Ex parte BAETLEIN

Board of Patent Appeals and Interferences

Sep 18, 1998

08538414 - (D) (B.P.A.I. Sep. 18, 1998)

Application for patent filed October 2, 1995.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 8
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte LEE A. BAETLEIN

_____________
Appeal No. 98-0009
Application No. 08/538,4141
______________
ON BRIEF
_______________
Before MEISTER, ABRAMS and CRAWFORD Administrative Patent
Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 1-6, which constitute all of the
Appeal No. 98-0009
Application No. 08/538,414
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claims of record in this application.
The appellant’s invention is directed to a declipper
assembly for removing a clip from the end of a sausage
package. The subject matter on appeal is illustrated by
reference to claim 1, which reads as follows:
A declipper assembly for removing a clip from the end of
a sausage package which is adaptable to a universal power
head, said assembly comprising a pair of plates pivotally
mounted in a parallel spaced relation on the power head and an
end plate having a curved cutting edge interconnecting the
ends of the plates and a cutter blade mounted on the power
head for pivotal motion between said plates, said cutter blade
having a cutting edge which matingly engages the cutting edge
on the end plate to cut the clip from the end of the package.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Hoffman 4,214,492 Jul. 29,
1980
LaBounty 4,558,515 Dec. 17,
1985
THE REJECTIONS
Claims 1-6 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Hoffman in view of LaBounty.
Appeal No. 98-0009
Application No. 08/538,414
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Claims 1-6 also stand rejected under 35 U.S.C. § 103 as
being unpatentable over LaBounty.
The rejections are explained in the Examiner's Answer.
The appellant’s arguments are set forth in the Brief.
OPINION
We have evaluated the rejection on the basis of the
following guidelines provided by our reviewing court: The
examiner bears the initial burden of presenting a prima facie
case of obviousness (see In re Rijckaert, 9 F.3d 1531, 1532,
28 USPQ2d 1955, 1956 (Fed. Cir. 1993)), which is established
when the teachings of the prior art itself would appear to
have suggested the claimed subject matter to one of ordinary
skill in the art (see In re Bell, 991 F.2d 781, 783, 26 USPQ2d
1529, 1531 (Fed. Cir. 1993)). This is not to say, however,
that the claimed invention must expressly be suggested in any
one or all of the references, rather, the test for obviousness
is what the combined teachings of the references would have
suggested to one of ordinary skill in the art (see Cable
Electric Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 1025,
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Application No. 08/538,414
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226 USPQ 881, 886-87 (Fed. Cir. 1985)), considering that a
conclusion of obviousness may be made from common knowledge
and common sense of the person of ordinary skill in the art
without any specific hint or suggestion in a particular
reference (see In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545,
549 (CCPA 1969)), with skill being presumed on the part of the
artisan, rather than the lack thereof (see In re Sovish, 769
F.2d 738, 742, 226 USPQ 771, 774 (Fed. Cir. 1985)). Insofar
as the references themselves are concerned, we are bound to
consider the disclosure of each for what it fairly teaches one
of ordinary skill in the art, including not only the specific
teachings, but also the inferences which one of ordinary skill
in the art would reasonably have been expected to draw
therefrom (see In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510
(CCPA 1966) and In re Preda, 401 F.2d 825, 826, 159 USPQ 342,
344 (CCPA 1968)).
The Rejection On The Basis Of Hoffman And LaBounty
The declipper assembly set forth in claim 1 requires a
pair of plates pivotally mounted in parallel spaced relation,
and an end plate having a curved cutting edge connecting the
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Application No. 08/538,414
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two. A cutter blade pivotally mounted between the two plates
has a cutting edge “which matingly engages the cutting edge of
the end plate.”
Hoffman, the primary reference, discloses a declipping
system in which two pairs of scissors-type pivotal blades
coincidentally cut the end rings from the facing ends of two
adjacent sausage packages. While the two sets of blades are
parallel to each other, they are not connected by end plates,
much less having a curved cutting edge carried by end plates.
Whereas in the claimed system the package is cut with a blade
positioned on the end of the two blades, where they are
joined, in Hoffman the package is cut by a conventional
scissors technique. This can be appreciated by comparing
Figure 5 of the application with Figure 1 of Hoffman. Hoffman
therefore lacks a showing of the claimed end plate
interconnecting the ends of the parallel plates, the curved
cutting edge on the end plate, and the cutter blade mounted
for pivotal motion between the plates.
LaBounty is directed to an apparatus for attachment to
the end of a backhoe or the like, its purpose being to grapple
rubble and debris such as fallen trees on a construction site,
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Application No. 08/538,414
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and to cut these members into shorter lengths. Nonetheless,
the structure of its cutter has much in common with the
appellant’s device. In the embodiment of Figures 7 and 9,
LaBounty discloses a pair of plates (127 & 128) pivotally
mounted in parallel spaced relation and attached together by
an end plate (130). Another plate (114) is pivotally mounted
for movement in the space between the two parallel plates.
However, unlike the claimed invention, there is no cutting
edge on end plate 130 or on plate 114, and therefore there is
no cutting edge on the end of plate 114 to “matingly engage”
the cutting edge of end plate 130, as is required by claim 1.
This is clear from the description of the LaBounty invention,
and is graphically illustrated in Figures 9 and 11. In
LaBounty, all of the cutting edges are located on the sides of
the various plates, and thus the LaBounty apparatus cuts in
the same fashion as a conventional pair of scissors.
Therefore, even if one were to concede, arguendo, that it
would have been obvious to combine the teachings of the two
references, the result would not have been the claimed
structure. From our perspective, however, one of ordinary
skill in the art would not have been motivated to combine the
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Application No. 08/538,414
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teachings of the two references in the first place. First,
basic to the Hoffman system is the initial lateral movement
apart of the two sets of blades (Figures 4-6), which would be
destroyed if the ends of the blades were to be attached
together. Thus, to convert to the LaBounty system would
destroy the Hoffman invention. Second, considering that
LaBounty does not teach cutting with the end plate that
connects the two parallel plates, there would be no purpose in
providing a pair of scissor blades attached together to cut
out each of the package end clips, in place of the single pair
of blades disclosed by Hoffman.
For the above-stated reasons, it is our conclusion that
the combined teachings of Hoffman and LaBounty fail to
establish a prima facie case of obviousness with regard to the
subject matter
recited in claim 1, and therefore we will not sustain this
rejection of claims 1-3.
Claim 4 is broader than claim 1, in that it does not
require that the ends of the parallel plates be attached
together by an end plate upon which a cutting edge is mounted.
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However, it is our view that this combination of references
fails here, too, because of the lack of suggestion for the
artisan to combine their teachings in the manner proposed by
the examiner, for the reasons explained above with regard to
claim 1.
We therefore also will not sustain this rejection of
claims 4-6.
The Rejection On The Basis Of LaBounty
As we explained above, LaBounty fails to disclose an end
plate having a curved cutting edge which is matingly engaged
by the cutter blade that passes between the spaced parallel
plates. For this reason the teachings of LaBounty, here
considered alone, fail to establish a prima facie case of
obviousness with regard to the subject matter recited in claim
1.
This rejection of claims 1-3 therefore cannot be
sustained.
We reach a different conclusion, however, with regard to
this rejection of independent claim 4. The preamble of this
claim states that it is directed to a “declipper assembly for
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Application No. 08/538,414
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removing a clip from the end of a sausage package,” and we
begin our analysis by pointing out that generally a preamble
does not limit the scope of a claim if it merely states the
invention’s purpose or intended use. See In re Paulsen, 30
F.3d 1475, 31 USPQ2d 1671 (Fed. Cir. 1994). Where the
limitations following the preamble set forth a description of
structure which is self-contained and does not depend upon the
language of the preamble for completeness, as we believe to be
the case here, the preambular recitations do not constitute
limitations of the claims. See Kropa v. Robie, 187 F.2d 150,
88 USPQ 478 (CCPA 1951). The purpose of the LaBounty device
is cutting, which is the same purpose as that of the device
which is described in claim 4, and we do not believe that the
LaBounty device would undergo a metamorphosis to a new
apparatus by simply affixing a new named use to it. See Ex
parte Masham, 2 USPQ2d 1647 (BPAI 1987). It therefore is our
conclusion that the recitation of “removing a clip from the
end of a sausage package” in the preamble of claim 4 is merely
a statement of intended use which may not be relied upon to
distinguish structure from the prior art. See, for example,
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In re Pearson, 494 F.2d 1399, 181 USPQ 641 (CCPA 1974).
It is important to focus upon the fact that, unlike claim
1, claim 4 does not require the cutting edge to be on the
spacer which supports the plates in parallel spaced relation.
Claim 4 merely recites “a cutter blade pivotally mounted in
the space between the blades,” and such an arrangement is
taught by LaBounty. Cutter blades 122 and 123 are carried by
a pivotal upper plate 121 and, as can be seen in Figures 7-9,
the cutting edges lie in the space between the lower plates.
It therefore is our opinion that LaBounty establishes a
prima facie case of obviousness with regard to the subject
matter of claim 4, and we will sustain this rejection. In
view of the appellant’s decision to group claims 5 and 6 with
claim 4 (Brief, page 4), this rejection of those two claims
also is sustained.
We have, of course, carefully considered all of the
appellant’s arguments, as they may apply to the rejection
which we have sustained. However, we are not convinced that,
as to this rejection, the examiner’s decision was in error.
Appeal No. 98-0009
Application No. 08/538,414
The test for analogous art is first whether the art is2
within the field of the inventor's endeavor and, if not,
whether it is reasonably pertinent to the problem with which
the inventor was involved. See In re Wood, 599 F.2d 1032, 202
USPQ 171 (CCPA 1979). A reference is reasonably pertinent if,
even though it may be in a different field of endeavor, it
logically would have commended itself to an inventor's
attention in considering his problem because of the matter
with which it deals. See In re Clay, 966 F.2d 656, 659, 23
USPQ2d 1058, 1061 (Fed. Cir. 1992).
11
Our position with respect to the various arguments should be
apparent. LaBounty is not from nonanalogous art because, in
our view, it is related to cutting with power operated
oppositely pivoting elements, one of which moves between a
spaced pair of the others in scissor-like motion, and
therefore logically would have commended itself to the
inventor’s attention. The rejection we have sustained is not2
based upon hindsight reasoning, in that all of the structure
recited in claim 4 is found in LaBounty, as we have pointed
out.
SUMMARY
The rejection of claims 1-6 as being unpatentable over
Hoffman in view of LaBounty is not sustained.
The rejection of claims 1-3 as being unpatentable over
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Application No. 08/538,414
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LaBounty is not sustained.
The rejection of claims 4-6 as being unpatentable over
LaBounty is sustained.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
NEAL E. ABRAMS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Appeal No. 98-0009
Application No. 08/538,414
13
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
jlb
Appeal No. 98-0009
Application No. 08/538,414
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