Ex Parte Winch et al

Patent Trial and Appeal Board

Apr 24, 2015

10382276 (P.T.A.B. Apr. 24, 2015)

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.
10/382,276 03/05/2003 John J. Winch MMC0075.US 7723
41863 7590 04/27/2015
TAYLOR IP, P.C.
P.O. Box 560
142. S Main Street
Avilla, IN 46710
EXAMINER
NGUYEN, THUY-VI THI
ART UNIT PAPER NUMBER
3689
MAIL DATE DELIVERY MODE
04/27/2015 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 JOHN J. WINCH and DANIEL A. SCHOCH
____________________

Appeal 2012-0126951
Application 10/382,2762
Technology Center 3600
____________________

Before ANTON W. FETTING, BIBHU R. MOHANTY, and
TARA L. HUTCHINGS, Administrative Patent Judges.

HUTCHINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–8, 10, 11, 13–43, and 45. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
April 26, 2012) and Reply Brief (“Reply Br.,” filed Sept. 18, 2012), and the
Examiner’s Answer (“Ans.,” mailed July 18, 2012).
2 Appellants identify The Minster Machine Company as the real party in
interest. App. Br. 3.
Appeal 2012-012695
Application 10/382,276

2
CLAIMED INVENTION
Appellants’ claimed invention “relates to a method and apparatus for
calculating an equipment usage fee, such as for the use of durable goods
equipment (having a useful life of three years or longer), for example
mechanical presses.” Spec. 1:2–5.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. An apparatus for calculating a usage fee for
equipment, the apparatus comprising:
a monitoring means connected to a mechanical press for
monitoring usage of the mechanical press and creating
mechanical press usage data, said usage data being related to at
least one of vibration level, vibration severity, stroke frequency,
operating torque, operating temperature, operating pressure,
operating deflection, and operating noise level;
a comparing means connected to said monitoring means
for comparing said mechanical press usage data to a
predetermined depreciation level to determine a corresponding
depreciation level value, said comparing means being
configured to select said corresponding depreciation level from
a plurality of depreciation levels dependent upon said
mechanical press usage data; and
a calculating means connected to said comparing means
for calculating an equipment usage fee, said equipment usage
fee is calculated by combining said equipment usage data and
said corresponding depreciation level value.
Appeal 2012-012695
Application 10/382,276

3
REJECTION3
Claims 1–8, 10, 11, 13–43, and 45 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Yui (US 2002/0174077 A1, pub. Nov. 21,
2002), Lockwood (US 6,694,234 B2, iss. Feb. 17, 2004), and Applicants’
Admitted Prior Art (hereinafter “AAPA”).

ANALYSIS
Independent claim 1 and dependent claims 2–8 and 10
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting claim 1 under 35 U.S.C. § 103(a) because neither Yui, nor
Lockwood, nor AAPA, alone or in combination, discloses or suggests
“usage data being related to at least one of vibration level, vibration severity,
stroke frequency, operating torque, operating temperature, operating
pressure, operating deflection, and operating noise level,” as recited in claim
1. App. Br. 15–17, Reply Br. 2–3.
The Examiner acknowledges that a combination of Yui and
Lockwood does not teach that the equipment being monitored is “a
mechanical press” or that “usage data being related to at least one of
vibration level, vibration severity, stroke frequency, operating torque,
operating temperature, operating pressure, operating deflection, and
operating noise level,” as recited in claim 1. Ans. 24. But the Examiner
posits that:
It is well known that . . . equipment[,] such as mechanical
press[es,] have been rented and . . . subject to misuse[,] as
disclose[d] in the background of invention of the

3 The Examiner has withdrawn the rejection of claims 22–28 under
35 U.S.C. § 101. Ans. 21.
Appeal 2012-012695
Application 10/382,276

4
[Specification] . . . YUI/LOCKWOOD discloses monitoring
the usage data of the rental equipment, [and] the rental fee
[being] base[d] on the equipment usage [and] misuse . . . .
Taking the principle of the combination of YUI/LOCKWOOD
and applying this [to] the rental equipment [(e.g., mechanical
press)] as taught by AAPA, one of ordinary skill and creativity
in the art would have readily appreciated that at least one of the
usage data of the mechanical press related to vibration level,
vibration severity, stroke frequency, operating torque, operating
temperature, operating pressure, operating deflection, and
operating noise level would have been monitored in order to
determine the amount of wear and tear of the mechanical
press[,] as well as the depreciation value over time.

Id. 24–25.
We find that the Examiner has not established a prima facie case of
obviousness. Critically, the Examiner does not articulate any reasoning with
rational underpinning for modifying the combination of Yui, Lockwood, and
AAPA to arrive at the method recited in claim 1, which requires “usage data
being related to at least one of vibration level, vibration severity, stroke
frequency, operating torque, operating temperature, operating pressure,
operating deflection, and operating noise level.” Instead, the Examiner
merely makes the conclusory statement that “one of ordinary skill in the art
would have readily appreciated that at least one of the usage data of the
mechanical press related to vibration level, vibration severity, stroke
frequency, operating torque, operating temperature, operating pressure,
operating deflection, and operating noise level would have been monitored.”
Ans. 25. “[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
Appeal 2012-012695
Application 10/382,276

5
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (quoted with
approval in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)).
On this record, the Examiner has failed to establish a prima facie case
of obviousness. Therefore, we do not sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 103(a). For the same reasons, we also do not
sustain the Examiner’s rejection of dependent claims 2–8 and 10. Cf. In re
Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“dependent claims are
nonobvious if the independent claims from which they depend are
nonobvious”).
Independent claims 11, 13, 22, 29, 30, and 37, and dependent claims 14–21,
23–28, 31–36, 38–43, and 45
Independent claims 11, 13, 22, 29, 30, and 37 include language
substantially similar to the language of claim 1, and the Examiner applies the
same rationale in rejecting these claims under 35 U.S.C. § 103(a) as applied
with respect to claim 1. Ans. 2–21, 26–52. Therefore, we do not sustain the
Examiner’s rejection under 35 U.S.C. § 103(a) of independent claims 11, 13,
22, 29, 30, and 37, and claims 14–21, 23–28, 31–36, 38–43, and 45, which
depend therefrom, for the same reasons set forth above with respect to claim
1.
DECISION
The Examiner’s rejection of claims 1–8, 10, 11, 13–43, and 45 under
35 U.S.C. § 103(a) is reversed.

REVERSED