Ex Parte Loibl

Board of Patent Appeals and Interferences

Jan 25, 2010

11057131 (B.P.A.I. Jan. 25, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BERND LOIBL
____________

Appeal 2009-007536
Application 11/057,131
Technology Center 3700
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Decided: January 26, 2010
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Before WILLIAM F. PATE, III, STEFAN STAICOVICI, and
FRED A. SILVERBERG, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.
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DECISION ON APPEAL
STATEMENT OF THE CASE
Bernd Loibl (Appellant) appeals under 35 U.S.C. § 134 (2002) from
the Examiner’s decision rejecting claims 1, 2, and 4-6. Claim 3 has been
canceled and claims 7-29 have been withdrawn. Appellant’s representative
presented oral argument on January 14, 2010. We have jurisdiction over this
appeal under 35 U.S.C. § 6 (2002).

THE INVENTION
Appellant’s invention is drawn towards a cutting unit 1 having a
guillotine cutting device 4 on one side and a rotary cutting device 5 on the
opposite side. Spec. 7, ll. 8-11 and fig. 1.
Claim 1 is representative of the claimed invention and reads as
follows:
1. A cutting unit (1, 31, 47, 51) for trimming sheet material
(18, 44) such as paper or films, comprising a planar bed
(3, 33, 53) for supporting the sheet material (18, 44),
which bed is equipped on one side with a guillotine
cutting device (4, 54) that has a pivotably mounted knife
arm (6, 56) having a blade held thereon and a
counterknife (9) held in stationary fashion on the bed (3,
33, 53),
wherein there is additionally provided a rotary cutting
device (5, 35, 55) that has a knife carriage (14, 36, 61)
displaceable on a guide bar (11, 35, 60) and a circular
knife (15, 39) rotatably mounted in said knife carriage
(14, 26, 61), said circular knife (15, 39) having a
rotational axis extending perpendicular to a longitudinal
axis of said guide bar (11, 35, 60), and said guillotine
cutting device (4, 54) and the rotary cutting device (5, 35,
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55) are arranged so that they have cutting directions
extending in parallel fashion.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:

Blanc US 2,345,450 Mar. 28, 1944
Beck US 5,432,968 Jul. 18, 1995
Hsiao US 6,460,443 B1 Oct. 8, 2002

The Appellants rely on the following as evidence of non-obviousness:
Declaration filed Jan. 14, 2008 under 37 C.F.R. § 1.132 of Rick
Tremmel.1
Appellant seeks review of the Examiner’s rejection of claim 1, 2, and
4-6 under 35 U.S.C. § 103(a) as unpatentable over Blanc, Hsiao, and Beck.

THE ISSUES
1. Has Appellant demonstrated that the teachings of Beck constitute
non-analogous art?
2. Has Appellant demonstrated that the Examiner erred in combining
the teachings of Blanc, Hsiao, and Beck to arrive at the claimed
invention? The issue turns on whether the submitted objective
evidence of commercial success, as represented by the Tremmel
Declaration, outweighs the evidence for obviousness.
3. Has Appellant demonstrated that the Examiner erred in
determining that the combined teachings of Blanc, Hsiao, and

1 Hereafter “Tremmel Declaration.”
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Beck show a rotary cutting device located on a different side of the
bed (as per claim 2), a stop bar (as per claim 4), or a counterknife
bar (as per claim 6)?

SUMMARY OF DECISION
We AFFIRM.

PRINCIPLES OF LAW
Non-Analogous Art
“‘A reference is reasonably pertinent if, even though it may be in
different field from that of the inventor's endeavor, it is one which, because
of the matter with which it deals, logically would have commended itself to
an inventor's attention in considering his problem.’ In re Clay, 966 F.2d
656, 659 (Fed. Cir. 1992). In other words, ‘familiar items may have obvious
uses beyond their primary purposes.’ KSR Int’l. Co. v. Teleflex, Inc., 550
U.S. 398, [421] (2007).” In re Icon Health & Fitness, Inc., 496 F.3d 1374,
1379-80 (Fed. Cir. 2007).

Secondary considerations
Whenever obviousness is found with respect to the subject matter on
appeal, and Appellants furnish evidence of secondary considerations, it is
our duty to reconsider the issue of obviousness anew, carefully weighing the
evidence for obviousness with respect to the evidence against obviousness.
See, e.g., In re Eli Lilly & Co., 902 F.2d 943, 945 (Fed. Cir. 1990). We are
also mindful that the objective evidence of nonobviousness in any given case
may be entitled to more or less weight depending on its nature and its
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relationship with the merits of the invention. See Stratoflex Inc. v. Aeroquip
Corp., 713 F.2d 1530, 1538 (Fed. Cir. 1983).
Appellants asserting secondary considerations to support their
contention of non-obviousness bear the burden of proof of establishing a
nexus between the claimed invention and evidence of secondary
considerations. For example, in the case of evidence of commercial success,
the Federal Circuit has acknowledged that the applicant bears the burden of
establishing a nexus, stating:
In the ex parte process of examining a patent
application, however, the PTO lacks the means or
resources to gather evidence which supports or
refutes the applicant’s assertion that the sales
constitute commercial success. Cf. Ex parte
Remark, 15 USPQ2d 1498, 1503 (Bd. Pat. App. &
Int. 1990) (evidentiary routine of shifting burdens
in civil proceedings inappropriate in ex parte
prosecution proceedings because examiner has no
available means for adducing evidence).
Consequently, the PTO must rely upon the
applicant to provide hard evidence of commercial
success.
In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996). See also In re GPAC
Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995) and In re Paulsen, 30 F.3d 1475,
1482 (Fed. Cir. 1994) (Evidence of commercial success of articles not
covered by the claims subject to the obviousness rejection was not probative
of non-obviousness).

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OPINION
Issue (1)
Appellant argues that Beck is non-analogous art because it does not
satisfy the test as set out by the Court in In re Bigio, 381 F.3d 1320 (Fed.
Cir. 2004). App. Br. 13. See also Reply Br. 2. Appellant states that:
First, it must be determined whether a particular
reference is "within the field of the inventor's
endeavor, regardless of the problem addressed."
Second, assuming the reference is outside that
field, it must be determined whether the reference
is "reasonably pertinent to the particular problem
with which the inventor was involved."
App. Br. 13.
According to Appellant, Beck (1) is not in the field of Appellant’s endeavor
and (2) is not reasonably pertinent to the particular problem solved by
Appellant’s invention. App. Br. 13, 14.
With respect to the first part of the test, Appellant argues that in
contrast to the claimed invention, which is drawn to a cutting device for
trimming sheet material such as paper or film, Beck’s field of endeavour is a
“universal tool,” namely, a hand tool configurable as pliers, a wrench, a
screwdriver, a knife, and a file. App. Br. 13. In a first instance, we note that
Beck describes a knife blade 33 as part of the “universal tool.” Beck, fig. 6.
However, Beck is silent as to whether the knife blade 33 can be used for
trimming sheet material such as paper or film. As such, although the
“universal tool” of Beck is silent as to its ability to trim sheet material,
hence, it may not be in Appellant’s field of endeavour, nonetheless,
according to the second prong of In re Bigio, an analogous prior art
reference should be “reasonably pertinent to the problem with which the
inventor is involved.” In re Bigio, 381 F.3d at 1325. Appellant defines the
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problem to be solved by the invention as providing a cutting unit having
“different kinds of cutting devices.” App. Br. 14. In other words, the
general problem facing Appellant was combining different kinds of tools (a
guillotine cutter and a rotary cutter) into a single unit. Similarly, Beck
discloses that it is well known to combine different kinds of tools (pliers, a
wrench, a screwdriver, a knife, and a file) in a single unit. See Beck, fig. 1.
As such, Beck addresses the problem addressed by Appellant, namely,
combining different tools into a single unit. Therefore, the teachings of
Beck are reasonably pertinent to the problem the Appellant was trying to
solve, and are thus analogous art.

Issue (2)
Appellant argues that the Examiner based the determination of
obviousness on the hindsight combination of Blanc, Hsiao, and Beck.2
Reply Br. 2-3. Specifically, Appellant argues that the tool of Beck requires
repositioning and reconfiguration when each device is used. Reply Br. 3.
According to Appellant this is in contrast to the claimed invention “where
one can easily shift from using the guillotine cutter to the rotary cutter by

2 In order to better exemplify the concept of a “universal tool” the
Examiner reaches to the teachings of Swanson (U.S. Patent No. 2,279,078,
issued Apr. 7, 1942) and Peterson (U.S. Patent Publication No.
2005/0000340, published Jan. 6, 2005) (Ans. 5), a pocketknife with a saw
blade and a letter opening blade (Ans. 6), and the multifunction tool of
Leatherman Tools (Ans. 7-8). We find the Examiner’s use of these
teachings to be mere examples of “universal tools” that combine different
tools into a single unit. Since these teachings are not part of the rejection in
the instant appeal, but mere exemplifications of a “universal tool,” we shall
not address Appellant’s arguments regarding these teachings. See Reply Br.
6, 7, 10, and 11.
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merely moving the sheet material from one cutting device to the other.” Id.
See also Reply Br. 12. Appellant further argues that:
While repositioning a hand tool, such as Beck,
may not be difficult, repositioning a cutting unit of
the type claimed can be a cumbersome procedure
and one which will slow down use of the device.

Reply Br. 3.

[C]laims 1-2 and 4-6 do not recite the mere
combination of multiple tools, but the cutting unit
provided with two cutting devices (a guillotine
cutting device and a rotary cutting device) that
carry out the identical function: cutting a sheet of
paper.
Supplemental Reply Br. 2 (filed Jan. 7, 2010).
At the outset, we note that it is not the Beck reference that is being
modified but rather the Blanc reference. It is our finding that Blanc
discloses a guillotine cutting device. Blanc, fig. 1. Hsiao discloses a rotary
cutting device. Hsiao, fig. 2. As noted above, Beck discloses that it is well
known to combine different kinds of tools (pliers, a wrench, a screwdriver, a
knife, and a file) in a single unit. Beck, fig. 1. As such, Appellant’s claimed
cutting unit is nothing more than the guillotine cutter of Blanc in which the
rotary cutter of Hsiao has been added. Hence, modifying the guillotine
cutter of Blanc to include the rotary cutter of Hsiao would not have been
uniquely challenging to a person of ordinary skill in the art, because it is no
more than “the mere application of a known technique to a piece of prior art
ready for the improvement.” KSR Int'l. Co. v. Teleflex lnc., 550 U.S. 398,
417 (2007). Therefore, the modification appears to be the product not of
innovation but of ordinary skill and common sense. Moreover, the
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Appellant has not alleged, much less shown, that the modification of Blanc
to include the rotary cutter of Hsiao would have been beyond the skill of a
person of ordinary skill in the art. In conclusion, we agree with the
Examiner that, in view of the teachings of Beck, it would have been obvious
for a person of ordinary skill in the art to have combined the guillotine cutter
of Blanc and the rotary cutter of Hsiao into a single unit in order to
“[increase] the overall utility of the cutting device by providing multiple
devices to cut sheet material so a user could pick the best cutter to use in a
given situation.” Ans. 4.
We recognize that evidence of secondary considerations, such as that
presented by Appellant, must be considered in route to a determination of
obviousness/nonobviousness under 35 U.S.C. § 103. Accordingly, we
consider anew the issue of obviousness under 35 U.S.C. § 103, carefully
evaluating and weighing both the evidence relied upon by the Examiner and
the objective evidence of nonobviousness provided by Appellant.
Appellant submitted the Tremmel Declaration as evidence of the
claimed invention’s commercial success. App. Br. 7, 8. See also Reply Br.
4, 5 and 8, 9. Gross sales of Appellant’s claimed cutting device (Tremmel
Declaration, ¶¶ 9, 10, 14, and 15) without evidence as to whether this
represents a substantial share of any definable market, provides a weak
showing of commercial success. In re Huang, 100 F.3d 135, 139-40 (Fed.
Cir. 1996). Paragraph 13 of the Tremmel Declaration states that since
Appellant’s claimed cutting device has been introduced on the market,
Appellant’s market share has more than tripled. See also App. Br. 8.
However, because Appellant has not provided any objective evidence to
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support such a statement, we find Appellant’s statement to be merely
conclusory.
As noted above, commercial success is relevant in the obviousness
context only if it is established that the sales were a direct result of the
unique characteristics of the claimed invention, as opposed to other
economic and commercial factors unrelated to the quality of the claimed
subject matter. In other words, a nexus is required between the sales and the
merits of the claimed invention. Appellant argues that the commercial
success of its claimed paper cutter is “directly attributable to the features set
forth in claim 1 (i.e., the dual guillotine-type and rotary-type cutters on a
single base).” App. Br. 10. See also Tremmel Declaration, ¶¶ 16 and 22.
As evidence, Appellant points to various unsolicited articles from
online magazines that “tout the ‘ingenious paper cutter’ and call it ‘a must
have product’ because ‘the 2-in 1 cutter helps to cut evenly every time.’”
Tremmel Declaration, ¶¶ 18 and 19. However, we find that these magazine
articles do not showcase the dual guillotine-type and rotary type cutter
aspect of Appellant’s invention, but rather other features, such as, the built-
in safety features of the guillotine and rotary blades (“‘blade’ that will cut
12” paper” and “will not cut little fingers”, S.S. Reflections. See also
momready, CardMaker), the built-in storage trays (PhotoReporter,
momready), an alignment grid for precise measurements (the SCRAP
corner, scrapjazz), interchangeability of the rotary cutter blades (“The
interchangeable blades are TO DIE FOR!”, scrapjazz, e-mail from Kayla
Richards), the ability to remove the trimmer (rotary cutter) from the
guillotine blade for easy transport and storage (S.S. Reflections, scrapjazz,
Scrapbooks etc.), and a slide out ruler (scrapjazz, e-mail from Polly).
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Tremmel Declaration, Exhibit C. In conclusion, Appellant has not supplied
sufficient evidence to permit us to ascertain whether these sales were
attributable to the unique characteristics of the claimed invention, rather than
other factors, such as other unclaimed features of Appellant’s invention or
characteristics of the Appellant as a vendor.
Appellant further argues that the claimed cutter has been patented in
Europe. Tremmel Declaration, ¶ 8. However, “[i]n view of the differences
between foreign patent laws and those of the United States, the allowance of
patent claims in foreign countries is not pertinent to the question whether
similar claims should be allowed here.” In re Larsen, 292 F.2d 531, 533
(CCPA 1961).
Lastly, with respect to Appellant’s argument that the claimed cutting
device has been licensed to two European companies (Tremmel Declaration,
¶¶ 20 and 21), Appellant has not provided any evidence to show a nexus
between the merits of the claimed invention and the licenses granted, that is,
Appellant has not explained the terms of the licenses nor the circumstances
under which they were granted. See, e.g., Iron Grip Barbell Co., Inc. v. USA
Sports, Inc., 392 F.3d 1317, 1324 (Fed. Cir. 2004).
After reviewing all of the evidence before us, including the totality of
Appellant's evidence, it is our conclusion that, on balance, the evidence of
nonobviousness fails to outweigh the evidence of obviousness discussed
above and, accordingly, the subject matter of claim 1 would have been
obvious to one of ordinary skill in the art within the meaning of 35 U.S.C.
§ 103(a) at the time Appellant's invention was made. See Richardson-Vicks
Inc. v. Upjohn Co., 122 F.3d 1476, 1483 (Fed. Cir. 1997).
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For the foregoing reasons, Appellant’s arguments do not persuade us
the Examiner erred in rejecting claim 1 as unpatentable over Blanc, Hsiao,
and Beck. Accordingly, the rejection of claim 1 is sustained.

Issue (3)
Claim 2
Claim 2 requires that the rotary cutting device be “arranged on a
different side of the bed.” Appellant argues that the Examiner has merely
relied on a design choice argument. App. Br. 15. Claim 2 merely requires
that the rotary cuter device be arranged on a different side than the guillotine
cutting device. A person of ordinary skill in the art would have readily
recognized that since the guillotine cutting device occupies one side of the
bed, then the rotary cutting device of Blanc, Hsiao, and Beck must occupy a
different side than that of the guillotine cutting device. “A person of
ordinary skill is also a person of ordinary creativity, not an automaton."
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
As such, the rejection of claim 2 is likewise sustained.

Claim 4
With respect to claim 4, Appellant argues that “Blanc does not
disclose a stop bar between a guillotine cutting device and a rotary cutting
device.” App. Br. 17. Appellant’s argument appears to attack the teachings
of Blanc, Hsiao, and Beck individually, rather than the combination of
Blanc, Hsiao, and Beck. Nonobviousness cannot be established by attacking
the references individually when the rejection is predicated upon a
combination of prior art disclosures. See In re Merck & Co, 800 F.2d 1091,
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1097 (Fed. Cir. 1986). As noted by the Examiner, Blanc specifically teaches
a stop bar 27 (guide strip). Ans. 3. See also Blanc, fig. 1.
Accordingly, the rejection of claim 4 is also sustained.

Claim 5
Regarding claim 5, Appellant merely reiterates the claim limitations
and does not present separate arguments for patentability of these claims.
App. Br. 17. See 37 C.F.R. § 41.37(c)(1)(vii)(2009) (“A statement which
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim.”).
Therefore, the rejection of claim 5 is sustained.

Claim 6
The Examiner determined that the resilient strap 23 of Hsiao
constitutes a “counterknife bar,” as required by claim 6. Ans. 4. Appellant
argues that the “soft strap” of Hsiao does not constitute a “counterknife bar,”
as required by claim 6. App. Br. 17, 18. However, Appellant’s
Specification does not expressly define the term “counterknife bar.” Claims
are to be given their broadest reasonable interpretation consistent with the
specification, reading claim language in light of the specification as it would
be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In this case, Appellant’s
Specification describes counterknife bar 17 that is recessed into bed 3 and
contacts circular knife 15. Spec. 7, ll. 32-34 and fig. 3. Similarly, in Hsiao,
the resilient strap 23 (counterknife bar) is recessed into the base 21 (bed) and
comes in contact with the rotating blade 33 (circular knife). Hsiao, col. 2, ll.
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22-23 and 33-34 and fig. 5. Since Appellant has not provided an explicit
definition of the term “counterknife bar” and the resilient strap 23 of Hsiao
satisfies the description provided in Appellant’s Specification, we agree with
the Examiner that the resilient strap 23 of Hsiao constitutes a “counterknife
bar,” as required by claim 6. Accordingly, we shall also sustain the rejection
of claim 6.

CONCLUSIONS
1. Appellant has failed to show that the teachings of Beck constitute
analogous art.
2. Appellant has failed to show that the Examiner erred in determining
that the subject matter of claim 1 is obvious, that is, the evidence of
obviousness outweighs the evidence of non-obviousness.
3. Appellant has failed to show that the Examiner erred in determining
that the combined teachings of Blanc, Hsiao, and Beck show a rotary
cutting device located on a different side of the bed (as per claim 2), a
stop bar (as per claim 4), or a counterknife bar (as per claim 6).

SUMMARY
The decision of the Examiner to reject claims 1, 2, and 4-6 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED
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