and the original Specification ("Spec.," filed Aug. 13, 2012). We note Appellants did not file a Reply Brief in response to the factual findings and legal conclusions in the Examiner's Answer. We further note Appellants did not provide page numbering in the Appeal Brief. Our Decision references our own page numbering of the Brief for ease of reference. 2 Appeal 2017-004452 Application 13/573,024 Rejections on Appeal Claims 1â€”4 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over the combination of Brunone and Noda. Ans. 2; see also Final Act. 4.3 CLAIM GROUPING Based on Appellants' arguments (Br. 4â€”11), we decide the appeal of the obviousness Rejection of claims 1â€”4 on the basis of representative claim l.4 ISSUE Appellants argue (Br. 4â€”11) the Examiner's rejection of claim 1 under 35 U.S.C. Â§ 103(a) as being obvious over the combination of Brunone and Noda is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests "[a] light weight, non-stick, corrosion and wear resistant roller 3 In the event of further prosecution, we invite the Examiner's attention to the various terms of degree recited in independent claims 1 and 4 (e.g., "comparable to," "reducing weight," and "lesser power input requirement") to determine compliance with the statutory provisions of pre-AIA 35 U.S.C. Â§112, second paragraph. While the Board is authorized to reject claims under 37 C.F.R. Â§ 41.50(b), no inference should be drawn when the Board elects not to do so. See Manual of Patent Examining Procedure (MPEP) Â§ 1213.02. 4 "Notwithstanding any other provision of this paragraph, the failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately." 37 C.F.R. Â§ 41.37(c)(l)(iv). In addition, when Appellants do not separately argue the patentability of dependent claims, the claims stand or fall with the claims from which they depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986). 3 Appeal 2017-004452 Application 13/573,024 formed for use in a conveyor system" that includes, inter alia, "a shaft of glass reinforced material and having a strength comparable to a steel shaft, and a roller barrel configured to house the shaft," as recited in claim 1? ANALYSIS In reaching this decision, we consider all evidence presented and all arguments actually made by Appellants. We do not consider arguments Appellants could have made but chose not to make in the Briefs, and we deem any such arguments waived. 37 C.F.R. Â§ 41.37(c)(l)(iv). We disagree with Appellants' arguments with respect to claims 1â€”4 and, unless otherwise noted, we incorporate by reference herein and adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in response to Appellants' arguments. We highlight and address specific findings and arguments regarding claim 1 for emphasis as follows. Appellants contend: Brunone is directed to a conveyor system using conventional rollers formed of metal. Combining Noda with Brunone does not result in the subject matter of the claims on appeal because the resulting structure would not arrive at a solid shaft housed in a roller barrel, the shaft having strength comparable to a steel shaft. This feature of all Appellants claims is neither taught nor suggested in either of the references relied on by the Examiner in crafting his rejection. Br. 5. We first note, with respect to obviousness, the predecessor to our reviewing court held: 4 Appeal 2017-004452 Application 13/573,024 The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted). Appellants' contention does not persuade us of error on the part of the Examiner because Appellants are responding to the rejection by attacking the references separately, even though the rejection is based on the combined teachings of the references. We reiterate, nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Appellants further allege: [Ejven post-KSR, it is improper to reject a claim based on obviousness when a modification to a prior art device is required to reach the claimed invention in a manner that destroys the intended function of the prior art device. This is precisely the case here, where the claimed ink jet printer systems discharging roller of Noda and unrelated conveyor system of Brunone lack claimed details critical to the suitability of the teachings for the intended purpose. Br. 8. . As an initial matter of claim interpretation, we conclude apparatus claim 1 recites a statement of intended use of the recited roller in the preamble: "[a] light weight, non-stick, corrosion and wear resistant roller formed for use in a conveyor system." 5 Appeal 2017-004452 Application 13/573,024 Our reviewing court holds, "[a]n intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates." Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Although "[s]uch statements often . . . appear in the claim's preamble . . . ," In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987), a statement of intended use or purpose can appear elsewhere in a claim. Id.5 Our reviewing court also holds, "[generally ... the preamble does not limit the claims." Allen Eng'g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed.Cir. 2002). Nonetheless, the preamble may be construed as limiting "if it recites essential structure or steps, or if it is 'necessary to give life, meaning, and vitality' to the claim." Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed.Cir.2002)(quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed.Cir. 1999)). 5 The patentability of an apparatus claim "depends on the claimed structure, not on the use or purpose of that structure." Catalina Mktg. Int'l., Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). "ft is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable." In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted). See also Superior Indus., Inc. v. Masaba, Inc., 553 Fed. Appx 986, 991 (Fed. Cir. 2014) (Rader, J., concurring) (stating: "[A] system claim generally covers what the system is, not what the system does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990); see also Roberts v. Ryer, 91 U.S. 150, 157 (1875) ("The inventor of a machine is entitled to the benefit of all the uses to which it can be put, no matter whether he had conceived the idea of the use or not."). Thus, it is usually improper to construe non-functional claim terms in system claims in a way that makes infringement or validity turn on their function. Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1091 (Fed. Cir. 2009). 6 Appeal 2017-004452 Application 13/573,024 A preamble is not regarded as limiting, however, "when the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention." Catalina, 289 F.3d at 809. We find that to be the case here. Furthermore, the preamble has no separate limiting effect if, for example, "the preamble merely gives a descriptive name to the set of limitations in the body of the claim that completely set forth the invention." IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1434â€”35 (Fed.Cir.2000). See also Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1359 (Fed. Cir. 2010.) Appellants further allege, with reference to two CCPA decisions, i.e., Application of Joseph Leshin, 277 F.2d 197 (CCPA 1960), and Application of Daniel C. Skoner et al., 517 F .2d 947 (CCPA 1975): Contrary to the similarities between the references and the claims in Leshin and Skoner, all of the claims on appeal recite a roller for a conveyor system having a shaft of a glass reinforced material having strength comparable to a steel shaft, the shaft being housed in a roller barrel, not a discharging roller for an ink jet printer. Neither the physical structure of a nonÂ rotating shaft housed in a roller barrel, nor the extruding method required to form the structure to achieve the claimed strength of the shaft, [i.e.,] strength comparable to a steel shaft, of the device are found in the references of record. Br. 9-10. Appellants provide additional arguments, albeit against the references separately, specifically: The cited references contain critical differences. Noda teaches an injection molded hollow structure of a discharging roller, which fails to meet the art recognized suitability for an intended purpose basis for rejection discussed in MPEP 2144.07 relied on by the examiner in rejecting all claims on 7 Appeal 2017-004452 Application 13/573,024 appeal. The Noda molded roller is not suitable for carrying heavy weight, which is a requirement in the manufacture of rollers for conveyor systems, as the discharging roller therein is a part of an inkjet printer transporter. See Noda column 5, lines 18-27. Brunone is devoid of any teaching or suggestion of an alternate roller suitable for a conveyor system. Brunone only teaches standard rollers 31, 33. Further, in order to achieve the recited strength of Appellant's shaft the shaft must further be formed by a suitable method. The Noda injection molding method not only differs from the extrusion process discussed in Appellants specification, but would not result in a roller having the recited strength of Appellants claims on appeal, strength comparable to a steel shaft, which can only be achieved following the teachings of Appellants specification by forming a roller including a solid shaft of extruded material and a rotating outer shell. Br. 10 (emphasis added). We do not find Appellants' arguments to be persuasive because, not only do Appellants argue against the references separately when the rejection is for obviousness, relying upon what the reference combination would have suggested to a person of ordinary skill in the art, "[Ajppellant's arguments fail from the outset because . . . they are not based on limitations appearing in the claims." In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Moreover, "[i]n the patentability context, claims are to be given their broadest reasonable interpretations . . . limitations are not to be read into the claims from the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citations omitted). Any special meaning assigned to a term "must be sufficiently clear in the specification that any departure from common usage would be so understood by a person of experience in the 8 Appeal 2017-004452 Application 13/573,024 field of the invention." Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to a term a unique definition that is different from its ordinary and customary meaning; however, a patentee must clearly express that intent in the written description."). Absent an express intent to impart a novel meaning to a claim term, the words take on the ordinary and customary meanings attributed to them by those of ordinary skill in the art. Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003) (citation omitted).6 Furthermore, because the applicant has the opportunity to amend claims during prosecution, giving a claim its broadest reasonable interpretation will reduce the possibility that the claim, once issued, will be interpreted more broadly than is justified. In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984); In re Zletz, 893 F.2d319, 321 (Fed. Cir. 1989) ("During patent examination the pending claims must be interpreted as broadly as their terms reasonably allow."). Therefore, based upon the findings above, on this record, we are not persuaded of error in the Examiner's reliance on the combined teachings and suggestions of the cited prior art combination to teach or suggest the disputed limitation of claim 1, nor do we find error in the Examiner's resulting legal conclusion of obviousness. Therefore, we sustain the 6 Appellants do not recite claim 1 as a "product-by-process" claim, nor do they otherwise recite a particular method of forming either the roller barrel or the shaft in the claim that might arguably provide a structural difference over the cited prior art combination sufficient to overcome the prima facie case of obviousness under Â§ 103. See MPEP Â§ 2113. 9 Appeal 2017-004452 Application 13/573,024 Examiner's obviousness rejection of independent claim 1, and grouped claims 2â€”4 which fall therewith. See Claim Grouping, supra. CONCLUSION The Examiner did not err with respect to the obviousness rejection of claims 1â€”4 under 35 U.S.C. Â§ 103(a) over the cited prior art combination of record, and we sustain the rejection. DECISION We affirm the Examiner's decision rejecting claims 1â€”4. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l)(iv). See 37 C.F.R. Â§41.50(f). AFFIRMED 10