Ex Parte Reed et al

Patent Trial and Appeal Board

Apr 25, 2016

12576130 (P.T.A.B. Apr. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/576,130 10/08/2009
32233 7590 04/27/2016
Paul V, Storm, Esq,
Gardere Wynne Sewell, LLP
1601 Elm Street, Suite 3000
Dallas, TX 75201
FIRST NAMED INVENTOR
Jim Reed
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.
138489-1027 1434
EXAMINER
GOODWIN, DAVID J
ART UNIT PAPER NUMBER
2817
NOTIFICATION DATE DELIVERY MODE
04/27/2016 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):
ip@gardere.com
cdaniel@gardere.com
pvstorm@gardere.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JIM REED, JOHN URBANOWICZ, CHRIS NEINER,
TIM DIMENNA, KEITH ORAVETZ, GARY STOWERS, and
LOUIS LACKEY
Appeal2015-00008
Application 12/576, 130
Technology Center 2800
Before CAROLYN D. THOMAS, JESSICA C. KAISER, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
KAISER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
non-final rejection of claims 1-3, 5-8, and 10-13, all of the pending claims. 2
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 According to Appellants, the real party in interest is Metal Container
Corporation. (App. Br. 3.)
2 Claims 4 and 9 have been canceled. (App. Br. 5.) Appellants also note
that pending claim 6 contains a typographical error, and Appellants state that
they stand ready to amend claim 6 once the claims are indicated as
allowable. (Id. at 6.) Appellants argue claim 6 together with claim 1 (id. at
19-20), and thus we need not address the typographical error in claim 6.
Appeal2015-00008
Application 12/576,130
EXEMPLARY CLAIMS
Claims 1 and 10 are exemplary and are reproduced below:
1. A method of forming a visible indicium on a tab portion
of a beverage container comprising the steps of:
advancing a tab stock material through a series of tab-
forming stations;
at least partially forming a tab from the tab stock at each
of the tab-forming stations;
dwelling the advancement of the tab stock while the tab is
formed;
accelerating the tab stock from dwell to resume
advancement of the tab stock material;
sensing the acceleration of the tab stock from rest to
provide a sensed acceleration; and
irradiating a selected portion of the tab with light energy
to form a portion of the visible indicium, the irradiation being
controlled using the sensed acceleration of the tab stock and at
least partially occurring during acceleration of the tab stock.
10. An apparatus for etching a visible symbol on a tab of
a container, the apparatus comprising:
a plurality of tab-forming stations, each tab-forming
station at least partially forming the tab from a tab stock;
a conveyor mechanism configured to advance the tab
stock from one tab-forming station to another;
an etching apparatus associated with the conveyor and the
tab-forming stations to selectively etch a symbol on the tab; and
a sensor coupled to the tab stock to sense acceleration of
the tab stock from rest during advancement of the tab stock, the
sensor coupled to the etching apparatus to permit the etching
apparatus to etch the symbol while the tab stock is accelerated.
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Appeal2015-00008
Application 12/576,130
REJECTIONS
The Examiner has rejected claims 1, 6, and 10-12 under 35 U.S.C.
§ 103(a) as unpatentable over Miller (US 6,080,958; issued June 27, 2000)
and Philipp (US 6,734,392 B2; issued May 11, 2004). (Non-Final Act. 2--4,
6-7.)
The Examiner has rejected claims 2, 3, 5, 7, 8, and 13 under 35 U.S.C.
§ 103(a) as unpatentable over Miller and Philipp in combination with
additional references. (Non-Final Act. 4--8.)
ISSUES
The issues raised by Appellants' arguments are:
Did the Examiner err in finding that the combination of Miller and
Philipp teaches or suggests "sensing the acceleration of the tab stock from
rest to provide a sensed acceleration" and "irradiating a selected portion of
the tab with light energy to form a portion of the visible indicium, the
irradiation being controlled using the sensed acceleration of the tab stock
and at least partially occurring during acceleration of the tab stock," as
recited in claim 1?
Did the Examiner err in combining the teachings of Miller and Philipp
in rejecting claim 1 as obvious?
Did the Examiner err in finding the combination of Miller and Philipp
teaches or suggests "a position encoder coupled to a portion of one of the
conveyor and tab-forming stations, wherein acceleration associated with
advancing the tab stock between tab-forming stations is detected by the
encoder and its magnitude is communicated to the computer-controlled laser
system," as recited in dependent claim 12?
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Appeal2015-00008
Application 12/576,130
ANALYSIS
Claims 1-3, 5--8, 10, 11, and 13
Appellants argue the Examiner errs in finding Philipp teaches sensing
acceleration. (App. Br. 15-16.) Specifically, Appellants argue the
"Examiner has erred in concluding that a sensor that senses a constant speed
[as in Philipp] is the same as an acceleration sensor." (Id. at 16.) According
to Appellants, an acceleration associated with constant speed is zero, and
"there is no way to control the irradiation process if the only information
provided by the sensor is an acceleration value of zero." (Id.) Thus,
Appellants argue the combination of Miller and Philipp does not teach or
suggest "controlling irradiation using the sensed acceleration, as recited in
Appellants' claims." (Id.)
We are unpersuaded of Examiner error. Claim 1 recites "sensing the
acceleration of the tab stock from rest to provide a sensed acceleration."
This limitation does not require calculating an acceleration as Appellants'
arguments appear to suggest (see App. Br. 16; Reply Br. 3 (arguing that
sensing acceleration is "not the same as computing a change in constant
velocity measurements")). We agree with the Examiner that Phillip teaches
sensing the movement of stock material. (Non-Final Act. 3 (citing Phillip
3 :20-40, Fig. 1 ).) Specifically, Phillip teaches that drives obtain control data
from two sensors which detect speed and position of the material. (Phillip
3:20-40.) The Examiner finds, and we agree, "[o]ne of ordinary skill in the
art would understand the association between acceleration and velocity or
position is a mere mathematical step that is used to describe and
communicate position and time data." (Ans. 5; see also id. at 4 (Phillip's
"sensor measures velocity during the operation of the apparatus and
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Appeal2015-00008
Application 12/576,130
therefore necessarily measures any changes in velocity during the operation
of the apparatus.").) In other words, in applying Phillip's teaching of using
speed and position sensors during a process for marking a moving object to
Miller's teaching of accelerating tab stock material from rest (see Miller
4:61---66), a person of ordinary skill in the art would understand that the
combined teachings would suggest that Phillip's speed sensor would sense
acceleration (i.e., increasing speed) of the tab stock accelerating from rest.
Appellants further argue Miller does not teach "irradiation at least
partially occurs during acceleration of the tab stock." (App. Br. 16.)
According to Appellants, Miller "repeatedly and consistently instructs that
irradiation is to occur only during the dwell period when the tab stock is
stationary." (Id.) Appellants argue Miller's "time window for marking
without distortion is the length of time in which the tab stock is in dwell."
(Id. at 17.)
We are unpersuaded. As the Examiner finds, Miller teaches marking
during the movement (i.e., advancement) phase and not only during the
dwell (i.e., stationary) phase. (Ans. 5 (citing Miller 9:15-22).) Specifically,
Miller teaches:
Although the present invention has been described in connection
with providing markings during a stationary or dwell time, it is
also possible to use the present invention to make some or all
markings during movement of the tab stock or other target
substrate, particularly when the markings are security or internal
markings or otherwise will not normally be seen or used by the
ordinary consumer (such that a certain amount of distortion may
be acceptable).
(Miller 9: 14--22.) Appellants argue that this passage from Miller teaches
only that marking may occur during movement but "does not expressly state
that marking occurs during acceleration." (Reply Br. 2.) We disagree
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Appeal2015-00008
Application 12/576,130
because this passage of Miller at least suggests marking during acceleration
associated with advancement of the tab stock. This is particularly true in
light of Miller's teaching that acceleration during advancement results in
distortion. (Miller 4:61---66 (To "avoid distortion of the markings that might
otherwise be associated with the relatively high acceleration curves used
during the advancement phase of the cycle, it is preferred to achieve at least
some, and, preferably substantially all of the marking during the stationary
or dwell phase of each cycle.").) Thus, we are not persuaded the Examiner
erred in finding Miller teaches or suggests irradiation at least partially occurs
during acceleration of the tab stock.
We are likewise unpersuaded by Appellants' argument that Miller
"teaches away from irradiation during acceleration of the tab stock because
it counsels that irradiation during movement results in distortion." (Reply
Br. 3; see also App. Br. 18.)3 To teach away, a reference must actually
"criticize, discredit, or otherwise discourage" investigation into the claimed
solution. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Here,
although Miller teaches marking during acceleration may result in distortion
(see Miller 4:61---66, 9: 14--22), Miller also teaches that distortion may be
acceptable for certain types of markings (id. at 9: 14--22). In addition, we
observe that claim 1 does not require marking without distortion. At most it
3 In this teaching away argument, Appellants also mentions Jendick (US
6,926,487 Bl; issued Aug. 9, 2005), applied in the Examiner's§ 103
rejection of dependent claim 5. Appellants, however, do not argue
separately the Examiner's rejection of dependent claim 5 or provide a
detailed explanation of why Jendick teaches away other than stating that
Jendick teaches etching is to be performed at a constant speed to avoid
distortion. (App. Br. 19.) We find this argument unpersuasive for the
reasons discussed above.
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Application 12/576,130
can be argued that Miller's irradiation during movement would degrade the
appearance of the markings. However, we find that being less effective is
not a teaching away. "A known or obvious composition does not become
patentable simply because it has been described as somewhat inferior to
some other product for the same use." In re Gurley, 27 F.3d 551, 554 (Fed.
Cir. 1994). Thus, we are unpersuaded that Miller teaches away.
Appellants further argue the Examiner erred in combining the
teachings of Miller and Phillip because the Examiner did not clearly
articulate a rationale for the combination and because the Examiner used
impermissible hindsight to find claim 1 obvious. (App. Br. 17-18.)
We disagree with Appellants' arguments. The Examiner finds that it
would have been obvious to use sensors as taught in Phillip with Miller's
process "to increase throughput and precision of the process by
compensating for the motion of the feedstock." (Non-Final Act. 3.) The
Examiner further finds that using Phillip's sensors in Miller's process would
reduce the distortion that Miller notes can occur when marking feedstock
during acceleration. (Ans. 5---6.) Furthermore, "[a]ny judgment on
obviousness is in a sense necessarily a reconstruction based upon hindsight
reasoning, but so long as it takes into account only knowledge which was
within the level of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant's disclosure,
such a reconstruction is proper." In re McLaughlin, 443 F.2d 1392, 1395
(CCPA 1971).
Appellants argue the Examiner's reasoning is deficient because "the
references are to suggest the claimed solution" and "there is no suggestion in
the prior art that the solution to the distortion problem is to sense
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Application 12/576,130
acceleration and use this sensed acceleration to control irradiation during
acceleration." (Reply Br. 4.) That argument, however, relies on a teaching,
suggestion, or motivation standard, which is not required under KSR Int 'l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also Dystar Textilfarben
GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1361 (Fed. Cir. 2007) ("The
motivation need not be found in the references sought to be combined, but
may be found in any number of sources, including common knowledge, the
prior art as a whole, or the nature of the problem itself."). We find the
Examiner has provided articulated reasoning with some rational
underpinning for combining the teachings of Miller and Phillip.
For the reasons discussed above, we sustain the Examiner's§ 103
rejections of claim 1, claim 6 argued together with claim 1 (App. Br. 19-20),
and claim 2, 3, 5, 7, and 8 not argued separately (id. at 20). Appellants'
arguments regarding independent claim 10 are substantially similar to their
arguments for claim 1 (id. at 20-21), and we sustain the Examiner's
rejection of that claim as well as dependent claims 11 and 13, not argued
separately (id. at 21 ), for the same reasons as claim 1.
Claim 12
Claim 12 depends from claim 10 and further recites: "a position
encoder coupled to a portion of one of the conveyor and tab-forming
stations, wherein acceleration associated with advancing the tab stock
between tab-forming stations is detected by the encoder and its magnitude is
communicated to the computer-controlled laser system." Appellants argue
the Examiner errs in finding Phillip teaches this limitation of claim 12.
(App. Br. 21.) We agree with Appellants' argument.
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Appeal2015-00008
Application 12/576,130
Regarding claim 12, the Examiner finds Phillip teaches a position
encoder "wherein acceleration associated with advancing the tab stock
between tab-forming stations is detected by the encoder and its magnitude is
communicated to the computer-controlled (26) laser (14) system." (Non-
Final Act. 7.) Independent claim 10 recites a sensor to sense acceleration,
and as discussed above with respect to claim 1, sensing acceleration does not
require calculating it. Claim 12, however, recites that the "magnitude" of
the acceleration "is communicated to the computer-controlled laser system."
The Examiner's findings do not show that Phillip's position encoder (or any
other portion of Phillip) determines an acceleration magnitude that is
communicated to the computer-controlled laser system.
For the reasons discussed above, we are constrained by the record to
reverse the Examiner's decision to reject dependent claim 12.
DECISION
We affirm the Examiner's decision to reject claims 1-3, 5-8, 10, 11,
and 13 as obvious under 35 U.S.C. § 103(a).
We reverse the Examiner's decision to reject claim 12 under 35
U.S.C. § 103(a).
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-IN-PART
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