Ex Parte Irwin

Patent Trial and Appeal BoardDec 12, 2012

10835327 (P.T.A.B. Dec. 12, 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. 10/835,327 04/28/2004 Jere F. Irwin IR3-063 8282 21567 7590 12/13/2012 Wells St. John P.S. 601 West First Avenue Suite 1300 Spokane, WA 99201-3828 EXAMINER WEEKS, GLORIA R ART UNIT PAPER NUMBER 3721 MAIL DATE DELIVERY MODE 12/13/2012 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 JERE F. IRWIN ____________ Appeal 2010-011176 Application 10/835,327 Technology Center 3700 ____________ Before GAY ANN SPAHN, BRETT C. MARTIN, and RICHARD E. RICE, Administrative Patent Judges. RICE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-011176 Application 10/835,327 2 STATEMENT OF THE CASE Jere F. Irwin (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 2-7, 9-11, and 13-29.1 Although claim 12 is listed among the rejected claims both on the Office Action Summary or Form PTOL-326 (page 1) of the Final Rejection and in the Examiner’s Answer (page 2), that claim has not been included in any rejection in either the Final Rejection or Answer. Accordingly, claim 12 currently stands as a non-rejected claim, and it has not been included in this appeal.2 Claims 45- 50 are withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6. We REVERSE. The Claimed Subject Matter The claimed subject matter “relates to machines . . . for preparing a plastic bag to receive a closure device about the neck of the bag after the bag has been filled with one or more items, such as a stack of thermoformed articles.” Spec. 1, para. [0001]. Claim 11, reproduced below with italics added for emphasis, is representative of the subject matter on appeal: 11. A bag neck accumulating device for flexible plastic bags, comprising: a conveyor belt configured to move a sequential array of plastic bags each containing one or more articles supported for 1 We note that page 2 of the Answer states that “[c]laims 2-7 and 9-27 stand rejected,” while page 1 of the Final Rejection and the rejections in both the Answer and the Final Rejection indicate that claims 28 and 29 also stand rejected. Accordingly, we treat the omission of claims 28 and 29 from the rejected claims listed on page 2 of the Answer as a typographical error. 2 Upon return of the Application on appeal to the Technology Center, the Examiner should determine the status of claim 12. Appeal 2010-011176 Application 10/835,327 3 movement in a substantially horizontal plane along an article travel path that presents an open-mouth portion of each bag in a substantially horizontal plane; a lower drive unit; an upper drive unit supported in floating relation atop the lower drive unit; a first drive mechanism provided by the upper drive unit and the lower drive unit and configured along a laterally constrained course spaced from the conveyor belt along a bag neck travel path, provided laterally of the article travel path and configured to advance the substantially horizontal open-mouth portion of a bag at a first speed; and a second drive mechanism provided by the upper drive unit and the lower drive unit and configured along the laterally constrained course provided along the bag neck travel path adjacent and downstream of the first drive mechanism and configured to advance the open-mouth portion of the bag at a second speed less than the first speed so as to accumulate and foreshorten the open-mouth portion of the bag; wherein the upper drive unit is pivotally affixed to the lower drive unit via a hinge such that during an operating state of the device while accumulating bag necks a top portion of the first drive mechanism and the second drive mechanism can be separated from a bottom portion of the first drive mechanism and the second drive mechanism by pivoting the upper drive unit upwardly away from the lower drive unit about the hinge while the open-mouth portion of each bag passes therethrough. Rejections The following Examiner’s rejections are before us for review: (1) claims 11, 2-7, 9, 10, 13, and 26-29 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Johnsen (US 5,184,447, iss. Feb. 9, 1993) and Slomp (US 4,069,646, iss. Jan. 24, 1978); and (2) claims 14-25 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Johnsen. Appeal 2010-011176 Application 10/835,327 4 OPINION Rejection (1) – Obviousness over Johnsen and Slomp Claims 11, 2-7, 9, 10, and 13 The Examiner’s position is that Johnsen discloses the limitation of independent claim 11 requiring “an upper drive unit supported in floating relation atop the lower drive unit.” Ans. 4.3 In particular, the Examiner finds that Johnsen discloses “an upper drive unit (42, 46) pivotally supported in a floating relationship with a lower drive unit (44; column 2[,] lines 3-5).” Id. Appellant argues in response that, as shown in Figure 3 of Johnsen, “‘a bolt 232’ . . . locks the hinge while in operation” and “prevents the ability of the upper drive unit to be supported in floating relation atop the lower drive unit.” App. Br. 5. A threshold issue is the proper construction of the claim term “in floating relation.” The Examiner contends that “in floating relation” refers to the “adjustment capability of the upper drive unit relative to the lower drive unit” for controlling “the contact force between the respective drive units.” Ans. 8-10 (citing Spec. 20, para. [0068]). Based on this claim construction, the Examiner determines that Johnsen’s bolt 232 provides the required adjustment capability: According to the [S]pecification, weights 87 are positioned on the upper drive unit such that the force of the weights on an upper frame of the upper drive unit affects the friction force of band 70 on the upper drive frame against band 72 on a lower frame of the lower drive unit. Such an arrangement improves the 3 The Examiner does not rely on Slomp to teach the “in floating relation” limitation. Id. (finding that Slomp discloses a conveyor belt configured to move a sequential array of bags to a neck sealing device). Appeal 2010-011176 Application 10/835,327 5 effectiveness of the device with respect to the drawing and accumulation of bags having various material thickness and stiffness properties. However, [A]ppellant’s use of the phrase “floating” is somewhat misleading since the upper drive unit does not adjust freely relative to the lower drive unit, rather, weights must be added or removed from the upper drive to cause the adjustment of the upper drive unit with respect to the lower drive unit. Thus, Examiner finds fastener 232 of Johnsen, which controls the engagement of bands 56, 58, 62, 64 against one another, to be equivalent to the corrector weights of Appellant’s invention. The rotation of fastener 232 to secure the frame 23 against frame 22 correlates to the contact force and adjustment of the first drive unit relative to the second drive unit. As the fastener 232 is loosened, the contact force between the respective drive units is found to inherently decrease, thereby resulting in and adjustment of the amount of friction that would be generated between the bands of the drive units during operation of the device. Likewise, as the fastener 232 is tightened, the contact force between the respective drive units inherently increases. Ans. 8-9. We disagree with the Examiner’s construction of “in floating relation,” because it is not based on the plain meaning of the word “floating.” See In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (the words of the claim must be given their plain meaning unless the plain meaning is inconsistent with the specification). In the context of a tool or mechanical part, “floating” means “free to move within limits.” WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY OF THE ENGLISH LANGUAGE UNABRIDGED, p. 872 (1971). The Examiner’s claim construction also improperly imports properties from a preferred embodiment, in which weights 87 control the Appeal 2010-011176 Application 10/835,327 6 contact force between upper drive assembly 42 and the lower drive assembly 44 (see Ans. 8, citing Spec. 20, para. [0068]), and excludes another preferred embodiment in which “weights 87 may not be necessary, and can be removed” (Spec. 18, para. [0061]). See E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003) (properties of a preferred embodiment that are not recited in a claim do not limit the reasonable scope of the claim); Modine Mfg. Co. v. U.S. Int'l Trade Comm'n, 75 F.3d 1545, 1550 (Fed. Cir. 1996) (a claim construction that excludes an applicant’s preferred embodiment “is rarely the correct interpretation”). The term “in floating relation” is not used in the Specification. However, the Specification describes upper drive assembly 42 as “pivotally supported atop a lower drive assembly 44” (Spec. 14, para. [0051]) such that upper drive assembly 42 can “tilt up” in the event that an undesirable object is inadvertently fed between upper drive assembly 42 and lower drive assembly 44 (id. at 30, para. [0099], fig. 14). Thus, as described in the Specification, upper drive assembly 42 is free to move pivotally relative to lower drive assembly 44. Accordingly, we find that the proper construction of the claim term “in floating relation” is free to move in relation to something else. The context of claim 11 supports this claim construction. See ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003) (“While certain terms may be at the center of the claim construction debate, the context of the surrounding words of the claim also must be considered . . . .”). The “wherein” clause of claim 11 (reproduced in italics supra) pertinently recites “that during an operating state of the device while accumulating bag necks a top portion . . . can be separated from a bottom Appeal 2010-011176 Application 10/835,327 7 portion . . . by pivoting the upper drive unit upwardly away from the lower drive unit about the hinge while the open-mouth portion of each bag passes therethrough.” (Emphasis added). Thus, in the context of the “wherein” clause, the claim 11 recitation “an upper drive unit supported in floating relation atop the lower drive unit” requires the upper drive unit to be supported atop the lower drive unit such that it is free to move at least pivotally relative to the lower drive unit. Because the Examiner’s rejection of claim 11 as obvious is not based on a proper construction of the claim term “in floating relation,” the rejection is not supported by “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness,” as required. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Further, the Examiner lacks an adequate factual basis for finding that loosening/tightening bolt 232 inherently adjusts the contact force between the respective drive units. See Ans. 9; In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (The Examiner has the initial duty of supplying the requisite factual basis for the rejection and may not, because of doubts that the invention is patentable, resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in the factual basis.). Johnsen discloses that removing bolt 232 allows the drive units to be pivoted away from each other for ease of access to belts and other parts in servicing the bag closing machine (Johnsen, col. 8, ll. 16-32; see also col. 2, ll. 3-10), but does not disclose necessarily that loosening/tightening bolt 232 adjusts the contact force between the drive units during operation of the machine. See Bettcher Indus., Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639 (Fed. Cir. 2011) (“Inherency can be established when ‘prior art necessarily functions in accordance with, or Appeal 2010-011176 Application 10/835,327 8 includes, the claimed limitations.’”) (quoting In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002)).4 Accordingly, we do not sustain the Examiner’s rejection of claim 11, and claims 2-7, 9, 10, and 13 dependent therefrom, under 35 U.S.C. § 103(a) as unpatentable over Johnsen and Slomp. Claims 26-29 Independent claim 26 pertinently recites a floating drive mechanism having . . . an upper drive unit supported in generally vertical floating relation atop the lower drive unit . . . for engaging through gravitational attraction and disengaging against gravitational attraction bag contact portions . . . while . . . bags pass between the portions of the first feed mechanism and the second feed mechanism. As to this recitation, the Examiner determines that Johnsen discloses the claimed invention except for the orientation of the drive units “atop” or vertically adjacent one another. It would have been obvious to one having ordinary skill in the art at the time the invention was made to orient the upper and lower drive units vertical to one another rather than horizontal of one another, since it has been held that a mere rearrangement of the essential working parts of a device involves only routine skill in the art.[] Such a modification is not found to affect the operation of the device. Ans. 5 (citing In re Japikse, 181 F.2d 1019 (CCPA 1950)).5 In further support of this conclusion, the Examiner contends that rearranging Johnsen’s 4 We note that the Examiner’s rejection of claim 11 is also erroneous for failure to consider the limitation “an upper drive unit supported . . . atop the lower drive unit” discussed infra in reference to claim 26. 5 The Examiner analyzed the claim language of “in . . . floating relation” in claim 26 in the same manner as in claim 11. Ans. 8-10. Appeal 2010-011176 Application 10/835,327 9 horizontal drive units so that one is “atop” the other would have no effect on the operation of the bag closing machine: As mentioned above, a mere rearrangement of the essential working parts of a device involves only routine skill in the art, where such a modification has no [e]ffect on the operation of the device. References of record, such as Frazier et al. (USPN 5,708,339) and Keith (USPN 3,581,876), support Examiner’s assessment that such a rearrangement is well known in the art of bag neck accumulating devices. In further support of Examiner’s assessment regarding the inconsequential orientation of the drive units with respect to one another, [the] Examiner would like to note Johnsen’s use of the phrase “on” and “upper” to describe the arrangement of the drive units relative to one another (column 2[,] lines 3-10). Ans. 10. For the reasons discussed supra with respect to claim 11, the Examiner’s rejection of claim 26 is not based on a proper construction of “in . . . floating relation.” Further, the Examiner lacks a rational underpinning for the proposed rearrangement of Johnsen’s drive units from horizontal to vertical. The Examiner does not adequately explain: how the Frazier and Keith references show that the proposed rearrangement of Johnsen’s machine would not affect its operation; why the disclosure at column 3, lines 3-10 of Johnsen (referring to parts of the machine housing) is relevant to rearrangement of the drive units; or if the rearrangement would satisfy the requirement of claim 26 for “for engaging through gravitational attraction and disengaging against gravitational attraction bag contact portions . . . while . . . bags pass between the portions of the first feed mechanism and the second feed mechanism.” Appeal 2010-011176 Application 10/835,327 10 Thus, we do not sustain the Examiner’s rejection of claim 26, and claims 27-29 dependent therefrom, under 35 U.S.C. § 103(a) as unpatentable over Johnsen and Slomp. Rejection (2) – Obviousness over Johnsen Claim 14 pertinently recites “an upper drive unit pivotally supported in floating relation atop the lower drive unit for engagement together via gravitational attraction of the upper drive unit towards the lower drive unit and separation apart via an articulating drive connection.” The Examiner’s position with respect to “atop” in claim 14 is the same as for claim 26, discussed supra. Ans. 10. For essentially the same reasons as discussed supra with respect to claims 11 and 14, we do not sustain the Examiner’s rejection of claim 14, and claims 15-25 dependent therefrom, under 35 U.S.C. § 103(a) as unpatentable over Johnsen.6 DECISION We reverse the rejection of claims 2-7, 9-11, and 13-29. REVERSED hh 6 The Examiner’s analysis of claim 14 does not address the requirement “for engagement together via gravitational attraction of the upper drive unit towards the lower drive unit,” but rather only the limitation of “gravitational attraction.” Id. at 7.