Ex Parte Herzog

Patent Trial and Appeal Board

Dec 3, 2012

11181287 (P.T.A.B. Dec. 3, 2012)

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.
11/181,287 07/14/2005 Kenneth J. Herzog P/2780-107 5451
2352 7590 12/03/2012
OSTROLENK FABER LLP
1180 AVENUE OF THE AMERICAS
NEW YORK, NY 10036-8403
EXAMINER
SINGH, KAVEL
ART UNIT PAPER NUMBER
3651
MAIL DATE DELIVERY MODE
12/03/2012 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 KENNETH J. HERZOG
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Appeal 2010-011572
Application 11/181,287
Technology Center 3600
____________

Before STEFAN STAICOVICI, MICHELLE R. OSINSKI, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-011572
Application 11/181,287

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STATEMENT OF THE CASE
Kenneth J. Herzog (“Appellant”) appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1-12 and 20-25.1 We have
jurisdiction under 35 U.S.C. § 6(b).
The Claimed Subject Matter
Independent claims 1 and 20 are representative of the claimed subject
matter and are reproduced below.
1. A system for aligning items, comprising:
a plate having an outer edge and a top surface, wherein
the plate is intended to accept the items on the top surface and
to move the items through the system;
a diverter arm with a length and a top side, the diverter
arm residing over the top surface of the plate and extending
substantially over its length towards the outer edge of the plate,
the top side of the diverter arm and the top surface of the plate
substantially having a uniform distance over the length of the
diverter arm; and
wherein the distance between the diverter arm top side
and the top surface of the plate is configured such that the
diverter arm impedes and diverts items resting substantially flat
on the top surface of the plate but passes under items that are
angled upward relative to the top surface of the plate.

1 Claims 13-19 were previously withdrawn by the Examiner. See Non-Final
Rejection, mailed July 17, 2007, at 1.
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20. A method for diverting items, comprising the steps
of:
moving the items through a rotation of a plate, a plurality
of the items resting substantially flat on a surface of the plate;
impeding the movement of the items through a diverter
arm such that at least one of the items becomes angled upward
relative to the surface of the plate;
diverting, through the diverter arm, the movement of at
least one of the plurality of items resting flat on the surface of
the plate such that the at least one diverted item moves towards
an edge of the plate;
passing over the diverter arm the at least one item that is
angled upward; and
continuing to move through the rotation of the plate the
at least one passed item.

References
The Examiner relies upon the following prior art references:
Johnson US 2,928,521 Mar. 15, 1960
Sala US 5,415,322 May 16, 1995

Rejection
The Examiner makes the following rejection:
I. Claims 1-12 and 20-25 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Johnson and Sala.

SUMMARY OF DECISION
We REVERSE.

Appeal 2010-011572
Application 11/181,287

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OPINION
The central issues in this appeal are whether Sala discloses a diverter
arm that “passes under items that are angled upward relative to the top
surface of the plate” as required by claims 1-12 or a method that includes a
step of “passing over the diverter arm the at least one item that is angled
upward” as required by claims 20-25. See App. Br. 3, 5.
The Examiner determined that Johnson and Sala render obvious the
subject matter of claims 1-12 and 20-25. Ans. 3-5. In particular, the
Examiner found that Sala “teaches [that] the diverter arm (36) passes under
items that are angled upward relative to the top surface of the plate (29) (Fig.
11).” Id. at 4. The Examiner concluded that it would have been obvious to
one of ordinary skill in the art “to use a diverter arm that passes under the
items as taught by Sala into [sic] the invention of Johnson in order to
eliminate the need to manually position the items.” Id.
Appellant contends that the Examiner solely points to Figure 11 of
Sala and that Figure 11 “does not show any of the diverter arms 36c under
any of the bottles 11,” as required by claim 1. App. Br. 4. Appellant also
asserts that “the Examiner has failed to identify any portion of Sala that
allegedly describes these features.” Id. For the same reasons, Appellant
contends that Johnson and Sala do not disclose a method including the step
of “passing over the diverter arm the at least one item that is angled
upward,” as required by claim 20.
An Examiner’s factual finding regarding what a reference discloses
must be supported by a preponderance of the evidence. See In re Caveney,
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761 F.2d 671, 674 (Fed. Cir. 1985) (“preponderance of the evidence is the
standard that must be met by the PTO in making rejections”); see also In re
Oetiker, 977 F.2d 1443, 1449 (Fed. Cir. 1992) (Plager, J., concurring) (“In
rejecting an application, factual determinations by the PTO must be based on
a preponderance of the evidence, and legal conclusions must be correct.”)
(citation omitted).
As noted by Appellant, the Examiner solely relies on Figure 11 of
Sala as disclosing a diverter arm 36 passing under a bottle 4a. Figure 11,
however, does not indicate the position of radial arm 36, specifically 36c,
with any degree of clarity. Further, we agree with Appellant that Sala is
silent as to whether any portion of radial arm 36 passes under a bottle. See
App. Br. 4. After viewing Figure 11 of Sala, we find that radial arm 36 of
Sala may pass under bottle 4a, as the Examiner proposes, but it may instead
push bottle 4a along its side in a diverting manner. As far as we can tell,
both situations are equally probable. “The Patent Office has the initial duty
of supplying the factual basis for its rejection. It may not . . . resort to
speculation, unfounded assumptions or hindsight reconstruction to supply
deficiencies” in the cited references. In re Warner, 379 F.2d 1011, 1017
(CCPA 1967); see In re GPAC, Inc., 57 F.3d 1573, 1582 (Fed. Cir. 1995)
(same). On these facts, one of ordinary skill in the art can only speculate as
to whether Sala’s radial arm 36 passes under a bottle, as the Examiner
proposes. Such speculation, however, is insufficient to support this
rejection. See id.
Accordingly, we do not sustain the Examiner’s rejection.
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DECISION
We reverse the Examiner’s rejection of claims 1-12 and 20-25.

REVERSED

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