Ex Parte 6093139 et al

Board of Patent Appeals and Interferences

Jul 5, 2007

90007260 (B.P.A.I. Jul. 5, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROGER R. BELANGER
____________

Appeal 2007-1422
Reexamination Control 90/007, 260
Patent 6,093,139
Technology Center 3700
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Decided: July 5, 2007
____________

Before TEDDY S. GRON, JAMESON LEE, and
ROMULO H. DELMENDO, Administrative Patent Judges.

GRON, Administrative Patent Judge.

DECISION ON APPEAL
INTRODUCTION
This is a decision on appeal under 35 U.S.C. § 134 from an
Examiner’s final rejection of Claims 1-21 in Reexamination 90/007,260 of
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Reexamination Control 90/007,260
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U.S. Patent 6,093,139, issued July 25, 20001. All claims stand finally
rejected under 35 U.S.C. § 103(a) in view of the combined teachings of
Sheldon, U.S. Patent 953,063, issued March 29, 1910, and Stab, U.S. Patent
5,484,379, issued January 16, 1996.
Appellant argues the claims in five separate groups: (I) Claims 1, 8-9,
and 11-17, (II) Claims 2 and 18-21, (III) Claims 3-7, (IV) Claim 5, and (V)
Claim 10. According to 37 C.F.R. § 41.37(c)(1)(vii) (2006):
When multiple claims subject to the same ground of rejection are
argued as a group by appellant, the Board may select a single claim
from the group of claims that are argued together to decide the appeal
with respect to the group of claims as to the ground of rejection on the
basis of the selected claim alone. Notwithstanding any other
provision of this paragraph, the failure of appellant to separately argue
claims which appellant has grouped together shall constitute a waiver
of any argument that the Board must consider the patentability of any
grouped claim separately.

In this case, we choose Claim 1 as representative of Group I, Claim 2 as
representative of Group II, and Claim 3 as representative of Group III.
Thus, all claims stand or fall with Claims 1, 2, 3, 5, and 10 of their
respective groups.

1 Application 09/013,930, filed January 27, 1998.
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DISCUSSION
Scope of the Claims
A rejection under 35 U.S.C. § 103 should not be based upon
speculation and assumptions as to the scope of the claims. In re Steele,
305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962). Accordingly, we
determine first the scope and content of the claimed subject matter.
In a reexamination proceeding, claims should be given the broadest
reasonable interpretation consistent with the specification. In re Yamamoto,
740 F.2d 1569, 1571, 222 USPQ 934, 936 (Fed. Cir. 1985). “The reason is
simply that during patent prosecution when claims can be amended,
ambiguities should be recognized, scope and breadth of language explored,
and clarification imposed.” In re Zletz, 893 F.2d 319, 321, 13 USPQ2d
1320, 1322 (Fed. Cir. 1989). “An essential purpose during patent
examination is to fashion claims that are precise, clear, correct, and
unambiguous.” Id. “Only in this way can uncertainties of claim scope be
removed, as much as possible, during the administrative process.” Id.
Claim 1 reads (Appendix A to the Brief; emphasis added):
1. Product cutting device for flat material comprising:
a pinless product folding cylinder rotating about an axis of
rotation and having a surface supporting an incoming material;
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Patent 6,093,139

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a cutting cylinder cooperating with said product folding
cylinder and having knife assemblies mounted thereon; and
at least one cyclically engageable product seizing element
assigned to at least one of said product folding cylinder and said
cutting cylinder, and being moveable opposite to a sense of rotation of
said product folding cylinder for engaging a next product’s front
portion after a cutting operation.

In order to determine the scope of the claimed subject matter, it is first
necessary to interpret the meaning of several phrases, specifically “product
folding cylinder,” “cooperating with said product folding cylinder,” “knife
assemblies,” “moveable opposite to a sense of rotation,” and “next product’s
front portion.” The meanings of these phrases must be understood in order
to compare the subject matter of Claim 1 to the prior art disclosures of
Sheldon and Stab.
First, we consider the phrases “product folding cylinder” and
“cooperating with said product folding cylinder.” Applicant’s specification
describes a product folding cylinder as a cylinder that performs a folding
function in cooperation with a tucking blade and two fold rollers (Belanger,
col. 3, ll. 24-31). Interpreted in light of the specification then, Applicant’s
product folding cylinder is part of a folding assembly which comprises a
cylinder. Thus, any cylinder which cooperates with another part of a
product folding assembly is a “product folding cylinder.”
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Second, the term “knife assemblies” needs interpretation. Appellant
argues that the term requires a plurality of knives (Br. p.7). In contrast, the
Examiner concludes that, given the broader reasonable interpretation, “[t]he
claimed limitation merely requires knife assemblies,” or multiple
components which comprise one or more knives (Answer 4-5).
Applicant’s specification supports the Examiner’s broad
interpretation. Applicant’s specification states that “on the cutting cylinder 5
rotating about axis 11, knife assemblies 6 are arranged, each including
cheekwoods 7 and a sponge pad 8” (Belanger, col. 3, ll. 14-16). Appellant
has not shown that the Examiner erred concluding that, given the broadest
reasonable interpretation consistent with Applicant’s specification, the term
“knife assemblies” means one or more knives, each with multiple parts.
Third, we define the phrase “opposite to a sense of rotation.”
Applicant’s specification is silent as to any specific definition of this phrase,
so it must be given the broadest reasonable interpretation. Thus, any
clockwise motion is opposite to the sense of rotation of a counterclockwise
element. Likewise, any counterclockwise motion is opposite to the sense of
rotation of a clockwise element.
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Finally, we consider the phrase “next product’s front portion.”
Applicant’s specification does not define a “next product’s front portion,” so
this phrase must be given the broadest reasonable interpretation consistent
with the Specification. Appellant argues that “the edge gripped by [the prior
art] is not ‘a next product’s front portion after a cutting operation’ – it is a
prior product’s front portion” (Br. p. 9). However, there is no language in
Applicant’s claims or specification that requires this distinction. Thus,
under a broad interpretation, this phrase encompasses any front portion of
any next product.
Prior Art
With the terms defined, we can compare the claimed subject matter to
the prior art. Claim 1 first requires “a pinless product folding cylinder
rotating about an axis of rotation and having a surface supporting an
incoming material” (Appendix A to the Br.). Sheldon does not disclose a
product folding cylinder. Stab discloses a folder assembly, which includes a
collection cylinder 1 cooperating with a folding cylinder 26 (Stab, col. 3, ll.
10-19). As stated earlier, Applicant’s product folding cylinder cooperates
with a tucking blade and two fold rollers as a folding assembly (Belanger,
col. 3, ll. 24-31). Therefore, it is reasonable to assume that either of the
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cylinders cooperating with each other in Stab’s folding assembly, the
collection cylinder 1 or the folding cylinder 26, is a “product folding
cylinder” of Applicant’s claims.
Claim 1 then requires “a cutting cylinder cooperating with said
product folding cylinder and having knife assemblies mounted thereon”
(Appendix A to the Br.). Under the broadest reasonable definition of “knife
assemblies,” Sheldon discloses a cutting cylinder 11 “provided with a
moveable knife 14 fast on a knife carrying bar 15, this bar being arranged to
slide in a socket 16 in the cylinder” (Sheldon, p. 2, ll. 68-71). Thus,
Sheldon’s cutting cylinder contains multiple components which are “knife
assemblies.” Additionally, Stab discloses a cutting blade cylinder 2, with
two “diametrically opposed cutting knives or blades,” that works in
conjunction with the collection cylinder (Stab, col. 3, ll. 20-32).
Finally, Claim 1 requires “at least one cyclically engageable product
seizing element assigned to at least one of said product folding cylinder and
said cutting cylinder, and being moveable opposite to a sense of rotation of
said product folding cylinder for engaging a next product’s front portion
after a cutting operation” (Appendix A to the Br.). Stab discloses grippers 5
(the seizing elements) located on the collection cylinder 1 (a product folding
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cylinder) that are moveable opposite to the collection cylinder’s rotation
under the broadest reasonable definition of “opposite to a sense of rotation”
(Stab, col. 3, ll. 26-30). These grippers “[grip] a leading edge of [the]
leading portion of [the] paper web,” which encompasses the “next product’s
front portion” (Stab, col. 5, ll. 14-15).
Claim 2 reads (Appendix A to the Brief):
Product cutting device of claim 1, wherein said surface of the product
folding cylinder supporting the incoming material is a surface
supporting an incoming web of material, and wherein said product
seizing element is arranged on said product folding cylinder.

Stab discloses a collection cylinder with seizing elements and a
surface that supports the incoming web of material (Stab, col. 5, ll. 11-16).
We interpreted Applicant’s claimed “product folding cylinder” to encompass
either Stab’s collection cylinder or folding cylinder.
Claim 3 reads (Appendix A to the Brief):
Product cutting device according to claim 1, wherein said product
seizing element is arranged as a hold down device on said cutting
cylinder.

The Examiner cites Sheldon’s hold down member 42, located on
cutting cylinder 11, as this seizing element (Answer 6-7). Appellant argues
that “bar 42 is not ‘moveable opposite to a sense of rotation of [the] product
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folding cylinder’ as required by claim 3 … through [its] dependency on
claim 1” (Appeal Br. p. 12).
Under the broad definition of “opposite to a sense of rotation” as
defined earlier, Sheldon’s hold down member 42 satisfies Claim 3. Hold
down member 42 is located on cutting cylinder 11, and it moves in a
counterclockwise direction with the cutting cylinder. This movement is
opposite the rotation of the collection cylinder (a product folding cylinder),
which is shown to move in a clockwise direction.
Furthermore, Sheldon’s grippers 12 read on the product seizing
element of Claim 3. These grippers are located on the cutting cylinder 11
and are arranged as a hold down device. These grippers would operate
opposite to the sense of the rotation of the folding cylinder portion of Stab’s
folder assembly when utilized in Sheldon’s system. The “product folding
cylinder” of Applicant’s claims reads on either Stab’s collection cylinder 1
or folding cylinder 26.

Claim 5 reads (Appendix A to the Brief):
Product cutting device according to claim 3, wherein said hold down
device is actuated by a cam.

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Sheldon’s specification states that “[v]arious mechanisms may be
provided for opening the grippers 12 in order to release the sheet. In the
particular construction illustrated, the cam 68 is provided with an elevation
97 which elevation is met by the roll 70 just as the grippers are to be
opened” (Sheldon, p. 5, ll. 46-52; emphasis added). Thus, Sheldon’s
grippers 12 satisfy Claim 5.
Claim 10 reads (Appendix A to the Brief):
Product cutting device according to claim 1, wherein said product
seizing element is actuated by a spring arrangement.

Sheldon discloses that “bar 42 … is supported on springs 44 in its
box” (Sheldon, p. 3, ll. 104-106; emphasis added). Furthermore, Sheldon
discloses that, in regards to the grippers 12, “ordinary spring rod
constructions are employed in connection with shafts 13 and 65 to cause the
rolls 67 and 70 to follow the configuration of the cams” (Sheldon, p. 5, ll.
58-62; emphasis added). Thus, both Sheldon’s hold down member 42 and
grippers 12 satisfy the further limitation of Claim 10.

Obviousness
“Section 103 forbids issuance of a patent when the differences
between the subject matter sought to be patented and the prior art are such
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that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which
[the] subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1734, 82 USPQ2d 1385, 1391 (2007). “If a person of ordinary skill in the
art can implement a predictable variation, and would likely see the benefits
of doing so, § 103 likely bars its patentability.” Id at 1731, 82 USPQ2d at
1396. Moreover, “if a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its
actual application is beyond that person’s skill.” Id.
Sheldon discloses a printing press that contains all the elements of the
invention Applicant claims, with the exception of the product folding
cylinder. Stab discloses a “folder assembly for a printing press” (Stab, col.
1, ll. 5-6; emphasis added). Stab’s collection cylinder contains seizing
elements that operate in the manner of the seizing elements on Applicant’s
product folding cylinder. It would have been obvious to one of ordinary
skill in the art, at the time Applicant’s invention was made, to combine
Stab’s folding assembly with, and adapt it to, Sheldon’s printing apparatus.
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Appellant argues that elements of Stab’s structures may not be
physically incorporated into Sheldon’s printing machine (Appeal Br.10-11).
This argument does not rebut the obviousness of the combination. “The test
for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference … [r]ather,
the test 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, 208 USPQ 871, 881 (CCPA 1981). “Common sense teaches … that
familiar items may have obvious uses beyond their primary purposes, and in
many cases a person of ordinary skill will be able to fit the teachings of
multiple patents together like pieces of a puzzle.” KSR Int’l Co. v. Teleflex
Inc., 127 S.Ct. at 1742, 82 USPQ2d at 1397. “[W]hen a patent claims a
structure already known in the prior art that is altered by mere substitution of
one element for another known in the field, the combination must do more
than yield a predictable result.” Id at 1740, 82 USPQ2d at 1395.
CONCLUSION
Having considered all the evidence of record for and against the
patentability of Claims 1-21 of U.S. Patent 6,093,139 under 35 U.S.C. §
103(a), we affirm the appealed final rejections.
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ORDER
Upon consideration of the appeal, and for the reasons given, it is
ORDERED that the decision of the Examiner rejecting Claims
1-21 of U.S. Patent 6,093,139 under 35 U.S.C. § 103(a) is affirmed; and
FURTHER ORDERED that the time for taking future action in
this appeal cannot be extended under 37 CFR § 1.136(a)(2006).

AFFIRMED

LEE, Administrative Patent Judge, concurs in the result only.

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smt

Cary S. Kappel, Esq.
DAVIDSON, DAVIDSON & KAPPEL, LLC
485 Seventh Avenue, 14th Floor
New York, NY 10018
Tel: (212) 736-1940
Fax: (212) 736-2427

Third Party Requester

Douglas R. Hanscom, Esq.
JONES, TULLAR & COOPER, P.C.
P.O. Box 2266 Eads Station
Arlington, VA 22202