Ex parte Simmons

Board of Patent Appeals and Interferences

Nov 30, 1999

08154911 (B.P.A.I. Nov. 30, 1999)

Application for patent filed November 19, 1993. 1
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for publication in a law journal and (2) is not binding precedent of the Board.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. 39
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JAMES A. SIMMONS
____________
Appeal No. 1997-0595
Application No. 08/154,9111
____________
HEARD: November 15, 1999
____________
Before STAAB, McQUADE, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 to 8, 10 and 12 to 17, which are all of
the claims pending in this application.
We AFFIRM-IN-PART.
Appeal No. 1997-0595 Page 2
Application No. 08/154,911
BACKGROUND
The appellant's invention relates to a cushioning
conversion machine including a pad-transferring assembly
(specification, p. 1). An understanding of the invention can
be derived from a reading of exemplary claim 3, which appears
in the appendix to the appellant's brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Engel 2,101,170 Dec. 7,
1937
Johnson 3,509,797 May 5,
1970
Ottaviano 4,237,776 Dec.
9, 1980
(Ottaviano '776)
Ottaviano 4,557,716 Dec.
10, 1985
(Ottaviano '716)
D'Angelo et al. 4,699,031 Oct. 13,
1987
(D'Angelo)
Appeal No. 1997-0595 Page 3
Application No. 08/154,911
While claim 17 was not specifically included in this2
rejection, we conclude that the examiner intended claim 17 to
be included since claim 17 is dependent on claim 16.
Additionally, the appellant has grouped claims 14-17 to stand
or fall with claim 13 with respect to this rejection (brief,
p. 9).
Claims 13 to 17 stand rejected under 35 U.S.C. § 112,2
first and second paragraphs, as the claimed invention is not
described in such full, clear, concise and exact terms as to
enable any person skilled in the art to make and use the
invention, and/or for failing to particularly point out and
distinctly claim the subject matter which the appellant
regards as the invention.
Claim 3 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by Johnson.
Claims 1 to 8 and 10 stand rejected under 35 U.S.C. § 103
as being unpatentable over Johnson in view of D'Angelo.
Appeal No. 1997-0595 Page 4
Application No. 08/154,911
While claim 17 was not specifically included in the3
statement of the rejection, we conclude that the examiner
intended claim 17 to be included since claim 17 is mentioned
in the body of the rejection. Additionally, the appellant has
grouped claims 13-17 to stand or fall with claim 1 with
respect to this rejection (brief, p. 8).
While claim 17 was not specifically included in the4
statement of the rejection, we conclude that the examiner
intended claim 17 to be included since claim 17 is mentioned
in the body of the rejection. Additionally, the appellant has
grouped claims 13-17 to stand or fall with claim 1 with
respect to this rejection (brief, p. 9).
Claims 1 to 6, 10 and 12-17 stand rejected under 353
U.S.C.
§ 103 as being unpatentable over Ottaviano '776 in view of
Engel.
Claims 7 and 8 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Ottaviano '776 in view of Johnson and
Engel.
Claims 1 to 4 and 12-17 stand rejected under 35 U.S.C. 4
§ 103 as being unpatentable over Ottaviano '716.
Appeal No. 1997-0595 Page 5
Application No. 08/154,911
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the answer (Paper No. 21,
mailed August 21, 1996) and the examiner's reply (Paper No.
24, mailed May 13, 1997) for the examiner's complete reasoning
in support of the rejections, and to the brief (Paper No. 18,
filed August 1, 1996), reply brief (Paper No. 22, filed
October 31, 1996) and response to examiner's reply (Paper No.
25, filed June 9, 1997) for the appellant's arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
The 35 U.S.C. § 112 rejection
Appeal No. 1997-0595 Page 6
Application No. 08/154,911
We will not sustain the rejection of claims 13 to 17
under 35 U.S.C. § 112, first and second paragraphs.
The only reason set forth by the examiner for this
rejection was that
[s]ince claims 13-16 [sic, 13-17] are drawn to a
method of producing a cut pad and claim 1 is drawn to a
cushioning conversion machine, claims 13-16 [sic, 13-17]
are rendered indefinite since it is unclear whether an
[sic, a] method or an apparatus is being claimed.
Turning first to the examiner's rejection based upon the
enablement requirement set forth in the first paragraph of 35
U.S.C. § 112, we note that the test for enablement is whether
one skilled in the art could make and use the claimed
invention from the disclosure coupled with information known
in the art without undue experimentation. See United States
v. Telectronics, Inc., 857 F.2d 778, 785, 8 USPQ2d 1217, 1223
(Fed. Cir. 1988), cert. denied, 109 S.Ct. 1954 (1989); In re
Stephens, 529 F.2d 1343, 1345, 188 USPQ 659, 661 (CCPA 1976).
However, in order to make a rejection, the examiner has the
initial burden to establish a reasonable basis to question the
enablement provided for the claimed invention. See In re
Appeal No. 1997-0595 Page 7
Application No. 08/154,911
Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed.
Cir. 1993) (examiner must provide a reasonable explanation as
to why the scope of protection provided by a claim is not
adequately enabled by the disclosure). In this case, the
examiner has not alleged any basis to question the enablement
provided for the claimed invention. Since the examiner has
not met his threshold burden by advancing acceptable reasoning
inconsistent with enablement, the decision of the examiner to
reject claims 13 to 17 under 35 U.S.C. § 112, first paragraph,
is reversed.
Turning next to the examiner's rejection based upon the
definiteness requirement set forth in the second paragraph of
35 U.S.C. § 112, we note that claims are considered to be
definite, as required by the second paragraph of 35 U.S.C. §
112, when they define the metes and bounds of a claimed
invention with a reasonable degree of precision and
particularity. See In re Venezia, 530 F.2d 956, 958, 189 USPQ
149, 151 (CCPA 1976). In our view, the metes and bounds of
claims 13 to 17 would be understood by one skilled in the art
with a reasonable degree of precision and particularity. The
Appeal No. 1997-0595 Page 8
Application No. 08/154,911
manner in which method claims 13 to 17 have been drafted to
refer back to apparatus claim 1 does not make the claims
indefinite. See Ex parte Porter, 25 USPQ2d 1144, 1147 (Bd.
Pat. App. & Int. 1992) and Manual of Patent Examining
Procedure (MPEP) (7th Ed., July 1998)
§§ 608.01(n) and 2173.05(f). Since claims 13 to 17 are
definite, the decision of the examiner to reject claims 13 to
17 under 35 U.S.C. § 112, second paragraph, is reversed.
The anticipation rejection
We sustain the rejection of claim 3 under 35 U.S.C. §
102(b) as being anticipated by Johnson.
Initially we note that anticipation by a prior art
reference does not require either the inventive concept of the
claimed subject matter or the recognition of inherent
properties that may be possessed by the prior art reference.
See Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 633,
2 USPQ2d 1051, 1054 (Fed. Cir.), cert. denied, 484 U.S. 827
(1987). A prior art reference anticipates the subject of a
claim when the reference discloses every feature of the
Appeal No. 1997-0595 Page 9
Application No. 08/154,911
claimed invention, either explicitly or inherently (see Hazani
v. Int'l Trade Comm'n, 126 F.3d 1473, 1477, 44 USPQ2d 1358,
1361 (Fed. Cir. 1997) and RCA Corp. v. Applied Digital Data
Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.
Cir. 1984)); however, the law of anticipation does not require
that the reference teach what the appellant is claiming, but
only that the claims on appeal "read on" something disclosed
in the reference (see Kalman v. Kimberly-Clark Corp., 713 F.2d
760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied,
465 U.S. 1026 (1984)).
Johnson discloses a mechanism for producing cushioning
dunnage. As shown in Figures 17-19, the dunnage producing
mechanism includes a pair of coacting rollers 114, 114a which
are driven to pull a strip of sheet-like material 104 through
a crumpler or folding mechanism 96, a roller 116, a belt 118,
a guide rod 148, a receptacle 150, and a cutter mechanism 152.
As shown in the drawings, these elements are carried by a
support.
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We agree with the examiner's view (answer, p. 9) that5
friction exists between the guide rod 148 and the strip 104
both prior to the strip being cut by cutter mechanism 152 and
after the strip has been cut.
The appellant argues that claim 3 is not anticipated by
Johnson since Johnson's rod 148 does not (1) "frictionally
engage the strip prior to it being cut," and (2) "frictionally
transfer the cut pad away from the cutting assembly." We do
not agree.
In our view, the claimed "pad-transferring assembly" of
claim 3 is readable on Johnson's guide rod 148. In that
regard, Johnson's guide rod 148 is clearly mounted to a frame
downstream of the cutter mechanism 152 and acts to transfer
the cut strip away from the cutter mechanism 152. In
addition, as shown in Figure 19, Johnson's guide rod 148
frictionally engages the strip 104 prior to it being cut and
then acts to frictionally transfer the cut piece of strip 104
away from the cutter mechanism 152 and towards the receptacle
150. 5
Appeal No. 1997-0595 Page 11
Application No. 08/154,911
Since claim 3 is anticipated by Johnson, the decision of
the examiner to reject claim 3 under 35 U.S.C. § 102(b) is
affirmed.
The obviousness rejection utilizing Johnson
We sustain the rejection of claims 3 and 4 under 35
U.S.C.
§ 103 as being unpatentable over Johnson in view of D'Angelo
but not the rejection of claims 1, 2, 5 to 8 and 10.
As noted above, claim 3 is anticipated by Johnson. A
disclosure that anticipates under 35 U.S.C. § 102 also renders
the claim unpatentable under 35 U.S.C. § 103, for
"anticipation is the epitome of obviousness." Jones v. Hardy,
727 F.2d 1524, 1529, 220 USPQ 1021, 1025 (Fed. Cir. 1984).
See also In re Fracalossi, 681 F.2d 792, 794, 215 USPQ 569,
571 (CCPA 1982); In re Pearson, 494 F.2d 1399, 1402, 181 USPQ
641, 644 (CCPA 1974). Thus, we sustain the examiner's
rejection of claim 3 under
35 U.S.C. § 103 as being unpatentable over Johnson in view of
D'Angelo.
Appeal No. 1997-0595 Page 12
Application No. 08/154,911
Claim 4 adds to parent claim 3 the limitation that the
"pad-transferring assembly" comprises "a conveyor which
frictionally engages the strip prior to it being cut and
frictionally transfers the cut pad away from the cutter
assembly." In our view, this limitation is readable Johnson's
guide rod 148 since Johnson's guide rod 148 acts as a gravity
conveyor which frictionally engages the strip 104 prior to it
being cut and then acts to frictionally transfer the cut piece
of strip 104 away from the cutter mechanism 152 and towards
the receptacle 150. Since as stated supra a disclosure that
anticipates under 35 U.S.C. § 102 also renders the claim
unpatentable under 35 U.S.C. § 103, we sustain the examiner's
rejection of claim 4 under
35 U.S.C. § 103 as being unpatentable over Johnson in view of
D'Angelo.
Claims 5 to 7 add to parent claim 4 the limitation that
the "conveyor" comprises "a series of rollers." In our view,
this limitation clearly is not taught by Johnson or suggested
from the combined teachings of Johnson and D'Angelo. In that
regard, while D'Angelo does teach a conveyor having a series
Appeal No. 1997-0595 Page 13
Application No. 08/154,911
of rollers, it is our opinion that the teachings of D'Angelo
would not have suggested replacing Johnson's guide rod 148
with a conveyor having a series of rollers. In our view, the
only suggestion for modifying Johnson in the manner proposed
by the examiner to meet the above-noted limitations stems from
hindsight knowledge derived from the appellant's own
disclosure. The use of such hindsight knowledge to support an
obviousness rejection under
35 U.S.C. § 103 is, of course, impermissible. See, for
example, W. L. Gore and Associates, Inc. v. Garlock, Inc., 721
F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert.
denied, 469 U.S. 851 (1984). It follows that we cannot
sustain the examiner's rejection of claims 5 to 7.
Claims 1, 2 and 8 include the limitation that the "pad-
transferring assembly" is mounted to the frame downstream of
the cutting assembly and "pulls the cut pad away from the
cutting assembly." In our view, this limitation clearly is
not taught by Johnson or suggested from the combined teachings
of Johnson and D'Angelo. In that regard, while D'Angelo does
teach a conveyor that pulls a cut product away from the
Appeal No. 1997-0595 Page 14
Application No. 08/154,911
cutting assembly, it is our opinion that the teachings of
D'Angelo would not have suggested replacing Johnson's guide
rod 148 with a conveyor that pulls the cut product away from
the cutting assembly. Once again it is our view that the only
suggestion for modifying Johnson in the manner proposed by the
examiner to meet the above-noted limitations stems from
hindsight knowledge derived from the appellant's own
disclosure. It follows that we cannot sustain the examiner's
rejection of claims 1, 2 and 8.
Claim 10 includes the limitation that the "pad-
transferring assembly" engages "an upper surface of the cut
pad." In our view, this limitation clearly is not taught by
Johnson or suggested from the combined teachings of Johnson
and D'Angelo. In that regard, while D'Angelo does teach a
conveyor that engages an upper surface of the cut product, it
is our opinion that the teachings of D'Angelo would not have
suggested replacing Johnson's guide rod 148 with a conveyor
that engages an upper surface of the cut product. Thus, it is
our view that the only suggestion for modifying Johnson in the
manner proposed by the examiner to meet the above-noted
Appeal No. 1997-0595 Page 15
Application No. 08/154,911
limitation stems from hindsight knowledge derived from the
appellant's own disclosure. It follows that we cannot sustain
the examiner's rejection of claim 10.
For the reasons set forth above, the decision of the
examiner to reject claims 1 to 8 and 10 under 35 U.S.C. § 103
as being unpatentable over Johnson in view of D'Angelo is
affirmed with respect to claims 3 and 4 and reversed with
respect to claims 1, 2, 5 to 8 and 10.
The obviousness rejections utilizing Ottaviano '776
We sustain the rejection of claims 1 to 6, 10 and 12-17
under 35 U.S.C. § 103 as being unpatentable over Ottaviano
'776 in view of Engel.
Ottaviano '776 discloses a cushioning dunnage producing
and handling mechanism which is of relatively compact nature
utilizing a multi-ply roll 12 of sheet-like stock material,
such as paper. As the stock is pulled off the composite roll,
the edges are rolled inwardly in a longitudinally convergent
Appeal No. 1997-0595 Page 16
Application No. 08/154,911
chute 26, into generally superimposed condition. Pusher means
40 urges the sheet-like stock material laterally toward a
confronting surface of the chute. Then the inwardly rolled
stock is passed into a crumpler section 28 which attaches
together the confronting portions of the rolled edges of the
stock material generally centrally, in a direction lengthwise
thereof, to retain the dunnage product in highly compressible,
lightweight pad-like form. After passing from the exit
opening 74 of the crumpler section 28, the continuously formed
pad P of stock material may be severed by the cutter mechanism
76 mounted on the rear end of the machine at the exit opening
74 therein. Brackets 94 on the cutter frame locate and aid in
supporting a table surface
96, on which the pad-like dunnage may be supported as it is
emitted by the mechanism.
Engel's invention relates to the cutting of sheets from a
continuous web of material. As shown in the drawings, Engel's
sheeter includes a roll 10 of web material 11, a stationary
knife 24, a cutting knife 27, and a conveyor 32. Engel
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Application No. 08/154,911
teaches that web material is engaged by the conveyor 32 prior
to the cutting operation.
Claims 1 to 6, 10 and 12-17
The examiner determined (answer, p. 4) that it would have
been obvious at the time the invention was made to a person
having ordinary skill in the art to have modified "the dunnage
production mechanism of Ottaviano by adding the Engel conveyor
to transfer dunnage away from the cutting assembly." We
agree. In fact, the appellant has admitted (specification, p.
3) that typically, the cut pad from a machine such as
disclosed by Ottaviano '776 is transferred downstream to a
table, conveyor belt, or bin.
Implicit in this rejection is the examiner's view that
the above noted modification of Ottaviano '776 would result in
an apparatus which corresponds to the apparatus recited in
claims 1 to 6, 10 and 12 and a method which corresponds to the
method recited in claims 13-17 in all respects.
Appeal No. 1997-0595 Page 18
Application No. 08/154,911
The appellant argues that since the present invention is
directed toward eliminating shingling and that Engel's system
results in the formation of a series of overlapped sheets "it
would not have been obvious to incorporate the Engel conveyor
system into the Ottaviano cushioning conversion machine." We
find this argument unpersuasive since all of the features of
the secondary reference need not be bodily incorporated into
the primary reference (see In re Keller, supra, at 642 F.2d
425, 208 USPQ 881) and the artisan is not compelled to blindly
follow the teaching of one prior art reference over the other
without the exercise of independent judgment (see Lear
Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889, 221 USPQ
1025, 1032 (Fed. Cir. 1984)). It is our opinion that the
combined teachings of the applied prior art would have made it
obvious at the time the invention was made to a person having
ordinary skill in the art to have mounted a conveyor to the
frame 24 of Ottaviano '776 at the exit opening 74 thereof so
that the cut pad-like dunnage would be conveyed away from the
cutter mechanism 76 of Ottaviano '776 based upon it being well
known in the art as shown by Engel to convey a cut product
away from the cutter mechanism.
Appeal No. 1997-0595 Page 19
Application No. 08/154,911
For the reasons set forth above, the decision of the
examiner to reject claims 1 to 6, 10 and 12-17 under 35 U.S.C.
§ 103 as being unpatentable over Ottaviano '776 in view of
Engel is affirmed.
Claims 7 and 8
We will not sustain the rejection of claims 7 and 8 under
35 U.S.C. § 103 as being unpatentable over Ottaviano '776 in
view of Johnson and Engel.
Claims 7 and 8 add to their respective parent claim the
limitation that the "pad-transferring assembly" further
comprises "a guide unit." Each of claims 7 and 8 sets forth
details of the guide unit. In this rejection (answer, p. 5),
the examiner relies upon Johnson's receptacle 150 as being
suggestive of the claimed guide unit. We do not agree. In
our view, the only suggestion for modifying Ottaviano '776 in
the manner proposed by the examiner to meet the above-noted
limitations stems from hindsight knowledge derived from the
appellant's own disclosure. It follows that the decision of
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Application No. 08/154,911
Paper No. 16, mailed February 28, 1996.6
the examiner to reject claims 7 and 8 under 35 U.S.C. § 103 as
being unpatentable over Ottaviano '776 in view of Johnson and
Engel is reversed.
The obviousness rejection utilizing Ottaviano '716
We sustain the rejection of claims 1 to 4 and 12-17 under
35 U.S.C. § 103 as being unpatentable over Ottaviano '716.
In the final rejection (p. 8) and the answer (p. 6), the6
examiner set forth his rationale as to why claims 1 to 4 and
12-17 would have been obvious under 35 U.S.C. § 103 over
Ottaviano '716.
The appellant has not specifically contested this
rejection based upon Ottaviano '716 in the brief, reply brief
or response to examiner's reply. Instead, the appellant
argued why these claims were patentable over Ottaviano '776.
Appeal No. 1997-0595 Page 21
Application No. 08/154,911
Accordingly, we summarily sustain the rejection of claims 1 to
4 and 12-17 under 35 U.S.C. § 103 as being unpatentable over
Ottaviano '716 since the appellant has not specified any error
in this rejection.
Moreover, it is our view that the examiner's rejection of
claims 1 to 4 and 12-17 under 35 U.S.C. § 103 over Ottaviano
'716 is sustainable based upon the same rationale we set forth
above in our decision affirming the examiner's rejection of
these claims under 35 U.S.C. § 103 as being unpatentable over
Ottaviano '776 in view of Engel.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 13 to 17 under 35 U.S.C. § 112, first and second
paragraphs, is reversed; the decision of the examiner to
reject claim 3 under 35 U.S.C. § 102(b) as being anticipated
by Johnson is affirmed; the decision of the examiner to reject
claims 1 to 8 and 10 under
35 U.S.C. § 103 as being unpatentable over Johnson in view of
D'Angelo is affirmed with respect to claims 3 and 4 and
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Application No. 08/154,911
reversed with respect to claims 1, 2, 5 to 8 and 10; the
decision of the examiner to reject claims 1 to 6, 10 and 12-17
under 35 U.S.C.
§ 103 as being unpatentable over Ottaviano '776 in view of
Engel is affirmed; the decision of the examiner to reject
claims 7 and 8 under 35 U.S.C. § 103 as being unpatentable
over Ottaviano '776 in view of Johnson and Engel is reversed;
and the decision of the examiner to reject claims 1 to 4 and
12-17 under 35 U.S.C. § 103 as being unpatentable over
Ottaviano '716 is affirmed.
Appeal No. 1997-0595 Page 23
Application No. 08/154,911
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 1997-0595 Page 24
Application No. 08/154,911
DON W. BULSON, ESQ.
RENNER, OTTO, BOISSELLE & SKLAR
1621 EUCLID AVENUE, 19TH FLOOR
CLEVELAND, OH 44115
APPEAL NO. 1997-0595 - JUDGE NASE
APPLICATION NO. 08/154,911
APJ NASE
APJ McQUADE
APJ STAAB
DECISION: AFFIRMED-IN-PART
Prepared By: Gloria
Henderson
DRAFT TYPED: 23 Nov 99
FINAL TYPED:
HEARD: November 15, 1999