BHS Corrugated Maschinen-und Anlagenbau GmbH

Patent Trials and Appeals Board

Oct 22, 2020

2020000168 (P.T.A.B. Oct. 22, 2020)

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.
15/272,900 09/22/2016 Maximilian MARK 75666 9531
23872 7590 10/22/2020
MCGLEW & TUTTLE, PC
P.O. BOX 9227
SCARBOROUGH STATION
SCARBOROUGH, NY 10510-9227
EXAMINER
ZIMMERMANN, JOHN P
ART UNIT PAPER NUMBER
2853
MAIL DATE DELIVERY MODE
10/22/2020 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 MAXIMILIAN MARK, SEBASTIAN ZARUBA, and
NORBERT STÄDELE1
________________

Appeal 2020-000168
Application 15/272,900
Technology Center 2800
________________

Before BRADLEY W. BAUMEISTER, GREGG I. ANDERSON, and
DAVID J. CUTITTA II, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 2, 4, 6–10, and 13–24. Appeal Br. 11–48. These
claims stand rejected under 35 U.S.C. § 103 as being unpatentable. Final
Action mailed Sept. 14, 2018 (“Final Act.”), 2–16. We have jurisdiction
under 35 U.S.C. § 6(b).2 We REVERSE. We newly reject claims 1, 2, 4, 6–
10, 13–22, and 24 under 35 U.S.C. § 112(b) as being indefinite.

1 Appellant identifies BHS Corrugated Maschinen-und Anlagenbau GmbH
as the real party in interest. Appeal Brief filed May 13, 2019 (Appeal
Br.”), 1.
2 Oral argument was held on October 15, 2020. A transcript of the
proceeding will be entered into the record in due course.
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2
CLAIMED SUBJECT MATTER
The present invention relates to corrugator machines that combine
three layers of continuous lamination webs to create a three-layered
corrugated board web—a continuous sheet that is a precursor to cut, two-
sided corrugated cardboard. See, e.g., Abstract; Spec. 1. More specifically,
the invention relates to such corrugator machines that are integrated with
printing devices. Spec. 1. Appellant explains that two goals of the present
invention are to shorten the overall length of these machines and to maintain
particularly high print quality. Id.
Independent claim 1, reproduced below, illustrates the subject matter
of the appealed claims:
1. A corrugator machine for producing corrugated board, the
corrugator machine comprising:
an intermediate web dispensing device for dispensing an
intermediate web;
a top layer dispensing device for dispensing a top layer;
a printing arrangement located downstream of the top
layer dispensing device for printing the top layer, the printing
arrangement being arranged at least in part above the top layer
dispensing device, the printing arrangement extending at least in
some areas above the top layer dispensing device;
a device located downstream of the intermediate web
dispensing device and the printing arrangement for producing a
corrugated board web laminated on one side from the
intermediate web and the top layer;
a lamination web dispensing device for dispensing a
lamination web;
at least one support frame for supporting at least a part of
the printing arrangement, wherein the at least one support frame
is designed separately from a corrugator machine bridge that
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supports a storage device for storing the corrugated board web
laminated on one side; and
a connection device for connecting the corrugated board
web laminated on one side and the lamination web with each
other whilst forming an at least three-layered corrugated board
web.

STATEMENT OF THE REJECTIONS
Claims 1, 2, 4, 6–8, 16, and 20–23 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Städele (US 2004/0182504 A1; published
Sept. 23, 2004) and Rich (US 2013/0029825 A1; published Jan. 31, 2013).
Final Act. 3–10.3
Claims 9 and 15 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Städele, Rich, and Lang (US 2009/0262159 A1; published
Oct. 22, 2009). Final Act. 10–12.
Claim 10 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Städele, Rich, and Morales Garcia de la Vega (US 2015/0101740 A1;
published Apr. 16, 2015). Final Act. 12–13.
Claims 13, 14, 17–19, and 24 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Städele, Rich, and Cosby (US 4,086,120; issued
Apr. 25, 1978). Final Act. 14–16.

3 The Städele reference spells the inventor’s name as “Stadele” (without an
umlaut). Based on how Mr. Städele spells his name in the present
application’s Declaration, filed September 19, 2016, we understand that the
correct spelling includes the umlaut.
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THE EXAMINER’S DETERMINATIONS
The Examiner finds that Städele discloses most of the limitations of
independent claim 1 with one exception. Final Act. 3–5. In particular, the
Examiner finds that Städele does not specifically call the web dispensing
device a “lamination” web dispensing device. Id. at 5. But the Examiner
determines, “[o]ne of ordinary skill . . . would [have] recognize[d] the use of
the term lamination web as being interchangeable with a web used in a
corrugator machine for producing or forming multi-layer corrugated board
web.” Id.
The Examiner finds that “Rich teaches a corrugator machine with
many of the similar characteristics of [Städele] . . . and specifically calls one
of the webs a laminated [web].” Id. (citing Rich, ¶ 128, FIG. 2). The
Examiner determines, “it would have been obvious . . . to recognize that one
of the webs dispensed in the corrugator machine of [Städele] to include a
lamination web as that [was] a common term and type of web used in
corrugated board manufacturing and [was] specifically listed as such by
Rich in the production of corrugated board.” Id. at 6 (citing Rich ¶ 128).4
Appellant presents various arguments in response. See Appeal
Br. 11–38. We address the dispositive arguments in the Analysis section,
below.

4 Because the Examiner’s position appears to be that Städele discloses all of
the limitations of the listed claims, and that Rich is relied upon merely to
show that one of Städele’s disclosed structure was known to be called by a
different name, we question whether this Examiner really intended to issue a
two-reference anticipation rejection instead of an obviousness rejection.
However, we need not decide that question for the reasons set forth below.
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STANDARD OF REVIEW
The Board conducts a limited de novo review of the appealed
rejections for error based upon the issues identified by Appellant, and in
light of the arguments and evidence produced thereon. Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

CONTENTIONS AND ANALYSIS
I.
Appellant argues, “[Städele] and Rich as a whole do not teach and do
not suggest a top layer dispensing device for dispensing a top layer and a
printing arrangement located downstream of the top layer dispensing device
for printing the top layer[,] as claimed.” Appeal Br. 11. More specifically,
Appellant essentially argues that the Examiner is unreasonable in
interpreting elements 2, 3, 21, and 22 of Städele as corresponding to the top
layer dispensing device. Id. (citing Final Act. 3). Appellant further argues,
“the first printing unit 4 of Stadele et al. is not located downstream of the
first unroll stand 2, the first web material 3, the second unroll stand 21[,] and
the third web of material 22[,] as claimed.” Id. at 12.
We agree with Appellant that the Examiner’s mapping of Städele’s
recited components to the top layer dispensing device of claim 1 is
unreasonable. Städele’s unroll stand 2 reasonably corresponds to the claims
top layer dispensing device, and Städele’s first digital printing unit 4
reasonably corresponds to a printing arrangement located downstream of the
top layer dispensing device for printing the top layer, as claimed. See
Städele, ¶ 21; FIG. 2. But the relied-upon elements 21 and 22 correspond to
Städele’s second unroll stand and third web of material. Id. ¶ 26. It is
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unreasonable to interpret these elements as corresponding to the top layer
dispensing device.
Irrespective of the unreasonableness of the mapping of the claim
elements, though, Städele does disclose this particular disputed limitation of
claim 1. This limitation only requires that the printing arrangement be
located downstream of the top layer dispensing device. As noted, Städele
discloses a first unroll stand 2, which corresponds to the claimed top layer
dispensing device, and Städele discloses a first digital printing unit 4, which
is downstream of the first unroll stand 2. Städele, ¶¶ 21, 22; FIG. 2.
Accordingly, Appellant’s arguments regarding this issue are unpersuasive of
error.
II.
Appellant argues that the cited art, alone or in combination, does not
teach or suggest a storage device for storing a corrugated board web
laminated on one side, as claimed. Id. at 13. Appellant further argues that in
Städele, the stacks are supported by the floor 64 and “that there is no
corrugator machine bridge for supporting a storage device for storing a
corrugated board web that is laminated on one side[,] as claimed.” Id. at 14.
The Examiner determines that Appellant’s arguments are
unpersuasive because “the features [i.e. downstream of the first unroll stand
2, the first web of material 3, the second unroll stand 21[,] and the third web
of material 22] are not recited in the independent claim.” Examiner’s
Answer mailed Aug. 7, 2019 (“Ans.”), 4.
We understand the Examiner’s position to be that claim 1
affirmatively recites “at least one support frame for supporting at least a part
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of the printing arrangement,” but claim 1 does not affirmatively recite either
the corrugator machine bridge or a storage device. We agree.
The disputed language of claim 1 reads, as follows:
at least one support frame for supporting at least a part of the
printing arrangement, wherein the at least one support frame is
designed separately from a corrugator machine bridge that
supports a storage device for storing the corrugated board web
laminated on one side.
Appeal Br. 49 (emphasis added).
This limitation affirmatively recites the “at least one support frame.”
But claim 1 merely sets forth the corrugator machine bridge and the storage
device inferentially in relation to the affirmatively recited support frame, as
if the bridge and storage device are unclaimed workpieces or elements of the
environment in which the affirmatively recited elements potentially interact.
See, e.g., 37 C.F.R. § 1.75(i) (“Where a claim sets forth a plurality of
elements or steps, each element or step of the claim should be separated by a
line indentation.”).
Stated another way, when afforded its broadest reasonable
interpretation, claim 1 reasonably can be interpreted as affirmatively reciting
“at least one support frame” in conjunction with reciting a negative
limitation—that the support frame be “designed separately from a corrugator
machine bridge that supports a storage device for storing the corrugated
board web laminated on one side.” Under this interpretation, Appellant’s
arguments do not demonstrate error in the Examiner’s rejection. This is
because the claim does not require that the bridge and storage device be
present—only that the affirmatively claimed support frame not be connected
to any potentially present bridge or storage device. And Appellant does not
argue that Städele discloses a support frame that is designed or connected
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together with such a corrugator machine bridge. See Appeal Br. 11–14;
Reply Br. filed Oct. 7, 2019 (“Reply Br.”), 1–5; see also MPEP § 2173.05(i)
(discussing claims that recite negative limitations).
III.
Although Appellant’s arguments regarding the recited bridge and
storage device, noted in the prior section, are unpersuasive with respect to
independent claim 1, they are persuasive with respect to independent
claims 16 and 23. These latter claims are worded differently from
independent claim 1. Independent claim 16 affirmatively recites the
corrugator machine bridge:
16. A corrugator machine for producing corrugated board, the
corrugator machine comprising:
an intermediate web dispensing device for dispensing an
intermediate web;
a top layer dispensing device for dispensing a top layer;
a support frame structure, at least a portion of the support
frame structure extending above the top layer dispensing device;
a printing arrangement located downstream of the top layer
dispensing device for printing the top layer, at least a portion of
the printing arrangement being fixed to the portion of the support
frame structure extending above the top layer dispensing device,
wherein the portion of the printing arrangement is located at a
position above the top layer dispensing device;
a device located downstream of the intermediate web
dispensing device and the printing arrangement for producing a
corrugated board web laminated on one side from the
intermediate web and the top layer;
a lamination web dispensing device for dispensing a
lamination web;
a corrugator machine bridge for supporting a storage
device for storing the corrugated board web laminated on one
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side, the corrugator machine bridge being a structure that is
separate from the support frame structure; and
a connection device for connecting the corrugated board
web laminated on one side and the lamination web with each other
to form an at least three-layered corrugated board web.
Appeal Br. 52–53 (emphasis added).
Independent claim 23 is similar to claim 16 in that claim 23 also
affirmatively recites the corrugator machine bridge: “a corrugator machine
bridge for supporting a storage device for storing the corrugated board web
laminated on one side, the corrugator machine bridge being a structure that
is separate from the support frame structure.” Appeal Br. 54.
The Examiner additionally finds that Städele teaches such a bridge
and such a supported storage device. Specifically, the Examiner interprets
the claimed bridge as reading on Städele’s elements 61, 68, 58, 59, and 66.
Final Act. 4. The Examiner also interprets these same elements as reading
on the claimed storage device. Id.
Appellant argues that the relied upon disclosure of Städele relates to
the devices that are used to stack cut sheets of two-sided board—not store
uncut one-sided board web. Appeal Br. 13. Appellant also argues that the
stacks are supported by the floor 64—not by a storage device that is
supported by a bridge. Id. (citing Städele FIG. 6). Both of Appellant’s
arguments are persuasive.
We disagree with the Examiner’s position that two sided board
reasonably can be interpreted as corresponding to “corrugated board web
laminated on one side,” as claimed. Ans. 6. Appellant’s Specification is
consistent and reasonably clear in using the term “laminated on one side” to
mean a corrugated board web that is laminated only on one side. Spec. 1–
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17. The Specification refers to corrugated board webs that are laminated on
both sides as “[a]n endless corrugated board web 94 laminated on two
sides.” Id. at 17; see also id. at 2 (referring to two-sided laminate board
webs as “an at least three-layered corrugated board web”).
Accordingly, Appellant demonstrates error in the Examiner’s rejection
of claims 16 and 23. We, therefore, reverse the obviousness rejection of
these independent claims and also of claims 20–22, which depend from
claim 16. With respect to the remaining obviousness rejections of dependent
claims 17–19, and 24, the Examiner does not rely on the additionally cited
reference, Cosby, to cure the deficiency of the obviousness rejection noted
above. Final Act. 14–16. We, therefore, reverse the obviousness rejection
of these claims for the reasons set forth in relation to independent claims 16.
IV.
Appellant additionally argues,
The final rejection contains the clear error in that the cited prior
art references as a whole do not teach or suggest a printing
arrangement that is arranged at least in part above a top layer
dispensing device wherein the printing arrangement extends at
least in some areas above the top layer dispensing device as
claimed.
Appeal Br. 12.
We understand Appellant’s position on this issue to be that the
language of independent claims 1 and 16, “above the top layer dispensing
device,” is limited to meaning that the printing arrangement is disposed
vertically higher and horizontally over the top layer dispensing device. See
Appeal Br. 12–13; Reply Br. 3–4 (both briefs presenting arguments for how
this claim term should be interpreted and why Städele’s side-by-side
arrangement does not satisfy this claim language).
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We understand the Examiner’s position to be that, under the broadest
reasonable interpretation, the claim term merely requires that the printing
device extend vertically higher than the top layer dispensing device. See,
e.g., Final Act. 17 (wherein the Examiner reasons, “[a]lthough the claims are
interpreted in light of the specification, limitations from the specification are
not read into the claims. . . . The printing unit of Städele et al. is most
certainly above and extends above the unroll stand.”).
“Before considering the rejections . . ., we must first [determine the
scope of] the claims . . . .” In re Geerdes, 491 F.2d 1260, 1262 (CCPA
1974). We, therefore, first seek to determine the meaning and scope of the
following disputed limitation of claim 1: “a printing arrangement located
downstream of the top layer dispensing device for printing the top layer,
[(1)] the printing arrangement being arranged at least in part above the top
layer dispensing device, [(2)] the printing arrangement extending at least in
some areas above the top layer dispensing device.” Appeal Br. 49
(emphasis and clause designators added).
We determine this limitation’s meaning to be unclear because it twice
recites the requirement that the printing arrangement be “above” the top
layer dispensing device. If Appellant’s position is that the claim term
“above” means the printing arrangement is horizontally covering the top
layer dispensing device, then reciting that limitation once would be
sufficient, rendering the second clause superfluous. If we alternatively
determine that “above” reasonably may be interpreted more broadly so as to
merely require that the printing arrangement extends vertically higher than
the top layer dispensing device, then claim 1 does not further limit the scope
by reciting that limitation a second time.
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To be sure, the first clause more specifically recites that the printing
arrangement is “arranged at least in part above” whereas the second clause
alternatively recites that the printing arrangement is “extending at least in
some areas above the top layer dispensing device.” Appeal Br. 49 (emphasis
added). However, we do not see how the words “arranged” and “extending”
connote any spatial distinction beyond “above,” clarify the intended claim
scope, or otherwise draw meaningful distinctions between the two clauses.
Furthermore, dependent claim 4, further compounds the ambiguity
present in independent claim 1. Claim 4 recites, “[a] corrugator machine
according to claim 1, wherein the printing arrangement is arranged at least
mostly above the top layer dispensing device.” While we understand the
term “mostly” to be narrowing the scope of claim 1 from being merely “at
least” above, it is not reasonably clear whether this term is supposed to
narrow the first clause of claim 1, the second clause, or both clauses.
Moreover, Appellant has other alternatives, supported by the
originally filed Specification, that would set forth the intended relative
vertical and horizontal positions of these two claimed components with
reasonable clarity. For example, Appellant’s Specification sets forth, “the
inkjet printing device 27 is arranged above the top layer splice device 2 and
covers the same in some areas.” Spec. 9:8–9; see also Figure 1 (depicting
the same).
Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b),
then, we newly reject independent claim 1 under 35 U.S.C. § 112(b) as being
indefinite for failing to reasonably set forth the metes and bounds of claim
protection being sought. Ex parte Kristensen, 10 USPQ2d 1701 (BPAI
1989) (where a claim directed to a device can be read to include the same
Appeal 2020-000168
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element twice, the claim may be indefinite.). We, likewise, newly reject
independent claim 16, which includes a similar double recitation of the
requirement for the printing arrangement to be located “above” the top layer
dispensing device. Appeal Br. 52. We additionally reject as indefinite,
dependent claims 2, 4, 6–10, 13–15, 17–22, and 24, which do not cure the
noted ambiguity of in the scope of independent claims 1 and 16.
Because we determine these claims to be indefinite, we further
determine that the Examiner engaged in impermissible speculation as to the
meaning of the claim language. See In re Steele, 305 F.2d 859, 862, (CCPA
1962) (holding that the Examiner and the Board were wrong in relying on
what, at best, were speculative assumptions as to the meaning of the claims
and in basing a rejection under 35 U.S.C. § 103 thereon). Accordingly, we
summarily reverse the obviousness rejections of independent claims 1 and
16, and also of dependent claims 2, 4, 6–10, 13–15, 17–22, and 24, which do
not cure the noted ambiguities.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed Rejected
1, 2, 4, 6–
8, 16,
20–23
103 Städele, Rich 1, 2, 4, 6–
8, 16, 20–
23

9, 15 103 Städele, Rich,
Lang
9, 15
10 103

Städele, Rich,
Morales
Garcia de la
Vega
10
13, 14, 103 Städele, Rich, 13, 14,
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FINALITY AND RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Rule 37 C.F.R. § 41.50(b) provides “[a] new ground
of rejection pursuant to this paragraph shall not be considered final for
judicial review.”
Rule 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

REVERSED
37 C.F.R. § 41.50(b)

17–19, 24 Cosby 17–19, 24
112(b) Indefiniteness 1, 2, 4, 6–
10, 13–
22, 24
Overall
Outcome
1, 2, 4, 6–
10, 13–24
1, 2, 4, 6–
10, 13–
22, 24