Ex Parte Kaya et al

Patent Trial and Appeal BoardOct 25, 2012

11825856 (P.T.A.B. Oct. 25, 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. 11/825,856 07/09/2007 Mehmet Oktay Kaya 6001.1272CON 7477 23280 7590 10/26/2012 Davidson, Davidson & Kappel, LLC 485 7th Avenue 14th Floor New York, NY 10018 EXAMINER MORRISON, THOMAS A ART UNIT PAPER NUMBER 3653 MAIL DATE DELIVERY MODE 10/26/2012 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 MEHMET OKTAY KAYA and EDWARD JAMES LIMBERT ____________________ Appeal 2010-009140 Application 11/825,856 Technology Center 3600 ____________________ Before: JOHN C. KERINS, WILLIAM V. SAINDON, and NEIL T. POWELL, Administrative Patent Judges. POWELL, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-009140 Application 11/825,856 2 STATEMENT OF CASE Mehmet Oktay Kaya et al. (Appellants) appeal under 35 U.S.C. § 134 from a rejection of claims 1, 4, 6, 12, 19, and 21-24. We have jurisdiction under 35 U.S.C. § 6(b). The Claimed Subject Matter The claims are directed to a sheet material feeder. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A sheet material feeder comprising: a sheet material holder for holding a pile of sheet material; a rotating drum for transporting the sheet material from the pile; and an acceleration device receiving the sheet material from the rotating drum at a first location at a first speed and releasing the sheet material at a second location at a second speed greater than the first speed, the acceleration device accelerating the sheet material between the first and second locations; wherein the acceleration device includes a plurality of variable-speed belts and input rollers and output rollers, the belts running around the input and output rollers, a surface speed of the belts at the input rollers being equal to a surface speed of the rotating drum. The Rejections The Examiner relies upon the following as evidence of unpatentability: Earp Binzoni Hepp Bernardi Klopfenstein US 2,936,681 US 3,173,684 US 3,602,495 US 3,976,291 US 5,979,889 May 17, 1960 Mar. 16, 1965 Aug. 31, 1971 Aug. 24, 1976 Nov. 9, 1999 Appeal 2010-009140 Application 11/825,856 3 The Examiner made the following rejections: Claims 1, 4, and 21 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Hepp. Claims 6 and 22 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hepp and Klopfenstein. Claims 12 and 23 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hepp and Earp. Claim 24 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Hepp, Earp, and Klopfenstein. Claim 19 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Hepp, Earp, and Binzoni or Bernardi. Claim Grouping Appellants argue claims 1, 4 and 21 as a group; argue claims 6 and 22 as a group; and argue claims 12 and 23 as a group. We select claims 1, 6, and 12 as representative for their respective groups, and each of claims 4 and 21-23 shall stand or fall with their representative claim. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Appellants also separately argue claims 19 and 24. ANALYSIS Claim 1 Appellants assert that “Hepp does not anticipate claim 1 because it fails to disclose ‘the rotating drum’ and the ‘acceleration device’ of claim 1.” App. Br. 5. More specifically, Appellants argue that 1) “Hepp does not disclose and teaches away from the limitation of a ‘a surface speed of the Appeal 2010-009140 Application 11/825,856 4 belts at the input rollers being equal to a surface speed of the rotating drum’ recited in claim 1” (App. Br. 5-6) and 2) “Hepp simply does not teach ‘receiving the sheet material from the rotating drum at a first location at a first speed and releasing the sheet material at a second location at a second speed greater than the first speed’ recited in claim 1” (App. Br. 6). Claim 1 limitation of “a surface speed of the belts at the input rollers being equal to a surface speed of the rotating drum.” The Examiner finds that Hepp’s roller frame or drum 1, including suction rollers 2, suction grippers 3, shafts 14, and pulleys 15, 16, and 17, corresponds to the claimed rotating drum. Ans. 3; Hepp, col. 2, ll. 46-59, col. 3, ll. 7-18. The Examiner also finds that Hepp’s lower conveyor belt 4, driving mechanism 6, and upper conveyor belt 10, collectively correspond to the claimed acceleration device. Ans. 3; Hepp, col. 2, ll. 60-70. The Examiner further finds that Hepp’s device meets the claim limitation “a surface speed of the belts at the input rollers being equal to a surface speed of the rotating drum” because Hepp discloses that “[t]he pulleys … 15, 16, [and] 17 arranged loosely on the shaft 14 of the suction roller 2 revolve at the speed of the lower conveyor belt 4.” Ans. 4; Hepp, col. 3, ll. 13-15. In response, Appellants argue that: As viewed in the context of claim 1 as a whole, one of ordinary skill in the art would understand "a surface speed of the rotating drum" as being the speed of the outer circumferential surface of the drum. It is respectfully submitted that the Examiner's interpretation of "a surface speed of the rotating drum" recited in claim 1 as including a surface speed of freely rotatable disks 15 to 17 of roller assemblies 2 provided along the periphery of drum 2, is unreasonably broad and is inconsistent with the plain Appeal 2010-009140 Application 11/825,856 5 language of claim 1 and the disclosure of Hepp. Throughout Hepp, the "peripheral speed of the roller frame" is discussed numerous times. Reply Br. 2. We disagree. Appellants do not identify any aspect of “claim 1 as a whole” that supports their construction. Indeed, in claim 1, the indefinite article “a” with no associated adjectives regarding the position of the surface speed in question contradicts Appellants’ position that the plain meaning of “‘a surface speed of the drum’” is “the speed of the outer circumferential surface of the drum.” And Hepp’s repeated discussion of the “‘peripheral speed of the roller frame’” likewise undermines Appellants’ position, as Hepp’s consistent use of the adjective “peripheral” evinces that those of ordinary skill in the art consider it necessary when referring to a particular surface speed of a drum to clearly specify which surface speed. In concert with their claim-construction position, Appellants argue that Hepp does not meet the claim limitation because Hepp discloses operating the conveyor belt 4 at a speed lower or higher than the peripheral speed of the roller frame or drum 1. This argument fails because it rests on Appellants’ incorrect claim construction. The argument also fails to recognize that the Examiner correctly finds that Hepp discloses its conveyor belt 4 can be driven at “any desired conveying speed.” Ans. 16; Hepp, col. 2, ll. 61-65. Appellants also assert that the surface speed of the pulleys 15, 16, and 17 cannot correspond to the claim limitation “‘a surface speed of the drum’” because the pulleys 15, 16, and 17 do not constitute part of Hepp’s roller frame or drum 1. In support of this conclusion, Appellants argue that pulleys 15, 16, and 17 can rotate independently of roller frame or drum 1 Appeal 2010-009140 Application 11/825,856 6 and rollers 2, and that “pulleys 15, 16, and 17 do not aid or assist in ‘transporting the sheet material from the pile’ as claimed.” App. Br. 6. Again, we disagree. The Examiner correctly finds that Hepp repeatedly identifies rollers 15, 16, and 17 as a component of the roller frame or drum 1. Ans. 10-11. The Examiner also correctly finds that Hepp’s rollers 2 and pulleys 15, 16, and 17 engage and support each sheet during the process of transporting the sheet from the pile to the conveyor belt 4, as demonstrated, for example, by lines 46-58 of column 2 and Figure 3 of Hepp. See Ans. 10-11; see also Hepp, col. 3, ll. 1-18, Figs. 1 and 2. Accordingly, the Examiner correctly finds that pulleys 15, 16, and 17 constitute part of Hepp’s roller frame or drum 1 and do assist in transporting sheets from the pile to the conveyor belt 4. Regarding Appellants’ observation that rollers 15, 16, and 17 can rotate independently of other components of Hepp’s roller frame or drum 1, Appellants do not explain any reason why this would make rollers 15, 16, and 17 not part of the roller frame or drum 1. Many machine components have multiple parts that can rotate independently of one another. Hepp discloses, for example, that “[r]oller frames are known which possess a plurality of individual rollers provided with suction grippers and which revolve in the opposite sense to the sense of rotation of the roller frame.” Hepp, col. 1, ll. 10-13. Appellants’ assertion that Hepp teaches away from the claim limitation is irrelevant to the anticipation rejection of claim 1. Moreover, as discussed below in connection with the obviousness rejection of claim 12, Hepp does not teach away from the claim features. Appeal 2010-009140 Application 11/825,856 7 Claim 1 limitations “receiving the sheet material from the rotating drum at a first location at a first speed and releasing the sheet material at a second location at a second speed greater than the first speed.” To establish that the speed at which Hepp’s conveyor belt 4 releases a sheet is greater than the speed at which the conveyor belt 4 receives the sheet, the Examiner cites Hepp’s disclosure at column 2, lines 19-31 that “[s]ince the conveying speed of the conveyor belts can be varied during operation, it is possible to accelerate this at any desired point.” See Ans. 13. Appellants respond that this portion of Hepp “does not teach that any of the sheets on belt 4 are released at a second location at a second speed greater than the first speed.” Reply Br. 3. We agree with Appellants insofar as this particular portion of Hepp does not establish any particular speed at which Hepp’s conveyor belt 4 releases a sheet. Nevertheless, the balance of Hepp establishes that Hepp’s device meets the disputed claim limitations as properly interpreted. Appellants argue that: The acceleration or deceleration of sheet material in Hepp is based on the difference in speeds between belts 4, 10 and roller frame 1, while the instant invention varies the speed of the belts 52, 54 in the acceleration device 50. Hepp simply does not teach "receiving the sheet material from the rotating drum at a first location at a first speed and releasing the sheet material at a second location at a second speed greater than the first speed" as recited in claim 1. App. Br. 7 (emphasis added). These arguments are not commensurate in scope with claim 1 because the disputed claim language does not require “var[ying] the speed of the belts … in the acceleration device.” Nor does the disputed claim language require that the acceleration device or its belts have the “first speed” at the “first location” or the “second speed” at the “second location.” Rather, the Appeal 2010-009140 Application 11/825,856 8 claim language encompasses a device operating in a manner such that the sheet material has the “first speed” at the “first location” and the “second speed” at the “second location.” Hepp’s device operates in this manner. Hepp’s conveyor belt 4 receives a sheet at a first location when the leading edge of the sheet first engages the conveyor belt 4. Hepp, col. 2, ll. 57-62, col. 3, ll. 10-13, Fig. 1. At this first location, the sheet has a first speed, specifically the speed at which the roller frame or drum 1 and its roller wheels 2 and pulleys 15, 16, and 17 have transported the sheet to the conveyor belt 4. See Hepp, col. 2, ll. 1-7 and 50-59, col. 3, ll. 10-22, and Figs. 1 and 2. Hepp’s device also releases the sheet at a second location at a second speed greater than the first speed. As the Examiner correctly found, a person of ordinary skill in the art would understand that Hepp’s device releases the sheet at a second location when the conveyor belt 4 discharges the sheet from the end of the conveyor belt 4 that wraps around roller 7. See Ans. 12; see also Hepp, col. 3, ll. 22-27, Fig. 3. At this second location, the sheet has a second speed, specifically the speed at which the conveyor belt 4 runs. See Hepp, col. 3, ll. 13-18 and 22-27, Figs 1, 4, and 5. As Appellants note, Hepp discloses operating the conveyor belt 4 at a higher speed than the peripheral speed of the roller frame or drum 1 in at least some circumstances. Id. at col. 2, ll. 1-7, col. 3, ll. 10-22. Thus, in such circumstances, the second speed of the sheet when it is released by the conveyor belt 4 is greater than the first speed of the sheet when it is received by the conveyor belt 4, even if the conveyor belt 4 runs at a constant speed. Accordingly, we find that Hepp’s conveyor belt 4 meets the claim limitations of an acceleration device Appeal 2010-009140 Application 11/825,856 9 “receiving the sheet material from the rotating drum at a first location at a first speed and releasing the sheet material at a second location at a second speed.” Because our reasoning for this finding differs slightly from the Examiner’s, we modify the Examiner’s anticipation rejection and designate it a new ground of rejection. Specifically, we modify the Examiner’s rejection from relying on varying speed of Hepp’s conveyor belt 4 as meeting the “first speed” and “second speed” limitations, to relying on different speeds of Hepp’s sheet material as meeting these limitations for the reasons explained above. We apply the same modification to the Examiner’s obviousness rejection of dependent claims 6 and 22 and likewise designate this a new ground of rejection. Claim 6 Beyond pointing to their arguments for independent claim 1, Appellants address dependent claim 6 only by stating that “one of skill in the art would not have had any reason or motivation to include retractable signature support 19 of Klopfenstein in the apparatus of Hepp,” without offering any explanation why. App. Br. 7. This conclusory assertion does not apprise us of error in the Examiner’s rejection. Claim 12 Appellants traverse the rejection of claim 12 with a variety of arguments, none of which apprise us of error in the Examiner’s position. Appellants first argue that “[a]s similarly discussed above with respect to claim 1, Hepp does not disclose the ‘rotating drum’ and the ‘acceleration device’ of claim 12 because Hepp does not disclose the limitation of ‘a Appeal 2010-009140 Application 11/825,856 10 surface speed of the belts at the input rollers being equal to a surface speed of the rotating drum.’” App. Br. 8. We disagree for the reasons explained above in connection with the same language of claim 1. Appellants also argue that combining the disclosures of Hepp and Earp would not produce the claimed sheet material feeder, asserting that replacing Hepp’s drum with Earp’s would eliminate the pulleys 15, 16, and 17 whose surface speed equals the speed of Hepp’s belts. Id. at 9. This fails to understand that the Examiner takes the position that it would have been obvious to a person of ordinary skill in the art to implement Earp’s concept of extending and retracting suckers in Hepp’s system while adhering to Hepp’s suggestion to provide a surface speed of the roller frame or drum 1 equal to the speed of the conveyor belt 4, not that a person of ordinary skill in the art would have blindly tried to cobble together some agglomeration of parts from Hepp and Earp. Ans. 17-18. The Examiner has the better position. See In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”); In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference”); KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Appellants further argue that “one of skill in the art would not have had any reason to have modified the apparatus of Hepp in view of the apparatus of Earp to meet the limitations of claim 12.” App. Br. 9. In support of this argument, Appellants offer only the observations that: Appeal 2010-009140 Application 11/825,856 11 Earp is addressed to a feeder mechanism for fabricating tubular containers. The containers are removed from a stack or pack in collapsed form and erected into a tubular shape for filling and sealing and thus there would be no motivation for one skilled in the art to modify the teachings of roller frame in Hepp with the teachings of Earp. Id. Appellants provide no explanation of how these aspects of Earp’s disclosure bear on the question of whether it would have been obvious to a person of ordinary skill in the art to combine the references as suggested by the Examiner. On the other hand, the Examiner finds that “[t]he Hepp and Earp references both perform the same function of removing and transferring stacked flat or flattened objects using a drum” and concludes that it would have been obvious to one of ordinary skill in the art at the time the invention was made to replace the drum arrangement of the Hepp patent with a drum arrangement having extendable and retractable suckers, in order [to] be able to operate quickly and with reduced wear to the feeding mechanism, as taught by Earp. Ans. 18. Here again, the Examiner has the better position. In the Reply Brief, Appellants add the argument that a person of ordinary skill in the art would not have modified Hepp to operate its conveyor belt 4 at a speed “equal to a surface speed of roller frame or drum 1” because Hepp teaches away from such operation. Reply Br. 3. For the reasons discussed above, Hepp’s device already meets the claim limitation “a surface speed of the belts at the input rollers being equal to a surface speed of the rotating drum” without any modification, making Appellants’ assertion that Hepp teaches away unpersuasive. Appeal 2010-009140 Application 11/825,856 12 Moreover, contrary to Appellants’ assertion, Hepp does not teach away from operating its conveyor belt 4 at any speed. Hepp indicates that known machines could only operate “at a conveying speed equal to the peripheral speed of the roller frame” but “[i]n many instances . . . a conveying speed deviating upwardly or downwardly from the peripheral speed of the roller frame is advantageous.” Hepp, col. 1, ll. 19-31. Accordingly, Hepp discloses that “[a]n object of the invention is to obviate this disadvantage and to provide a device which makes it possible to remove the sheets or inserts from the roller frame at any desired different conveying speed.” Id. at col. 1, ll. 50-53. Thus, Hepp suggests a desire to allow operating at any different conveying speed an operator may desire, including less than, equal to, or greater than the peripheral speed of the roller frame, not a desire to avoid operating at a conveying speed equal to the peripheral speed of the drum. Claim 24 Beyond pointing to their arguments for independent claim 12, Appellants address dependent claim 24 only by stating that “one of skill in the art would not have had any reason or motivation to combine retractable signature support 19 of Klopfenstein with the apparatuses of Hepp and Earp,” without offering any explanation why. App. Br. 10. This conclusory assertion does not apprise us of error in the Examiner’s rejection. Appeal 2010-009140 Application 11/825,856 13 Claim 19 Beyond pointing to their arguments for independent claim 12, Appellants address dependent claim 19 only by stating that “one of skill in the art would not have had any reason or motivation to combine counter rollers 60 of Binzoni et al. or hold-back drum 11 of Bernardi et al. with the apparatuses of Hepp and Earp,” without offering any explanation why. App. Br. 10. This conclusory assertion does not apprise us of error in the Examiner’s rejection. DECISION We affirm the Examiner’s decision regarding claims 1, 4, 6, 12, 19, and 21-24. We designate our affirmance of the Examiner’s anticipation rejection of claims 1, 4, and 21 and the Examiner’s obviousness rejection of claims 6 and 22 as new grounds of rejection. FINALITY OF DECISION Regarding the affirmed rejections, 37 C.F.R. § 41.52(a)(1) provides “Appellant[s] may file a single request for rehearing within two months of the date of the original decision of the Board.” In addition to affirming the Examiner's rejection of one or more claims, this decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: Appeal 2010-009140 Application 11/825,856 14 (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner . . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record . . . . Should Appellants elect to prosecute further before the Examiner pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection, the effective date of the affirmance is deferred until conclusion of the prosecution before the Examiner unless the affirmed rejection is overcome. If Appellants elect prosecution before the Examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to the Patent Trial and Appeal Board for final action on the affirmed rejection, including any timely request for rehearing thereof. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED; 37 C.F.R. § 41.50(b) hh