Ex Parte Jenkins

Board of Patent Appeals and Interferences

Jul 31, 2003

09580411 (B.P.A.I. Jul. 31, 2003)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HENRY H. JENKINS
____________
Appeal No. 2003-0550
Application No. 09/580,411
____________
ON BRIEF
____________
Before FRANKFORT, STAAB, and MCQUADE, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 3, which are all of the claims
pending in this application. In the examiner's answer (Paper No.
13, page 2), the examiner has withdrawn all of the rejections
from the final except the rejection of claim 1 under 35 U.S.C.
§ 102(b). Accordingly, only that rejection remains for our
consideration on appeal.
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Application No. 09/580,411
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As noted on page 1 of the specification, appellant's
invention is directed to a die cutter apparatus for severing
blisters into individual blisters from a sheet of blisters which
has been formed from a deformable transparent or translucent
sheet of plastic material by a process known to those skilled in
the art. More specifically, independent claim 1 on appeal
provides for a "compensating blister die cutting apparatus"
including, inter alia, a lost motion connection connecting each
blister die cutter unit support member (50) to the base member
(31) of the die cutter apparatus and permitting relative lateral
movement of each die cutter unit (34-39) relative to the base
member and relative to each other through a range of 360 degrees.
The "lost motion connection" described on page 6 of the
specification includes threaded adjustment members (70) being of
a smaller diameter than the holes (72) in the top board (50),
backup plate (47) and bottom board (44) so that the die cutter
units can move relative to the base member and relative to each
other when a blister on a blister sheet is pushed down into the
cavity (62) of a given die unit which causes that unit to shift
so that a given blister fits into a given cavity in a symmetrical
fashion. A copy of independent claim 1 on appeal, as reproduced
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from the Appendix to appellant's brief, is attached to this
decision.
The sole prior art reference of record relied upon by the
examiner in rejecting appealed claim 1 is:
Carll 2,313,801 Mar. 16, 1943
Claim 1 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by Carll. In the examiner's view (answer, page 4),
Carll discloses a die cutter apparatus with every structural
limitation of the claimed invention including: a base member
(12); at least first and second die cutter units (14) supported
by the base member, with each said die cutting unit comprising a
support member (16) carrying a steel rule die (18), and a lost
motion connection (e.g., 32 and one of 38, 42, or 44) connecting
the support member (16) to the base member (12) and permitting
relative lateral movement of each die cutter unit (14) relative
to the base member and relative to each other through a range of
360 degrees.
Rather than attempt to reiterate the examiner's full
commentary with regard to the above-noted rejection and the
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Application No. 09/580,411
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conflicting viewpoints advanced by the examiner and appellant
regarding the rejection, we make reference to the examiner's
answer (Paper No. 13, mailed October 9, 2002) for the reasoning
in support of the rejection, and to appellant's brief (Paper No.
11, filed May 10, 2002) and reply brief (Paper No. 16, filed
October 24, 2002) for the arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant's specification and claim 1,
to the applied prior art Carll reference, and to the respective
positions articulated by appellant and the examiner. As a
consequence of our review, we have made the determination which
follows.
Like the examiner, we are of the view that during a loosened
state of the threaded bolts (32) in the die cutter apparatus of
Carll, the connection between the support members (16) and the
base member (12) would be such as to permit lateral movement of
each die cutter unit (14) relative to the base member and
relative to each other through a range of 360 degrees. While it
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is true that during use of the die cutter apparatus in Carll in a
cutting operation, the die cutter units (14) are fixed in an
adjusted position by tightening of the bolts (32), we remain of
the view that the structure in Carll would broadly be understood
by one of ordinary skill in that art to constitute a "lost motion
connection" like that set forth in claim 1 on appeal, at least
during the set-up phase for the die cutter apparatus. In that
regard, we agree with the examiner's assessment on page 6 of the
answer that
the only difference between the two inventions is how
they are intended to be used. Carll discloses that the
die cutting units are locked in position during use,
while the die cutting units of the present invention
are free to move during use. However, there is no
structural difference between the claimed invention and
the invention of Carll, thus the difference amounts to
a functional recitation of intended use, and as is well
established in patent law, a functional recitation of
intended use cannot serve to distinguish a claimed
apparatus/device over the prior art. Further, it is
noted that there is nothing in Carll which prevents it
from being used in the manner described by appellant.
For example, by simply not tightening the screws 32,
Carll is exactly the same as the claimed invention. No
modification of the structure disclosed by Carll is
required. This loosened state is clearly present in
Carll during adjustments, but also could be present
during use of the device if a user chose to do so.
Also, it is noted that there is nothing preventing the
adjustment members of the present invention from being
tightened down to lock the die cutting units in place
and thus used in the same manner as the die cutting
units of Carll. A structural difference between the
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lost motion connection of the claimed invention and the
corresponding structure of Carll cannot be found.
Appellant's argument in the brief (page 8) that the
reference to Carll "does not in spirit anticipate the claimed
invention," followed by what appears to be a concession that
Carll "does show and disclose on an element by element basis what
is contained in the claims" is somewhat confusing. Like the
examiner, we are of the view that appellant and Carll show
essentially the same structure for connecting the die unit
support member to the base member of their respective die cutter
apparatus and that the structure in each is capable of
functioning as a "lost motion connector," depending on the
desires of the user. There is nothing in appellant's claim 1 on
appeal which mandates that the "lost motion connection"
necessarily must be usable during operation of the die cutter
apparatus so as to shift the die cutter units relative to each
other to accommodate for uneven shrinkage in a plastic sheet of
blisters, as opposed to during set-up, with the die units
subsequently being fixed in an adjusted position. In that
regard, we note from appellant's specification, page 4, that
within a given batch of polymeric sheet material, after a first
group of blisters has been produced, the individual shrinkage
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will be somewhat consistent for subsequent sheets, so that after
the first group of blister is cut, the die cutter units of
appellant's invention could be fixed in position for the
remainder of the runs for that batch of sheet material.
An anticipation under 35 U.S.C. § 102(b) is established when
a single prior art reference discloses, either expressly or under
principles of inherency, each and every element or limitation of
a claimed invention. See In re Schreiber, 128 F.3d 1473, 1477,
44 USPQ2d 1429, 1431 (Fed. Cir. 1997) and RCA Corp. v. Applied
Digital Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385,
388 (Fed. Cir. 1984). However, we observe that the law of
anticipation does not require that the reference teach what the
appellant has disclosed but only that the claims on appeal "read
on" something disclosed in the reference, i.e., all limitations
of the claim are found in the reference. See Kalman v. Kimberly
Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir.
1983). In the present case, while it is true that there is
nothing in the Carll patent which indicates that the connection
in question is used as a "lost motion connection" during
operative use of the die cutter apparatus, we agree with the
examiner that the connection in Carll is fully responsive to the
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structural features of the connection set forth in claim 1 on
appeal and is inherently capable of being used in the manner set
forth in claim 1 to permit relative lateral movement of each die
cutter unit (14) relative to the base member (12) and relative to
each other through a range of 360 degrees.
As was made clear in In re Schreiber, 128 F.3d at 1477, 44
USPQ2d at 1431, by choosing to define an element functionally as
in appellant's claim 1 on appeal, appellant assumes a risk, that
risk being that where the Patent and Trademark Office has reason
to believe that a functional limitation asserted to be critical
for establishing novelty in the claimed subject matter may, in
fact, be an inherent characteristic of the prior art, it
possesses the authority to require the applicant to prove that
the subject matter shown to be in the prior art does not possess
the characteristic relied upon. In the present case, appellant
has provided no evidence to prove that the connection in Carll is
not capable of the use asserted by the examiner. We therefore
are constrained to agree with the examiner that the differences
in the intended use of the connector seen in Carll and
appellant's claimed connector do not patentably distinguish
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appellant's die cutter apparatus from the die cutter apparatus of
Carll.
Since we find that the examiner has treated all of the
limitations of claim 1 and agree with the examiner that the
connection in Carll can serve as a "lost motion connection" and
actually does so during set-up of the die units therein, we will
sustain the examiner's rejection of claim 1 under 35 U.S.C.
§ 102(b) as being anticipated by Carll.
The decision of the examiner, accordingly, is affirmed.
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Application No. 09/580,411
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN P. MCQUADE )
Administrative Patent Judge )
CEF/lbg
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Application No. 09/580,411
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CHARLES R. RUST
WOODLING KROST & RUST
9213 CHILLICOTHE ROAD
KIRTLAND, OH 44094
Appeal No. 2003-0550
Application No. 09/580,411
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Claim 1
A compensating blister die cutter apparatus including a base
member,
at least first and second blister die cutter units supported
by said base member,
each said blister die cutter unit comprising a [sic]
a support member carrying a steel rule die,
a lost motion connection connecting said support member to
said base member permitting relative lateral movement of each die
cutter unit relative to said base member and relative to each
other through a range of 360 degrees.