Appeal No. 2004-0436
Application 09/746,251
would have suggested to one of ordinary skill in this art to modify star wheel 43 by using more
than two identical carrier segments of the design shown therein.
In this respect, as we noted above, appellant points to the difference in the number of
identical carrier segments, stating that Kantor does not show the claimed “three piece star wheel”
(brief, page 5). Appellant does submit, in summarizing the invention, that in the “current
commercial environment,” two piece star wheels for nine pockets, the segments are not identical
and thus undesirable, relying on this contention in alleging that the art is following the old two
segment design even with its undesirable consequences (id., pages 3 and 5; see also
specification, pages 1-2). The examiner points out that “[a] mere duplication of parts does not
appear to provide a patentable departure from that of Kantor” because “[t]he number of bottle
receiving pockets would depend on design choices of the system being utilized” (Paper No. 8,
page 3).
“It is well settled that the mere duplication of parts has no patentable significance unless a
new and unexpected result is produced . . . . ” In re Harza, 274 F.2d 669, 671, 124 USPQ 378,
380 (CCPA 1960). On this record, we agree with the examiner that one of ordinary skill in this
art would have been motivated by the disclosure of identical segments for star wheel 43 in
Kantor Fig. 1 to use additional identical carrier segments of the design shown therein modified to
suit the number of bottles to be conveyed in a system.
We are not convinced otherwise by appellant’s arguments that one of ordinary skill in the
art would not have used three identical carrier segments which can be of the same design as the
identical segments of star wheel 43, that is, a half pocket on each end of the segment, modified
with respect to the number of whole pockets to convey more than the eight bottles
accommodated by star wheel 43, for two reasons. First, appellant has not established that Kantor
and the additional patent cited (brief, page 3) constitute sufficient evidence to establish the
alleged “current commercial environment” with respect to star wheels. Cf. e.g., In re Lindner,
457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972) (“This court has said . . . that mere
lawyers’ arguments unsupported by factual evidence are insufficient to establish unexpected
results. [Citations omitted.]”). And second, appellant has not established that one of ordinary
skill in this art would not have recognized the problem in the routine use of the known two
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