US Patent Application Serial: No. 13/099,325
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`PRV01-102-US
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`REMARKS:
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`Claims 1-5 and 84-94 are pending in the present application. By this communication, no
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`claims are amended, cancelled, withdrawn or added. Thus, claims 1-5 and 84-94 are pending in
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`the present application.
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`Initial Matters
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`Applicant respectfully submits the rejections presented in the Office Action are a bit
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`confusing and presented in a manner not seen in before. More particularly, the Examiner appears
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`to reject independent claim 1 in view of 8 references (specifics of rejection presented below) as
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`seen in the introductory paragraph on page 2, paragraph #2. Then,
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`the following remarks
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`associated with the rejection appear to present two different rejections of independent claim 1.
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`As best as can be understood, it appears the Examiner is rejecting independent claim 1 in a first
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`manner with a combination of Hartmann, Pryor, Lindee, Weber #1 and the JP Ref, then in a
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`second manner with a combination of Hartmann, Anstalt, Weber #2 and Walter. Typically,
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`when a claim is rejected in multiple manners, the different manners are parsed into their own
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`paragraph, thereby removing any confusion. Applicant will respond to the present Office Action
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`with this understanding of the rejections.
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`In the Response to Arguments section of the Office Action, the Examiner states that the
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`Applicant’s previously filed arguments in the Pre-Appeal Brief are not persuasive. However, as
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`a result of Applicant’s arguments in the Pre-Appeal Brief, the finality of the present application
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`was withdrawn and prosecution reopened with the Examiner presenting new rejections. Thus, it
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`would appear Applicant’s previous arguments were persuasive.
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`Furthermore, in the Response to Arguments section of the Office Action, the Examiner
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`attempts to address Applicant’s previously submitted remarks pertaining to the Examiner’s
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`US Patent Application Serial: No. 13/099,325
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`PRV01-102-US
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`improper use of hindsight. The Examiner’s response includes the typical boilerplate response
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`about it being acceptable for the Examiner to rely on hindsight and those situations when it may
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`be acceptable to rely on hindsight. However, the Examiner failed to meet the requirements set
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`forth in his own presented basis for relying on hindsight. The specifics of this matter will be
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`addressed below.
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`35 U.S.C. § 1031a1Rejections
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`Claims 1, 88-90, 92 and 94 stand rejected under 35 U.S.C. §103(a) as being unpatentable
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`over US. Patent No. 5,191,820 (“Hartmann”) in View of US. Published Patent Application No.
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`2008/0250944 (“Pryor”) and further
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`in View of US. Published Patent Application No.
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`2004/0031363 (“Lindee”) and still further in View of US. Published Patent Application No.
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`2005/0132855 (“Weber #1”) and further yet in View of Japanese Patent No. JP2000-288983 (“JP
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`Ref’) and still further in View of German Reference No. DE 195 25 742 (“Anstalt”) and still, yet
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`further in View of US. Patent No. 2,047,400 and yet further in View of US. Patent No. 4,934,232
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`(“Weber #2”).
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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 — 214303,
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`In re Fritch, 972 F.2d 1260, 1265, 23 U.S.P.Q.2d 1780, 1783 (Fed. Cir. 1992), In re Fine, 837
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`F.2d 1071, 1074, 5 U.S.P.Q.2d 1596, 1598 (Fed. Cir. 1988). To establish aprimafacie case of
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`obViousness, the prior art reference (or references when combined) must teach or suggest all of
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`the claim limitations. MPEP §§ 706020), 214303, In re Wilson, 424 F.2d 1382, 1385, 165
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`USPQ 494, 496 (CCPA 1970), In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995), In re Wada
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`and Murphy, Appeal No. 2007-3733 (January 14, 2008), In re Royka, 490 F.2d 981, 985, 180
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`USPQ. 580, 583 (CCPA 1974). To support an obViousness rejection, MPEP §2143.03 requires
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`US Patent Application Serial: No. 13/099,325
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`PRV01-102-US
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`“all words of a claim to be considered” and MPEP § 2141.02 requires consideration of the
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`“[claimed] invention and prior art as a whole.” Further,
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`the Board of Patent Appeal and
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`Interferences recently confirmed that a proper, post-KSR obviousness determination still requires
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`the Office make “a searching comparison of the claimed invention — including all its limitations
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`— with the teaching of the prior art.” In re Wada and Murphy, Appeal 2007-3733, citing In re
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`Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995) and CFMT V. Yieldup Intern. Corp., 349 F.3d 1333,
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`1342 (Fed. Cir. 2003). In sum, it remains well-settled law that an obviousness rejection requires
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`at least a suggestion of all of the claim elements.
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`Independent claim 1 recites “. ..a food article feed apparatus disposed over a food article
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`loading apparatus...”
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`The Examiner is not appreciating the above limitations of independent claim 1.
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`Particularly, independent claim 1 recites both a food article feed apparatus and a food article
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`loading apparatus. The some of the relied upon references, these references may disclose an
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`apparatus under the food loaf/product (see Hartmann, etc.). Since these elements of the relied
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`upon references are under the food loaf/product, these elements would more likely qualify as the
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`claimed “food article loading apparatus”. The Examiner then attempts to state that the elements
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`under the food loaf/product are equivalent to elements above the food loaf/product. Whether or
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`not this allegation of equivalence is proper or not (Applicant believes this is improper), these
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`references do not include both a feed article loading apparatus below and a food article feed
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`apparatus above.
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`Furthermore, independent claim 1 recites “...said food article feed apparatus having an
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`upper conveyor assembly with independently driven endless conveyor belts, each belt connected
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`to a food article gripper for moving a food article...” Reference is made to the Examiner’s basis
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`US Patent Application Serial: No. 13/099,325
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`PRV01-102-US
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`for rejecting this portion of independent claim 1 in the Office Action (see p. 2, last paragraph of
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`the Office Action). The Examiner contends Hartman discloses “a food article feed apparatus
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`disposed over a food article loading apparatus 2, said food article feed apparatus having an upper
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`conveyor assembly.’ However, the Examiner fails to identify any portion of Hartmann that
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`discloses these limitations of independent claim 1. After this paragraph in the Office Action, the
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`Examiner recites “See Figs. 1-2.” However, with a detailed review of Figs. 1-2 in Hartmann,
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`there is no disclosure of a food article feed apparatus disposed over a food article loading
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`apparatus. Moreover, Hartmann certainly does not disclose an upper conveyor assembly. Thus,
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`the Examiner’s statement that Hartmann discloses these elements of independent claim 1
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`is
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`unsubstantiated.
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`Since Hartmann fails to disclose an upper conveyor assembly with belts, Hartmann
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`cannot disclose “each belt connected to a food article gripper.”
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`Some of the relied upon
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`references may disclose a gripper, but the grippers are not connected to belts included in an
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`upper conveyor assembly. All the conveyor belts in the relied upon references with grippers are
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`below the food loaf/product. Furthermore, Weber #2 and Walter disclose screw drives and a
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`gripper coupled to the screw drives. Again, none of the relied upon references disclose a gripper
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`connected to a belt of an upper conveyor assembly as claimed.
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`In addition to the disclosure deficiencies of the relied upon references presented above,
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`the Examiner made several errors when attempting to combine the numerous references to
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`attempt a rejection of independent claim 1.
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`Independent claim 1 stands rejected as being unpatentable over eight, count them eight,
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`different references. The Examiner previously attempted to reject independent claim 1 in view
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`of six different references, but Applicant filed a Pre-Appeal Brief and prosecution was reopened.
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`US Patent Application Serial: No. 13/099,325
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`Now,
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`the Examiner attempts an eight-reference rejection. Applicant wishes to remind the
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`Examiner that "a patent [or patent application] composed of several elements is not proved
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`obvious merely by demonstrating that each of its elements was, independently, known in the
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`prior art." KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741-43 (2007).
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`Indeed,
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`it is
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`important to "identify a reason that would have prompted a person of ordinary skill
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`in the
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`relevant field to combine the elements in the way the claimed new invention does." E.
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`In the
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`present case, the Examiner merely presents an itemized list of what he believes each of the eight
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`references disclose (see Office Action, pp. 2-4, 11) and fails to provide reasons why or how a
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`person of ordinary skill in the art would be prompted to combine the teachings of each and every
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`one of the eight references in the way the claimed invention of independent claim 1 does.
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`Instead, the Examiner lists the references then merely presents a single conclusory statement of
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`“therefore, it would be obvious to one of ordinary skill in the art at the time the invention was
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`made...” statement to attempt to support his combination of all of these references.
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`This conclusory statement or purported “reason” clearly does not satisfy the essence of
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`this requirement established in KSR. More particularly, KSR clearly states that a reason must be
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`provided that would prompt a person of ordinary skill
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`in the relevant field to combine the
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`elements in the way the claimed invention does. Since the Examiner is relying on eight different
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`references to teach the elements of independent claim 1, it is imperative for the Examiner to
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`identify reasons why a person of ordinary skill in the art could combine the teachings of: 1)
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`Pryor with Hartmann, 2) Lindee with Hartmann, 3) Weber with Hartmann, 4) JP2000-288983
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`with Hartmann, 5) Anstalt with Hartmann, etc. The Examiner provides no such reasons. These
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`numerous combinations of references represent the minimum number of necessary reasons the
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`Examiner must satisfy in order to satisfy the requirement established in KSR. More likely, the
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`10
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`PRV01-102-US
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`Examiner would have to provide further reasons to combine teachings of references because the
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`Examiner is alleging modifying already combined teachings of references with still further
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`references. For example, the Examiner initially proposes modifying Hartmann with Pryor, then
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`the Examiner wants to modify the combination of Hartmann and Pryor with still another
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`reference such as, for example, Lindee, and so on through all the references. With this alleged
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`convoluted combination of eight different references, the Examiner must identify reasons why
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`one of ordinary skill in the art would make this multitude of modifications upon modifications to
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`arrive at the invention claimed in independent claim 1. Applicant respectfully submits the
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`Examiner has not achieved this by making a single conclusory statement.
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`Moreover,
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`this high threshold for providing reasons of modifying/combining eight
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`references is an example of why Examiner’s do not typically reject claims based on a significant
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`number of references.
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`Primarily, such rejections based on large numbers of references is
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`difficult
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`to substantiate. Accordingly,
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`the Examiner’s reliance on such a large number of
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`references in an attempt to reject independent claim 1 in and of itself is sufficient to establish that
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`independent claim 1 is not obvious and is in fact allowable over the references of record.
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`Additionally, courts and others should avoid combining pieces of prior art or modifying
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`prior art through hindsight which would not have been combined or modified absent the
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`inventor's insight. KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. at 1742-43, Graham v. John Deere
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`Q, 383 US. at 36, 86 S. Ct. 684 (1966).
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`In the present case, the Examiner relies on the insight
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`of the elements of independent claim 1, copies these claim elements into the Final Office Action,
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`then merely lists one of the eight relied upon references to teach the claim element. This
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`approach to obviousness is what KSR warns against.
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`11
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`In the “Response to Arguments” section of the Office Action, the Examiner isolates the
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`previous paragraph and attempts to allege that it is acceptable for the Examiner to rely on
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`hindsight.
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`Particularly,
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`the Examiner recites the typical boilerplate paragraph oft-used by
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`Examiners in Office Action:
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`In response to applicant's argument that the examiner's conclusion of obviousness
`is based upon improper hindsight reasoning,
`it must be recognized that any
`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 the applicant's disclosure,
`such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ
`209 (CCPA l97l ).
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`In the Examiner’s own recitation above,
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`the Examiner identifies when it
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`is NOT
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`acceptable to rely on hindsight. That
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`is,
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`the Examiner cannot glean knowledge from the
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`Applicant’s disclosure. This is exactly what the Examiner did in the present case.
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`That is, the present combination and modification of Hartmann, Pryor, Lindee, Weber #1,
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`JP2000-288983, Anstalt, Walter and Weber #2 presented by the Examiner is a clear example of
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`hindsight reconstruction relying on the inventor’s insight. Applicant wishes to point out that
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`courts and others (e.g., Examiners) should avoid combining pieces of prior art or modifying prior
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`art through hindsight which would not have been combined or modified absent the inventor's
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`insight. KSR Int'l Co. v. Telefiex Inc., 127 S. Ct. at 1742-43, Graham v. John Deere Co., 383
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`US. at 36, 86 S. Ct. 684 (1966).
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`In the present case, none of the references, either alone or in
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`combination, disclose an upper conveyor assembly including belts with a gripper connected to
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`each belt. The Examiner relied on this inventive concept as a roadmap to piece together the
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`relied upon references to allege a rejection of independent claim 1. This is a quintessential
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`example of an Examiner relying on an inventor’s insight to arrive at the claimed subject matter,
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`which, as indicated above, is improper hindsight.
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`Furthermore, 35 U.S.C. §103(a) states that a patent may not be obtained if “the subject
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`matter as a whole would have been obvious at the time the invention was made to a person
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`having ordinary skill in the art”. The present rejection does not appear to meet this standard.
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`“The ‘as a whole’ instruction in title 35 prevents evaluation of the invention part-by-part.
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`Without this important requirement, an obviousness assessment might break an invention into its
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`component parts (A + B + C), then find a prior art reference containing A, another containing B,
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`and another containing C, and on that basis alone declare the invention obvious. This form of
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`hindsight reasoning, using the invention as a roadmap to find its prior art components, would
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`discount the value of combining various existing features or principles in a new way to achieve a
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`new result-often the very definition of invention.” Ruiz v. A.B. Chance Co., 357 F.3d 1270, 1275
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`(Fed. Cir. 2004). Applicant respectfully suggests that the hindsight reasoning cautioned against
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`by the Supreme Court
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`in KSR and the Federal Circuit has occurred as the invention in
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`independent claim 1 has been evaluated part-by-part.
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`Accordingly,
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`it can be clearly seen that
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`the Examiner failed to satisfy the basic
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`requirements established in KSR for rejecting a claim as being obvious. Furthermore,
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`it is
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`clearly seen that the Examiner has failed to present a bonafzde examination of all of the claims
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`in the present application. For at least these reasons, withdrawal of the present rejections and
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`allowance of the present application are respectfully requested.
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`Furthermore, with respect to claim 85, the Examiner presented a rejection of this claim
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`based on nine, count them nine references. Examiner previously attempted to reject claim 85 in
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`view of seven different references, but Applicant filed a Pre-Appeal Brief and prosecution was
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`reopened. Now, the Examiner attempts a nine-reference rejection of claim 85. For at least the
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`same reasons as those presented by the Applicant above with respect to the Examiner relying on
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`eight references to reject independent claim 1,
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`this nine-reference rejection of claim 85 is
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`improper. In short, the Examiner fails to satisfy the requirement established by the Supreme
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`Court in KSR about providing reasons for combining the nine references. The Examiner’s simple
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`conclusory statement is insufficient to satisfy the essence of the requirement established in KSR.
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`For at least this additional reason, claim 85 is allowable over the references of record.
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`Moreover, with respect to claims 86 and 87, the Examiner presented a rejection of these
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`claims based on still MORE references. Particularly, the Examiner relied on ten references to
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`reject claims 86 and 87. For at least the same reasons as those presented by the Applicant above
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`with respect to the Examiner relying on eight references to reject independent claim 1, this ten-
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`reference rejection of claims 86 and 87 is improper. In short, the Examiner has not satisfied the
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`requirement established by the Supreme Court in KSR about providing reasons for combining
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`the ten references. The Examiner’s simple conclusory statement is insufficient to satisfy the
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`essence of the requirement established in KSR. For at least this additional reason, claims 86 and
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`87 are allowable over the references of record.
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`For at least these reasons, the relied upon references do not teach or suggest all the
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`subject matter of independent claim 1. Accordingly, the Examiner has failed to establish a prima
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`facie case of obviousness of independent claim 1. Thus, independent claim 1
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`is allowable.
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`Claims 2-5 and 84-94 depend from independent claim 1 and are allowable for at least the same
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`reasons as independent claim 1. Additionally, reintroduction of withdrawn claims 2-5, 84, 91
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`and 93 is respectfully requested since these claims depend from allowable generic independent
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`claim 1.
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`Further deficiencies exist with the Examiner’s rejections of the dependent claims. For
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`example, Applicant will address at least some of these further deficiencies hereinbelow.
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`With respect to the Examiner’s rejection of claim 85, Applicant respectfully submits the
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`Examiner mischaracterizes the M01 reference. More particularly, the Examiner states “...Mol
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`teaches ‘each independently driven endless conveyor belt’ .
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`. .” First, Mol only discloses a single
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`conveyor belt. Thus, Mol cannot disclose multiple conveyor belts.
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`Independent claim 1 recites
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`and claim 85 further establishes multiple belts and how each belt can be independently driven. If
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`Mol only discloses one belt, Mol cannot possibly disclose driving belts independently because
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`multiple belts are not disclosed. Accordingly, the characterization of M01 is improper.
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`With respect to dependent claim 87, the Examiner fails to address each and every element
`(4
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`of dependent claim 87. More particularly,
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`the Examiner fails to address
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`...each endless
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`conveyor belt is driven independently by a servomotor, each servomolor arranged on the same
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`side 0: the endless conveyor belts...” (Emphasis added). The Examiner doesn’t identify any
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`aspect of any of the relied upon references that teach or suggest servomotors on the same side of
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`the endless conveyor belts (see Office Action, p. 6).
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`Instead, the Examiner makes an allegation
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`that it would be obvious to one of ordinary skill in the art to arrange the motors in the claimed
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`manner and presents the typical boilerplate paragraph of In re Japl'kse to support his reliance on
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`his own personal knowledge that such positioning is a mere rearranging of parts.
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`In order for In re Japikse to be pertinent, all the claim elements must be present in the
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`relied upon references so such claim limitations may be rearranged. In the present case, the relied
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`upon references do not teach or suggest the multiple motors for independently driving the belts.
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`And, as such, the relied upon references do not teach or suggest the multiple motors being on the
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`same side of the belts. The Examiner appears to have taken a leap beyond what is actually
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`disclosed in the relied upon references and has relied on his own personal knowledge to make
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`this leap and to allege that it would be obvious to one of ordinary skill in the art to arrive at this
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`subject matter of claim 87.
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`Appellant wishes to reminder the Examiner that under MPEP 2144.03,
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`it
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`is never
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`appropriate to rely solely on “common knowledge” in the art (or his own personal knowledge),
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`without evidentiary support in the record, as the principal evidence upon which a rejection was
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`based.
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`In re Zurko, 258 F. 3d 1379, 1385 (Fed. Cir. 2001). When the Examiner relies on his
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`own personal knowledge to support the Examiner’s finding of what is known in the art, as is the
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`situation in the instant case, the Examiner must provide an affidavit or declaration setting forth
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`specific factual statements and explanation to support his finding. MPEP 2144.03, 37 CFR
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`1.104(d)(2). As a result, Appellant hereby requests that the Examiner either drop his reliance on
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`personal knowledge, provide documentation supporting his assertions, or provide a personal
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`affidavit or declaration to support his findings. The Examiner must provide documentary
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`evidence in the next Office Action or drop the rejections. See MPEP 2144.03, 37 CFR
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`1.104(c)(2), In re Zurko, 258 F.3d 1379, 1386 (Fed. Cir. 2001).
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`For at least these additional reasons, the relied upon references do not teach or suggest all
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`the subject matter of claim 87 and, accordingly, the Examiner has failed to establish a prima
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`facie case of obviousness of claim 87.
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`Regarding claim 89, claim 89 recites “... comprising at least two conveyor belts each
`7
`connected to a food article gripper.’ As indicated above, none of the relied upon references
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`disclose an upper conveyor assembly include a belt with a gripper connected to the belt.
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`Accordingly, none of the references of record can disclose multiple belts with grippers connected
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`to the multiple belts.
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`In the Office Action, the Examiner merely states “a food gripper 11 is best seen in Fig. l
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`of Hartmann” to reject claim 89. This terse statement clearly does not rise to the level of subject
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`matter recited in claim 89. Accordingly, the Examiner has not presented a bonafzde examination
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`of claim 89 because the Examiner has not addressed each and every element of claim 89.
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`Additionally, Fig.
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`l of Hartmann fails to disclose an upper conveyor assembly with
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`multiple belts and multiple grippers. Instead, Hartmann discloses a single lower conveyor belt.
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`For at least these additional reasons, the relied upon references do not teach or suggest all
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`the subject matter of claim 89 and, accordingly, the Examiner has failed to establish a prima
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`facie case of obviousness of claim 89 for these additional reasons.
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`Regarding claim 90, claim 90 recites “. ..comprising three conveyor belts each connected
`77
`to a food article gripper. As indicated above, none of the relied upon references disclose an
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`upper conveyor assembly include a belt with a gripper connected to the belt. Accordingly, none
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`of the references of record can disclose multiple belts with grippers connected to the multiple
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`belts.
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`In the Office Action, the Examiner states that it is within the knowledge of one skilled in
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`the art to provide three conveyor belts for driving three grippers simultaneously as evidenced by
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`the JP Ref. However, the JP Ref discloses lower feed members. Again, the JP Ref does not
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`disclose an upper conveyor assembly including three belts and grippers connected to the multiple
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`belts.
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`For at least these additional reasons, the relied upon references do not teach or suggest all
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`the subject matter of claim 90 and, accordingly, the Examiner has failed to establish a prima
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`facie case of obviousness of claim 90 for at least these additional reasons.
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`Consideration of the above remarks and allowance of the present application are
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`m
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`respectfully requested.
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`The commissioner is hereby authorized to charge any fees which may be required, or
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`credit any overpayment, to Deposit Account No. 50-4851.
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`Date: June 14,2017
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`Respectfully submitted,
`
`/Paul M. McGinley/
`Paul M. McGinley
`Registration No. 55,443
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`Klintworth & Rozenblat 1P LLC
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`19 North Green Street
`
`Chicago, IL 60607
`Phone: (773)570-3330
`Fax: (773) 570-3328
`
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