Ex Parte Reitz et al

Patent Trial and Appeal BoardJan 18, 2017

12896836 (P.T.A.B. Jan. 18, 2017)

United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 20408-136028-US 1649 EXAMINER STAUBACH, LINDSEY CLAIRE ART UNIT PAPER NUMBER 3742 MAIL DATE DELIVERY MODE 12/896,836 10/01/2010 22242 7590 01/18/2017 FITCH EVEN TAB IN & FLANNERY, LLP 120 SOUTH LASALLE STREET SUITE 1600 CHICAGO, IL 60603-3406 Jorgen Reitz 01/18/2017 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JORGEN REITZ and MANFRED WALDSTADT Appeal 2015-003083 Application 12/896,836 Technology Center 3700 Before JENNIFER D. BAHR, JAMES P. CALVE, and SEAN P. O’HANLON, Administrative Patent Judges. O’HANLON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Jorgen Reitz and Manfred Waldstadt (Appellants)1 appeal under 35 U.S.C. § 134 from the Examiner’s May 5, 2014 final decision (“Final Act.”) rejecting claims 1—9 and 11—14.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We REVERSE. 1 According to Appellants, the real party in interest is POLY-CLIP SYSTEM GMBH & CO. KG. App. Br. 3. 2 The Examiner has indicated that claims 10, 15, and 16 are allowable. Final Act. 6. Appeal 2015-003083 Application 12/896,836 SUMMARY OF INVENTION Appellants’ claimed invention relates to “a system for storing products, in particular sausages, each having a sausage-shaped body and a loop being fixed to the sausage-shaped body and being used for a pendulous[] storage of the products on rod-shaped devices.” Spec. 12. Claim 1, the sole independent claim, is reproduced below from page 14 (Claims Appendix) of the Appeal Brief: 1. System for storing products, each of the products having a sausage-shaped body and a loop being fixed to the sausage shaped body and being used for a pendulous storage of each of the products on a rod-shaped storage device, the system comprising: a rod-shaped storage device for storing the products by their loops one after another, and at least one conveyor device with at least one conveyor element for conveying the products along a conveyance path by their loops to storage places on the rod-shaped storage device, wherein at least one deformable damping unit adapted for reducing a swinging motion of each of the products by damping through deformation, the at least one deformable damping unit being positioned at least partially along the rod-shaped storage device such that it engages the products as each is conveyed along the conveyance path, where the at least one damping unit is adapted to extend into the conveyance path of the products such that the products engage and deform the damping unit as each is conveyed along the conveyance path to reduce the swinging motion. REJECTIONS Claims 1—9, 11, 13, and 14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Vermeer (US 6,213,368 Bl, iss. Apr. 10, 2001) and Marzolf (US 2,824,318, iss. Feb. 25, 1958). 2 Appeal 2015-003083 Application 12/896,836 Claim 12 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Vermeer, Marzolf, and Liermann (US 2009/0047885 Al, pub. Feb. 19, 2009). ANALYSIS Rejection Based on Vermeer and Marzolf The Examiner finds that Vermeer discloses the system substantially as claimed in independent claim 1, including, inter alia, a storage device (chain 22 A of hooks 22B)3, a conveyor device (conveyor assembly 22), and a damping unit (anti-sway bumper 26 and restraining bracket 52). Final Act. 4 (citing Vermeer Abstract, Fig. 1). The Examiner finds that Vermeer discloses a system for storing products because “while the products are being conveyed, they are also being stored” and Vermeer’s “conveyor may be paused or stopped for long term storage of the products.” Id. at 2. The Examiner finds that Vermeer “does not teach that the damping unit [damps] the products through deformation and is extended into the conveyance path such that the products engage and deform the damping unit as each is conveyed along the conveyance path,” but finds that Marzolf teaches an egg conveyor system having “a deformable [damping] mechanism ([brush member] 21) to engage the products traveling therethrough.” Id. at 4 (citing Marzolf 3:13—17). The Examiner reasons that it would have been obvious to a skilled artisan to use Marzolf s brush member as a deformable damping mechanism in Vermeer’s system, such that the brush member extends into the product conveyance path, because “deformable damping units absorb 3 Parentheticals refer to the terminology of the cited references. 3 Appeal 2015-003083 Application 12/896,836 swinging motion better than rigid damping units.” Id. The Examiner further finds that “regardless of the given name or function specified in the disclosure of Marzolf, brushes 21 and 33 structurally match the damping unit and functionality thereof currently described in the claims.” Id. at 2. Appellants traverse, arguing, inter alia, that Marzolf s brush member 21 is not a damping unit, but, rather, is a cleaning element for cleaning eggs conveyed along conveyor 11. App. Br. 11. Continuing, Appellants argue that: Because the eggs do not exhibit a swinging motion while being conveyed in the device of Marzolf, brushes 21, 33 do not act as damping elements. Therefore, one of ordinary skill would not find any teaching or suggestion in Marzolf to replace the damping elements of Vermeer, namely bumpers 26, with brushes 21, 33 of Marzolf. Accordingly, one of ordinary skill would not find the brushes of Marzolf comprise damping elements .... Id. (italicization of reference names omitted). We are persuaded by these arguments. As correctly noted by Appellants, Marzolf does not disclose or describe brush member 21 being used as a damper. To the contrary, Marzolf discloses brush member 21 being rotated at 225 revolutions per minute to engage and scrub eggs being transported along conveyor 11. See Marzolf 3:5—17, 4:28—31. The Examiner’s rationale for modifying Vermeer, which is based at least in part of the incorrect premise that Marzolf discloses a damping unit, therefore lacks a rational underpinning. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). We further note 4 Appeal 2015-003083 Application 12/896,836 that although a brush such as Marzolf’s brush member 21 could be used as a damper in the manner disclosed by Appellants, the Examiner has failed to articulate sufficiently why a skilled artisan would undertake such use based on the teachings of Marzolf. Accordingly, we do not sustain the rejection of independent claim 1, nor of its dependent claims 2—9, 11, 13, and 14, as being unpatentable over Vermeer and Marzolf. Rejection Based on Vermeer, Marzolf, and Liermann Claim 12 depends directly from independent claim 1. Liermann is not relied upon by the Examiner in any manner that would remedy the deficiency noted above with respect to the proposed combination of Vermeer and Marzolf in rendering obvious the subject matter of claim 1. The rejection of claim 12, therefore, is not sustained. DECISION The Examiner’s decision to reject claims 1—9 and 11—14 is reversed. REVERSED 5