Ex Parte Anderson et alDownload PDFPatent Trial and Appeal BoardAug 28, 201311467248 (P.T.A.B. Aug. 28, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte BRADLEY J ANDERSON, WILLIAM I. HERRMANN, LEONARD T. SCHROATH, and BRUCE L. JOHNSON ____________________ Appeal 2011-009930 Application 11/467,248 Technology Center 3700 ____________________ Before: PHILLIP J. KAUFFMAN, PATRICK R. SCANLON, and BARRY L. GROSSMAN, Administrative Patent Judges. KAUFFMAN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-009930 Application 11/467,248 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 13, 14, 18, 19, and 48-50.1 We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The Invention Appellants’ claimed invention relates to a media wrapper for use in a printing device. Spec., para. [0004]. Claim 13, reproduced below, is the sole independent claim on appeal: 13. A method of packaging media used in a document producing device comprising: sectioning a packaging wrapper surrounding said media; providing a pull tab for separating said sectioning of said packaging wrapper for detaching a section of said packaging wrapper for exposing a portion of said media, while a second portion of said media remains in a second section of said packaging wrapper; and placing a label on said second section of said packaging wrapper that identifies at least one of a color and type of said media in said packaging wrapper, such that, when said media in said second section of said packaging wrapper is placed in said document producing device, said media is available to said document producing device while said label remains visible to a user of said document producing device to identify said media. Evidence Relied Upon Nakamura US 6,546,210 B1 Apr. 8, 2003 Fujiwara ‘317 Prenn Fujiwara US 2003/0164317 A1 WO 01/81093 A2 WO 01/89957 A1 Sep. 4, 2003 Nov. 1, 2001 Nov. 29, 2001 1 Appellants state that they reserve the right to respond to the restriction/election of claims 15-17 and 20, but acknowledge that the matter is not being pursued on appeal. Reply Br. 2-3; see also App. Br. 4. Appeal 2011-009930 Application 11/467,248 3 The Rejections The following rejections are before us on appeal: I. Claims 13, 14, 18, and 19 under 35 U.S.C. § 102(b) as anticipated by Prenn. II. Claims 48-50 under 35 U.S.C. § 103(a) as unpatentable over Prenn. III. Claims 13, 14, 18, 19, and 48-50 under 35 U.S.C. § 103(a) as unpatentable over Fujiwara and Nakamura. OPINION Claim Construction The Examiner determined that claim 13 does not call for the step of placing the packaging media into a document producing device, and does not specify the structure of the document producing device. Ans. 10. The Examiner interprets that the language following the claimed phrase “such that” is merely a statement of the intended result of the placing step. Ans. 10. According to the Examiner, in this context, “such that” should be interpreted like a “whereby” clause that merely expresses an intended result of a process step positively recited. Ans. 11. The Examiner is correct that claim 13 does not call for the step of placing the packaging media into a document producing device, nor specify the structure of the document producing device. However, as Appellants correctly point out, claim 13 is directed to a method of packaging media used in a document producing device, not a method of utilizing packaging media in a document producing device. See Reply Br. 5. We also agree with the Examiner that a “whereby clause in a method claim is not given weight when it simply expresses the intended result of a Appeal 2011-009930 Application 11/467,248 4 process step positively recited.” See Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003). However, the language following “such that” in claim 13 does not merely state an intended result of the limitations of the claimed process; rather, it ties the claim together. Claim 13 calls for placing the label on the second section of the packing wrapper in a specific manner, namely, it must be placed such that when media contained in the second section of the packaging wrapper is placed in a document producing device so that the media is available to the document producing device, the label remains visible to a user of that document producing device to identify the media. In other words, claim 13 calls for the step of placing the label so that it is capable of the claimed function (being visible to a user of the document printing device to identify the media) when positioned as claimed (so that the media is available to the document producing device). I. Anticipation by Prenn The Examiner’s finding that Prenn discloses placing a label (bar code 63) as claimed is incorrect. See Ans. 4. Prenn’s label (bar code 63) is placed on the packaging wrapper (print media package 15) so that sensor 81 of print media tray 11 may read it. App. Br. 11-12; Prenn, p. 7, l. 27 - p. 8, l. 17; figs. 1, 3A, 3B. When so positioned, the media is available to the document producing device; however, the label (bar code 63) is inside laser printer 10 and is not visible to a user of the document producing device. The Examiner’s alternative finding that Prenn discloses that the marking “MULTIPURPOSE PAPER” may be placed anywhere on the wrapper and would be visible to a user of the packaged media is also incorrect. See Appeal 2011-009930 Application 11/467,248 5 Ans. 11-12. First, this finding does not properly address the limitation at issue, which requires that the label be visible to a user of the document printing device to identify the media when positioned so that the media is available to the document producing device. Second, as Appellants correctly point out, Prenn does not disclose that the label “MULTIPURPOSE PAPER” can appear anywhere on the packaging wrapper. Reply Br. 7. Rather, Prenn discloses that the print media packaging is not limited to paper and may contain any type of print media. Prenn, p. 7, ll. 8-11. As such, we do not sustain the rejection of independent claim 13 and its dependent claims 14, 18, and 19. II. Obviousness over Prenn Claims 48-50 contain the step of placing the label by virtue of their dependence from independent claim 13. The Examiner relies upon the same erroneous claim construction and findings analyzed with regard to claim 13, supra. See Ans. 5-6. As such, we do not sustain the rejection of claims 48- 50. III. Obviousness over Fujiwara and Nakamura Relying upon the same erroneous claim construction, the Examiner found that Nakamura discloses the step of placing a label (second cut sheet information 57b) as claimed. Ans. 6-9, 12; Nakamura, col. 13, l. 17. However, as Appellants correctly point out, bar code reader 46 is located within the document producing device (printer) and therefore, Nakamura’s label (second cut sheet information 57a) cannot be placed so that it is visible Appeal 2011-009930 Application 11/467,248 6 to a user when the media is available to the document producing device as claimed. Reply Br. 10; Nakamura, col. 9, ll. 27-30; col. 9, l. 53 - col. 10, l. 5; col. 13, l. 17; figs. 3, 10. DECISION We reverse the Examiner’s decision to reject claims 13, 14, 18, 19, and 48-50. REVERSED hh Copy with citationCopy as parenthetical citation