Ex Parte PERL

Patent Trial and Appeal BoardMar 24, 2016

12878730 (P.T.A.B. Mar. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/878,730 09/09/2010 23280 7590 03/28/2016 Davidson, Davidson & Kappel, LLC 589 8th A venue 16th Floor New York, NY 10018 FIRST NAMED INVENTOR Kurt PERL 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. 5019.1024 5537 EXAMINER DESAI, HEMANT ART UNIT PAPER NUMBER 3721 NOTIFICATION DATE DELIVERY MODE 03/28/2016 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): ddk@ddkpatent.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KURT PERL Appeal2014-002065 Application 12/878,730 1 Technology Center 3700 Before JOSEPH A. FISCHETTI, BART A. GERSTENBLITH, and PHILIP J. HOFFMANN, Administrative Patent Judges. GERSTENBLITH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Kurt Perl ("Appellant") appeals under 35 U.S.C. Â§ 134(a) from the Examiner's decision rejecting claims 1-13. We have jurisdiction under 35 U.S.C. Â§ 6(b). Claimed Subject Matter Claims 1 and 11 are the independent claims on appeal. Claim 1 is illustrative of the claimed subject matter and is reproduced below. 1 Appellant identifies Krones AG as the real party in interest. Appeal Br. 2. 1 Appeal2014-002065 Application 12/878,730 1. A method for making packs, each pack having at least two coupled articles, the method comprising: laying a strapping means around the articles during a continuous conveying process having a conveying direction, the strapping means being arranged horizontally and tensioned onto outer surfaces of the articles by at least one strapping applicator, the strapping applicator moving in the conveying direction to apply the strapping means; and then fixing the strapping means so that the articles are held together by the strapping means. Appeal Br., Claims App. 1 (emphasis added). Rejection Appellant seeks review of the following rejection: Claims 1-13 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Van De Sande2 (US 2006/0196150 Al, pub. Sept. 7, 2006). SUMMARY OF DECISION We REVERSE. ANALYSIS The Examiner concludes that the teachings of Van De Sande would have rendered the subject matter of claims 1-13 obvious to one of ordinary skill in the art as of the time of the invention. Ans. 2---6. The Examiner finds that Van De Sande discloses each element of claim 1, with the exception of the emphasized language above. Id. at 3 ("Van De Sandle [sic] is[,] however, silent about [a] moving strapping applicator in [the] conveying direction."). The Examiner finds: 2 The Examiner occasionally refers to "Van De Sande" as Van De Sandle." See, e.g., Ans. 2. 2 Appeal2014-002065 Application 12/878,730 it would have been an obvious matter of design choice to a person of ordinary skill in the art to provide the strapping applicator which moves in the conveying direction because [Appellant] has not disclosed that ... providing the moving strapping applicator provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected [Appellant's] invention to perform equally well with either the strapping applicator taught by of [sic] Van De Sandle [sic] or the claimed moving strapping applicator because both applicators perform the same function of placing the strapping means around the pack. Id. Thus, the Examiner finds that "it would have been an obvious matter of design choice to modify Van De Sandle [sic] to obtain the invention as specified in claim 1." Id. The Examiner relies upon the same design choice finding with respect to independent claim 11, which also recites a "strapping applicator moving in the conveying direction to apply the strapping means." Ans. 5. Appellant contends that the Examiner erred by finding that it would have been an obvious design choice to modify Van De Sande; s disclosure as proposed above. Appeal Br. 4. First, Appellant asserts that the Examiner improperly places the burden of proof on Appellant by relying upon a lack of disclosure in the Specification regarding some importance of the limitation that the strapping applicator moves in the conveying direction. Id. Second, Appellant contends that the Specification discloses a stationary embodiment and a moving embodiment of the strapping applicator. Id. at 4-- 5. In the stationary embodiment, the Specification teaches that the strapping reels can be provided with a self-powered drive so that the tension forces can be minimized on the formation in the movement period. Id. (citing Spec. i-f 36). Appellant explains that an advantage of a strapping applicator 3 Appeal2014-002065 Application 12/878,730 moving in the conveying direction is that it does not require self-powered drives on stationary reels. Id. at 5. In response to Appellant's argument, the Examiner notes that Appellant's Specification discloses a stationary embodiment of a strapping applicator, which is the same as the embodiment taught by Van De Sande. Ans. 7. The Examiner states: "Van de Sande clearly discloses the solution to adjust the tension to a minimum by providing the motorized supply reel[s]." Id. Thus, the Examiner maintains the finding that it would have been an obvious matter of design choice "to provide the strapping applicator which moves in the conveying direction." Id. Design choice may be an acceptable rationale for an obviousness rejection when a claimed product merely arranges known elements in a configuration recognized as functionally equivalent to a known configuration. See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (finding that the particular placement of an electrical contract was an obvious matter of design choice). We disagree, however, with the Examiner's finding of design choice here because Appellant's claimed invention is not merely a rearrangement of known elements in a configuration recognized as functionally equivalent to a known configuration. First, Appellant added an additional element-that the strapping applicator moves in the conveying direction. Second, the Examiner relies upon the absence of an indication in the Specification of a specific advantage of a moving strapping applicator as compared to a stationary applicator, but the Examiner makes no attempt to explain why one of ordinary skill in the art at the time of the invention, and without the benefit of Appellant's Specification as a guide, would have concluded that a strapping applicator that moves in the conveying direction 4 Appeal2014-002065 Application 12/878,730 is a functional equivalent to a stationary strapping applicator. See Ans. 3 (finding that one of ordinary skill in the art would have expected Appellant's invention and the device of Van De Sande to function equally, solely because both place strapping means around a pack). Thus, for the reasons explained above, and under the facts presented here, we disagree that design choice was an appropriate basis upon which to base the rejection of independent claims 1 and 11. Accordingly, we do not sustain the rejection of claims 1 and 11, and claims 2-10, 12, and 13, which depend therefrom. DECISION We reverse the Examiner's decision rejecting claims 1-13. REVERSED 5