Ex Parte Moore et al

Patent Trial and Appeal BoardFeb 18, 2014

12409407 (P.T.A.B. Feb. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte PHILIP R. MOORE, JOSEPH D. NORRIS, RICHARD L. JOHNSON, and PATRICK R. LANCASTER III ____________ Appeal 2012-011055 Application 12/409,407 Technology Center 3700 ____________ Before JEFFREY T. SMITH, LINDA M. GAUDETTE, and MICHAEL P. COLAIANNI, Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-011055 Application 12/409,407 2 Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision1 finally rejecting claims 1-20.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. The invention relates to an apparatus for wrapping products with stretch wrap packaging material, such as products stacked as a load on a pallet. (See Spec.3 [002-003].) The Examiner maintains the following rejections under 35 U.S.C. §103(a): 1. claims 1, 4, 5, 7, 8, 11, 12, and 16-19 as unpatentable over Humphrey (US 4,590,746, iss. May 27, 1986) in view of Chen (US 5,301,493, iss. Apr. 12, 1994) (Ans. 44); 2. claims 2, 3, and 13 as unpatentable over Humphrey and Chen in view of Mucha (US 6,082,081, iss. Jul. 4, 2000) (Ans. 6); 3. claims 6 and 14 as unpatentable over Humphrey and Chen in view of Lai (US 5,794,418, iss. Aug. 18, 1998) (Ans. 6-7); 4. claims 9, 10, and 20 as unpatentable over Humphrey and Chen in view of Casteel (US 4,807,427, iss. Feb. 28, 1989) (Ans. 7); and 5. claim 15 as unpatentable over Humphrey and Chen in view of Suolahti (US 6,305,145 B2, iss. Oct. 23, 2001) (Ans. 7). Appellants’ arguments in support of patentability as to all appealed claims are based on limitations common to the independent claims, i.e., claims 1, 11, and 16. For reference, claims 1 and 16 are reproduced below from the Claims Appendix to the Appeal Brief: 1 Final Office Action mailed Sep. 30, 2011 (“Final Rej.”). 2 Appeal Brief filed Feb. 27, 2012 (“App. Br.”). 3 Specification filed Mar. 23, 2009. 4 Examiner’s Answer mailed May 15, 2012. Appeal 2012-011055 Application 12/409,407 3 1. A film dispenser comprising: an open top roll carriage having a base plate on which a film dispensing assembly, including an upstream roller and a downstream roller, is mounted; and a film path for film traveling through the film-dispensing assembly, the film path being at least partially defined by a surface of the upstream roller and a surface of the downstream roller, the film path being accessible via the open top of the roll carriage; and a drive assembly for the upstream roller and the downstream roller mounted below the base plate. 16. A method for wrapping a load, comprising: inserting a length of film downward into a film path of a film dispensing assembly mounted on a base plate of a roll carriage; providing relative rotation between the film dispensing assembly and the load; and driving the film dispensing assembly to dispense film for wrapping the load using a drive assembly mounted below the base plate. The Examiner finds Humphrey discloses the invention as claimed in claims 1, 11, and 16 with the exception that Humphrey’s drive assembly for the rollers is mounted above, rather than below, the base plate of the film dispenser as required by the appealed claims. (See Final Rej. 2; Ans. 4-5.) The Examiner finds one of ordinary skill in the art at the time of the invention would have been aware that the drive assembly could be mounted below the base plate in view of Chen’s disclosure of a pre-stretched film wrapping apparatus wherein the drive assembly is mounted in this manner. (Final Rej. 2; Ans. 5.) The Examiner concludes it would have been obvious to one of ordinary skill in the art at the time of the invention to modify Appeal 2012-011055 Application 12/409,407 4 Humphrey’s device to use this known, alternative drive assembly configuration. (Id.) Appellants argue the Examiner has not explained the rationale for modifying Humphrey’s device to relocate the drive assembly from above the top of the film dispenser to below the base plate. (App. Br. 8.) Appellants’ argument is not persuasive because the Examiner’s rationale of substituting a known alternative configuration is supported by the relevant case law. See, e.g., KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007) (“If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”); In re Fout, 675 F.2d 297, 301 (CCPA 1982) (noting there is no requirement of an express suggestion to substitute one equivalent for another to render the substitution obvious). Appellants also argue one of ordinary skill in the art would not have been motivated to mount Humphrey’s drive assembly below the base because such modification would have had a negative impact on the operation of Humphrey’s device. (See App. Br. 8-10.) As noted by the Examiner (Ans. 9), Appellants’ argument lacks persuasive merit because it is based solely on attorney argument, and is not supported by evidence. See In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) (argument by counsel cannot take the place of evidence). Moreover, Appellants have not addressed the Examiner’s finding that one of ordinary skill in the art would have been aware from Chen that locating the drive Appeal 2012-011055 Application 12/409,407 5 assembly below the base was a known alternative to Humphrey’s top mount configuration, and would have possessed the requisite skills to make any modifications necessary to reposition Humphrey’s drive assembly (Ans. 9). See In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citations omitted) (“It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.”); In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (noting that an obviousness determination requires that a skilled artisan would have perceived a reasonable expectation of success in making the invention in light of the prior art); In re Japikse, 181 F.2d 1019, 1023 (CCPA 1950) (explaining that relocation of an element to a different location in a prior art device is not inventive if the operation of the device is not modified). Appellants’ final argument is that even if Humphrey were modified in the manner proposed by the Examiner, the resultant device would still include an upper plate and therefore, would not have an open top or allow insertion of film downwardly into the film path as required by the claims. (App. Br. 11.) We agree with the Examiner’s determination (see Ans. 9-10) that the broadest reasonable interpretation of the claim language encompasses Humphrey’s configuration wherein the top is partially open and the film 42 is accessible in the area between supply roller 16 and first roller 18, e.g., at upstream idler roller 46 (see, e.g., Fig. 9). (See also Spec. [048] (wherein the upstream idler roller defines part of the film path: “A film path is defined by and between the surfaces of upstream pre-stretch roller 118, downstream pre-stretch roller 120, upstream idle roller 150, first Appeal 2012-011055 Application 12/409,407 6 downstream idle roller 152, second downstream idle roller 154, and third downstream idle roller 156.”); see generally, Spec. (wherein we find no explicit or implicit definition of the term “open” as limited to a configuration in which the roll carriage is completely open, or open in specific areas).) Appellants have not identified, nor do we find any support in the claim language or Specification for their contention that the claims do not encompass Humphrey’s configuration because Humphrey’s first roller 18 and feed roller 32 are not accessible through the open top. (See Reply Br.5 4.) In sum, because Appellants have not convinced us of error in the Examiner’s conclusion of obviousness, we sustain the rejections of claims 1- 20. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). AFFIRMED mls 5 Reply Brief filed Jul. 13, 2012.