DOC Code: APPREREQ
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`PTO/AlA/33 (03.13)
`Approved for use through 07/31/2013. OMB 0651-0031
`US. Patent and Trademark Office; US. DEPARTMENT OF COMMERCE
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`PRE-APPEAL BRIEF REQUEST FOR REVIEW
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`Docket Number (Optional)
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`PRV10-102-US
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`I hereby certify that this correspondence is being facsimile transmitted to
`the USPTO, EFS-Web transmitted to the USPTO, or deposited with the
`United States Postal Service with sufficient postage as first class mail in
`an envelope addressed to “Mail Stop AF, Commissioner for Patents,
`PO. Box 1450, Alexandria, VA 22313-1450" [37 CFR1.8(a)]
`on
`January 22, 2019
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`Application Number
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`Filed
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`13/099’325
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`May 2’ 201 1
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`First Named Inventor
`Scott A. Lindee
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`/Linda L. Palomar/
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`Signature
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`name
`Typed or printed Linda L. Palomar
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`Examiner
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`NGUYEN, PHONG H
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`Applicant requests review ofthe final rejection in the above-identified application. No amendments are being filed
`with this request.
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`This request is being filed with a notice of appeal.
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`The review is requested forthe reason(s) stated on the attached sheet(s).
`Note: No more than five (5) pages may be provided.
`
`
`
`.
`|:| applicant.
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`/Linda L. Palomar/
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`Signature
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`Linda L. Palomar
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`Typed or printed name
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`attorney or agent of record. 37,903
`Registration number
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`.
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`773-345-8808
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`Telephone number
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`January 22’ 2019
`|:| attorney or agent acting under 37 CFR 1.34.
`Registration number if acting under 37 CFR 1.34— Date
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`

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`PRE-APPEAL BRIEF REQUEST FOR REVIEW
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`U.S. APPLICATION SERIAL NO. 13/0991325
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`PRVlO-lOZ-US
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`Serial No. 13/099,325
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`Applicant traverses the rejection of claim 1
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`in the Final Office Action mailed October 4,
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`2018 under 35 U.S.C. §103(a) as being unpatentable over United States Patent No. 5,191,820 to
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`Hartmann in view of United States Published Patent Application No. 2008/0250944 to Pryor, United
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`States Published Patent Application No. 2004/0031363 to Lindee, United States Published Patent
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`Application No. 2005/0132855 to Weber (“Weber ‘855”), Japanese Patent No. JP2000-288983,
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`German Reference No. DE 195 25 742 to Anstalt, United States Patent No. 2,047,400 to Walter, and
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`United States Patent No. 4,934,232 to Weber (“Weber ‘232”). The claims have been twice rejected
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`and is eligible for appeal. Applicant submits that the references cited by the Examiner do not
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`disclose, teach or suggest all of the claim features recited in claims 1, 85-88, 90, 92 and 94 and that
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`the Examiner has failed to establish a prima facie case of obviousness
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`Claim 1 claims a food article slicing machine comprising a slicing station comprising a knife
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`blade and a knife blade drive driving the blade along a cutting path in a cutting plane, and a food
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`article feed apparatus comprising an upper conveyor assembly with independently driven endless
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`conveyor belts and a food article gripper connected to each conveyor belt, each food article gripper
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`configured to engage and move a food article along a food article feed path, wherein each food
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`article gripper is activated between a closed position, in which the food article gripper seizes a food
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`article, and an open position, in which the food article gripper releases a food article, and a food
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`article loading apparatus disposed under the food article feed apparatus.
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`In proceedings before the Patent and Trademark Office, the Examiner bears the burden of
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`presenting a primafacie case of obviousness based upon the prior art. MPEP §§ 2142 — 2143.03, In
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`re Frilch, 972 F.2d 1260, 1265, 23 U.S.P.Q.2d 1780, 1783 (Fed. Cir. 1992), In re Fine, 837 F.2d
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`1071, 1074, 5 U.S.P.Q.2d 1596, 1598 (Fed. Cir. 1988). To establish a prima facie case of
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`obviousness, the prior art reference (or references when combined) must teach or suggest all of the
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`claim limitations. MPEP §§ 706.02(j), 2143.03, In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494,
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`496 (CCPA 1970), In re 00mm, 71 F.3d 1565, 1572 (Fed. Cir. 1995), In re Wada and Murphy,
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`Appeal No. 2007-3733 (January 14, 2008), In re Royka, 490 F.2d 981, 985, 180 USPQ. 580, 583
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`(CCPA 1974). To support an obviousness rejection, MPEP §2143.03 requires “all words of a claim
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`to be considered” and MPEP § 2141.02 requires consideration of the “[claimed] invention and prior
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`art as a whole.” Further, the Board of Patent Appeal and Interferences recently confirmed that a
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`

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`PRVlO-lOZ-US
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`Serial No. 13/099,325
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`proper, post-KSR obviousness determination still requires the Office make “a searching comparison
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`of the claimed invention — including all its limitations — with the teaching of the prior art.” In re
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`Wada andMurphy, Appeal 2007-3733, citing In re 00mm, 71 F.3d 1565, 1572 (Fed. Cir. 1995) and
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`CFMT v. Yieldup Intern. Corp, 349 F.3d 1333, 1342 (Fed. Cir. 2003).
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`In sum,
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`it remains
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`well-settled law that an obviousness rejection requires at least a suggestion of all of the claim
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`elements.
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`Independent claim 1 recites “.
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`.
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`. a food article loading apparatus disposed under the food
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`article feed apparatus”, with the food article feed apparatus comprising “an upper conveyor assembly
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`with independently driven endless conveyor belts and a food article gripper connected to each
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`conveyor belt”.
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`Hartmann discloses a conveyor (food article loading apparatus) 2 on which a food article 1 is
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`positioned. A claw (gripper) 11 engages a rear end of the food article 1. The claw 11 is driven by a
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`food article feed apparatus which is formed of ball spindle 19/claw track 21/bearing housing 22/V-
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`track 24. The ball spindle 19 is offset to one of side of the conveyor 2. While in an embodiment the
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`claw track 21 is clamped to driven endless ratchet belt 25 which is offset from conveyor 2, endless
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`ratchet belt 25 does not move the claw track El; instead the ball spindle l9 is used. The ball spindle.
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`19 is a rotary feed screw.
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`Pryor, Lindee, Weber ‘855 and JP2000-288983 (herein “Prior Art Group I”) were all cited to
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`show the same teaching of “independent grippers” as contended by the Examiner. With regard to
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`independent claim 1, Walter and Weber ‘232 (herein “Prior Art Group II”) were all cited to show the
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`same teaching of “a driving source .
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`.
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`. for a gripper .
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`.
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`. being positioned in an upper position” as
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`contended by the Examiner. Prior Art Group 11 only discloses a rotary feed screw driven by a motor,
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`the gripper being attached to and depending downwardly from the rotary feed screw such that a food
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`article loaded on the food article loading apparatus which is below the rotary feed screw can be
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`moved along the food article loading apparatus. This is similar to that disclosed in Hartmann, except
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`that the rotary feed screw is positioned above the food article loading apparatus.
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`None of the prior art cited by the Examiner shows a food article loading apparatus disposed
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`under a conveyor belt of the food article feed apparatus. The prior art only shows a food article
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`loading apparatus disposed under a rotary feed screw of the food article feed apparatus.
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`Anstalt discloses a gripper mounted on a conveyor belt underneath the food article.
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`The crux here is whether is it obvious to provide a lower conveyor belt as taught in Anstalt as
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`the driving means in place of the rotary feed screw of Hartmann (as well as Prior Art Group II).
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`-2-
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`PRVlO-lOZ-US
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`Serial No. 13/099,325
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`Applicant submits that it is not obvious in view of the teachings and disclosure of the prior art, and
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`that such a combination can only be made with the use of hindsight.
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`Hartmann (as well as Prior Art Group 11) provides a rotary feed screw. The Examiner
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`contends that “The driving track in Hartmann and the driving belt in Anstalt are art equivalents for
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`driving a gripper.” In the present disclosure, Applicant found that the use of the conveyor belts as
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`the upper driving means provides a faster stroke arrangement than what a rotary feed screw can
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`provide, while enabling a variety of food article loading apparatus to be provided under the conveyor
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`belts and which food article loading apparatus is used to support the food article. By virtue of the
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`mechanics of a rotary feed screw versus a conveyor belt, Applicant realized that it was much more
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`beneficial to use a gripper on an upper conveyor belt, while also providing a food article loading
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`apparatus to support the food article during translation of the food article toward the knife blade,
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`rather than using a rotary feed screw since the operation of the conveyor belt is much faster and food
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`articles can be processed in a much quicker fashion. This provides a significant manufacturing
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`benefit over what was done in the prior art, and which was not previously realized.
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`Moreover, each of the prior art cited by the Examiner provides for food articles to be loaded
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`onto the food article loading apparatus from above the food article loading apparatus. All of the
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`prior art cited by the Examiner has an open area above the food article loading apparatus so that an
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`operator can easily place the food article onto the food article loading apparatus. For example,
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`Weber ‘232 teaches that the food article can be loaded from above, see Col. 4, lines 37-39 which
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`states “In this manner it is ensured that the material to be cut, which is preferably still loaded from
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`above by means of a hold-down clamp .
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`.
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`.” This can be accomplished because the rotary feed screw
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`of Hartmann and Prior Art Group 11 does not block access from above the food article loading
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`apparatus.
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`Assuming arguendo that conveyor belts are substituted for the upper rotary feed screw taught
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`in the prior art, then the conveyor belts would block access to the food article loading apparatus
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`disposed under the conveyor belts. This is clearly not contemplated by the prior art, none of the
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`prior art shows any structure which blocks substantial access to the food article loading apparatus
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`from above. Applicant’s disclosure is the first which provides conveyor belts above the food article
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`loading apparatus as claimed, despite the fact that this provides the inability to load the food article
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`onto the food article loading apparatus from above.
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`Applicant submits that providing upper conveyor belts with attached grippers can only be
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`done with the use of hindsight by gleaning knowledge from Applicant’s disclosure. Courts and
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`-3-
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`PRVlO-lOZ-US
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`Serial No. 13/099,325
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`others should avoid combining pieces of prior art or modifying prior art through hindsight which
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`would not have been combined or modified absent the inventor's insight. KSR Inl'l Co. v. Teleflex
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`Inc, 127 S. Ct. at 1742-43, Graham v. John Deere C0., 383 US. at 36, 86 S. Ct. 684 (1966). 35
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`U.S.C. §103(a) states that a patent may not be obtained if “the subject matter as a whole would have
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`been obvious at the time the invention was made to a person having ordinary skill in the art”. The
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`present rejection does not meet this standard. “The ‘as a whole’ instruction in title 35 prevents
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`evaluation of the invention part-by-part. Without this important requirement, an obviousness
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`assessment might break an invention into its component parts (A + B + C), then find a prior art
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`reference containing A, another containing B, and another containing C, and on that basis alone
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`declare the invention obvious. This form of hindsight reasoning, using the invention as a roadmap to
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`find its prior art components, would discount the value of combining various existing features or
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`principles in a new way to achieve a new result-often the very definition of invention.” Ruiz v. AB.
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`Chance Ca, 357 F.3d 1270, 1275 (Fed. Cir. 2004). Applicant respectfully suggests that the
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`hindsight reasoning cautioned against by the Supreme Court in KSR and the Federal Circuit has
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`occurred as the invention in independent claim 1 has been evaluated part-by-part.
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`In the present case, none of the references, either alone or in combination, disclose an upper
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`conveyor assembly including belts with a gripper connected to each belt. The Examiner relied on
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`Applicant’s disclosure as a roadmap to piece together the relied upon references to provide a
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`rejection of claim 1. This is a quintessential example of an Examiner relying on an inventor’s
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`insight to arrive at the claimed subject matter, which, as indicated above, is improper hindsight.
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`For at least these reasons, the relied upon references do not teach or suggest all the subject
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`matter of independent claim 1. Therefore, Applicant submits that independent claim 1 is allowable.
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`Allowance is requested.
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