Ex Parte King

Patent Trial and Appeal Board

Aug 14, 2013

11317551 (P.T.A.B. Aug. 14, 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.
11/317,551 12/22/2005 Philip King 5270PUS; 67080-252E 6845
33171 7590 08/15/2013
REHRIG PACIFIC
4010 E. 26TH STREET
LOS ANGELES, CA 90058
EXAMINER
WELLINGTON, ANDREA L
ART UNIT PAPER NUMBER
3722
MAIL DATE DELIVERY MODE
08/15/2013 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 PHILIP KING
____________________

Appeal 2011-009265
Application 11/317,551
Technology Center 3700
____________________

Before: GAY ANN SPAHN, JOHN W. MORRISON, and HYUN J. JUNG,
Administrative Patent Judges.

MORRISON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-009265
Application 11/317,551
2
STATEMENT OF CASE
The Appellant appeals under 35 U.S.C. § 134 from a rejection of
claims 1-5, 10-14, 19, 22, 25, 28, 29, and 31-40. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

CLAIMED INVENTION
The claims are related to “a drum sectioner which cuts an empty
plastic drum into a plurality of pieces.” Spec. 1, para. [0004]. Claim 1,
reproduced below, is illustrative of the appealed subject matter:
1. A drum sectioner comprising:
only a first wire set and a second wire set, wherein the
first wire set includes at least one longitudinal wire and the
second wire set includes only a first lateral wire and a second
lateral wire, the first and second lateral wires and the at least
one longitudinal wire cooperating with each other to support a
drum; and
at least one power supply supplying electrical current
through the at least one longitudinal wire, the first lateral wire
and the second lateral wire to section the drum in multiple
pieces.

REFERENCES
Perry
Jaye
Wilgus
Aleksandrow
Hughes
US 2,300,699
US 2,692,328
US 3,830,123
US 4,154,063
US 4,212,611
Nov. 3, 1942
Oct. 19, 1954
Aug. 20, 1974
May 15, 1979
Jul. 15, 1980

Appeal 2011-009265
Application 11/317,551
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REJECTIONS
Claims 1, 3, 5, 19, 22, 25, 34, 35, and 39 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Wilgus.1
Claim 2 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Wilgus and Perry.
Claims 4, 10-14, 28, 29, 31-33, 36-38, and 40 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Wilgus, Aleksandrow, Perry,
Hughes, and/or Jaye.

ANALYSIS
Anticipation by Wilgus
The Examiner finds that plastic cutting arrangement of Wilgus (Title)
discloses all of the elements of independent claims 1 and 19 including, inter
alia, “a sectioner comprising only a first wire set and only a second wire
set,” wherein “[t]he second wire set includes a first lateral wire and a second
lateral wire (the wire grid 20 of frames 10 and 11 contains both sets of
wires) spaced apart from the first single lateral wire in a longitudinal
direction along the axis.” Ans. 3-4 (citing Wilgus, col. 2, ll. 35-68, col. 3, ll.
1-3, and fig. 1).
The Appellant notes that “[c]laim 1 recites that there are only two sets
of wires, i.e.[,] a first wire set and a second wire set,” and the Appellant
argues that “Wilgus includes three sets of wires.” App. Br. 5 (emphasis
added). The Appellant further note that “[c]laim 1 also recites that the
second wire set includes only two lateral wires, i.e.[,] a first lateral wire and

1 We note that in the body of the Examiner’s rejection, the Examiner
rejected claim 21 (Ans. 5); however, this claim was cancelled in an
amendment filed September 17, 2009.
Appeal 2011-009265
Application 11/317,551
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a second lateral wire,” and the Appellant also argues that “Wilgus teaches
using significantly more than two lateral wires, see Figure l.” Id. (emphasis
added).
The Examiner responds
since applicant uses the term ‘comprising’ the claim does not
prohibit unclaimed subject matter from also being part of the
invention of claim 1 or the prior art. Therefore[,] the wire grid
formed by frames 10 and 11 of Wilgus reads on the limitations
of claim 1 since the additional structure found in Wilgus is not
prohibited from being part of the rest of the structure of the
device.
Ans. 10-11.
We disagree with the Examiner. The Examiner has misconstrued the
transitional phrase “comprising” to ignore the term “only.” See, e.g., In re
Skvorecz, 580 F.3d 1262, 1268 (Fed. Cir. 2009) (holding that “the
examination expedient of ‘broadest reasonable interpretation’ was
incorrectly applied to interpret ‘comprising’ to mean that not all the
Skvorecz wire legs need have offsets, despite the claims that state that ‘each
wire leg’ has an offset.”). In a similar claim construction concerning the use
of the limiting term “consists of” instead of “only,” our reviewing court held
that when a limiting term “appears in [a] clause [of the body of a claim,
rather than immediately following the] preamble[, it] limits only the element
set forth in [that] clause; other elements are not excluded from the claim as a
whole.” Mannesmann Demag Corp. v. Engineered Metal Products Co.,
Inc., 793 F.2d 1279, 1282 (Fed. Cir. 1986). In this case, the first use of the
word “only” applies to the first and second wire sets, and to the first and
second lateral wires of the second wire set, and elements outside of those
clauses are not limited. Thus, the Examiner has erred by finding that third
wire set (attached to the frame 12) is not excluded from the claimed
Appeal 2011-009265
Application 11/317,551
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invention, and additional wires from the first and second lateral wires are not
excluded from the second wire set. Therefore, we do not sustain the
rejection of claims 1 and 19 and claims 3, 5, 22, 25, 34, 35, and 39 which
depend therefrom.

Obviousness over Wilgus and Perry
The Examiner’s rejection of claim 2 relies on the erroneous findings
for independent claim 1 that Wilgus discloses “only a first wire set and a
second wire set” and “the second wire set includes only a first lateral wire
and a second lateral wire.” Ans. 6-7. The Appellant argues that “Perry does
not make up for the deficiencies of Wilgus.” App. Br. 9. We agree.
Accordingly, for the same reasons as discussed above, we do not sustain the
rejection of claim 2 as unpatentable over Wilgus and Perry.

Obviousness over Wilgus, Aleksandrow, Perry, Hughes, and/or Jaye
The Examiner’s rejection of claims 4, 28, 29, 31-33, and 40 relies on
the erroneous findings for independent claims 1 and 19 that that Wilgus
discloses “only a first wire set and a second wire set” and “the second wire
set includes only a first lateral wire and a second lateral wire.” Ans. 8. The
Examiner did not rely on any one of Aleksandrow, Perry, Hughes, and/or
Jaye to cure the deficiencies of Wilgus. Accordingly, for the same reasons
as discussed above, we do not sustain the rejection of claims 4, 28, 29, 31-
33, and 40 as unpatentable over Wilgus, Aleksandrow, Perry, Hughes,
and/or Jaye.
Appeal 2011-009265
Application 11/317,551
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Turning to independent claim 10, and claims 11-14 and 36-38
dependent thereon, the Examiner introduces Aleksandrow for the teaching of
a “housing having upper and lower chambers with the sectioner (33) located
between the chambers such that a work piece can be fed and exit the
sectioner.” Ans. 8. Additionally, the Examiner relies on Perry, Hughes, or
Jaye for “[t]he concept of manipulating the number of wires to create a
desired number of pieces from a work piece [being] well known in the art of
hot wire cutters.” Id at 9. The Examiner then concludes that
[i]t would have been obvious to a person of ordinary skill in the
art at the time the invention was made to modify the hot wire
cutter [of] Wilgus and remove wires (or add wires) in either
direction, and[/]or remove [the] frame and its corresponding
wires (12 o[f] Wilgus), to create a cutter which has an output of
any desired number of products with any desired shapes. The
claims would have been obvious because a particular known
technique was recognized as part of the ordinary capabilities of
one skilled in the art.
Id.
The Appellant responds that
Wilgus discloses that the bottom grid 12 reciprocates during
sectioning. As such, all wires of the sectioner in Wilgus do not
remain stationary and fixed relative to the housing during
sectioning. The examiner has offered no explanation as to how
or why one of ordinary skill in the art would modify Wilgus to
have all wires remain stationary during sectioning.
App. Br. 10.
We agree with the Appellant. The Examiner’s reasoning fails to
explain why it would have been obvious to one of ordinary skill in the art to
remove the oscillating bottom grid and frame 12 of Wilgus. The
reciprocating bottom grid 12 is instrumental in shaping products cut by the
device of Wilgus. The removal of the grid 12 contradicts the Examiner’s
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Application 11/317,551
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proposed rationale to modify the device to “output of any desired number of
products with any desired shapes.” Ans. 9. Thus, the Examiner has not
articulated adequate reasoning based on a rational underpinning to explain
why a person of ordinary skill in the art would have been led to remove the
grid 12 of Wilgus. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) (holding that “rejections on obviousness grounds cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.”). As such, we do not sustain the rejection of independent
claim 10, and claims 11-14 and 36-38 dependent thereon, as being
unpatentable over Wilgus, Aleksandrow, Perry, Hughes, and/or Jaye.

DECISION
For the above reasons, the Examiner’s decision to reject claims 1-5,
10-14, 19, 22, 25, 28, 29, and 31-40 is reversed

REVERSED

rvb