Ex Parte Lelie et al

Patent Trials and Appeals Board

Mar 25, 2019

14907373 - (D) (P.T.A.B. Mar. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/907,373 01/25/2016 Thomas Lelie
69713 7590 03/27/2019
OCCHIUTI & ROHLICEK LLP
321 Summer St.
Boston, MA 02210
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
40047-281US1 1488
EXAMINER
WEEKS, GLORIA R
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
03/27/2019 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):
INFO@ORPATENT.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS LELIE and STEP AN WAGNER
Appeal2018-008760 1
Application 14/907,373
Technology Center 3700
Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
rejections of claims 14--17, 22-25, 27, and 28. We have jurisdiction over
this appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 An oral hearing was held on March 19, 2019.
2 "The real party in interest is KHS GmbH." (Appeal Br. 1.)
Appeal2018-008760
Application 14/907,373
BACKGROUND
The Appellants' invention relates to an apparatus/method for
"wrapping containers," in which "a wrapping unit 4" includes "a linear
transporter 5 having a closed movement path 5.1." (Spec. 13, 11. 14--15.)
The linear transport 5 "is an electromagnetic drive that actuates and move
movement elements 6 independently of each other" along the closed
movement path 5.1. (Id. at 13, 11. 18-20.) As shown in our annotated
version of Figure 1, below, the closed movement path 5.1 has "an outward
run Sa" and "a return run Sb." (Id. at 13, 11. 15-16.)
Hg, 1
Figure 1 "is a side view of [the] wrapping unit." (Spec. 12, 1. 10.) "Because
the linear transporter 5 can independently control each movement element,"
it is possible "to accelerate a movement element 6 back from the end of the
outward run Sa to the end of the return run Sb." (Id. at 14, 11. 23-24, 26-28.)
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Application 14/907,373
As such, "only a few movement elements 6 need to be provided in a waiting
position at the end of the return run Sb." (Id. at 14, 11. 24--26.)
Thus, "[a]n advantage of having movement elements with
individually controllable velocities is that movement elements moving along
the return run can move faster than the movement elements moving along
the outward run." (Spec. 3, 11. 22-23, 26-28.) Put another way, the
movement members "can be accelerated so that they will be ready for re-use
with minimal delay." (Id. at 6, 11. 21-24.) And, thanks to the acceleration of
the movement elements along the return run, "only a very small number of
movement elements will actually be required to process a particular rate of
container flow." (Id. at 3, 11. 23-26.)
INDEPENDENT CLAIMS ON APPEAL
14. An apparatus for concurrently wrapping containers along a
container-transport path, said containers arranged one on top of
the other, with film, wherein said apparatus comprises a
wrapping unit, said wrapping unit comprising a linear transporter
and movement elements, wherein said linear transporter has a
closed movement path beside said container-transport path,
wherein said movement elements circulate in a common
direction along said closed movement path, wherein said
movement elements are individually controllable along said
closed movement path, wherein, in operation, different
movement elements move at different velocities, wherein each
movement element comprises a gripping head arranged thereon,
and wherein said linear transporter comprises an electromagnetic
direct drive.
27. A method compnsmg providing container packs to be
wrapped, each container pack comprising containers one-on-top
of the other, individually controlling velocities of elements of an
electromagnetic direct drive as said movement elements circulate
movement elements circulate in a common direction around a
closed movement path, usmg a gripping head on a first
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Application 14/907,373
movement element, gripping a first piece of film that is to be
wrapped around a first container pack moving along a container-
transport path, and wrapping said first container with said first
piece of film, using a gripping head on a second movement
element, gripping a second piece of film that is to be wrapped
around a second container pack moving along said container-
transport path; and wrapping said second container with said
second piece of film concurrently with wrapping said first
container.
REJECTIONS
I. The Examiner rejects claims 14--16, 22, 25, 27, and 28 under
35 U.S.C. § 103 as unpatentable over Kaestner, 3 Gambetti, 4 and Jacobs. 5
(Final Action 5.)
II. The Examiner rejects claims 23 and 24 under 35 U.S.C. § 103
as unpatentable over Kaestner, Gambetti, Jacobs, and Hastreiter. 6 (Final
Action 8.)
III. The Examiner rejects claim 17 under 35 U.S.C. § 112, as failing
to comply with the enablement requirement. (Final Action 3.)
ANALYSIS
Independent claim 14 sets forth "[a]n apparatus," and independent
claim 27 sets forth "[a] method," in which movement elements "circulate in
a common direction" along or around a "closed movement path." (Appeal
Br., Claims App.) Independent claim 14 requires an "electromagnetic direct
3 US 8,458,991 B2, issued June 11, 2013.
4 US 6,874,302 B2, issued April 5, 2005.
5 US 2003/0230941 Al, published December 18, 2003.
6 US 2012/0117923 Al, published May 17, 2002.
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Application 14/907,373
drive," and requires the movement elements to be "individually
controllable." (Id.) Independent claim 27 requires an "electromagnetic
direct drive," and requires a step of "individually controlling the velocities"
of the movement elements. (Id.)
Rejections I and II
The Examiner finds that Kaestner and Gambetti, together, teach a
wrapping unit in which movement elements circulate in a common direction
along a closed movement path. (See Final Action 5-7.) In both Kaestner
and Gambetti, a mechanically-driven chain forms the closed movement path,
and movement members are mechanically fastened to this chain. (See
Kaestner, col. 6, 11. 5-14; Fig. 7; see Gambetti, col. 4, 11. 21-35, Fig. 1.)
Thus, in the Kaestner/Gambetti wrapping unit, there is no electromagnetic
drive and the movement elements cannot be controlled individually.
The Examiner determines that it would have been obvious, in view of
Jacobs, to modify the drive system of the Kaestner/Gambetti wrapping unit
"to include an electromagnetic drive." (Final Action 7.) And the Examiner
finds that this modification would result in the movement elements being
"individually controlled." (Id.)
The Examiner's articulated reasoning for this modification is that it
"allow[ s] the movement elements to be accelerated on the return run portion
of the movement path, thereby reducing the number of movement elements
required for a continuous operation of the wrapping unit." (Final Action 7.)
According to the Examiner, Jacobs teaches this advantage (i.e., allowing the
movement elements to be accelerated on the return portion of the movement
path) in "paragraphs 3, 4, 11 and 13." (Id.)
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Application 14/907,373
The Appellants argue that the Examiner's articulated reasoning for the
proposed combination of the prior art (i.e., allowing the movement elements
to be accelerated on the return portion of the movement path), is taught by
their Specification, not Jacobs. (See Appeal Br. 9-13.) And the Appellants
provide specific arguments as to why the allegedly supporting paragraphs in
Jacobs do not address the acceleration of movement members on a return
run.
For example, the Appellants argue that Jacobs, in paragraphs 3 and 4,
"describes the advantages of linear motors, including the independent
control of movement elements," but "says nothing about acceleration on a
return path or reducing the number of movement elements." (Appeal
Br. 10.) The Appellants also argue that Jacobs, in paragraph 11, "only refers
to a controller that controls movement elements," and "does not say that
there is a return portion along which they accelerate." (Id. at 11.) The
Appellants further argue that Jacobs, in paragraph 13, discloses that
"movement elements can be controlled independently," but does not "say
that movement elements can be accelerated on a return portion." (Id. at 12.)
Indeed, according to the Appellants, Jacobs "does not even say that a return
portion exists." (Id.)
The Examiner answers these arguments by noting that "the fact" that
the Appellants have "recognized another advantage which would flow
naturally from following the suggestion of the prior art cannot be the basis
for patentability when the differences would otherwise be obvious."
(Answer 4--5.) This Examiner's position misses the mark because it is not
"pertinent to the point being raised." (Reply Br. 18.)
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The Examiner's position might have merit if the Appellants were
contending that their Specification teaches an advantage gained by the
proposed combination of the prior art, and that this Specification-taught
advantage differs from the Examiner's articulated reasoning for the
combination of the prior art. But they are not. The Appellants are
contending that the Examiner's articulated reason for the proposed
combination is taught by their Specification, and is found nowhere in the
prior art. And the Examiner offers us no adequate explanation as to why this
contention by the Appellants is incorrect.
"Rejections on obviousness grounds cannot be sustained" without
"some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness." (KSR Int 'l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007).) Here, the Appellants establish that the Examiner's
articulated reasoning lacks rational underpinnings because support for this
reasoning is found only in the Appellants' Specification, and not in the prior
art. We agree with the Appellants that this scenario is symptomatic of
"hindsight reasoning." (Reply Br. 18.)
Thus, we do not sustain the Examiner's rejection of independent
claims 14 and 27 under 35 U.S.C. § 103 as unpatentable over Kaestner,
Gambetti, and Jacobs (Rejection I).
The Examiner's further findings and determinations with respect to
the dependent claims, and the additional prior art reference (Hastreiter), do
not compensate for the above-discussed shortcomings in the rejection of
independent claims 14 and 27. (See Final Action 5-9.)
Thus, we do not sustain the Examiner's rejection of dependent
claims 15, 16, 22, 25, and 28 under 35 U.S.C. § 103 as unpatentable over
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Kaestner, Gambetti, and Jacob; and we do not sustain the Examiner's
rejection of dependent claims 23 and 24 under 35 U.S.C. § 103 as
unpatentable over Kaestner, Gambetti, Jacobs, and Hastreiter.
Rejection III
Independent claim 14 requires "each movement member [to]
comprise[] a gripping head arranged thereon," and dependent claim 17
requires "said gripping head" to be "freely movable relative to said
movement element." (Appeal Br., Claims App.) The Examiner determines
that the Specification does not describe, in an enabling manner, a gripping
head that is freely movable relative to movement element to which it is
attached. (See Final Action 3--4.)
The Appellants contend that the Specification shows, in Figure 2, a
gripping head 6.1 ( and a connecting rod 15) that is "freely movable relative
to a movement element 7 ," because, if the gripping head 6.1 was not freely
movable, the movement-member assembly "would not be able to negotiate
turns" when circulating around the illustrated closed movement path. (See
Appeal Br. 18.) The Appellants also contend that "[i]t would not take
'undue experimentation' to place a pivot" so that the gripping head 6.1 and
the connecting rod 15 could pivot relative to the movement element 7 as
required to circulate the closed movement path. (Id.)
The Examiner does not dispute these contentions by the Appellants
(see Answer 2-9), and the Appellants' contentions are reasonably supported
by the record (see Spec. 15, 11. 3-9; Fig. 2).
Thus, we do not sustain the Examiner's rejection of dependent
claim 17 under 35 U.S.C. § 112, as failing to comply with the enablement
requirement.
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DECISION
We REVERSE the Examiner's rejections of claims 14--17, 22-25, 27,
and 28.
REVERSED
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