Ex Parte Jenkins

Board of Patent Appeals and Interferences

Dec 16, 2010

09580412 (B.P.A.I. Dec. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte HENRY H. JENKINS
______________

Appeal 2009-009846
Application 09/580,412
Technology Center 1700
_______________

Before CHARLES F. WARREN, CATHERINE Q. TIMM, and
KAREN M. HASTINGS, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL1
Applicant appeals to the Board from the decision of the Primary
Examiner rejecting for at least the second time claims 11-25 in the Office
Action mailed March 8, 2007. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R.
§ 41.31(a) (2007).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-009846
Application 09/580,412
We affirm the decision of the Primary Examiner.
Claims 11, 14, and 20 illustrate Appellant’s invention of a steel rule
die, and are representative of the claims on appeal:
11. A steel rule die including in combination
a metal plate,
a top board located on top of said metal plate,
a plurality of rule slots in said top board,
a steel rule in said slots
each of said steel rules being generally flat to fit in a slot and having a
bottom portion adjacent said metal plate and a top portion formed into a
cutting edge residing above the surface of said top board,
each said steel rule extending on a longitudinal axis and having first
and second end portions,
said first end portion extending at approximately a 45 degree angle to
said longitudinal axis and on one side of said axis,
said first end portion of a given steel rule engaging a next adjacent
steel rule to form a 45 degree angled corner.
14. A rule for use in a steel rule die including a metal member having
upper and lower edge portions and first and second end portions,
said first end portion extending at an angle to the extent of said metal
member and in a first direction,
said second end portion extending at an angle to the extent of said
metal member and in a second direction,
said upper edge portion having a cutting edge formed thereon.
20. A rule for use in a steel rule die including a metal member having
upper and lower edge portions and first and second end portions,
said first end portion extending at [sic] angle to the extent of said
metal member and in a first direction, and
said upper edge portion having a cutting edge formed thereon.
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Appellant requests review of the following grounds of rejection
advanced on appeal by the Examiner2 (Br.3 13-14):
claims 14, 15, 17, 20, 21, and 23 under 35 U.S.C. § 102(b) over Shinnick
(US 1,635,964) (Ans. 3);
claims 20-23 under § 102(b) over Svendsen (US 3,464,293) (Ans. 3);
claims 11-13 under 35 U.S.C. § 103(a) over Shinnick in view of Sandford
(US 6,085,625) and Svendsen (Ans. 4);
claims 16 and 22 under § 103(a) over Shinnick in view of Svendsen (Ans.
5);
claims 18, 19, 24, and 25 under § 103(a) over Shinnick in view of Simms
(US 3,335,628) (Ans. 5);
claim 24 under § 103(a) over Svendsen in view of Simms (Ans. 6); and
claim 25 under § 103(a) over Svendsen in view of Simms as applied to
claims 20, 23, and 24, and further in view of Brayton (US 5,943,935) (Ans.
6).
Appellant argues the grounds of rejection on representative claims 11,
14, 16, 18, 20, 24, and 25, and on other claims to the extent argued in the
Brief. See generally Br. Thus, we decide this appeal based on these claims.
37 C.F.R. § 41.37(c)(1)(vii) (2007).
Opinion
I. Claim 14: § 102(b) – Shinnick
A. Independent Claim 14
Appellant contends that the Examiner erred in finding that the steel
rule in the paper box die embodiment illustrated in Shinnick Figure VIII

2 The Examiner has withdrawn the ground of rejection of claims 19 and 25
under 35 U.S.C. § 112, second paragraph. Ans. 2.
3 We considered the Brief filed April 26, 2008, and the Examiner’s Answer
mailed December 30, 2008.
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anticipates claim 14 because, Appellant argues, Figure VIII “does not
disclose the first and second portions of the claim [sic, claimed rule] which
extend in opposite directions.” Br. 16. Appellant contends that “the
problem with Shinnick” is that “[a] plurality of identical Shinnick rules
cannot be simply arranged with each other to produce an inexpensive steel
rule die,” and Shinnick’s Figure VIII “shows the type of curved
configuration which requires a skilled die maker to construct.” Br. 17. We
disagree.
The Examiner finds that Shinnick Figure VIII shows a steel rule
member C which has “first and second end portions extending in a first and
a second direction[s].” Ans. 3. In a copy of Shinnick Figure VIII, the
Examiner identifies the “first end portion” of rule C as extending out from
the left side of Figure VIII, and the “second end portion” of rule C as
extending along the top of Figure VIII. Ans. 7-8.
We agree with the Examiner’s findings with respect to Shinnick
Figure VIII. We find that the two rules C form a corner or angle at the upper
right corner of Figure VIII. See Shinnick p. 3, ll. 5-6. Thus, the first end
portion of the rule C in the lower left corner of Figure VIII extends in a first
direction at an angle to the extent of the same rule C along the left side of
Figure VIII, and the second end portion of the same rule C along the upper
end of Figure VIII extends in a second direction at an angle to the extent of
the same rule C along the left side of Figure VIII. This is all that the plain
language “said first end portion extending at an angle to the extent of said
metal member and in a first direction,” and “said second end portion
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extending at an angle to the extent of said metal member and in a second
direction” of claim 14 requires.
Accordingly, on this record, the Examiner has established, as a matter
of fact, that Shinnick Figure VIII describes to one skilled in this art each and
every limitation of the claimed rule encompassed by claim 14 arranged as
required therein within the meaning of § 102(b). See, e.g., In re Schreiber,
128 F.3d 1473, 1477 (Fed. Cir. 1997); Kalman v. Kimberly-Clark Corp., 713
F.2d 760, 772 (Fed. Cir. 1983) (anticipation is established when the claim
reads on something disclosed in the reference which meets all of the
limitations of the claim).
We are not convinced by Appellant’s position with respect to
Shinnick’s “problem” with rule construction and use in a die. We agree with
the Examiner that Appellant’s “problem” view of Shinnick does not address
a limitation in claim 14 and thus does not patentably distinguish over the
reference. See, e.g., In re Self, 671 F.2d 1344, 1350-51 (CCPA 1982).
Indeed, claim 14 plainly reads on the rule C described in Shinnick’s Figure
VIII which is used in a “die,” and claim 14 does not limit the manner of
“steel rule die” in which the steel rule is used. Thus, claim 14 is anticipated.
See, e.g., Kalman.
B. Independent Claim 20
As Appellant points out, claim 20 specifies only a “first end portion
extending at [sic] angle to the extent of said metal member [of a rule] in a
first direction,” thus differing from claim 14. Br. 18. Accordingly, claim 20
reads on the rule C in Shinnick Figure VIII and is anticipated in the same
manner as claim 14. See, e.g., Kalman.
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C.
Accordingly, as Appellant argues, claims 15 and 17 fall with claim 14
and claims 21 and 23 fall with claim 20, and on this basis, we affirm the
ground of rejection of these claims over Shinnick under 35 U.S.C. § 102(b).
See Br. 18.
I. Claim 20: § 102(b) – Svendsen
A. Independent Claim 20
Appellant contends that the Examiner erred in finding that the steel
rule in the die embodiment illustrated in Svendsen’s Figures anticipates
claim 20, arguing that Svendsen “discloses the problems [of construction]
the present invention solves” and thus the “rejection suffers from the same
deficiencies as discussed above [with respect to Shinnick] and it does not
disclose the [claimed] invention.” Br. 18.
Appellant’s position does not specifically identify error in the
Examiner’s position that claim 20 reads on the rules illustrated in
Svendsen’s Figures. Ans. 4. Appellant’s “problem” view of Svendsen does
not address a limitation in claim 20. See, e.g., Self. On this record, the
Examiner has established Svendsen anticipates claim 20.
B. Dependent Claim 22
Appellant contends that the Examiner erred in finding that the steel
rule in the die embodiment illustrated in Svendsen Figure 20 anticipates
claim 22, arguing that in addition to the “problem” discussed with Svendsen,
claim 22 modifies claim 20 in that claim 22 “contains the 45 degree
limitation which cannot be found in the art.” Br. 19.
Appellant’s position does not specifically identify error in the
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Examiner’s position because Appellant does not explain why claim 22 does
not read on the rules described by Svendsen. Ans. 4. Thus, on this record,
the Examiner has established that Svendsen anticipates claim 22.
C.
Accordingly, as Appellant argues, claims 21 and 23 fall with claim 20,
and thus, we affirm the ground of rejection of claims 20-23 over Shinnick
under 35 U.S.C. § 102(b). See Br. 19.
III. Claim 11: § 103(a) – Shinnick, Sandford, and Svendsen
A. Independent Claim 11
Appellant contends that the Examiner erred in holding that the
combined teachings of Shinnick, Sandford, and Svendsen renders obvious
the claimed steel rule die encompassed by claim 11. Appellant relies on
positions previously expressed with respect to each of Shinnick and
Svendsen. Br. 19. Appellant contends that “Sandford’s plate 52 is not the
plate of [claim 11],” arguing that Sandford Figures 5A-B show that “plate 52
has a slot which extends clear through which does not provide support
against force on the cutting edge of rule 20.” Br. 19. Appellant further
contends that the combination of references “does not come up with the
claimed invention” because the result is construction “problems” and “the
die is not constructed of identical rules with 45 degree ends which engage
each other to provide a strongly supported juncture.” Br. 19-20. We
disagree with Appellant’s position.
With respect to Appellant’s contention that Sandford’s plate 52 does
not meet the “plate” limitations of claim 11, we determine that the plain
language of claim 11 specifies that the steel rule die has any manner of “a
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metal plate” which permits “each of said steel rules” to have “a bottom
portion adjacent said metal plate” in any manner. Indeed, the plain language
of claim 11 specifies only that the steel rule is “adjacent said metal plate,”
that is, the steel rule is “next to” the metal plate in any respect. We
recognize that the Specification, in describing the embodiment illustrated in
Specification Figure 14, discloses that “lower edge portion 74 of the rules is
adapted to engage the metal backup plate 36 . . . so that when the cutting
operation is performed the force required to perform the cutting operation
will not cause the rules to move out of position.” Spec. 11:3-6. In this
respect, we find that Specification Figure 14 discloses that each steel rules
70 rest on top of and thus, in this manner, “engages” plate 36. See Spec.
10:19 to 11:3. However, even in light of this disclosure, there is no basis in
the plain language of claim 11 or in the Specification on which to read into
claim 11 any limitation encompassing a disclosed embodiment wherein the
metal plate has a particular structure and/or performs a specific function with
respect to a steel rule “adjacent” thereto. See Ans. 9. See, e.g., In re Suitco
Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010) (“During reexamination,
as with original examination, the PTO must give claims their broadest
reasonable construction consistent with the specification.”) (citing In re
ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citing
In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004));
Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005)(en banc); In re
Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997); In re Van Geuns, 988 F.2d
1181, 1184-185 (Fed. Cir. 1993); In re Zletz, 893 F.2d 319, 321-22 (Fed.
Cir. 1989).
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Thus, we cannot agree with Appellant that Sandford’s plate 52 does
not meet the “plate” limitations of claim 11. Indeed, Appellant has not
established that Sandford’s steel rules 20 are not “adjacent” steel plate 52
and thus would not “[increase] the stability of the rule die” as the Examiner
finds. Ans. 4 and 9. See Sandford, e.g., col. 6, l. 19 to col. 7, l. 23, and Fig.
1. This is all that claim 11 requires.
Turning now to Appellant’s contention that the combination of
references does not suggest that “the die is . . . constructed of identical rules
with 45 degree ends,” we note that the Examiner relies on the combination
of Shinnick and Svendsen with respect to the limitation that “said first end
portion of a given steel rule engaging a next adjacent steel rule to form a 45
degree angled corner” in claim 11. Ans. 4-5. Appellant’s contention does
not specifically identify error in the Examiner’s application of the combined
teachings of Shinnick and Svendsen to claim 11 in this respect. Br. 19-20.
B.
Accordingly, as Appellant argues, claims 12 and 13 fall with claim 11,
and thus, we affirm the ground of rejection of claims 11-13 over the
combination of Shinnick, Sandford, and Svendsen under 35 U.S.C. § 103(a).
See Br. 20.
IV. Claim 16: § 103(a) – Shinnick and Svendsen
A. Dependent Claim 16
Appellant contends that the Examiner erred in holding that the
combined teachings of Shinnick and Svendsen renders obvious the claimed
rule encompassed by claim 16. Appellant relies on positions previously
expressed with respect to each of Shinnick and Svendsen. Br. 20. Appellant
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contends that Shinnick does not disclose “the end portion of the rule as
properly construed . . . and . . . the Examiner acknowledges [that Shinnick]
does [not] show the end portions formed at an approximately 45 degree
angle.” Br. 20. Appellant contends Svendsen “does not teach . . . a 45
degree angle but rather a myriad of angles none of which are taught to be
important.” Br. 20. Appellant contends that “[t]he Examiner comments that
the 45 degree angle is to create the desired shape of cut but seems to ignore
that in Applicant’s device the 45 degree angle is to provide support and to
enable the end to end assembly that enables identical off-the-shelf rules to be
used to easily construct a die.” Br. 20-21. We disagree.
The Examiner finds that Shinnick discloses a rule that differs from the
rule of claim 16 in that the end portions are not formed at approximately 45
degree angles, and that Svendsen discloses that the end portions of a rule can
“range between 10 to 90 degrees angle for the purpose of creating the
desired shape of cut.” Ans. 5 and 10, citing Svendsen col. 3, ll. 59-67. The
Examiner concludes that the combined teachings of Shinnick and Svendsen
would have led one of ordinary skill in the art to modify Shinnick’s rule by
“providing the approximately 45 degree angle in order to create the desired
shape of cut.” Ans. 5. The Examiner contends that Appellant’s contentions
are directed to an “intended use recitation is not disclosed in” claim 16. Ans.
10.
We agree with the Examiner’s finding of fact from the teachings of
Shinnick and Svendsen. See above p. 4. We emphasize that one of ordinary
skill in this art would have recognized that the rule C illustrated on the left
side of Shinnick Figure VIII has angled end portions which gradually curve
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to an approximately 90 degree angle. See above p. 4. Thus, as the Examiner
concludes, one of ordinary skill in this art would have modified Shinnick’s
rule to have curved end portions wherein the curved ends can be angled as
desired in the range of 10 to 90 degrees as taught by Svendsen, including an
angle of approximately 45 degrees as claimed in claim 16.
On this record, we agree with the Examiner that Appellant’s
contention that the claimed rule is essential to “Applicant’s device” is an
argument directed to an intended use not reflected in a limitation in claim 16.
Indeed, claim 16 further limits the steel rule of claim 15 which in turn
further limits the “rule” specified in claim 14. In this respect, we determined
that claim 14 does not limit the manner of “steel rule die” in which the steel
rule is used. See above p. 6.
B.
Accordingly, as Appellant argues, claim 22 falls with claim 16, and
thus, we affirm the ground of rejection of claims 16 and 22 over the
combination of Shinnick and Svendsen under 35 U.S.C. § 103(a). See Br.
20.
V. Claim 18: § 103(a) – Shinnick and Simms
A. Dependent Claim 18
Appellant contends that the Examiner erred in holding that the
combined teachings of Shinnick and Simms renders obvious the claimed
rule encompassed by claim 18. Appellant relies on positions previously
expressed with respect to Shinnick. Br. 21. Appellant contends claim 18
“refers to the terminating end of each of the first and second end portions
formed on an angle to the vertical.” Br. 21. Appellant further contends that
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“Simms fails to show or suggest where and how his structure might be
incorporated into Shinnick to meet the claim language.” Br. 21. We cannot
subscribe to Appellant’s position.
The Examiner finds that “Shinnick doesn’t show a terminating end of
each of the first and second end portions formed on an angle to the vertical
axis.” Ans. 5. The Examiner further finds that Simms teaches “the use of a
terminating end of each of the first and second end portions (21 and 35)
formed on an angle to the vertical axis for the purpose of facilitating the
formation of strong and accurate joint.” Ans. 5 and 10, citing Simms Figs, 2
and 6. The Examiner concludes that it would have been obvious to one of
ordinary skill in the art to modify “Shinnick’s steel rule by providing the
terminating end of each of the first and second end portions formed on an
angle to the vertical axis as taught by [Simms] in order to facilitate the
formation of strong and accurate joint and eliminate the gap between the
cutting edges of the joint to avoid incomplete cut of the work piece.” Ans.
5-6.
We agree with the Examiner’s findings of fact from the teachings of
Simms. See Simms, e.g., col. 1, ll. 14-18, 25-30, and 45-60; col. 3, l. 39 to
col. 4, l. 10; and Figs. 6 and 7. Indeed, we find that Simms would have
disclosed to one of ordinary skill in the art in Figure 6 that insert 70 has first
and second end portions 74, 84 which are formed at an angle to the vertical
axis with respect to cutting edge 72, wherein cutting edge 72 “extends
axially a greater distance than other portions of the terminating end” as
specified in appealed claim 18. Simms, e.g., col. 3, l. 39 to col. 4, l. 10. We
found that Shinnick would have disclosed to one of ordinary skill in the art
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that two rules C form a corner or angle at the upper right corner of Shinnick
Figure VIII. See above p. 4.
Thus, on this record, we determine that, contrary to Appellant’s
position, one of ordinary skill in this art would have been led by Simms to
modify the end portions of Shinnick’s rules C by following the design of
inset 70 illustrated in Simms Figure 6, as pointed out by the Examiner.
B. Dependent Claim 24
Appellant contends that the Examiner erred in holding that the
combined teachings of Shinnick and Simms renders obvious the claimed
rule encompassed by claim 24. Br. 22. Appellant contends that “there is
nothing in Simms which would suggest a structure which would enable steel
rules to be assembled in end to end relationship to form a corner where the
cutting edge extends a greater distance then the other portions.” Br. 22. We
disagree.
We determine that claims 18 and 24, ultimately dependent on
independent claims 14 and 20, respectively, and read essentially the same,
the difference being that claim 18 specifies the structure of both end portions
of a steel rule while claim 24 specifies the structure of only one end portion
of a steel rule. We further determine that claim 24 does not include a
limitation with respect to assembling steel rules to form a corner as argued.
See, e.g., Self. Thus, the combined teachings of Shinnick and Simms apply
to claim 24 in the same manner as to claim 18, as the Examiner contends.
C.
Accordingly, as Appellant argues, claims 19 and 25 fall with claims
18 and 24, respectively, and thus, we affirm the ground of rejection of
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claims 18, 19, 24, and 25 over the combination of Shinnick and Svendsen
under 35 U.S.C. § 103(a). See Br. 21-22.
V. Claim 24: § 103(a) – Svendsen and Simms
Appellant contends that the Examiner erred in holding that the
combined teachings of Svendsen and Simms renders obvious the claimed
rule encompassed by claim 24. Appellant contends that Svendsen does not
“substantially disclose the invention except for the terminating end portions”
of the claimed rule specified in claim 24; that there is no suggestion of how
Svendsen and Simms are to be combined; and that the “references do not
teach how two of the claimed rules can be combined to produce a corner.”
Br. 22. We disagree.
We have interpreted claim 24 as limited to specifying the structure of
an end portion of a steel rule and does not include a limitation with respect
to assembling steel rules to form a corner. See above pp. 12-13. We agree
with the Examiner’s findings that Svendsen would not have disclosed to one
of ordinary skill in the art a rule having an end portion that terminates at an
angle to the vertical axis, and that Simms would have disclosed to this
person that the end portion can have such structure. See above pp. 10 and
12. We find that Svendsen’s Figures 14-17 would have illustrated to one of
ordinary skill in this art combining rules to form a joint. Svendsen, e.g., col.
4, ll. 44-59. Thus, on this record, agree with the Examiner’s conclusion that
it would have been obvious to one of ordinary skill in the art to modify
Svendsen’s “steel rule . . . by providing the terminating end of each of the
first and second end portions formed on angle to the vertical axis as taught
by [Simms] in order to facilitate the formation of strong and accurate joint
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and eliminate the gap between the cutting edges of the joint to avoid
incomplete cut of the work piece.” Ans. 6.
With respect to Appellant’s contention that the combination of
Svendsen and Simms do not teach how two rules can be combined to
produce a corner, we further determined that claim 24 does not include a
limitation with respect to assembling steel rules to form a corner as argued.
See, e.g., Self. In any event, Svendsen illustrates how to combine rules to
form a corner.
Accordingly, we affirm the ground of rejection of claim 24 over the
combination of Svendsen and Simms under 35 U.S.C. § 103(a).
VI. Claim 24: § 103(a) – Svendsen, Simms, and Brayton
Appellant contends that the Examiner erred in holding that the
combined teachings of Svendsen, Simms, and Brayton renders obvious the
claimed rule encompassed by claim 25. Br. 23. Appellant relies on
positions previously expressed. Br. 25. Appellant notes “that Claim 25 is
said to stand or fall with Claim 24,” and so stated with respect to the ground
of rejection over Shinnick and Simms. Br. 21-22 and 23. “Appellant does
not take the position that slots in the bottom of a steel rule per se is novel
and patentable. It is patentable in the recited combination.” Br. 23.
We cannot agree with Appellant’s position. The Examiner relies on
the combination of Svendsen and Simms as applied to, among others, claim
24. Ans. 6. Appellant does not contend that Brayton is in issue.
Accordingly, on this record, in view of our affirmance of the ground
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of rejection of claim 24 over Svendsen and Simms, we further affirm the
ground of rejection of claim 25, dependent on claim 24, over the
combination of Svendsen, Simms, and Brayton under 35 U.S.C. § 103(a).
The Primary Examiner’s decision is affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

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