Ex parte Watanabe

Board of Patent Appeals and Interferences

Aug 31, 1998

08531069 (B.P.A.I. Aug. 31, 1998)

Application for patent filed September 20, 1995. According to appellant, the1
application is a continuation-in-part of Application 08/165,474, filed December 13,
1993, now abandoned.
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publication in a law journal and (2) is not binding precedent of the Board.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. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte TOKUJI WATANABE
_____________
Appeal No. 97-3990
Application 08/531,0691
______________
ON BRIEF
_______________
Before CALVERT, MEISTER and CRAWFORD, Administrative Patent
Judges.
MEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Tokuji Watanabe (the appellant) appeals from the final
rejection of claim 9, the only claim remaining in the
application.
We REVERSE and, pursuant to our authority under the
Appeal No. 97-3990
Application 08/531,069
2
provisions of 37 CFR § 1.196(b), enter a new rejection of
claim 9.
The appellant's invention pertains to an apparatus for
manufacturing paper cushioning members that are useful as a
packing material for objects which are to be shipped or
transported. To this end, sheets of paper or other packing
material are fed to cutting members that form a plurality of
intermittent or spaced slits in the sheet. Thereafter, the
sheet is fed into a wave forming guide where it is "crumpled."
The "crumpled" sheet may, due to the intermittent or spaced
slits, thereafter be stretched so as to form a cushioning
member that is softer than one formed from a sheet not having
such slits.
A copy of claim 9 may be found in the appendix to the
brief.
The references relied on by the examiner are:
Curtis 671,915 Apr. 9, 1901
Parker (Parker ‘972) 5,088,972 Feb. 18, 1992
Parker (Parker ‘013) 5,134,013 Jul. 28, 1992
Parker (Parker ‘352) 5,173,352 Dec. 22, 1992
Parker (Parker ‘259) 5,403,259 Apr. 4, 1995
Appeal No. 97-3990
Application 08/531,069
3
Broden et al. (Broden) 576,412 May 26, 1959
(Canadian Patent)
Claim 9 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Curtis in view of Parker '259, Parker '352,
Parker '013 or Parker '972 and further in view of Broden.
The examiner's rejection is explained on pages 4-7 of the
answer. The arguments of the appellant and examiner in
support
of their respective positions may be found on pages 6-10 of
the brief, pages 1-4 of the reply brief and pages 8-12 of the
answer.
OPINION
Having carefully considered the respective positions
advanced by the appellant in the brief and reply brief and by
the examiner in the answer, it is our conclusion that the
above-noted rejection is not sustainable.
According to the examiner it would have been obvious to
make the link forming recesses of Curtis extend entirely
Appeal No. 97-3990
Application 08/531,069
4
across the projections in a horizontal direction in view of
the teachings of Broden. The examiner is further of the
opinion that:
It would have been obvious to one
having ordinary skill in the art at the
time the invention was made to combine the
teachings of Curtis with the teachings of
Parker [sic, Parker '259, Parker '352,
Parker '013 or Parker '972] in order to
reliable [sic, reliably] crumple thin bands
of paper cushioning members cut by roller
members (i.e.[,] adding [sic] inserting at
least one sheet of work paper between
cutting rollers, feeding said work paper
through a wave-forming guide and forcibly
compressing said work paper inside said
wave-forming guide to Curtis), since Parker
[sic, Parker '259, Parker '352, Parker '013
or Parker '972] teaches that manufacturing
thin bands of crumpled paper cushioning
members by inserting at least one sheet of
work paper between cutting rollers, feeding
said work paper through a wave-forming
guide and forcibly compressing said work
paper inside said wave-forming guide in
order to finely crumple said thin bands was
old and well known at the time the
invention was made. [Answer, pages 5 and
6.]
In response to the appellant's argument that the device of
Curtis is directed to a metal slitting apparatus that is not
properly combinable with the paper folding and crimping device
Appeal No. 97-3990
Application 08/531,069
5
of either Parker '259, Parker '352, Parker '013 or Parker
'972, the examiner states that "[i]f the prior art structure
is capable of performing the intended use, then it meets the
claim" (answer, page 12).
We will not support the examiner's position. Even if we
were to agree with the examiner that it would have been
obvious to make the link forming recesses of Curtis extend
entirely across the projections in a horizontal direction in
view of the teachings of Broden, we cannot agree that it would
have been obvious to combine the teachings of Curtis, as
modified by Broden, with those of either Parker '259, Parker
'352, Parker '013 or Parker '972 in the manner proposed. The
mere fact that the device of Curtis has the capability of
being employed to form cuts in paper does not serve as a
proper motivation for combining the teachings of Curtis and
the various references to Parker as the examiner apparently
believes. Instead, in order to establish obviousness under 35
U.S.C. § 103, it is well settled that it is the teachings of
the prior art taken as a whole which must provide the motiva-
tion or suggestion to combine the references. See, e.g.,
Appeal No. 97-3990
Application 08/531,069
6
Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5
USPQ2d 1434, 1438 (Fed. Cir. 1988) and Interconnect Planning
Corp. v. Feil, 774 F.2d 1132, 1143, 227 USPQ 543, 550-51 (Fed.
Cir. 1985). Here, we find no such suggestion.
The device of Curtis is directed to a completely
disparate type of device from that of any of the Parker
references. That is, Curtis discloses an apparatus for
forming spaced slits in a metal sheet (see Fig. 7) that is
subsequently intended to be expanded into a mesh-like sheet
(see Fig. 8) and is in no way concerned with manufacturing
packing materials. On the other hand, each of the Parker
references is directed to an apparatus for forming resilient
bulk packaging material from sheets such
as paper or cardboard. To this end, the sheets are fed to a
plurality of cutters which slit the sheets into narrow strips
that are then fed into a device (which the examiner considers
to be a "wave forming guide") where the narrow strips are
folded, crimped and compressed into a generally zig-zag
configuration. Absent the appellant's own teachings, we are
at a complete loss to understand why one of ordinary skill in
Appeal No. 97-3990
Application 08/531,069
7
this art would have been motivated to feed Curtis' sheet
having spaced cuts therein (that is intended to subsequently
be expanded into a mesh-like sheet) into a "wave forming
guide" as taught by the Parker patents (wherein narrow strips
are folded, crimped and compressed so as to form a resilient
packing member of a generally zig-zag configuration). As the
court in Uniroyal, 837 F.2d at 1051, 5 USPQ2d at 1438 stated:
"it is impermissible to use the claims as a frame and the
prior art references as a mosaic to piece together a facsimile
of the claimed invention."
Moreover, even if the references were combined in the
manner proposed by the examiner, there is nothing in the
relied on prior art which suggests "waste-collecting members"
or strippers having projections and recesses formed on edge
portions thereof as expressly required by claim 9. With
respect to this limitation the examiner relies on "waste-
collecting members 240,244,248,250 (best shown in '352 or '259
Figures 10 and 12 . . . ." While the examiner is correct in
noting that these elements function as waste collecting
members or strippers, they do not have projections and
Appeal No. 97-3990
Application 08/531,069
8
recesses formed on edge portions thereof as claimed. That is,
these elements are simply a plurality of plate-like members
(having openings 245 therein for accommodating the cutter
shaft) that are mounted on supporting shafts 246 in such a
manner that they are interleaved between the cutting discs.
In view of the foregoing, we will not sustain the
rejection of claim 9 under 35 U.S.C. § 103 as being
unpatentable over Curtis in view of Parker '259, Parker '352,
Parker '013 or Parker '972 and further in view of Broden.
Under the provisions of 37 CFR § 1.196(b) we make the
following new rejection.
Claim 9 is rejected under 35 U.S.C. § 112, second
paragraph, for failing to particularly point out and
distinctly claim the subject matter which the appellant
regards as the invention. This claim sets forth "a top-
pressing member and a bottom-receiving member" and "a wave-
forming guide" as though they were two separate elements when
in fact they are at least partially the same. Note in
particular the preliminary amendment filed on September 20,
Appeal No. 97-3990
Application 08/531,069
9
1995 (Paper No. 11) wherein the addition to page 11 (between
lines 12 and 13) states: "[t]he wave-forming guide 18
comprises an upper pressing member 18 and a lower receiving1
member 18 ." We also observe that "recesses" in the second2
and third lines from the end of claim 9 have no clear
antecedent basis since both "circumferential" recesses and
"link-portion forming" recesses have been previously set
forth.
In summary:
The rejection of claim 9 under 35 U.S.C. § 103 is
reversed.
A new rejection of claim 9 under 35 U.S.C. § 112, second
paragraph, has been made.
This decision contains a new ground of rejection pursuant
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
Appeal No. 97-3990
Application 08/531,069
-10-
§ 1.196(b) provides that, “A new ground of rejection shall not
be considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings
(§ 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
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED
37 CFR § 1.196(b)
Appeal No. 97-3990
Application 08/531,069
-11-
)
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JAMES M. MEISTER )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
GREENBLUM & BERNSTEIN, P.L.C.
1941 Roland Clarke Place
Reston, VA 20191