Ex Parte Myers

Patent Trials and Appeals Board

Jun 25, 2013

10987838 - (D) (P.T.A.B. Jun. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ROBERT ANDREW MYERS
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Appeal 2013-001792
Application 10/987,838
Technology Center 3700
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Before JENNIFER D. BAHR, LINDA E. HORNER, and
KEN B. BARRETT, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Robert Andrew Myers (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 1-4 under 35 U.S.C.
§ 102(b) as anticipated by Greene (US 3,134,285; iss. May 26, 1964).
Claims 5-24 are withdrawn from consideration. We have jurisdiction under
35 U.S.C. § 6(b).
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We AFFIRM-IN-PART.

THE INVENTION
Appellant’s claimed invention relates to a scissor cutter, such as for
use in a paper tape receipt printer, that is adjustable to create either a full or a
partial cut across paper tape. Spec., para. [0001]. Claim 1, reproduced
below, is illustrative of the subject matter on appeal.1
1. A scissor cutter comprising:
a moving blade having a fixed range of motion; and
an adjustable stationary blade, wherein the adjustable
stationary blade is stationary during a cutting operation and is
moveable lateral relative to the moving blade to allow a paper
tape to be selectively fully cut, when the adjustable stationary
blade is positioned for a full cut of the paper tape, or partially
cut, when the adjustable stationary blade is repositioned
laterally to a partial cut position relative to the moving blade
that enables a partial cut of the paper tape.

ANALYSIS
Appellant offers arguments pertaining to all the claims subject to this
rejection (claims 1-4) and offers additional arguments for claims 3 and 4.
App. Br. 3-7. For the arguments pertaining to all of the claims, we select

1 This application was the subject of a prior appeal. Ex parte Myers, Appeal
2009-010355 (BPAI, Feb. 14, 2011). In the prior appeal, the Board reversed
the Examiner’s rejection of then-pending claims 1-4 under 35 U.S.C.
§ 102(b) as anticipated by Komaransky (US 4,699,609; iss. Oct. 13, 1987).
Since the Board’s decision in the prior appeal, the Examiner reopened
prosecution and entered a new rejection based on Greene, and Appellant
amended claim 1.
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claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2012). We
separately consider the additional arguments pertaining to claims 3 and 4.2

Claim 1
Appellant argues that Greene does not anticipate claim 1 because it
does not disclose an adjustable stationary blade that is movable lateral
relative to the moving blade to a partial cut position that enables a partial cut
of the paper tape. App. Br. 4. In particular, Appellant argues that Greene’s
auxiliary blades G are attached atop a portion of fixed blades B and are
specifically designed to enable the movable blade C to cut across the entire
width of the siding. Id. at 5. Appellant contends that the Examiner erred in
finding Greene anticipates claim 1 because “[n]owhere within the
description or within the various illustrations of Greene does Greene teach
or even suggest partially cutting the siding based on a lateral position of the
auxiliary blades G or the fixed or die blades B.” Id.; see also Reply Br. 2
(arguing Greene is solely directed to performing a full cut).
The Examiner’s rejection, however, is based on a finding that
Greene’s cutter, including moving blade C and adjustable stationary blade

2 Appellant also seeks the Board’s review of the Examiner’s restriction of
newly presented claims 23 and 24. As noted by the Examiner (Ans. 8), an
examiner’s imposition of a restriction requirement is not appealable to the
Board. See 37 C.F.R. § 1.144 (“After a final requirement for restriction, the
applicant, in addition to making any reply due on the remainder of the
action, may petition the Director to review the requirement. Petition may be
deferred until after final action or on allowance of claims to the invention
elected, but must be filed not later than appeal.”).
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26, “is capable of selectively cutting a paper tape fully or partially depending
upon the size of the paper to be cut[.]” Ans. 3; see also Ans. 5 (“Greene
teaches a device capable of allowing a paper tape to be selectively fully cut
or a partial cut in any position depending on the size of a paper tape and
positioning of the paper tape against the cutter.”)
We agree with the Examiner. We interpret the functional language in
the body of the claim as merely requiring a scissor cutter capable of being
used to selectively fully or partially cut a paper tape based on the position of
the stationary blade relative to the moving blade. While Greene’s cutter may
be intended to be used to fully cut a piece of siding across the entire width of
the siding, the Examiner is correct in stating that depending on the size and
position of the paper tape relative to the blades of the cutter, Greene’s cutter
is capable of being used to partially cut a paper tape. As such, the
Examiner’s finding that Greene’s cutter is capable of performing the
functions recited in the claims is reasonable.
This finding shifts the burden to Appellant to show that Greene’s
apparatus does not possess these characteristics. In re Spada, 911 F.2d 705,
708 (Fed. Cir. 1990) and In re Swinehart, 128 F.3d 1473, 1478 (Fed. Cir.
1997). Appellant has not presented persuasive argument or evidence to
structurally distinguish Greene’s cutter from the claimed cutter or to show
that Greene’s cutter is not capable of being used to partially cut a paper tape.
For these reasons, we affirm the rejection of claim 1 as anticipated by
Greene. Claim 2 falls with claim 1.

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Claim 3
Appellant additionally argues that Greene does not anticipate claim 3
because Greene’s cutter does not have a “friction locking section” on the
blade carrier. App. Br. 6. The Examiner found that the second end portion
of Greene’s blade carrier (E and 24) that contacts a portion of the bars (2)
via the screws (1) is a “friction locking section.” Ans. 6. We understand the
Examiner to be giving the broadest reasonable interpretation of “friction
locking section” in view of the ordinary meaning of the claim language and
in light of the Specification to refer to a section of the blade carrier that
comes into frictional contact with another portion of the cutter and which is
locked relative to another portion of the cutter. Appellant has not persuaded
us that the Examiner’s interpretation is unreasonable.
The Specification describes a Z-shaped blade carrier 104 having a
friction locking section 122 that “provides friction resistant lateral
movement of blade carrier 104 within an open channel in printer mount
106.” Spec., para. [0018]. The Specification describes that “friction locking
section 122 slides against first end retention tab 124 and back plate 126,
while, as shown in detail in Figure 1e, a retention slot tab 130 slides within
the second end retention slot 128.” Id. The blade carrier is not locked by
friction, but is instead locked by virtue of interaction between the portions of
the blade carrier hitting stops on a printer mount. Id. at para. [0019].
Greene’s cap screws 1 pass through a hole in the lower section of
Greene’s blade carrier to lock it in place relative to the bars 2. We are not
persuaded by Appellant’s argument that “[i]f the pieces of Greene had a
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friction locking mechanism, the screw would be largely unnecessary.”
Reply Br. 4. Appellant’s own “friction locking section” is not locked in
place through friction. As such, Appellant has not persuaded us that the
Examiner’s determination that Greene anticipates claim 3 is in error.

Claim 4
Claim 4 recites that “the lateral movement of the adjustable stationary
blade is limited to movement of the adjustable stationary blade to a full cut
position and to a partial cut position, wherein the lateral travel of the blade
carrier is limited by stops on a printer mount to which the blade carrier is
slidably mounted.” We agree with Appellant (App. Br. 6; Reply Br. 5) that
Greene’s screws 30 do not limit movement of the adjustable stationary blade
to a full cut position and to a partial cut position. While Greene’s screws 30
act to lock the adjustable stationary blade in a selected lateral position, the
screws 30 do not act as a limit on the range of the blade’s movement. As
such, the Examiner has not demonstrated that Greene anticipates claim 4.

DECISION
We AFFIRM the decision of the Examiner to reject claims 1-3.
We REVERSE the decision of the Examiner to reject claim 4.

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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).

AFFIRMED-IN-PART

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