Ex Parte Lai et al

Board of Patent Appeals and Interferences

May 7, 2009

11396972 (B.P.A.I. May. 7, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte YEH-HUNG LAI and MATTHEW N. KEENE
____________

Appeal 2008-6145
Application 11/396,972
Technology Center 3700
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Decided1: May 07, 2009
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Before JAMESON LEE, SALLY GARDNER LANE and SALLY C.
MEDLEY, Administrative Patent Judges.

MEDLEY, Administrative Patent Judge.
DECISION ON APPEAL

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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Application 11/396,972

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A. STATEMENT OF THE CASE
Eastman Kodak Company (“Kodak”), the real party in interest, seeks
review under 35 U.S.C. § 134(a) of a Final Rejection of claims 19-28. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.
References Relied on by the Examiner
Sanda et al. (“Sanda”) 2001/0052279 Dec. 20, 2001
Rejections on Appeal
The Examiner rejected claims 19-28 under 35 U.S.C. § 102(e) as
anticipated by Sanda.
Claims 19-28 stand or fall together. (App. Br. 2-5).
The Invention
The invention relates to an apparatus for cutting sheet material. Claim
19, reproduced from the Claim Appendix of the Appeal Brief, reads as
follows:
An apparatus for cutting sheet material comprising:
(a) a first cutter including a first crack initiator extending
from a first cutter base, the first crack initiator having a high
rake angle in the range of from about 30° to about 70°, the first
cutter base having a low rake angle that is at least about 15° less
than the high rake angle of the first crack initiator, the first
crack initiator having a height of at least 5 µm, the cutter base
having a relief angle that is greater than 0° and less than about
30°; and
(b) a second cutter opposing the first cutter.

B. ISSUE
Has Kodak shown that the Examiner erred in determining that Sanda’s
angles meet the “rake angle” limitations?
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C. FINDINGS OF FACT
Kodak’s Specification
1. Kodak does not explicitly define the meaning of the term “rake
angle”.
2. Referring to Kodak’s figure 2, reproduced below [numbers from
figure 2 inserted], Kodak discloses a sheet material cutter which
includes a first cutter [40] and a second cutter [42]. Spec: p. 6, ll. 11-
16.
Kodak’s figure 2 is reproduced below:

Figure 2 depicts a cutter system.
3. Kodak discloses that the first cutter [40] has a cutter base [64] and a
crack initiator [62] extending from the cutter base [64]. Spec. p. 5, ll.
4-6; p 6, ll. 16-17.
4. Kodak describes the crack initiator as having a high rake angle [68] in
the range of 30° to about 70° and the cutter base [64] as having a low
rake angle [82] that is 15° less than the crack initiator rake angle [68].
Spec: p. 5, ll. 4-9; p. 6, ll. 16-20; p. 7, ll. 13-15, 25-26.
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Application 11/396,972

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5. As shown in figure 2, Kodak describes the crack initiator rake angle
[68] and the cutter base rake angle [82] as formed from the horizontal
plane of the sheet material being cut.
Sanda
6. Referring to figure 3, reproduced below [numbers from figure 3
inserted], Sanda describes a blade [22] that has a first surface [68] and
a second surface [74]. ¶ 0038.
Sanda’s figure 3 is below:

Figure 3 depicts a cutter system.
7. The angle [Θ1] of the surface [68] from the severance plane [88] (i.e.,
perpendicular to the horizontal plane of web [14]) is set to a value
which ranges from 650 to 850 and preferably from 700 to 750. ¶ 0040.
8. The angle [Θ2] of the surface [74] from the severance plane [88] is set
to a value which ranges from 200 to 450 and preferably from 250 to
350. ¶ 0041.
9. Sanda does not use the term “rake angle”.
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D. PRINCIPLES OF LAW
“[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary usage as they
would be understood by one of ordinary skill in the art, taking into account
whatever enlightenment by way of definitions or otherwise that may be
afforded by the written description contained in the applicant's
specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). But,
“limitations are not to be read into the claims from the specification.” In re
Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citation omitted). The
broadest reasonable interpretation must be consistent with the specification
and consistent with the interpretation that those skilled in the art would
reach. In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969), In re Cortright,
165 F.3d 1353, 1358 (Fed. Cir. 1999).
E. ANALYSIS
Independent claim 19 includes (disputed claim limitations in italics), a
“crack initiator having a high rake angle in the range of from about 30° to
about 70°” and a “first cutter base having a low rake angle that is at least
about 15° less than the high rake angle of the first crack initiator . . . .” App.
Br. 6.
The Examiner finds that Sanda describes a first cutter [22] with a first
crack initiator extending from a first cutter base. Final Rejection 2; Ans. 3.
The Examiner finds that the first crack initiator has a high rake angle (Θ1) in
the range of from about 45° to about 70°, and that the first cutter base has a
low rake angle (Θ2) that is at least about 15° less than the high rake angle.
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Final Rejection 2; Ans. 3; FF2s 6-8. The angles (Θ1) and (Θ2) are formed
relative to the severance or vertical plane [88]. FFs 7-8. In describing its
angles (Θ1) and (Θ2), Sanda does not use the term “rake angle” but refers to
each as an “angle”. FF 9. The Examiner reasons that since there is no
specific recitation in the claim language from which axis the rake angle is
formed, that the rake angle can be formed with respect to the vertical or
horizontal axis. Ans: p. 4, ll. 16-20.
Kodak argues that the Examiner erred by considering Sanda’s angles
(Θ1) and (Θ2) to be rake angles because they are measured from the
perpendicular (i.e., the severance or vertical plane [88]) to the plane of the
material being cut. App. Br. 3. Kodak argues that claim terms should be
interpreted in light of the specification. App. Br. 4, Reply Br. 1. According
to Kodak:
While the claims do not explicitly state how the claimed
rake angles are measured, Applicants have clearly and
unambiguously illustrated in the specification with reference to
Fig. 2 that the term rake angle (e.g., 68 and 82 of the crack
initiator and cutter base, respectively) is employed in the
present invention with respect to angles formed relative to the
horizontal plane of the sheet material being cut. App. Br. 4, ll.
1-6. Emphasis in original.

Kodak’s argument is not persuasive. Kodak’s disclosure does not
provide an explicit definition for the term “rake angle”. FF 1. Kodak
describes embodiments of its invention, for example Kodak Fig. 2, which
shows a cutter where the rake angles of the crack initiator and the cutter base
are relative to the horizontal plane of the sheet of material being cut.
Although Kodak’s intended meaning for the term “rake angle” may be an

2 FF denotes Finding of Fact.
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angle formed relative to the horizontal plane of the sheet material being cut,
“the name of the game is the claim.” In re Hiniker Co., 150 F.3d 1362, 1369
(Fed. Cir. 1998) (citation omitted), Kodak’s claim 19 does not recite an
angle formed relative to the horizontal plane of the sheet material being cut.
As claimed, there is no limitation (1) for how the “rake angle” is formed, or
(2) that establishes any specific orientation between the cutter and any sheet
material being cut.
Specific embodiments or examples from the specification are not to be
read into the claims. Kodak has presented no persuasive reason why we
should narrowly interpret “rake angle” to include limitations stemming from
Kodak’s specific examples or embodiments.
Kodak argues that the Examiner’s characterization of the term “rake
angle” is inconsistent with Kodak’s disclosed invention and with how the
term is used in the art. App. Br. 2-4, Reply Br. 1. Kodak contends that “a
rake angle” is formed relative to the horizontal plane of the sheet material
being cut and that such meaning is in accordance with what one skilled in
the art would understand with respect to the term and is also consistent with
how the term would be used by one skilled in the art. App. Br. 2-4.
Kodak’s argument that the Examiner’s interpretation of “rake angle”
is inconsistent with Kodak’s Specification is not persuasive. Although the
Examiner’s interpretation of “rake angle” is broader than Kodak’s proposed
interpretation, that does not mean that that interpretation is inconsistent with
Kodak’s specification. Kodak’s examples and specific embodiments
describe rake angles formed from the horizontal plane. However, Kodak’s
specification does not specifically foreclose or disclaim forming rake angles
from the vertical plane.
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Lastly, Kodak’s argument that the Examiner’s interpretation is
inconsistent with how those in the art would use the term is unsupported by
declaration evidence. Kodak does not direct us to evidence to support its
assertion that the Examiner’s interpretation of “rake angle” is inconsistent
with the interpretation that those skilled in the art would reach, or that those
skilled in the art would understand a “rake angle” to only be formed relative
to the horizontal plane of sheet material being cut. Argument of counsel
cannot take the place of evidence lacking in the record. Meitzner v. Mindick,
549 F.2d 775, 782 (CCPA 1977).
For all of these reasons, Kodak has not sufficiently shown that the
Examiner erred in finding claims 19-28 anticipated by Sanda.
F. CONCLUSION
Kodak has not demonstrated that the Examiner erred in determining
that Sanda’s angles meet the “rake angle” limitations.
G. ORDER
The decision of the Examiner rejecting claims 19-28 under 35 U.S.C. §
102(e) as anticipated by Sanda 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)(2008).
AFFIRMED

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MAT

Paul A. Leipold
Patent Legal Staff
Eastman Kodak Company
343 State Street
Rochester NY 14650-2201