Ex Parte Lancaster et alDownload PDFPatent Trial and Appeal BoardMar 31, 201712941047 (P.T.A.B. Mar. 31, 2017) Copy Citation 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. 12/941,047 11/06/2010 Patrick R. LANCASTER III ZT645-15051 8835 22884 7590 04/04/2017 MIDDLETON & REUTLINGER 401 S. 4th Street, Suite 2600 (2600 Brown & Williamson Tower) LOUISVILLE, KY 40202 EXAMINER HARMON, CHRISTOPHER R ART UNIT PAPER NUMBER 3649 NOTIFICATION DATE DELIVERY MODE 04/04/2017 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): U S PTOmail @ middreut. com US PTOmail @ middletonlaw. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PATRICK R. LANCASTER III, ROBERT D. JANES, SR., MICHAEL MITCHELL, THOMAS HARRIS, and RICHARD L. JOHNSON Appeal 2015-003109 Application 12/941,047 Technology Center 3600 Before ANNETTE R. REIMERS, WILLIAM A. CAPP, and THOMAS F. SMEGAL, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE1 Patrick R. Lancaster III et al. (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1, 4—6, 8—20, 22-46, and 53—55. Claims 2, 3, 7, 21, and 47-49 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 The Examiner indicates that “[cjlaims 50-52 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.” Final Act. 6. Appeal 2015-003109 Application 12/941,047 CLAIMED SUBJECT MATTER The claimed subject matter relates to “an apparatus and method for wrapping a load with packaging material.” Spec. 12, Fig. 8. Claims 1,18, and 34 are independent. Claim 1 is illustrative of the claimed subject matter and recites: 1. A control system for a wrapping apparatus, comprising: a packaging material dispenser configured to dispense packaging material for wrapping a load supported on a pallet; at least one sensor assembly sensing at least one of: a) a distance from a first point to a second point within the wrapping apparatus, at least one of the points being on a portion of the dispensed packaging material or on a portion of the load, or b) a speed of dispensed packaging material at a point between the packaging material dispenser and the load; the sensor assembly generating an input based on the sensed speed and/or distance; and a controller configured to proportion payout of packaging material from the packaging material dispenser based at least in part on the input. REJECTIONS2 I. Claims 1, 8, 9, 12, 13, 18—20, 53 and 55 stand rejected under 35 U.S.C. § 102(b) as anticipated by, or alternatively under 35 U.S.C. § 103(a) as unpatentable over, Lancaster (US 7,779,607 B2; iss. Aug. 24, 2010). II. Claims 10, 11, 15, 34—36, 42-46, and 55 stand rejected under 35 U.S.C. § 103(a) as unpatentable over, Lancaster.3 2 Appellants present additional evidence in the Declaration of Patrick R. Lancaster III (hereinafter the “Lancaster Declaration”) filed under 37 C.F.R. § 1.132 on June 30, 2014. 3 In the Answer, the Examiner states that “[t]he rejection of claims 34-36, 42- 2 Appeal 2015-003109 Application 12/941,047 II. Claims 1, 4—6, 8, 14, 16—20, 22—25, 30-42, and 46 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Cox (US 7,114,308 B2; iss. Oct. 3, 2006) and Rajala (US 6,314,333 Bl; iss. Nov. 6, 2001).* * * 4 III. Claim 29 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Cox, Rajala, and Gordon (US 5,315,809; iss. May 31, 1994). ANALYSIS Lancaster Claims 1, 8, 9, 12, 13, 18—20, 34—36, 42—46, and 53—55 Appellants do not offer arguments in favor of independent claims 18 and 34 or dependent claims 8, 9, 12, 13, 19, 20, 35, 36, 42^46, and 53—55 separate from those presented for claim 1. See Appeal Br. 9-13. We select claim 1 as the representative claim, and claims 8, 9, 12, 13, 18—20, 34—36, 42-46, and 53—55 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). Appellants raise arguments specific to the rejection of claims 10, 11, and 15. Appeal Br. 13—14. We address the arguments to claims 10, 11, and 15 separately below. Appellants argue (1) Lancaster fails to disclose sensing a distance from a first point to a second point, at least one of the points on a portion of the load; (2) Lancaster fails to render obvious “at least one of the points 46 and 55 under pre-AIA 35 U.S.C. 102(b) as anticipated by Lancaster, III et al. [has been withdrawn. However, note] that the alternate rejection of claims 34-36, 42-46 and 55 under pre-AIA 35 U.S.C. [§] 103(a) as obvious over Lancaster, III et al. has been maintained.” Ans. 3. 4 The Examiner notes “that claim 1 has been added to the listing of claims rejected under 35 U[.]S[.]C[.] [§] 103(a) as being unpatentable over Cox in view of Rajala et al. due to a typographical error.” Ans. 2—3. 3 Appeal 2015-003109 Application 12/941,047 being ... on a portion of the load”; and (3) Lancaster fails to teach or suggest a sensor assembly sensing a distance. See Appeal Br. 9-13. With regard to Appellants’ first argument (see Appeal Br 9—11; see also Reply Br. 2—3), we agree that Lancaster does not anticipate sensing or being capable of sensing a distance from a first point to a second point, at least one of the points on a portion of the load. Lancaster discloses sensing a distance from a target sensor (presumably off the load) to a target located off the load and on the load support surface. See Lancaster 23:38-46. The Examiner’s position that Lancaster senses, or is capable of sensing, a distance from the target sensor to a point on the load “associated” with the target, i.e., an approaching comer, is unreasonable. See Ans. 4. Although we note that the position of the associated point on the load is fixed relative the target on the load support surface, the target sensor senses the distance from itself to the target, not to the associated point. Lancaster fails to expressly or inherently disclose the claimed sensing and capability to perform the claimed sensing; accordingly claim 1 is not anticipated. See Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987) (“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.”). Alternatively, the Examiner finds that it would have been obvious to modify Fancaster by relocating targets from the load support surface onto the load. See Final Act. 3. Appellants argue that it would not have been obvious (1) because Fancaster already performs sufficiently with targets on a load support surface; and (2) due to negative consequences of relocating 4 Appeal 2015-003109 Application 12/941,047 Lancaster’s targets to the load. See Appeal Br. 11—12; see also Reply Br. 3— 7; Lancaster Declaration 4. Regarding Appellants’ argument that Lancaster already performs sufficiently with targets on a load support surface, the Examiner finds that Lancaster contemplates adapting the target/target sensors when “other shapes of loads” are being wrapped. Ans 5; see also Final Act. 3; Lancaster 24:1—2. The Examiner’s reasoning is that modifying Lancaster’s system to relocate targets onto the load directly would have a benefit in situations where irregularly shaped loads or uppermost portions loads are being wrapped. See Final Act. 3; see also Ans 5. As we “take account of the inferences and creative steps that a person of ordinary skill in the art would employ,” we find it would have been obvious to one of ordinary skill in the art at the time the invention was made to relocate targets onto the load, for reasons articulated by the Examiner. See Final Act. 3, see also Ans. 5; KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also id. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton”); Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (under the flexible inquiry set forth by the Supreme Court, the PTO must take account of “the inferences and creative steps,” as well as routine steps, that an ordinary artisan would employ). Thus, we find the Examiner has articulated a valid reasoning with “some rational underpinning to support the legal conclusion of obviousness.” See KSR Int’l, 550 U.S. 398 at 418 (citingIn re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Regarding Appellants’ argument that mounting targets on the load would result in negative consequences (see Appeal Br. 12; see also 5 Appeal 2015-003109 Application 12/941,047 Lancaster Declaration 4), we note a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006); See also Winner Int 7 Royalty Corp. v. Wang, 202 F.3d 1340, 1349 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another.”). Here, the Examiner provided an advantage to mounting targets directly onto the load, (i.e., for sensing comers/protrusions/abutments while wrapping irregularly shaped loads, or for sensing comers on a tall load at uppermost sections). See Ans. 5—6; see also Final Act. 3. Further, we note that altering the position of the target sensors/targets from the load support surface to the load is obvious, as it is a mere simple rearrangements of parts that does not modify the operation of the device. See In reJapikse, 181 F.2d 1019, 1023 (CCPA 1950) (specific positioning of a starting switch of a hydraulic power press held unpatentable because shifting the position of the starting switch would not have modified the operation of the device); In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (holding that the particular placement of a contact in a conductivity measuring device was an obvious matter of design choice within the skill in the art). Appellants argue that Lancaster fails to teach or suggest “sensing a distance” because the target sensors (i.e., proximity switches) disclosed in Lancaster do not sense or measure distance. Appeal Br. 12 (emphasis omitted); see also Reply. Br. 5, 7—8; Lancaster Declaration 4—5. 6 Appeal 2015-003109 Application 12/941,047 The Examiner finds Lancaster’s proximity sensors “actively sense a distance from a point to another when in operation. Such systems all operate to transmit a signal upon sensing a target when a distance between the target and the sensor (from a first point to a second point) is reduced to the proximity distance.” Ans. 7. Appellants’do not provide persuasive evidence or argument apprising us of Examiner error. Further, as correctly pointed out by the Examiner (see Ans. 6), Appellants’ contention that Lancaster does not teach measuring distance is not commensurate with the scope of the claims, which require sensing, not measuring. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (stating that limitations not appearing in the claims cannot be relied upon for patentability). As such, Appellants’ argument with respect to measuring distance is not persuasive. Accordingly, for the foregoing reasons, we sustain the Examiner’s rejection of claim 1 as unpatentable over Lancaster. We further sustain the rejection of claims 8, 9, 12, 13, 18—20, 34—36, 42-46, and 53—55, which fall with claim 1. Claims 10, 11, and 15 Regarding claims 10 and 11, Appellants argue that one of ordinary skill in the art would not have been motivated to modify the system of Lancaster to reposition the targets/target sensor to obtain, between the first and second points, a line extending radially from a rotational axis of the load or a line extending radially from a rotational axis of the packaging material dispenser. See Appeal Br. 13—14. Regarding claim 15, Appellants argue that one of ordinary skill in the art would not have been motivated to modify 7 Appeal 2015-003109 Application 12/941,047 the system of Lancaster to reposition the target/target sensor above the load. Id. First, we note Appellants’ arguments with respect to claims 10, 11, and 15 are not directed to the combination proposed by the Examiner, (i.e., Lancaster as modified to have targets placed directly on a load). See Final Act. 4. Rather, Appellants’ arguments are directed to Lancaster unmodified, stating “Examiner apparently speculates that large loads that could actually be wrapped by a given stretch wrapping machine would somehow not be able to accommodate positioning sensors or targets on a load support surface.” Reply Br. 8 (emphasis added); see also App. Br. 13—14. Second, the Examiner finds Lancaster provides a suggestion to reposition targets and/or target sensors in different locations, and therefore finds repositioning of the targets/targets sensors to obtain the claimed subject matter is an obvious design choice. See Ans. 8; see also Final Act. 4; Lancaster 23:65—24:2. As discussed supra, when considering obviousness, we take account of the inferences and creative steps that a person of ordinary skill in the art would employ. See KSR Int 7, 550 U.S. 398 at 418. Further, a person of ordinary skill is a person of ordinary creativity, not an automaton. Id. at 421. Accordingly, we agree with the Examiner that repositioning of the targets/targets sensors to obtain the claimed subject matter would have been an obvious design choice to one of ordinary skill in the art. Additionally, we agree that there could be benefits to repositioning the targets/target sensor when the targets are on the load, such as the reasons suggested by the Examiner (i.e., preventing interference when wrapping “an extremely large load” or creating “an unobstructed sensing path”). Ans. 8. 8 Appeal 2015-003109 Application 12/941,047 Appellants do not provide persuasive evidence or argument apprising us of Examiner error. Moreover, Appellants’ argument that it is not clear how positioning targets above the load would result in the claimed subject matter (See Reply Br. 8—9), is unpersuasive because it mischaracterizes the rejection set forth in the Final Action. See Final Act. 4. The Examiner’s rejection is based on positioning the targets accordingly “on the load surface” (Final Act. 3) not “above the load” as argued by Appellant (Reply Br. 8). The Examiner also finds that it would have been obvious to position the target sensor (“proximity sensor”) accordingly in different locations to obtain the claimed subject matter. Final Act. 4. This includes, for example, positioning a target sensor above the load as required by claim 15. Id. By not addressing the rejection as articulated by the Examiner, Appellants have not demonstrated how the Examiner erred. Accordingly, for the foregoing reasons, we sustain the Examiner’s rejection of claims 10, 11, and 15 as unpatentable over Lancaster. Cox and Rajala Claims 1, 4—6), 8, 14, 16—20, 22—25, 30—42, and 46 Appellants do not offer arguments in favor of independent claims 18 and 34 or dependent claims 4—6, 8, 14, 16, 17, 19, 20, 22—25, 30-33, 35—42, and 46 separate from those presented for claim 1. See Appeal Br. 14—17. We select claim 1 as the representative claim, and claims 4—6, 8, 14, 16—20, 22—25, 30-42, and 46 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). Appellants contend Rajala’s controller 70 does not communicate to unwind 12 including unwind motor 14, and that the speed of unwind motor 9 Appeal 2015-003109 Application 12/941,047 14 is only varied based on the change in position of dancer roll 24. See Appeal Br. 15—17. Contrary to Appellants’ assertion that controller 70 does not communicate with unwind 12, the Examiner finds, and we agree, that controller 70 does communicate with unwind 12 to control its motor speed. Ans. 10 (citing Raj ala 9:63—67).5 Accordingly, we sustain the Examiner’s rejection of claim 1 as unpatentable over Cox and Rajala. We further sustain the rejection of claims 4—6, 8, 14, 16—20, 22—25, 30-42, and 46, which fall with claim 1. Cox, Rajala, and Gordon Claim 29 Appellants do not present separate arguments for dependent claim 29, which depends from independent claim 18. See Appeal Br. 2, 4, 14—17, 24 (Claims App.). For the same reasons set forth above for claims 1 and 18, we sustain the Examiner’s rejection of claim 29 as unpatentable over Cox, Rajala, and Gordon. DECISION We AFFIRM the decision of the Examiner to reject claims 1, 8—13, 15, 18—20, 34—36, 42-46, and 53—55 as unpatentable over Lancaster. We AFFIRM the decision of the Examiner to reject claims 1, 4—6, 8, 14, 16—20, 22—25, 30-42, and 46 as unpatentable over Cox and Rajala. 5 We note that at column 15, lines 4 to 10, Rajala further indicates that controller 70 sends signals to control the speed of unwind 12 based on the positioning of dancer roll 24. 10 Appeal 2015-003109 Application 12/941,047 We AFFIRM the decision of the Examiner to reject claim 29 as unpatentable over Cox, Raj ala, and Gordon. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 11 Copy with citationCopy as parenthetical citation