Ex parte MULLER

Board of Patent Appeals and Interferences

Dec 21, 1999

08514377 (B.P.A.I. Dec. 21, 1999)

Application for patent filed August 11, 1995.1
The appellant amended claims 1, 6 and 31 subsequent to2
final rejection via the paper (Paper No. 19) filed with the
reply brief (Paper No. 18) on March 19, 1998 . Although the
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte HANS MULLER
________________
Appeal No. 1998-1868
Application 08/514,3771
________________
HEARD: NOVEMBER 15, 1999
________________
Before STAAB, McQUADE and NASE, Administrative Patent Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Hans Muller appeals from the final rejection of claims 1,
6, 30 and 31. Claims 2 through 5 and 7 through 29, the only2
Appeal No. 1998-1868
Application 08/514,377
examiner did not mention the amendments in the advisory letter
(Paper No. 21) acknowledging receipt and entry of the reply
brief, he did place a dated and initialed instruction to
“Enter” in the page margin adjacent the amendments (which have
in fact been clerically inserted into the record).
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other claims pending in the application, stand withdrawn from
consideration pursuant to 37 CFR § 1.142(b). We reverse.
The subject matter on appeal relates to “a method and
apparatus for trimming flat products along a predetermined
cutting line” (specification, page 2). Claims 1 and 6 are
illustrative and read as follows:
1. A method for trimming flat printed products along a
predetermined cutting line, comprising the steps of:
continuously feeding the printed products in succession
in a feed direction parallel to a plane defined by the printed
products;
passing the printed products between two superposed
knives having oppositely disposed cutting edges; and
moving the two knives in cutting engagement with one
another in a direction that includes a component perpendicular
to the plane of the printed products and a movement component
that is in the feed direction so that a continuous feed flow
of the printed products is maintained during the trimming.
6. An apparatus for trimming flat printed products
along a predetermined cutting line, comprising:
conveyor means for continuously feeding the printed
products in succession in a feed direction parallel to a plane
defined by the printed products;
Appeal No. 1998-1868
Application 08/514,377
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at least one cutting device having two superposed knives
having oppositely disposed cutting edges, the printed products
being passed by said conveyor means between said two knives;
and
drive means for moving each of the knives in cutting
engagement with the other knife in a direction that includes a
component perpendicular to the plane of the printed products
and a movement component that is in the feed direction to
maintain a continuous feed flow during the trimming.
The references relied upon by the examiner as evidence of
obviousness are:
Long et al. (Long) 4,142,430 Mar. 6, 1979
Evans 4,387,614 Jun. 14, 1983
Claims 1, 6, 30 and 31 stand rejected under 35 U.S.C. §
112, second paragraph, as failing to particularly point out
and distinctly claim the subject matter the appellant regards
as the invention.
Claims 1, 6 and 30 stand rejected under 35 U.S.C. §
102(b) as being anticipated by Evans.
Claims 1, 6, 30 and 31 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Long in view of Evans.
Reference is made to the appellant’s main and reply
briefs (Paper Nos. 15 and 18) and to the examiner’s answer
(Paper No. 16) for the respective positions of the appellant
Appeal No. 1998-1868
Application 08/514,377
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and the examiner with regard to the merits of these
rejections.
Turning first to the 35 U.S.C. § 112, second paragraph,
rejection, the examiner considers independent claims 1 and 6,
and claims 30 and 31 which depend from claim 6, to be
indefinite because
[i]n claims 1 and 6, the tool is described as
moving “in a direction that is substantially
perpendicular to the plane of the printed products
and with a movement component that is in the feed
direction”. This phrase is confusing because the
tools do not move “substantially perpendicularly to
the plane of the printed product” [answer, page 2].
The phrases in question, however, no longer appear in
claims 1 and 6 as a result of the amendments filed with the
reply brief (see footnote 2, supra). The examiner has not
explained, nor is it apparent, why claims 1 and 6 as amended
are still indefinite. Accordingly, we shall not sustain the
standing 35 U.S.C. § 112, rejection of these claims or of
claims 30 and 31 which depend from claim 6.
As for the standing 35 U.S.C. § 102(b) rejection, Evans
discloses a direct drive cut-off machine wherein the cyclic
speeds of the cut-off knives are electronically controlled to
cut a continuous pre-printed corrugated web into sheets or
Appeal No. 1998-1868
Application 08/514,377
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blanks of desired length. The machine includes, inter alia, a
glue machine 12, a double facer machine 14, a rotary shear 16
for severing the web into a leader and trailer, a
slitter/scorer 18 for slitting and scoring the web and a cut-
off machine 20 having rotary knives for cutting the web into
the blanks of desired length.
Anticipation is established only when a single prior art
reference discloses, expressly or under principles of
inherency, each and every element of a claimed invention. RCA
Corp. v. Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444,
221 USPQ 385, 388 (Fed. Cir. 1984). In other words, there
must be no difference between the claimed invention and the
reference disclosure, as viewed by a person of ordinary skill
in the field of the invention. Scripps Clinic & Research
Found. v. Genentech Inc., 927 F.2d 1565, 1576, 18 USPQ2d 1001,
1010 (Fed. Cir. 1991). Claim 1 recites a method
comprising, inter alia, the steps of passing printed products
between “two superposed knives having oppositely disposed
cutting edges” and moving the two knives in cutting engagement
with one another in a direction that includes a component
perpendicular to the plane of the printed products and a
Appeal No. 1998-1868
Application 08/514,377
Based on the underlying disclosure (see specification3
pages 2, 5 and 13), we understand the recitations that the
cutting edges of the superposed knives are oppositely disposed
to mean that these cutting edges face one another. Indeed,
claims 1 and 6 as originally presented expressly recited that
each cutting edge faced the other cutting edge, but these
recitations were replaced with the present corresponding
recitations (see Paper No. 8) to overcome a dubious 35 U.S.C.
§ 112, second paragraph, rejection.
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movement component that is in the feed direction. Claim 6
recites an apparatus comprising, inter alia, at least one
cutting device having “two superposed knives having oppositely
disposed cutting edges” and drive means for moving each of the
knives in cutting engagement with the other knife in the same
manner as is set forth in claim 1. 3
The appellant’s argument that Evans does not meet these
claim limitations (see, for example, page 2 in the reply
brief) is persuasive. In this regard, the examiner’s
determination that Evans’ rotary shear 16 and/or rotary knife
cut-off machine 20 constitute superposed knives, having
oppositely disposed (i.e., facing) cutting edges, which move
in the manner recited (see page 2 in the answer) rests on an
unreasonably broad interpretation of the limitations in
question as they would be viewed by a person of ordinary skill
Appeal No. 1998-1868
Application 08/514,377
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in the field of the invention.
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 102(b) rejection of claims 1 and 6, or of dependent claim
30, as being anticipated by Evans.
We also shall not sustain the standing 35 U.S.C. § 103(a)
rejection of claims 1, 6, 30 and 31 as being unpatentable over
Long in view of Evans.
Long discloses “[a]n envelope opener comprising first,
second and third shear stations for shearing three edges of an
envelope in sequence one edge at a time” (Abstract). Each of
the shear stations 26, 38 and 50 includes a stationary anvil
and a rotatable barrel having a pair of shear blades mounted
on opposite sides thereof and a longitudinal opening
intermediate the blades. Each envelope to be sheared is
conveyed into contact with the barrel, cut by one of the
blades in conjunction with the stationary anvil and passed
through the opening in the barrel (see column 2, line 65 et
seq.).
In short, there is nothing in the combined teachings of
Long and Evans which would have suggested a method or
apparatus meeting the above discussed limitations in
Appeal No. 1998-1868
Application 08/514,377
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independent claims 1 and 6 relating to the superposed knives.
The decision of the examiner is reversed.
REVERSED
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
)
)
JOHN P. McQUADE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 1998-1868
Application 08/514,377
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