Ex Parte McCurdy et al

Patent Trial and Appeal Board

Jun 29, 2016

12920834 (P.T.A.B. Jun. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/920,834 11/30/2010
23373 7590 07/01/2016
SUGHRUE MION, PLLC
2100 PENNSYLVANIA A VENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
FIRST NAMED INVENTOR
John Joseph McCurdy
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.
Ql20583 8639
EXAMINER
LEFF, STEVEN N
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
07/01/2016 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):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN JOSEPH MCCURDY, OLIVER THOMAS O'NEILL,
HUGH MCNAB KERR, JEROME JEAN-YVES EON,
SETH DANIEL WAREING, and TIMOTHY JOHNPENFARE
Appeal2015-000884
Application 12/920,834
Technology Center 1700
Before CATHERINE Q. TIMM, WESLEY B. DERRICK, and
MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal the Examiner's final rejection of claims 52-71.
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM and enter a NEW
GROUND OF REJECTION.
1 Appellants identify Salford Engineering Limited as the real party in
interest. App. Br. 2.
Appeal2015-000884
Application 12/920,834
The Claimed Invention
Appellants' disclosure relates to a method for preparing a batch of
animal feed from a plurality of ingredients. Spec. 1; Abstract. Claim 52 is
representative of the claims on appeal and is reproduced below from the
Claims Appendix to the Appeal Brief (App. Br. 14):
52. A method for preparing a batch of animal feed from a
plurality of ingredients requiring respective predefined mixing
periods during a mixing cycle in a mixer/feeder apparatus of the
type comprising a mixing compartment within which a mixing
rotor is rotatably mounted for mixing the ingredients therein, the
method comprising:
selecting the ingredient requiring the largest predefined
mixing period, and determining the duration of the mixing cycle
as the predefined mixing period required by the selected
ingredient requiring the largest predefined mixing period,
determining a plurality of instants at which the respective
remaining ingredients are to be loaded into the mixing
compartment of the mixer/feeder apparatus during the mixing
cycle, each instant of the respective determined instants being
determined so that the remaining duration of the mixing cycle at
that instant is substantially equal to the predefined mixmg period
of the corresponding ingredient,
loading the selected ingredient with the largest predefined
mixmg period into the mixmg compartment at the
commencement of the mixing cycle, and
sequentially loading the remaining ingredients into the
mixing compartment at respective corresponding determined
instants during the mixing cycle.
The References
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Whitson US 4,547,660 Oct. 15, 1985
Osterlund EP 0931454 Al July 28, 1999
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Application 12/920,834
The Rejections
On appeal, the Examiner maintains the following rejections:
1. Claims 52-55, 57, 60, 61, 64, and 65 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Osterlund.
2. Claims 56, 58, 59, 62, 63, and 66-71 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Osterlund in view of
Whitson.
OPINION
Rejection 1
Appellants argue claims 52-55, 57, 60, 61, 64, and 65 as a group. We
select claim 52 as representative of this group, and the remaining claims
stand or fall with claim 52. 37 C.F.R. § 41.37(c)(l)(iv). The Examiner finds
that Osterlund discloses all of the limitations of claim 52. Ans. 2, 3 (citing
Osterlund 1111 5, 6, 8, 32, Fig. l ).
Appellants argue that the Examiner's rejection should be reversed
because Osterlund "fails entirely" to disclose all of the method steps
required by claim 52. App. Br. 6. In particular, Appellants argue that
Osterlund fails to disclose: 2 (b) "the step of determining the duration of the
mixing cycle as the predefined mixing period required by the selected
ingredient requiring the largest predefined mixing period"; ( c) "the step of
2 In the Appeal Brief, Appellants refer to and denote each of the alleged
missing steps of claim 52, respectively, as steps (b), (c), (d), and (t). See
App. Br. 5, 6. For clarity and to be consistent with Appellants' usage in the
Appeal Brief, we will also refer to these limitations as steps as (b ), ( c ), ( d),
and (t), respectively, for purposes of this Decision.
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Appeal2015-000884
Application 12/920,834
determining a plurality of instants at which the respective remaining
ingredients are to be loaded into the mixing compartment of the mixer/feeder
apparatus during the mixing cycle"; ( d) "the feature of each instant of the
respective determined instants being determined so that the remaining
duration of the mixing cycle at that instant is substantially equal to the
predefined mixing period of the corresponding ingredient"; and (f) "the step
of sequentially loading the remaining ingredients into a mixing compartment
at the respective corresponding determined instants during the mixing cycle"
as recited in the claim. Id. at 5, 6. Appellants also argue that "there is no
disclosure in paragraphs [0005], [0006], [0032] and Fig. 1 [of Osterlund], or
in any other part of the disclosure of Osterlund which teaches the method of
claim 52." Id. at 8.
We are not persuaded by Appellants' arguments. 3 To serve as an
anticipatory reference "the reference must disclose each and every element
of the claimed invention, whether it does so explicitly or inherently." In re
Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). On the record before us, the
Examiner's finding that Osterlund discloses each and every element of
Appellant's claimed invention is well-supported by a preponderance of
evidence. Osterlund, Abstract, iii! 5, 6, 8, 32, Fig. 1.
Contrary to Appellants' argument, Osterlund does disclose all of
claim 52's limitations, including steps (b), (c), (d), and (f). As the Examiner
3 In the Reply Brief, Appellants include entirely new arguments regarding
the patentability of claims 53, 54, 55, 57, 60, and 65 (see id. at 10-13),
which were not previously made or relied upon in the Appeal Brief.
Because these arguments are untimely under 37 C.F .R. § 41.41 (b )(2), we
decline to consider them.
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Appeal2015-000884
Application 12/920,834
found (Ans. 2, 3), Osterlund explicitly discloses "determining the duration of
the mixing cycle ... by the selected ingredient requiring the largest
predefined mixing period" and "sequentially loading the remaining
ingredients into a mixing compartment ... during the mixing cycle," as
recited in steps (b) and (f), respectively. See Osterlund i-f5 (disclosing that
"[a]t a programmed hour, the feeding starts" and occurs in a "sequence
which has been keyed into the computer" and that "the mixture consists of
the feedstuff components which are keyed in") and i1 32 (disclosing that "the
feedstuff components which are the most coarse are added first" and
thereafter that "the remaining feedstuff components are added and further
mixing is carried out").
As the Examiner further found (Ans. 3) and we agree, Osterlund
inherently discloses steps (c) and (d) (see Osterlund i1i15, 8, 32)4 because
these steps are "the natural result of the combination of elements explicitly
disclosed by the prior art." In re King, 801 F.2d 1324, 1326 (Fed. Cir.
1986). Appellants' arguments, without more, are insufficient to establish
reversible error in the Examiner's analysis and factual findings in this
regard.
Appellants argue that "there is no disclosure in Whitson ... nor is
there any suggestion in Whitson" of the steps of claim 52 missing from
Osterlund's disclosure. App. Br. 12. This argument is unpersuasive and
4 Nonetheless, even if we had determined that Osterlund does not inherently
disclose steps ( c) and ( d) of the claimed method, for the reasons discussed
below under the New Ground of Rejection, these steps would have been
obvious to one of ordinary skill in the art at the time of the invention.
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Application 12/920,834
misplaced because the Examiner does not rely on the combination of
Osterlund and Whitson nor any disclosures from Whitson for this rejection.
Accordingly, we affirm the Examiner's rejection of claims 52-55, 57,
60, 61, 64, and 65 under 35 U.S.C. § 102(b) as being anticipated by
Osterlund.
Rejection 2
Appellants argue that the Examiner's rejection should be reversed
because "claim 52 is allowable for the reasons discussed above and, since
neither Whitson nor any of the other prior art of record make up for the
deficiencies in Osterlund in teaching the subject matter of claim 52, all of
dependent claims 53 to 71 are similarly allowable." App. Br. 12, 13.
We are not persuaded by Appellants' argument for the same reasons
discussed above for claim 52.
Accordingly, we affirm the Examiner's rejection of claims 56, 58, 59,
62, 63, and 66-71 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Osterlund and Whitson.
NEW GROUND OF REJECTION
Under the provisions of 37 C.F.R. § 41.50(b), we enter the following
new ground of rejection: claims 52-55, 57, 60, 61, 64, and 65 are
unpatentable under 35 U.S.C. § 103(a) as unpatentable over Osterlund.
Osterlund teaches all of the limitations of representative claim 52. As
found by the Examiner (Ans. 2), Osterlund teaches a method for preparing a
batch of animal feed from a plurality of ingredients requiring respective
predefined mixing periods during a mixing cycle in a mixer/feeder
apparatus, as required by the claims. Osterlund, Abstract, i-fi-15, 6, 16, 17, 19,
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Application 12/920,834
20, Fig. 1. As the Examiner further found (Ans. 2), Osterlund also teaches
each of the claimed steps, including: (a) selecting the ingredient requiring
the largest predefined mixing period (Osterlund i-f 32); (b) determining the
duration of the mixing cycle as the predefined mixing period required by the
selected ingredient requiring the largest predefined mixing period (id. at i-f 5,
8); ( c) determining a plurality of instants at which the respective remaining
ingredients are to be loaded into the mixing compartment of the mixer/feeder
apparatus during the mixing cycle (id. at i-f 5, 8); ( d) each instant of the
respective determined instants being determined so that the remaining
duration of the mixing cycle at that instant is substantially equal to the
predefined mixing period of the corresponding ingredient (id. at i-f 32); (e)
loading the selected ingredient with the largest predefined mixing period
into the mixing compartment at the commencement of the mixing cycle (id.
at i-f 32); and (f) sequentially loading the remaining ingredients into the
mixing compartment at respective corresponding determined instants during
the mixing cycle (id. at i-f 32).
We conclude that, at the time of the invention, it would have been
obvious to one of ordinary skill in the art to operate Osterlund's batch
animal feed apparatus in a manner employing each of the steps of
Appellants' claimed method because, as taught by Osterlund, good
comminution and adequate mixing of the feedstuff components would be
achieved and the mixing time-and concomitant consumption of energy-
would be reduced if the feedstuff components which are most coarse are
added first. Osterlund i-fi-18, 32; Spec. p. 1, 11. 14--18, p. 2, 11. 5-9, 14, 15.
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Application 12/920,834
DECISION/ORDER
The Examiner's rejections of claims 52-71 are affirmed.
It is ordered that the Examiner's decision is affirmed and a new
ground of rejection entered.
New ground of rejection of claims 52-55, 57, 60, 61, 64, and 65 under
35 U.S.C. § 103(a) as unpatentable over Osterlund is set forth.
This decision contains a new ground 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 the appellant, 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:
( 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.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED AND NEW GROUND OF REJECTION ENTERED
PURSUANT TO 37 C.F.R. § 41.50(b)
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