Ex Parte Hergeth

Patent Trial and Appeal Board

Jun 6, 2013

11890679 (P.T.A.B. Jun. 6, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/890,679 08/07/2007 Willibald Hergeth 533.1002DIV 9152
23280 7590 06/07/2013
Davidson, Davidson & Kappel, LLC
485 7th Avenue
14th Floor
New York, NY 10018
EXAMINER
OCHYLSKI, RYAN M
ART UNIT PAPER NUMBER
1743
MAIL DATE DELIVERY MODE
06/07/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WILLIBALD HERGETH
____________

Appeal 2012-000893
Application 11/890,679
Technology Center 1700
____________

Before CHUNG K. PAK, KAREN M. HASTINGS, and
GEORGE C. BEST, Administrative Patent Judges.

BEST, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-000893
Application 11/890,679
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On July 8, 2010, the Examiner finally rejected claims 31-57 of
Application 11/890,679 variously under 35 U.S.C. § 102(b) as anticipated
and under 35 U.S.C. § 103(a) as obvious. Appellant seeks reversal of these
rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35
U.S.C. § 6(b).
For the reasons set forth below, we REVERSE.
BACKGROUND
The ’679 application describes a container and pallet for receiving and
holding the blades of a fluid machine. Spec. ¶ [0002]. Figure 1 of the ’679
application is reproduced below:

Figure 1 is a cross sectional view of one embodiment of the container
described in the ’679 application. Spec. ¶ [0043]. As shown in Figure 1,
blades 3 of an axial flow fluid machine are sorted, stored, and positioned in
Appeal 2012-000893
Application 11/890,679
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container 1. Id. at ¶ [0050]. Container 1 has a depression 5 that is shaped like
a stepped pyramid. Id. Steps 7, 8 are connected by walls 14, which are
reverse-drawn into the container. Id. Because depression 5 has a stepped
pyramidal shape, objects 3 placed into the container are sorted by size, the
largest objects in the container are positioned on bearing surfaces 6 of the
first pyramid step. Id. at ¶ [0052]. Smaller objects 3 are positioned on the
bearing surfaces 6 of the pyramid steps lying below the first pyramid step.
Id. Bearing surfaces 6 are tailored to the contours of objects 3. Id. at
¶ [0050].
The ’679 application’s claims are directed to method for making the
container. Claim 31 is representative of the claims and is reproduced below:
Claim 31: A method for manufacturing
a container for receiving blades of a fluid machine,
the blades having differing external dimensions and edge
contours,
the container comprising
a section having at least one depression shaped like
a stepped pyramid
having bearing surfaces and
having a lower pyramid step having first
bearing surfaces with smaller dimensions
than second bearing surfaces of a higher
pyramid step positioned above the lower
pyramid step in the depression so as to
receive multiple blades of different sizes in
the depression stacked by height in
accordance with the differing external
dimensions,
Appeal 2012-000893
Application 11/890,679
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the pyramid steps having a shape
tailored to the edge contours of said
blades,
comprising the steps of:
dimensioning the container to the multiple blades of
different sizes; and
reverse-drawing a wall of the depression between the
lower and higher pyramid steps into an inside of the
container.
(App. Br. Claims App’x 1 (emphasis, some paragraphing, and indentation
added)).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 31-36, 38-40, and 42 were rejected under 35 U.S.C.
§ 102(b) as anticipated by Miki1 (Ans. 5).
2. Claim 37 was rejected under 35 U.S.C. § 103(a) as obvious over
Miki in view of Sohn2 (Ans. 7).
3. Claim 41 was rejected under 35 U.S.C. § 103(a) as obvious over
Miki in view of Frankenberg3 (Ans. 8).
4. Claims 43-48, 50-52, and 56-57 were rejected under 35 U.S.C.
§ 103(a) as obvious over Miki in view of Ishida4 (Ans. 9).

1 U.S. Patent No. 4,176,154, issued Nov. 27, 1979.
2 U.S. Patent No. 5,520,301, issued May 28, 1996.
3 U.S. Patent No. 6,357,366 B1, issued March 19, 2002.
4 JP 05-045245, published Feb. 23, 1993. Translations of Ishida’s Abstract,
Claims, and Detailed Description are of record in this case.
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Application 11/890,679
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5. Claim 49 was rejected under 35 U.S.C. § 103(a) as obvious over
Miki in view of Ishida and Shmiletzky5 (Ans. 10).
6. Claim 53 was rejected under 35 U.S.C. § 103(a) as obvious over
Miki in view of Ishida and further in view of Frankenberg
(Ans. 11).
7. Claim 54 was rejected under 35 U.S.C. § 103(a) as obvious over
Miki in view of Ishida and further in view of Collins6 (Ans. 12).
8. Claim 55 was rejected under 35 U.S.C. § 103(a) as obvious over
Miki in view of Ishida and further in view of Ando7 (Ans. 13).
DISCUSSION
Rejection 1. The Examiner finally rejected claims 31-36, 38-40, and
42 as anticipated by Miki. Miki describes a method for thermoforming a
cup-shaped article from a thermoplastic
resin sheet. Miki col. 1, ll. 5-12. In
particular, the cup shaped article is
thermoformed using an ordinary air
pressure forming machine without the use
of a plug as an assist means. Id. The
Examiner found that Miki’s Figure 2
describes an article that anticipates claims 31-36, 38-40, and 42 of the ’679
application (Ans. 5-6). For ease of reference, Miki’s Figure 2 is reproduced
above. Figure 2 is a cross-sectional view of the cup-shaped article produced

5 U.S. Patent No. 5,360,116, issued Nov. 1, 1994.
6 U.S. Patent No. 5,413,054, issued May 9, 1995.
7 JP 04-102548, published April 3, 1992. A translation of Ando’s Abstract is
of record in this case.
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Application 11/890,679
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by use of Miki’s method. Miki col. 2, ll. 43-45. The Examiner specifically
found that Figure 2 shows an article comprising at least one “depression
shaped like a stepped pyramid having bearing surfaces and having a lower
pyramid step having first bearing surfaces including a straight section
(corresponding to points E and F) with smaller dimensions than second
bearing surfaces of a higher pyramid step positioned above the lower
pyramid step in the depression (corresponding to points A)” (id.).
Appellant argues that Rejection 1 should be reversed because Miki
does not describe the claimed step of “dimensioning the container to the
multiple blades of different sizes” (App. Br. Claims App’x 1 (Claim 21)).
The Examiner found that Miki did describe such a step because “in all
possibility and probability there are fluid machine blades that could be
stored in the applied art containers, and that the step of making the applied
art containers would necessarily involve dimensioning to the blades of
different sizes” (Ans. 14).
We begin with claim construction. Amazon.com, Inc. v.
Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001) (“Only
when a claim is properly understood can a determination be made . . .
whether the prior art anticipates and/or renders obvious the claimed
invention.”). During examination, claim terms are given their broadest
reasonable construction consistent with the Specification. In general, words
used in a claim are accorded their ordinary and customary meaning.
Honeywell Int’l Inc. v. Universal Avionics Sys. Corp., 488 F.3d 982, 992
(Fed. Cir. 2007).
In this case, “dimensioning” is the present participle of the transitive
verb “dimension.” The ordinary meaning of the verb dimension is “to form
to the required dimensions; to indicate the dimensions of (as on a drawing).”
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Application 11/890,679
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Dimension, MERRIAM-WEBSTER ONLINE DICTIONARY, http://www.merriam-
webster.com/dictionary/dimensioning; see also Dimension, AMERICAN
HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (4th ed., updated)
(2009), http://www.thefreedictionary.com/dimensioning (“To cut or shape to
specified dimensions; To mark with specified measurements”).
The claimed process, therefore, includes a step of forming a container
into a size and shape determined by “required” or “specified” dimensions.
This prompts the question of how the required or specified dimensions are
determined. Claim 31’s language suggests that the dimensions are specified
by the size and shape of the fluid machine blades that are to be stored in the
container (App. Br. Claims App’x 1 (requiring that the pyramid steps
“hav[e] a shape tailored to the edge contours of [the multiply-sized fluid
machine] blades”)8). Our review of the ’679 application’s Specification
confirms that the measurements in question are defined by the particular
fluid machine blades that are to be stored in the claimed container. See, e.g.,
Spec. ¶¶ [0009], [0013], [0050]-[0051], [0057]. In other words, claim 31
only encompasses methods of making containers that have been specially
designed to accommodate a particular set of fluid machine blades.

8 We recognize that this language appears in claim 31’s preamble. While the
default presumption is that a claim’s preamble does not limit the claim’s
scope, Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir.
2010) (“‘Generally,’ we have said, ‘the preamble does not limit the claims.’”
(quoting Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346
(Fed. Cir. 2002))), a preamble is limiting if it recites essential structure,
essential steps, or is otherwise “necessary to give life, meaning, and vitality”
to the claim, Pitney Bowes, Inc. v. Hewlett Packard Co., 182 F.3d 1298,
1305 (Fed. Cir. 1999) (quoting Kropa v. Robie, 187 F.2d 150, 152 (CCPA
1951)). In the ’679 application, it is clear that claim 31’s preamble recites
essential structure and, therefore, is limiting.
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The Examiner does not point us to any portion of Miki that describes
forming a container with dimensions that are defined in any way by the
objects to be stored in the container. We did not discover any such
description in our review of Miki. The Examiner’s finding that Miki
describes the step of “dimensioning the container to the multiple blades of
different sizes” is erroneous. We therefore reverse the Examiner’s rejection
of claim 31 as anticipated by Miki. Because claims 32-36, 38-40, and 42 all
depend from claim 31, we also reverse the rejection of these claims as
anticipated by Miki.
Rejections 2 and 3. The Examiner rejected claims 37 and 41 as
obvious over the combination of Miki with Sohn or Frankenberg,
respectively. These claims depend from claim 31 and therefore include the
step of “dimensioning the container to the multiple blades of different sizes.”
As discussed above, Miki does not describe a method for manufacturing a
container with dimensions that are defined by a particular set of objects to be
stored in the container. Neither does Miki suggest such a step to a person of
ordinary skill in the art, let alone that the containers could be custom made
to accommodate a particular set of multiply-sized fluid machine blades. The
Examiner does not rely upon either Sohn or Frankenberg as describing or
suggesting such a step (see Ans. 8), and our review of these references does
not reveal any such description or suggestion. We therefore reverse the
rejections of claims 37 and 41 as obvious.
Rejection 4. The Examiner rejected claims 43-48, 50-52, and 56-57
as obvious over the combination of Miki and Ishida. Claim 43 is an
independent claim, the relevant part of which is reproduced below:
Claim 43: A method for manufacturing a pallet for receiving
blades of a fluid machine having differing external dimensions
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Application 11/890,679
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and edge contours, the pallet comprising a section having
depressions shaped like stepped pyramids positioned in rows
and columns, . . . the pyramid steps having a shape tailored to
the spatial edge contours of said blades, comprising the steps
of:
dimensioning the pallet to the multiple blades of different sizes;
and
reverse-drawing walls of the depressions between the lower and
higher pyramid steps into an inside of the pallet.
(App. Br. Claims App’x 2-3 (emphasis added)).
Appellant argues that Miki does not describe or suggest the step of
“dimensioning the pallet to the multiple blades or different sizes” (App. Br.
7-8). The Examiner’s Answer does not clearly state the basis for the implicit
finding that the combination of Miki and Ishida describes or suggests this
step (see Ans. 9-10, 14-15).
Once again, we begin by construing the claim language in question.
As in claim 31, the key term is the present participle “dimensioning.” For the
reasons discussed in connection with claim 31, we conclude that this
language requires forming a pallet in a shape defined by the measurements
of the particular set of fluid machine blades to held in the pallet.
As discussed above, Miki does not describe or suggest such a step in
the manufacture of a container. Furthermore, as the Examiner admits, Miki
does not describe or suggest a method for forming a pallet (Ans. 9, 15).
While the Examiner correctly found that Ishida describes a pallet (id. at 9),
Ishida does not describe or suggest anything about the pallet’s size or shape.
The combination of Miki and Ishida, therefore, would not have
suggested to a person of ordinary skill in the art a method of forming a pallet
that includes the step of “dimensioning the pallet to the multiple blades or
different sizes.” The Examiner erred in making this finding and erred in
Appeal 2012-000893
Application 11/890,679
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concluding that claim 43 is prima facie obvious. We reverse the rejection of
claim 43 as obvious. Because claims 44-48, 50-52, and 56-57 all depend
from claim 43, we also reverse the rejection of these claims.
Rejections 5-8. The Examiner rejected claims 49 and 53-55 as
obvious over Miki and Ishida in combination with various tertiary references
(Ans. 10-13). Each of these claims depends from claim 43 and includes the
step of “dimensioning the pallet to the multiple blades or different sizes.” As
discussed above, the combination of Miki and Ishida does not describe or
suggest such a step. The Examiner does not identify any portion of the cited
tertiary references as describing or suggesting such a step, and our review of
these references does not reveal any such description or suggestion. We
therefore reverse the rejections of claims 49 and 53-55 as obvious.
CONCLUSION
The ’679 application’s claims includes steps that require forming the
container or pallet into a shape with measurements that are defined by the
particular set of multiply-sized fluid machine blades to be accommodated in
the container or pallet produced by the claimed method. Because the prior
art cited by the Examiner does not describe or suggest such a step, we
reverse the Examiner’s rejections of claims 31-57 of the ’679 application.

REVERSED

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