Ex Parte Cohn

Board of Patent Appeals and Interferences

Sep 14, 2009

11216571 (B.P.A.I. Sep. 14, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT COHN
____________

Appeal 2009-001557
Application 11/216,571
Technology Center 3700
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Decided: September 14, 2009
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Before LINDA E. HORNER, STEVEN D.A. McCARTHY, and
STEFAN STAICOVICI, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Robert Cohn (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s final decision rejecting claims 1 and 2. Claim 3 was
withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).
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SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
The Appellant’s claimed invention is rotary cutter assembly for
continuously cutting a web of material to predetermined lengths with cut
lines essentially perpendicular to the feed direction of the web. Spec. 1:1-4.
Claim 1, reproduced below, is representative of the subject matter on appeal.
1. A rotary cutter for cutting a continuous web,
which comprises:
a frame member,
a rotatable round knife rotor having a
straight cutting blade affixed thereon, for rotation
with said knife rotor, said rotatable round knife
rotor possessing a first longitudinal axis,
a stationary round bar possessing a second
longitudinal axis and mounted in said frame for
contact with said cutting blade to cut said web
positioned between said stationary round bar and
said cutting blade,
a motor having a motor shaft coupled to said
knife rotor for rotating said blade,
wherein the middle point of said cutting
blade is on a plane which is perpendicular to said
first longitudinal axis and intersects said first
longitudinal axis at the middle point of said first
longitudinal axis, dividing the cutting blade into
two geometric halves of equal length,
wherein the middle point of said second
longitudinal axis is also on said plane,
wherein said cutting blade is at a first acute
angle to said first longitudinal axis and said second
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longitudinal axis is at a second acute angle to said
first longitudinal axis, and
wherein said first acute angle and said
second acute angle are on opposite sides of said
first longitudinal axis.

THE EVIDENCE
The Examiner relies upon the following evidence:
Schmermund US 3,203,292 Aug. 31, 1965
Corse US 4,119,003 Oct. 10, 1978

THE REJECTION
The Appellant seeks review of the Examiner’s rejection of claims 1
and 2 under 35 U.S.C. § 103(a) as unpatentable over Schmermund and
Corse.1

ISSUES
The Examiner concluded claims 1 and 2 are unpatentable over
Schmermund and Corse. This conclusion is based in part on the finding that
Schmermund discloses a knife rotor (cutter roller 21). Ans. 3 (parenthetical
nomenclature to Schmermund). The Appellant contends the claimed
“round” knife rotor must be cylindrical, and that Schmermund’s cutter

1 The Appellant discusses (see, e.g., Reply Br. 3) a proposed amendment to
claim 1 filed on April 23, 2007, that was denied entry by an Office Action
dated May 18, 2007. The issue of the Examiner’s denial of entry of the
proposed amendment is not properly before us, and we evaluate the rejection
based on the claims as submitted with the Appeal Brief dated August 22,
2007.
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roller 21 has a non-cylindrical, hyperboloid shape. App. Br. 2-52; Reply
Br. 2-9. The Examiner acknowledges cutter roller 21 of Schmermund has a
hyperboloid shape, but finds cutter roller 21 is “round” as claimed because a
cross-section taken at any point along the z-axis of cutter roller 21 is
circular. Ans. 5.
The Appellant further contends that the proposed combination does
not teach or suggest the claimed device “because of the geometric
arrangement of the cutter and counter roller of Schmermund.” App. Br. 5.
The Appellant further contends that pinion gear 24 of Corse is not the
claimed motor. App. Br. 6.
The issues before us are:
Has the Appellant demonstrated the Examiner erred in determining
that Schmermund’s cutter roller 21 is “round” as claimed because the claim
requires the rotor to be cylindrical rather than hyperboloid?
Has the Appellant demonstrated the Examiner erred in determining
that the proposed combination teaches or suggests the claimed device due to
the geometric arrangement of the cutter and counter roller of Schmermund?
Has the Appellant demonstrated the Examiner erred in determining
that pinion gear 24 of Corse is the claimed motor?

FINDINGS OF FACT
We find that the following enumerated facts are supported by at least
a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422,

2 The abbreviation “App. Br.” refers to the amended Appeal Brief filed on
October 19, 2007, and not the original Appeal Brief filed on August 22,
2007.
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1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. The Appellant’s Specification does not provide a lexicographic
definition for “round.” Spec. passim.
2. The ordinary and customary meaning of “round” includes “circular
in cross section.” THE AMERICAN HERITAGE DICTIONARY (2d
College ed. 1982) (“round,” adj., entry 2).
3. The Appellant presents no argument or evidence that the
combination of Schmermund and Corse proposed by the Examiner
is beyond the ability of a person of ordinary skill in the art. App.
Br. passim; Reply Br. passim.
4. Corse discloses an apparatus for transversely cutting a web of
material into short lengths, such as tickets. Corse, col. 1, ll. 6-8.
Corse discloses that main drive shaft 12, through a series of gears
and shafts (i.e. pair of bevel pinions 13, shaft 14, pinion 15, pinion
16, transverse shaft 17, pair of bevel pinions 18, vertical shaft 19,
pair of bevel pinions 22), provides rotation of shaft 21, which is
rigidly attached to cutting cylinder 5 and pinion 24. Corse, col. 3,
ll. 22-36, 44-49; figs. 2, 3.
5. The Appellant’s Specification does not provide a lexicographic
definition for “motor.” Spec. passim.
6. The ordinary and customary meaning of “motor” includes
“something, such as a machine or engine, that produces or imparts
motion.” THE AMERICAN HERITAGE DICTIONARY (2d College ed.
1982) (“motor,” n., entry 1).

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PRINCIPLES OF LAW
We determine the scope of the claims in patent applications not solely
on the basis of the claim language, but upon giving claims “their broadest
reasonable interpretation consistent with the specification” and “in light of
the specification as it would be interpreted by one of ordinary skill in the
art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
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 said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)
An Appellant has the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
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indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).

ANALYSIS
Independent claim 1 and its dependent claim 2 are directed to a rotary
cutter including a “round” knife rotor. We must first construe “round” as
used in the claims.
The Appellant’s Specification does not provide a lexicographic
definition of “round” as used in claims 1 and 2 (Fact 1). The Appellant
contends, and we agree, that a common and ordinary meaning of “round” is
“cylindrical.” Reply Br. 2. However, another common and ordinary
meaning of “round” is “circular in cross section” (Fact 2). This is essentially
the definition put forth by the Examiner (i.e. “every cross-section taken
along the z-axis of the hyperboloid is a perfect circle.”). Ans. 5.
The embodiment described in the Appellant’s Specification has a
knife rotor with a cylindrical shape. The Appellant’s Specification describes
the knife rotor as comprised of a main body 16 having “two end shaft pieces
17 with a smaller radius and coaxial with the cylinder of the main body.”
Spec. 6:9-12; figs. 2, 3. Contrasting end shaft pieces 17 to “a” radius of
main body 16, suggests main body 16 has a single radius (i.e. a constant
cross section). The main body 16 of the knife rotor is depicted as having a
constant cross section. Spec, figs. 1, 2, 3, 5.3

3 References to Figures 1, 5, and 6 throughout the Opinion refer to the
replacement drawings submitted November 11, 2006. References to the
remaining figures are to the original drawings submitted September 1, 2005.

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However, we must be careful not to read a particular embodiment
appearing in the written description into the claim, where, as here, the claim
language is broader than the embodiment. See Superguide Corp. v. DirecTV
Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though
understanding the claim language may be aided by the explanations
contained in the written description, it is important not to import into a claim
limitations that are not a part of the claim. For example, a particular
embodiment appearing in the written description may not be read into a
claim when the claim language is broader than the embodiment.”) The
challenge is to interpret claims in view of the specification without
unnecessarily importing limitations from the specification into the claims.
See E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir.
2003).
We must give the term “round” the broadest reasonable interpretation
in light of the Specification, as it would be interpreted by one of ordinary
skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004). A person of ordinary skill in the art, reading claims 1 and 2 in
light of the Appellant’s Specification would interpret “round” to mean
cylindrical, or circular in cross-section. See Bilstad v. Wakalopulos, 386
F.3d 1116, 1122 (Fed. Cir. 2004) (The Board noted that the term “plurality”
had a plurality of dictionary definitions consistent with the disclosure in the
specification and construed the term as used in the claim so as to encompass
all of the dictionary definitions). If the Appellant had wanted to limit the
claim to a cylindrical knife rotor, he could have done so by using
“cylindrical” in place of “round” in the claim language. Appellants always
have the opportunity to amend the claims during prosecution, and broad
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interpretation by the examiner reduces the possibility that the claim, once
issued, will be interpreted more broadly than is justified. In re Prater, 415
F.2d 1393, 1404-05 (CCPA 1969). See In re Bigio, 381 F.3d 1320, 1325
(Fed. Cir. 2004) (“Absent claim language carrying a narrow meaning, the
PTO should only limit the claim based on the specification or prosecution
history when those sources expressly disclaim the broader definition.”).
The Appellant contests this interpretation of the claim by arguing that
a hyperboloid shaped rotor would be inoperable, and thus inconsistent with
the Appellant’s Specification. Reply Br. 7-8. The question then is if the
definition of “round” as including “circular in cross section,” is consistent
with the Specification. Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334
F.3d. 1294, 1300 (Fed. Cir. 2003) (citing Tex. Digital Sys. Inc. v. Telegenix,
Inc., 308 F.3d 1193, 1203 (Fed. Cir. 2002) (“If more than one dictionary
definition is consistent with the use of the words in the intrinsic record, the
claim terms may be construed to encompass all consistent meanings”).
We conclude that the interpretation of “round” as including “circular
in cross-section” is consistent with the Appellant’s Specification because,
contrary to the Appellant’s assertion, a rotor with a circular cross-section,
such as a hyperboloid, could operate as described in the Appellant’s
Specification. The Appellant’s Specification describes that the knife rotor
has a knife 32 with a straight blade affixed in a straight slot 30 provided on
the exterior peripheral surface of main body 16. Spec. 6:17-20; figs. 3, 4a,
4b, 5. The knife 32 makes a shear cut by engaging the outer surface of the
round stationary bar at a single point beginning at point 666 and propagating
to point 888. Spec. 8:12-9:12 (description of operation); figs. 6a-c. While
the knife rotor (circle 301) has a constant radius, knife 32 has a higher
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profile (gives the knife and rotor combination a larger radius, n) at the first
and second ends (666, 888), and a lower profile (distance m) at the mid-
point (point 777) of the blade. Spec. 9:18-10:5; fig. 7. In other words, the
radial height of the knife varies, so that when combined with the knife rotor,
the knife contacts the round bar at a single point at a time to produce a shear
cut. Keeping in mind that the radial height of the knife is not claimed, the
radial height of the knife could vary to compliment a hyperboloid rotor in a
similar manner to the Appellant’s embodiment of a cylindrical rotor. The
hyperboloid rotor and knife could then operate to produce a shear cut in the
same manners as the cylindrical rotor embodiment.
Regarding the Appellant’s geometric arrangement argument, the
Examiner explains in detail the geometric arrangement of the cutter and
counter roller of Schmermund, to include a labeled illustration of the
claimed first and second acute angles and first and second longitudinal axes.
Ans. 3. In contrast to this detailed finding, the Appellant asserts, without
explanation, that the proposed combination does not teach or suggest the
claimed device “because of the geometric arrangement of the cutter and
counter roller of Schmermund.” App. Br. 5. The Examiner noted the lack
of an explanation, to which the Appellant made no reply. Ans. 6; Reply Br.
passim.
We are unconvinced by the Appellant’s argument that the proposed
combination does not teach or suggest the claimed device. The Examiner
concluded the references could be combined, and the Appellant then has the
burden to show otherwise. The Appellant does not explain what, if any,
element is missing from the proposed combination. Further, the Appellant
presents no evidence the proposed combination is beyond the level of skill in
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the art (Fact 3). See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(It is proper to "take account of the inferences and creative steps that a
person of ordinary skill in the art would employ."). See also id. at 421 ("A
person of ordinary skill is also a person of ordinary creativity, not an
automaton.").
Next, the Appellant’s contention that pinion gear 24 of Corse is not
the claimed motor is also unpersuasive. App. Br. 6. Independent claim 1,
and its dependent claim 2, contain the limitation of “a motor having a motor
shaft coupled to said knife rotor for rotating said blade.” The Appellant’s
Specification does not define “motor,” and describes the motor, which is not
shown, simply as something that drives the knife rotor (Fact 5). Spec. 6:14-
16. A common and ordinary meaning of “motor” is something, such as a
machine, that imparts motion (Fact 6). A person of ordinary skill in the art
would interpret claims 1 and 2 to require the motor to be something that
imparts motion to the knife rotor. Corse discloses an apparatus for cutting a
web into lengths that includes pinion 24, a machine that imparts motion to
the knife rotor (cutting cylinder 5) (Fact 4).4

CONCLUSIONS
The Appellant has failed to demonstrate the Examiner erred in
determining that Schmermund’s cutter roller 21 is “round” as claimed
because the claim is broad enough to encompass a rotor that is circular in
cross-section.

4 We note that in addition to pinion 24 that imparts motion, Corse
necessarily has a motor that imparts motion to pinion 24. Corse, col. 3, ll.
22-36; fig. 2. Thus, we find that Corse also inherently discloses a motor that
produces motion.
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The Appellant has failed to demonstrate the Examiner erred in
determining that the proposed combination teaches or suggests the claimed
device due to the arrangement of the cutter and counter roller of
Schmermund.
The Appellant has failed to demonstrate the Examiner erred in
determining that pinion gear 24 of Corse is the claimed motor.

DECISION
We AFFIRM the Examiner's rejection of claims 1 and 2.
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) (2007).

AFFIRMED

mls

EVELYN M. SOMMER
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