Ex parte Tether et al.

Board of Patent Appeals and Interferences

Apr 22, 1998

08287143 (B.P.A.I. Apr. 22, 1998)

Application for patent filed August 8, 1994. According 1
to appellants, the application is a continuation of Applica-
tion 08/078,405, filed June 17, 1993, abandoned; which is a
continuation-in-part of Application 07/959,774, filed October
13, 1992, now U.S. Patent No. 5,254,389, issued October 19,
1993; which is a continuation-in-part of Application
07/804,995, filed December 11, 1991, now U.S. Patent No.
5,188,880, issued February 23, 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(2) is not binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte RUSSELL W. TETHER
and
GREGORY S. HERBIG
_____________
Appeal No. 97-0608
Application 08/287,1431
______________
ON BRIEF
Appeal No. 97-0608
Application 08/287,143
While the examiner has approved entry (in-part) of the2
amendment filed November 16, 1995, we note that such changes
have not been clerically entered in the file in the manner
specified by the examiner. Correction of this oversight
should be attended to during any further prosecution of this
application before the examiner.
2
_______________
Before STONER, Chief Administrative Patent Judge, and MEISTER,
FRANKFORT, PATE and NASE, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's
final rejection of claims 12 through 20 and from the exam-
iner's refusal to allow claims 1 and 3 through 11 as amended
subsequent to the final rejection in a paper filed November
16, 1995 (Paper No. 10). Claim 2 has been canceled.2
Appellants' invention relates to a process for
manufacturing void fill material. As is apparent from a
review of the specification, void fill material constitutes
Appeal No. 97-0608
Application 08/287,143
3
relatively small pieces of material (e.g., polystyrene "pea-
nuts," shredded paper, or popcorn) used to fill the empty
space around a packaged item in a package and to cushion the
product or item and prevent movement of the item during ship-
ping and handling. This type of
fill material is also sometimes referred to as "dunnage." The
void fill material of the present application is derived from
sheet material, such as corrugated cardboard. More specifi-
cally, it is explained on page 7 of the specification that
[t]his invention provides for the easy
conversion of sheet material into a void
fill material having interlocking members.
The cardboard material is cut by the cutter
and anvil cylinder arrangement wherein the
interlocking members of the void fill mate-
rial are formed by the cutting blades on
the cutter cylinder.
The sheet material, such as corrugated
cardboard, is environmentally safe as op-
posed to void fill material containing
CFCs. By recycling cardboard or sheet
material through the present invention, the
cardboard or sheet material will not be
placed in landfills thereby providing an-
other beneficial environmental impact.
Corrugated void fill is easy to create,
Appeal No. 97-0608
Application 08/287,143
4
handle and dispense from a hopper assembly,
and is inexpensive compared to many void
fill materials. Additionally, this mate-
rial does not possess the detrimental side-
effects of releasing oils, ink or residue
onto the packaged material or attracting
insects like cornstarch or popcorn void
fill materials.

Claims 1, 12 and 16 are representative of the sub-
ject matter on appeal and a copy of those claims, as they
appear in Exhibit A of appellants' brief, is attached to this
decision.
The prior art references of record relied upon by
the examiner in rejecting the appealed claims are:
Reba et al. (Reba) 4,499,801 Feb. 19,
1985
Barben et al. (Barben) 5,027,509 July 2,
1991
Prior art references applied by this panel of the
Board in new rejections of certain of the appealed claims
under 37 CFR § 1.196(b) are:
Kesten 3,766,814 Oct. 23,
1973
Appeal No. 97-0608
Application 08/287,143
5
MacGregor 4,997,134 Mar. 5,
1991
Watts 5,181,614 Jan. 26,
1993
(filed Apr. 5,
1991)
Claims 1 and 3 through 12 stand rejected under 35
U.S.C. § 103 as being unpatentable over Barben.
Claims 13 through 20 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Barben in view of Reba.
Rather than reiterate the examiner's explanation of
the above-noted rejections and the conflicting viewpoints
advanced by the examiner and appellants regarding the rejec-
tions, we make reference to the examiner's answer (Paper No.
18, mailed
August 27, 1996) for the examiner's reasoning in support of
the rejections, and to appellants' brief (Paper No. 15, filed
April 26, 1996) for appellants' arguments thereagainst.
Appeal No. 97-0608
Application 08/287,143
6
OPINION
In reaching our decision in this appeal, we have
given careful consideration to appellants' specification and
claims, to the applied prior art references, and to the re-
spective positions articulated by appellants and the examiner.
As a consequence of this review, we have made the determina-
tion that the examiner's rejections under 35 U.S.C. § 103 will
not be sustained. Our reasons follow.
Looking at Barben, we note that this patent is
directed to a method for manufacturing a tool cylinder (e.g.,
a cutting cylinder 1000) for use in a rotary machine for
processing con-tinuously at high speeds a web-like or sheet-
like workpiece, such as, for instance, sheets of paperboard
for the manufacture of packaging boxes. The patentee specifi-
cally mentions (column 1) packaging boxes in the form of flip-
top type cigarette boxes for luxurious cigarettes, which are
semi-rigid boxes of which the top bends backwards in order to
render the cigarettes very accessible. While it is certainly
true that Barben teaches or suggests
Appeal No. 97-0608
Application 08/287,143
7
inserting a sheet of paperboard between a cutting cylinder
(1000) and an anvil or counter-cylinder (250), and cutting the
sheet of paperboard into a plurality of pieces (in the form of
packaging box blanks), we must agree with appellants that one
of ordinary skill in the art would not have viewed the packag-
ing box blanks of Barben as being "void fill material," or
have viewed the apparatus and process disclosed in Barben as
being in any way responsive to the process of manufacturing
void fill material as set forth in appellants' claims on
appeal.
Nor can we agree with the examiner's position that
the use of the packaging box blanks of Barben as void fill
material "would have been considered an obvious choice of use
of a final product to one of ordinary skill in the art" (an-
swer, page 5). Absent hindsight, one of ordinary skill in the
art simply would not have reasonably viewed the packaging box
blanks of Barben as being void fill material, nor reasonably
considered them for such a use. We view this position on the
Appeal No. 97-0608
Application 08/287,143
8
examiner's part to be both unreasonable and unsupported by any
factual evidence of record.
As for the examiner's further reliance on Reba in
combination with Barben in the § 103 rejection of claims 13
through 20, we share appellants' view that the examiner's
position epitomizes improper hindsight reconstruction of the
claimed subject matter. Like appellants, we find no teaching,
suggestion or incentive in the applied references for using a
Coanda effect nozzle like that of Reba in the packaging box
blank cutting mechanism of Barben and, as noted by appellants,
the examiner has pointed to none. While the trim segment
removal means (120) and Coanda nozzle (132) of Reba are used
to remove the trim strip segments (32) from the slitters
therein, no such trim strip segments or slitters are present
in Barben.
Lacking any reasonable teachings in the prior art
itself which would appear to have fairly suggested the claimed
Appeal No. 97-0608
Application 08/287,143
9
subject matter as a whole to a person of ordinary skill in the
art, or any viable line of reasoning as to why such artisan
would have otherwise found the claimed subject matter to have
been obvious in light of the teachings of the applied refer-
ences, we must refuse to sustain the examiner's rejections of
claims 1
and 3 through 20 under 35 U.S.C. § 103.
In light of the foregoing, the decision of the
examiner is reversed.
Under the authority provided us by 37 CFR §
1.196(b), we enter the following new grounds of rejection
against certain of the appealed claims.
Claims 12, 13, 15, 16 and 18 are rejected under 35
U.S.C. § 102(b) as being anticipated by MacGregor. In
MacGregor
Figure 9, there is shown a document shredding machine which
includes a rotary cutting member and a rotary anvil member
Appeal No. 97-0608
Application 08/287,143
10
(80, 82). During the process by which the document (D)
therein is to be shredded, a sheet material member or strip
portion (S) is fed between the rotary cutting and anvil
members and is cut into a plurality of small pieces (B). The
pieces (B) are collected in the end cap (76b) of the shredder
or are otherwise collected in an adjacent container (see col.
5, lines 10-16). Given appellants' concession on page 2 of the
specification that shredded paper is known for use as void
fill material, we consider it appropriate to denote the small
pieces of shredded paper (B) in MacGregor as being "void
fill material."
Claims 16 and 20 are rejected under 35 U.S.C. §
102(b) as being anticipated by Watts. Watts discloses a
mechanism and process for making dunnage or void fill
material. In Figure 3,
and as described in column 6, line 26 et seq., Watts discloses
a portion of the mechanism which includes a cutting surface
(66) and an anvil surface (67), as well as the steps of
inserting a sheet material (34) between the cutting and anvil
Appeal No. 97-0608
Application 08/287,143
11
members, cutting the sheet material into a plurality of pieces
of void fill material, ejecting the pieces from the cutting
surfaces, and collecting the pieces of void fill material for
dispersal around a packaged item inside a package (see, e.g.,
Figures 1 and 2). As is apparent from Figures 8B and 9B, and
as clearly seen in Figure 2, the pieces of dunnage or void
fill material in Watts are "capable of possessing an
interlocking relationship with other sections of ones of said
pieces of void fill material," as required in appellants'
claim 20 on appeal.
Claims 1, 3, 8, 12 through 18 and 20 are rejected
under 35 U.S.C. § 102(b) as being anticipated by, or in the
alternative under 35 U.S.C. § 103 as being unpatentable over
Kesten. Kesten discloses a die-cutting assembly and method of
operation thereof which includes providing a rotary cutting
assembly (10), providing a rotary anvil member (62), feeding a
sheet material (not shown) between the rotary cutting and
anvil members, cutting the sheet material into a plurality
of pieces (by cutting
Appeal No. 97-0608
Application 08/287,143
12
elements 14), ejecting the pieces from the cutting surfaces by
pressurized air exiting passageways (16), and collecting these
scrap pieces for later disposal. While we recognize that
Kesten does not specifically designate the small scrap
elements ejected from the cutter as being "void fill
material," we nonetheless consider that such small pieces of
material would be clearly capable of such a use and would be
considered by one of ordinary skill in the art, in the same
manner as shredded paper, to be "void fill material."
Contrary to appellants' arguments (brief, pages 7-
8), the claims on appeal do not include limitations directed
to the subsequent placement of the pieces of void fill
material around a packaged item inside a container, but merely
set forth that the pieces of void fill material are "for"
subsequent placement around a packaged item inside a
container. The pieces of scrap ejected from the cutters in
Kesten are clearly capable of such a latter use, and to the
extent that the language "void fill material" must be given
weight in the claims on appeal, it is our opinion that it
Appeal No. 97-0608
Application 08/287,143
13
would have been obvious to one of ordinary skill in the art
that the small pieces of scrap material may be
considered to be "void fill material," and to so use the small
scrap pieces resulting from the process in Kesten.
Regarding the requirement in appellants' claims 1
and 20 that the pieces of void fill material be "capable of
forming [or of possessing] an interlocking relationship with
other sections of other of said pieces of void fill material,"
we note that the configuration of the scrap pieces in Kesten
exiting from the cutting elements (14), as seen in Figure 1,
will inherently possess this capability.
In addition to the foregoing references applied by
this panel of the Board in the new grounds of rejection above,
we direct the examiner's attention to Bishop (U.S. Patent
No. 3,381,563) for another rotary cutting apparatus and
process which produces small irregular, interlocking pieces of
material from a web or sheet of material. Again, we consider
Appeal No. 97-0608
Application 08/287,143
14
that the small pieces of sheet material (puzzle pieces) of
Bishop would
be clearly capable of use as "void fill material" and would be
considered by one of ordinary skill in the art, in the same
manner as shredded paper, to be "void fill material."
Hutchinson et al. (U.S. Patent No. 3,875,836) discloses
another rotary cutting apparatus wherein pressurized air is
used to eject the cut items from the cutting surface of the
cutting cylinder.
Given that the references we have cited and applied
above are merely those found in a cursory search of the areas
listed below, we REMAND this application to the examiner for a
complete search of the designated art areas. See
particularly, Class 83, subclasses 32, 99, 300-302, 346, 347,
906 and 923. Moreover, given the classification of the
MacGregor patent and the Watts patent applied above, we feel
Appeal No. 97-0608
Application 08/287,143
In addition to the above search areas, we are also aware3
of corrugated cardboard dividers used in beverage boxes to
define spaces for the bottles and protect the bottles therein
during shipping and handling. These dividers usually
interlock with
at least one other divider at slits therein to define the
spaces for the bottles. Given the nature and use of these
dividers, we consider that these cardboard dividers would be
broadly viewed by one of ordinary skill in the art as being
"void fill material" and also that they are most likely formed
by some type of cutting process, such as by either stamping or
rotary cutting. Thus, these cardboard divider elements would
appear to be particularly relevant to the presently claimed
subject matter. Accordingly, we encourage the examiner to
pursue this field of search also.
15
it would be merely prudent to at least inquire in Classes 206
and 241 also.3
This decision contains a new ground of rejection
pur- suant to 37 CFR § 1.196(b) (amended effective Dec. 1,
1997, by
final rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10,
1997), 1203 Off. Gaz. Pat. & Trademark Office 63, 122 (Oct.
21, 1997)). 37 CFR § 1.196(b) provides that “[a] new ground
of rejection shall not be considered final for purposes of
judicial review.”
Appeal No. 97-0608
Application 08/287,143
16
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exer-
cise one of the following two options with respect to the new
grounds of rejection to avoid termination of proceedings (37
CFR § 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of
the claims so rejected or a showing of
facts relating to the claims so rejected,
or both, and have the matter reconsidered
by the examiner, in which event the
application will be remanded to the
examiner. . . .
(2) Request that the application be
reheard under § 1.197(b) by the Board of
Patent Appeals and Interferences upon the
same record. . . .
No time period for taking any subsequent action in
con-nection with this appeal may be extended under 37 CFR §
1.136(a).
Appeal No. 97-0608
Application 08/287,143
17
This application, by virtue of its “special” status,
requires an immediate action, MPEP § 708.01(d).
REVERSED AND REMANDED, 37 CFR § 1.196(b)
BRUCE H. STONER, JR. )
Chief Administrative Patent Judge )
)
)
)
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
)
CHARLES E. FRANKFORT ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS
AND
) INTERFERENCES
)
)
WILLIAM F. PATE, III )
Administrative Patent Judge )
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 97-0608
Application 08/287,143
18
Richards Medlock & Andrews
4500 Renaissance Tower
1201 Elm Street
Dallas, TX 75270-2197
Appeal No. 97-0608
Application 08/287,143
19
1. A process for manufacturing void fill material
comprising the steps of:
providing a cutting surface;
providing an anvil surface opposing said cutting
surface;
inserting a sheet material between said cutting
surface and said anvil surface; and
cutting said sheet material into a plurality of
pieces of void fill material wherein one of said pieces of
said void fill material possesses at least one primary section
extending from a primary plane, wherein said primary section
is capable of forming an interlocking relationship with other
sections of other of said pieces of void fill material for
subsequent placement around a packaged item inside a container
for the package item.
12. A process for manufacturing void fill material
comprising the steps of:
providing a rotary cutting assembly;
providing a rotary anvil surface opposing said
rotary cutting assembly;
inserting a sheet material between said rotary
cutting surface and said rotary anvil surface; and
cutting said sheet material into a plurality of
pieces of said void fill material for subsequent dispersal
around a packaged item inside a package.
16. A process for manufacturing void fill material
comprising the steps of:
providing a cutting surface;
Appeal No. 97-0608
Application 08/287,143
20
providing an anvil surface opposing said cutting
surface;
inserting a sheet material between said cutting
surface and said anvil surface;
cutting said sheet material into a plurality of
pieces of void fill material;
ejecting said plurality of pieces of void fill
material from said cutting surface; and
collecting said pieces of void fill material for
subsequent dispersal around a packaged item inside a package.