Elmar Ehrmann

Patent Trials and Appeals Board

Feb 5, 2020

14510088 - (D) (P.T.A.B. Feb. 5, 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.
14/510,088 10/08/2014 Elmar Ehrmann 469506.10149 7210
27526 7590 02/05/2020
HUSCH BLACKWELL LLP
4801 Main Street, Suite 1000
KANSAS CITY, MO 64112
EXAMINER
FRY, PATRICK B
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
02/05/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
pto-kc@huschblackwell.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ELMAR EHRMANN
____________

Appeal 2018-007723
Application 14/510,088
Technology Center 3700
____________

Before DANIEL S. SONG, MICHAEL J. FITZPATRICK, and
GEORGE R. HOSKINS, Administrative Patent Judges.

HOSKINS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–19 in this application. The Board has
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies MULTIVAC SEPP
HAGGENMÜLLER GMBH & CO. KG as the real party in interest. Appeal
Br. 1.
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CLAIMED SUBJECT MATTER
Claim 1 illustrates the claimed subject matter on appeal, and it recites:
1. Thermo-forming packaging machine comprising:
a controller;
a first forming station disposed along a direction of
production for forming trays into a base film, wherein the base
film is continuous at least between said first forming station and
a sealing station downstream of said first forming station;
an adjustable second forming station for forming lids into a
top film, said adjustable second forming station disposed for
movement in a direction of transport of said top film;
said sealing station for sealing said trays with said lids;
at least one conveyor chain for transporting said base film
in said direction of production; and
a first detection device provided in or on said sealing station
for detecting a position of a marking of said base film and
transmitting position information to said controller;
wherein said controller controls a length of a film advance
step of said conveyor chain during transport of said trays into
said sealing station based upon said position of said marking of
said base film detected by said first detection device.
Appeal Br. 23 (Claims App.).
REJECTIONS ON APPEAL2
Claims 1–4, 8, 11, and 13–19 are rejected under 35 U.S.C. § 103 as
unpatentable over Holzem (US 2012/0036815 A1, pub. Feb. 16, 2012),
Natterer (EP 0 569 933 A1, pub. Nov. 18, 1993), Umetsu (US 5,191,693, iss.
Mar. 9, 1993), and Ishii (US 7,360,348 B2, iss. Apr. 22, 2008).

2 Rejections of claim 19 under 35 U.S.C. § 112(a) for lack of written
description, and under § 112(b) for indefiniteness, have been withdrawn.
Final Act. (dated Sept. 20, 2017) 3–4 (rejections); Ans. 2 (withdrawal).
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Claims 5–7 are rejected under 35 U.S.C. § 103 as unpatentable over
Holzem, Natterer, Umetsu, Ishii, and Prena (US 3,762,125, iss. Oct. 2,
1973).
Claim 9 is rejected under 35 U.S.C. § 103 as unpatentable over
Holzem, Natterer, Umetsu, Ishii, and Send (US 6,820,399 B2, iss. Nov. 23,
2004).
Claims 10 and 12 are rejected under 35 U.S.C. § 103 as unpatentable
over Holzem, Natterer, Umetsu, Ishii, and Bening (US 6,509,072 B2, iss.
Jan. 21, 2003).
OPINION
A. Obviousness over Holzem, Natterer, Umetsu, and Ishii
(Claims 1–4, 8, 11, and 13–19)
1. Claims 1–4, 8, and 18
Appellant argues for the patentability of claims 1–4, 8, and 18 as a
group, without arguing for any of the claims in this group separately from
the other claims. See Appeal Br. 8–18, 20–21. We select claim 1 to decide
the appeal as to these claims. See 37 C.F.R. § 41.37(c)(1)(iv) (2017).
a. Holzem
The Examiner finds Holzem discloses a thermo-forming packaging
machine (i.e., machine 1) exhibiting several limitations of claim 1. Final
Act. 5–6. Appellant does not dispute these findings.
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Thus, Holzem’s machine 1 comprises first forming station 2 disposed
along a direction of production for forming trays 133 in base film 9, wherein
base film 9 is continuous at least between first forming station 2 and sealing
station 3 downstream of first forming station 2. Final Act. 5 (citing Holzem,
Fig. 1, ¶ 27). Holzem also discloses second forming station 15 for forming
lids 14ʹ in top film 14. Id. Holzem’s sealing station 3 seals trays 13 with
lids 14ʹ. Id. Holzem also includes at least one conveyor chain 7 for
transporting base film 9 in the direction of production. Id.
Completing the comparison to claim 1, the Examiner determines
Holzem does not disclose: (1) second forming station 15 being “adjustable”;
(2) “a controller”; (3) “a first detection device provided in or on” sealing
station 3 for detecting markings on base film 9 and transmitting position
information to the controller; or (4) “control[ling] a length of a film advance
step” for base film 9 with the controller. Final Act. 6, 7.
b. Holzem and Natterer
The Examiner finds Natterer’s Figure 7 discloses a packaging
machine comprising controller 44, adjustable forming station 4, adjustable
sealing station 5, and a detection device (i.e., print mark sensor 40) that
detects printed marks on film 43. Final Act. 6 (citing Natterer, Fig. 7, pg. 2
(¶ 2), pg. 4 (¶¶ 1, 3, 4)).4 The Examiner finds controller 44 receives

3 Holzem’s Figure 1 identifies both the top film and one tray with
numeral 14. Holzem’s written description (¶ 27) describes top foil 14 and
tray 13.
4 The record contains two machine translations of Natterer’s German
disclosure into English, one dated September 23, 2014, and the other dated
February 27, 2017. The Examiner cites to the latter, and so we do too.
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information from detection device 40 to determine the position of film 43,
and accordingly adjusts the respective positions of stations 4 and 5, to place
the stations in the desired position relative to the printed marks. Id.
The Examiner determines it would have been obvious, in light of
these disclosures in Natterer, to modify Holzem’s machine 1 to incorporate
adjustable first forming station 2 and adjustable second forming station 15,
controlled by a controller using a detection device that detects markings on
base film 9. Id. This would have been done, in the Examiner’s view, to
adjust the position of Holzem’s top film 14 relative to Holzem’s base film 9
to “make up with the printed marks” and make Holzem’s machine 1 “more
versatile.” Id.
Appellant disputes the Examiner’s foregoing determination of
obviousness. Appeal Br. 11–14. Appellant objects that Holzem and
Natterer fail to disclose the claimed “adjustable second forming station for
forming lids,” because Holzem’s second forming station 15 is not adjustable,
and Natterer has just one adjustable forming station 4 which does not form
lids. Id. at 11–12. Appellant further asserts it would not have been obvious
to make Holzem’s vertically oriented second forming station 15 to be
adjustable, based on Natterer’s horizontally adjustable forming station 4. Id.
at 12–14. This is so, in Appellant’s view, because Natterer’s side rail roller
configuration for implementing horizontal adjustment would be unable to
implement stable vertical adjustment “without substantial modification,”
requiring “a change in the principle of operation” of Holzem’s second
forming station 15, without a reasonable expectation of success. Id. at
13–14; Reply Br. 3–5.
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Upon review of the foregoing, we do not discern error in the
Examiner’s determination of obviousness over Holzem and Natterer. The
test for obviousness is not whether the features of one reference (such as
Natterer) may be bodily incorporated into the structure of the other reference
(such as Holzem), but rather is “what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981); see also In re Merck & Co.,
800 F.2d 1091 (Fed. Cir. 1986) (nonobviousness is not established by
attacking references individually when unpatentability is predicated upon a
combination of prior art disclosures). “A person of ordinary skill is also a
person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 421 (2007).
We agree with the Examiner that a person of ordinary skill in the art
would have been motivated to modify, and capable of modifying, the
support structure of Holzem’s vertically oriented second forming station 15
to be vertically adjustable, along the direction of travel of top film 14, so that
lids 14ʹ will be properly aligned with trays 13 in sealing station 3 based on
markings detected on base film 9. See Advisory Act. (dated Dec. 7, 2017) 2
(“[T]he person of ordinary skill in the art would know that [Holzem’s] lid
forming station would also need to be adjustable in order to ensure the lid
aligns with the tray.”); Ans. 4–5. Further, this modification to Holzem does
not change Holzem’s principle of operation, which is to manufacture
re-closable packages 8 with trays 13 and lids 14ʹ in continuous films.
Holzem, Fig. 1, Abstract, ¶ 2.
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c. Holzem, Natterer, and Umetsu
The Examiner finds the combination of Holzem and Natterer does not
disclose a controller that “controls a length of a film advance step” of
Holzem’s base film 9, as required by claim 1. Final Act. 7. The Examiner
cites Umetsu as disclosing such a controller, and determines it would have
been obvious to incorporate such a controller in the combined system of
Holzem and Natter. Id. (citing Umetsu, Figs. 8–9, 9:27–45). Appellant does
not challenge this aspect of the rejection, which we therefore sustain. See
37 C.F.R. § 41.37(c)(1)(iv) (2017) (“any arguments or authorities not
included in the appeal brief will be refused consideration by the Board for
purposes of the present appeal”).
d. Holzem, Natterer, Umetsu, and Ishii
The Examiner finds the combination of Holzem, Natterer, and Umetsu
does not disclose that the first detecting device (i.e., Natterer’s print mark
sensor 40) is “provided in or on the sealing station” (i.e., Natterer’s sealer
station 5) as claimed. Final Act. 7. The Examiner relies on Ishii to
determine that the claimed detection device positioning would have been
obvious. Id. at 7–8.
Appellant argues Ishii is non-analogous art. Appeal Br. 8–10. Only
“analogous” prior art references may be used to support an obviousness
determination. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (citing
In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992)). A prior art reference is
analogous to an application (1) if it is from the same field of endeavor as the
inventor’s, regardless of the problem addressed, or (2) if the reference is not
within the field of the inventor’s endeavor, it is nonetheless reasonably
pertinent to the particular problem with which the inventor is involved. Id.
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The Examiner determines Ishii is analogous art, because Ishii
discloses a method and system for manufacturing and processing “sheet
material.” Final Act. 19–20 (citing Ishii, 2:19–23); Ans. 2–3 (further citing
Ishii, 2:32–36). It is not entirely clear whether the Examiner’s determination
relies on both of the two alternative criteria for Ishii to be analogous art, or
only the second “particular problem” criterion. Final Act. 19–20; Ans. 2–3.
Appellant asserts the Examiner mis-applies the second criterion of the
analogous art test, which requires Ishii to “be pertinent to the ‘particular
problem’ being solved by the inventor — not a problem hypothesized by the
Examiner.” Appeal Br. 8–9. Appellant contends the claimed invention “is
attempting to particularly solve the problem of uniting a formed tray and a
formed lid as precisely as possible in a sealing station of a thermoforming
packaging machine,” and “not simply solving the general problem of
‘processing sheet material.’” Id. at 9 (citing Spec. ¶ 8); Reply Br. 2.
Appellant further contends “Ishii and Appellant do not even process the
same type of ‘sheet material,’” because Ishii processes individual sheets of
X-ray film, whereas Appellant’s invention processes a continuous film web
to make thermo-formed packages. Appeal Br. 9–10 (citing Ishii, 3:10–61,
and Appellant’s Fig. 1). Appellant additionally asserts Ishii’s sensors do not
detect markings on a film, but rather detect the presence of an individual
sheet of film to count sheets. Id. at 10 (citing Ishii, 3:10–61).
We determine Ishii is analogous art here, under either one of the two
alternative analogous art criteria. Appellant discloses a method of
manufacturing thermo-formed packages, whereby package trays are formed
in a continuous base film and package lids are formed in a continuous top
film, and the two films are brought together to align and seal the trays and
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lids to each other, and then cut into individual packages. Spec. ¶¶ 2, 7–10,
16; id. at Fig. 1, ¶¶ 38, 40. Ishii discloses a method of manufacturing X-ray
film sheets, whereby a continuous film is cut into individual sheets, and the
individual sheets are sorted by various gates provided along a conveying
apparatus into different trays. Ishii, Abstract, 1:14–20; id. at Figs. 1–2,
4:44–54, 6:5–48. Thus, the common field of endeavor is the processing of
sheet material, as found by the Examiner.
Further, Appellant addresses the particular problem of aligning the
trays in the base film with the lids in the top film to be united “as precisely
as possible in a sealing station,” using a detector to track printed markings
on the base film, and accordingly adjusting how the base and top films are
processed to achieve the desired alignment. Spec. ¶¶ 8–10, 12, 16. Ishii is
reasonably pertinent to that problem, because Ishii discloses detectors to
track the length and number of individual sheets passing through various
sheet processing stations, and accordingly determine whether the sheets have
been processed appropriately. Ishii, 1:14–17, 2:32–57, 6:49–54, 8:18–23.
The common problem addressed, therefore, is tracking a sheet material
during processing in order to ensure that the processing is performed
correctly.
Appellant next challenges the Examiner’s determination of
obviousness based on Ishii. Appeal Br. 14–18. Here, the Examiner cites
Ishii as disclosing a method of controlling the processing of sheet
material (i.e., sheets 12), wherein detection devices (i.e., sensors 60A–60I)
are disposed at the entrance and exit of each processing operation (i.e.,
gates 48, 50, 52). Final Act. 7 (citing Ishii, 2:19–41, 2:52–59, 7:42–54).
The Examiner finds incorporating such an arrangement into the combined
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packaging machine of Holzem, Natterer, and Umetsu would have been
“beneficial,” in order to “allow quick determination of the proper conveying
and processing of the sheet material,” “mak[ing] the machine more efficient
and more reliable.” Id. at 7–8. This would have been done, in the
Examiner’s view, “by having [Natterer’s] print mark sensor before and after
each of [Holzem’s] stations as taught by Ishii,” including Holzem’s sealing
station 3. Id. at 8, 20. This positioning, in the Examiner’s view, “would
further ensure the position of the trays relative to each station,” given that
the continuous nature of Holzem’s films 9 and 14 “does not guarantee that
the spacing between the trays do[es] not change when the film is processe[d]
by the stations.” Id. at 21 (emphasis added).
Appellant contends “there is no reasonable basis to support” the
Examiner’s determination of obviousness, because Ishii’s arrangement of
sensors at the inlet and outlet sides of working stations “results from the
particular needs for processing individual sheets of X-ray film of finite
length,” whereas the other three references each concern “a thermoforming
packaging machine conveying a continuous bottom film.” Appeal Br. 14–16
(emphases added) (citing Ishii, 3:10–61). Appellant argues the Examiner’s
obviousness rationale for bridging this gap is “conclusory and . . . without
supporting evidence,” and also based on hindsight. Id. at 16, 20–21.
According to Appellant, modifying a continuous film thermoforming
packaging machine (such as disclosed by Holzem, Natterer, and Umetsu) by
“placing a sensor at the entrance and exit of each workstation to attempt to
(1) determine the presence of the film, (2) count the number of films that
pass through the station, or (3) measure the length of the film” (as disclosed
by Ishii), “would provide no functional benefit.” Id. at 16–17 (emphases
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added); Reply Br. 3–7. Appellant additionally contends Ishii does not
disclose a sealing station; detecting a marking on a film; aligning a tray with
a lid; or adjusting a length of a film advance step. Appeal Br. 17.
We conclude the Examiner has articulated a rational basis for the
proposed obviousness of modifying Holzem by placing a print mark detector
(from Natterer) before and after (from Ishii) Holzem’s sealing station 3,
thereby resulting in a detector “in or on” sealing station 3 as recited in
claim 1. In particular, a person of ordinary skill in the art would have
appreciated this positioning would help to ensure a proper alignment
between trays 13 and lids 14ʹ within sealing station 3, by tracking the
position of print marks on base film 9 that forms trays 13. See Final Act. 21.
As is apparent from Figure 1 of Holzem, it is important for top film 14 and
bottom film 9 to be aligned within sealing station 3 so that lids 14ʹ are
aligned with trays 13, and packages 8 will thereby be formed properly by
sealing the two films together. Holzem, Fig. 1, ¶¶ 8–10, 27. Placing
Natterer’s print mark sensors in or on Holzem’s sealing station 3, as
suggested by Ishii’s placement of sensors 60A–60I with respect to various
film processing gates 48, 50, and 52, would help achieve such alignment by
tracking the placement of bottom film 9 proximate to sealing station 3 where
the two films come together.
Thus, it is the combination of prior art references that rationally leads
to obviousness here, without hindsight. See Keller, supra; Merck, supra.
Appellant is correct that Ishii does not disclose a sealing station, or detecting
a marking on a film, or aligning a tray with a lid, or adjusting a length of a
film advance step. However, these steps are disclosed by the other prior art
references, as discussed above, Ishii being relied upon to establish that use
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of detection devices disposed at the entrance and exit of each processing
operation is known. Appellant’s objections are not persuasive, because they
ignore the creativity that a person of ordinary skill in the art would bring to
bear in considering the combined disclosures of Holzem, Natterer, Umetsu,
and Ishii as a whole.
Appellant finally contends that the cited prior art references, even if
combined, do not lead to a detection device provided “in or on” a sealing
station, as claimed. Appeal Br. 17–18. According to Appellant, Ishii’s
detection devices are “disposed at entrance and exit sides of each of the
processing operations” (quoting Ishii, 2:32–38), so Ishii “requires” the
detection devices to “be outside the workstation to ensure [they] can detect
the film pieces entering the workstation also exit the workstation.” Appeal
Br. 17–18 (emphasis added).
The Examiner answers that: “The entrance and exit side of the stations
[in Ishii] are interpreted as part of said stations and . . . disposing a detector
at the entrance and exit side of the stations is interpreted as disposing a
detector on said station.” Ans. 8–9 (citing Ishii, 2:19–22, 2:32–36).
We conclude the Examiner does not err in determining that the
combined disclosures of Holzem, Natterer, Umetsu, and Ishii lead to placing
the detection device in or on Holzem’s sealing station 3. As stated above, a
person of ordinary skill in the art would have appreciated this placement
would help achieve alignment between Holzem’s lids 14ʹ and trays 13 to
form packages 8, by tracking the orientation of bottom film 9 proximate to
sealing station 3 where Holzem’s two films come together. The fact that
Ishii’s processing stations are gates for directing sheet materials to different
trays along a conveying apparatus, in which the detectors are “disposed at”
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the entrance and exit sides of each gate (Ishii, 2:32–38, 6:5–48), does not
alter such obviousness based on the combined prior art disclosures as a
whole. See also In re Japikse, 181 F.2d 1019, 1023 (CCPA 1950) (claims
held unpatentable because shifting the position of the starting switch would
not have modified the operation of the device); In re Kuhle, 526 F.2d 553,
555 (CCPA 1975) (the particular placement of a contact in a conductivity
measuring device was held to be an obvious matter of design choice).
e. Conclusion Regarding Claims 1–4, 8, and 18
For the foregoing reasons, we sustain the rejection of claims 1–4, 8,
and 18 as having been obvious over Holzem, Natterer, Umetsu, and Ishii.
2. Claims 11 and 13–15
In urging for the patentability of independent claim 11 and its
dependent claims 13–15 over Holzem, Natterer, Umetsu, and Ishii,
Appellant relies solely on arguments already considered above in connection
with claim 1. See Appeal Br. 8–18, 20–21. For the reasons provided above,
we sustain the rejection of claims 11 and 13–15 as having been obvious over
Holzem, Natterer, Umetsu, and Ishii.
3. Claim 16
Claim 16 recites a method for operating a thermo-forming packaging
machine, wherein the machine has similar components to those recited in
claim 1 discussed above, and additionally has “a second detection device.”
Appeal Br. 26 (Claims App.); id. at 25 (parent claims 11 and 14). Claim 16
recites that the method includes “positioning said second forming station
along a direction of transport of said top film by said controller in
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dependence of the detected position of said marking of said base film by said
second detection device.” Id. at 26.
Concerning the second detection device, the Examiner cites a print
mark detector being placed after Holzem’s first forming station 2, based on
the combination of Holzem, Natterer, and Ishii, substantially as already
discussed above in connection with claim 1. See Final Act. 8 & 20 (obvious
to have “a print mark sensor before and after each of the stations” in
Holzem), 10–11 (claim 11), 12 (claim 14), 13 (claim 16). The Examiner
concludes it would have been obvious to use this second detector (which
detects print marks on Holzem’s base film 9) to control the position of
Holzem’s second forming station 15 (which forms lids 14ʹ in top film 14).
Id. at 13; Ans. 9–10.
Appellant’s opposition rests largely on arguments we have already
considered and rejected above, and additionally asserts that “none of the
reference[s] teach or suggest moving a workstation for [a top] film based
upon the measurement of markings on a [bottom] film,” as recited in
claim 16. Appeal Br. 18–19; Reply Br. 7–8.
Upon review of the foregoing, we do not discern error in the
Examiner’s rejection of claim 16. As discussed at length above in
connection with claim 1, the underlying basis for obviousness here is to
ensure proper alignment between Holzem’s top film 14 and base film 9
within sealing station 3, so that lids 14ʹ are aligned with trays 13 to form
packages 8. Holzem, Fig. 1. In that context, it makes sense to adjust how
lids 14ʹ are formed in top film 14 by re-positioning second forming
station 15 based on the detected position of base film 9, to achieve the
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desired alignment. Therefore, we sustain the rejection of claim 16 as having
been obvious over Holzem, Natterer, Umetsu, and Ishii.
4. Claim 17
Claim 17 depends from claim 1, and adds “a cutting station disposed
downstream of said sealing station, said cutting station for separating one or
more individual packages from said base film.” Appeal Br. 26 (Claims
App.).
The Examiner cites Holzem as disclosing cutting stations 5 and 6
downstream of sealing station 3, for separating individual packages 8 from
base film 9. Final Act. 13–14, 22 (citing Holzem, Fig. 1, ¶ 27).
Appellant objects that “Ishii teaches that all of its sensors are disposed
after the X-ray film sections are cut from the roll,” so “[t]he teachings of
Ishii are incompatible with” the arrangement recited in claim 17, which
requires detection devices disposed upstream of the cutting station. Appeal
Br. 19 (emphases added).
Appellant’s rebuttal is not persuasive. As discussed at length above,
the combination of Holzem, Natterer, Umetsu, and Ishii leads to a detection
device being disposed in or on Holzem’s sealing station 3, as recited in
claim 1. Appellant does not cite, and we do not discern, any disclosure in
Ishii that is incompatible with maintaining Holzem’s placement of cutting
stations 5 and 6 downstream of sealing station 3. It is true that Ishii’s first
processing step is to cut film taken off roll 26 into individual sheets at
cutting station 20A. See Ishii, Fig. 2, 4:58–64. However, this does not teach
away from other cutting station configurations, such as Holzem’s cutting
station configuration. Therefore, we sustain the rejection of claim 17 as
having been obvious over Holzem, Natterer, Umetsu, and Ishii.
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5. Claim 19
Claim 19 depends from claim 1, and adds “said marking is associated
with one or more trays disposed in the sealing station,” and “locat[ing] said
one or more trays in an exact target position in the sealing station.” Appeal
Br. 26 (Claims App.).5
The Examiner’s rejection of claim 19 is substantially the same as the
rejection of claim 1, discussed above. See Final Act. 14–15, 22–24.
Appellant objects that “Holzem, Natterer and Ishii alone or in
combination fail to teach or suggest the thermo-forming packaging machine
of claim 1 that also includes” the limitations of claim 19, which Appellant
simply quotes without further explanation. Appeal Br. 19–20; Reply Br. 8
(same, but underlining selected portions of claim 19).
Appellant’s argument does no more than “merely point[] out what a
claim recites,” which under our Rules “will not be considered an argument
for separate patentability of the claim.” 37 C.F.R. § 41.37(c)(1)(iv) (2017).
For example, Appellant does not persuasively explain how the combination
of prior art references, as discussed in detail above, might not lead to the
subject matter added by claim 19 to claim 1. Therefore, for the reasons
provided above in connection with claim 1, we sustain the rejection of
claim 19 as having been obvious over Holzem, Natterer, Umetsu, and Ishii.

5 Claim 19 as reproduced in the Appeal Brief Claims Appendix does not
accurately reflect the claim, as most recently amended in an after-final
amendment entered by the Examiner. See Amendment (dated Nov. 18,
2017) 7; Advisory Act. (entering Amendment).
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B. Obviousness over Holzem, Natterer, Umetsu, Ishii, and
Either Prena, Send, or Bening
(Claims 5–7, 9, 10, and 12)
In urging for the patentability of dependent claims 5–7, 9, 10, and 12,
Appellant relies solely on arguments already considered above in connection
with independent claims 1 and 11. See Appeal Br. 20. For the reasons
provided above, we sustain the various rejections of claims 5–7, 9, 10,
and 12 as having been obvious over Holzem, Natterer, Umetsu, Ishii, and
either Prena, Send, or Bening.
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C.
§
References Affirmed Reversed
1–4, 8, 11,
13–19
103 Holzem, Natterer,
Umetsu, Ishii
1–4, 8, 11,
13–19

5–7 103 Holzem, Natterer,
Umetsu, Ishii, Prena
5–7
9 103 Holzem, Natterer,
Umetsu, Ishii, Send
9
10, 12 103 Holzem, Natterer,
Umetsu, Ishii, Bening
10, 12
Overall
Outcome
1–19
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED