Alain CerfDownload PDFPatent Trials and Appeals BoardJul 17, 201914070519 - (D) (P.T.A.B. Jul. 17, 2019) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/070,519 11/02/2013 Alain Cerf single roll 8392 53404 7590 07/17/2019 SAM SILVERBERG 8515 Baymeadows Way Unit 301 Jacksonville, FL 32256 EXAMINER STINSON, CHELSEA E. ART UNIT PAPER NUMBER 3731 MAIL DATE DELIVERY MODE 07/17/2019 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ALAIN CERF ____________________ Appeal 2018-008602 Application 14/070,5191 Technology Center 3700 ____________________ Before PHILIP J. HOFFMANN, KENNETH G. SCHOPFER, and CYNTHIA L. MURPHY, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the Examiner’s rejection of claims 1–11. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appellant’s “invention relates to wrapping a product with heat shrinkable film.” Spec. 1. Claims 1, 7, and 11 are the independent claims 1 “The [real] party [in] interest is the applicant, Alain Cerf.” Appeal Brief filed July 28, 2017 (“First Appeal Br.”), unnumbered page 1. Appeal 2018-008602 Application 14/070,519 2 on appeal. Below, we reproduce claim 1 as illustrative of the appealed claims. 1. An apparatus for wrapping a product with a heat shrinkable film from a single roll and for maintaining print registration comprising, a first roll having heat shrinkable film, a second roll having a film, means for pushing the product into a curtain of film while wrapping the product by unwinding the film from the first roll, while holding the film on the second roll in a substantially stationary position while wrapping the product from the film from the first roll, means for simultaneously cutting the film and sealing the film together on both sides of the cut thereby creating a film curtain, means for achieving print registration by adjusting the distance between the means for and cutting the film and where the product stops before sealing and cutting the film, means for pulling the film from the first roll after cutting and sealing the film, and means for sensing a registration mark on the film. REJECTIONS AND PRIOR ART The Examiner rejects the claims as follows: I. Claims 1–6 and 11 under 35 U.S.C. § 112(b) as indefinite for failing to particularly point out and distinctly claim the subject matter that the inventor regards as the invention; Appeal 2018-008602 Application 14/070,519 3 II. Claims 1, 3–7, 9, and 102 under 35 U.S.C. § 103 as unpatentable over Nilsson (US 4,662,148, iss. May 5, 1987) and Suga (US 5,566,526, iss. Oct. 22, 1996); III. Claims 2, 8, and 113 under 35 U.S.C. § 103 as unpatentable over Nilsson, Suga, and Kiener et al. (US 3,955,339, iss. May 11, 1976) (“Kiener”). ANALYSIS Rejection I In the Final Office Action, the Examiner rejects independent claims 1 and 11, and claims 2–6 that depend from claim 1, as indefinite, for a number of reasons. See Final Action 2–4, n.b. at 4 (“All [sic] remaining claims are rejected as they depend from rejected independent claim 1.”). It appears that the Examiner withdraws all of the bases for rejecting the claims (Answer 11–12), except for the following: Regarding [independent] claims 1 and 11, the limitation “means for sensing a registration mark on the film” renders the claims indefinite. It is unclear if the means for sensing [a] registration mark is different from the means for achieving print registration as previously recited in claim 1. For examination purposes, [the E]xaminer interprets these means to be equivalent. Furthermore, for examination purposes, [the 2 Although page 5 of the Final Office Action appears to indicate that the Examiner rejects only claims 1, 3–7, and 9 as obvious based on Nilsson and Suga, it is clear from the Final Office Action’s page 9 that the Examiner also rejects claim 10. See Final Action 5, 9. 3 Although page 9 of the Final Office Action appears to indicate that the Examiner rejects only claims 2 and 11 as obvious based on Nilsson, Suga, and Kiener, it is clear from the Final Office Action’s pages 10 and 11 that the Examiner also rejects claim 8. See Final Action 9–11. Appeal 2018-008602 Application 14/070,519 4 E]xaminer interprets the registration mark to be equivalent to the print registration. Answer 2. It is not until the filing of the Reply Brief that Appellant argues that the Examiner’s rejection is in error. See Reply Br. 1 (“The [indefiniteness] rejection . . . is traversed. This rejection was inadvertently not presented [in either of Appellant’s Appeal] Brief[s].” Appellant’s argument, presented for the first time in the Reply Brief, is untimely. See 37 C.F.R. § 41.37(c)(1)(iv) (Explaining that the Board will refuse to consider “any arguments . . . not included in the [A]ppeal [B]rief.”); see also id. § 41.41(b)(2) (Explaining that “[a]ny argument raised in the [R]eply [B]rief which was not raised in the [A]ppeal [B]rief. . . will not be considered by the Board,” absent circumstance inapplicable to this appeal.). Nonetheless, although Appellant technically waives its argument against the Examiner’s indefiniteness rejection, for the reasons discussed below, we exercise our discretion and raise the issue sua sponte. See In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). As set forth above, the Examiner rejects claims 1 and 11 because, according to the Examiner, “[i]t is unclear if the [claimed ‘]means for sensing [a] registration mark[’] is different from the [claimed ‘]means for achieving print registration.[’]” Answer 2. We agree with Appellant that neither the Final Office Action nor the Examiner’s Answer provides any reason why it is unclear whether these claimed means are the same as or different from one another. See Reply Br. 1–2. It is well settled that for an Examiner to establish a prima facie case for rejection, the Examiner must “stat[e] the reasons for such rejection.” 35 U.S.C. § 132; see also In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). Here, the Examiner’s Appeal 2018-008602 Application 14/070,519 5 statements lack adequate reasons required to establish a prima facie case of indefiniteness. Consequently, we do not sustain the rejection. Rejection II As set forth above, independent claim 1 recites, in relevant part, means for pushing the product into a curtain of film while wrapping the product by unwinding the film from the first roll, while holding the film on the second roll in a substantially stationary position while wrapping the product from the film from the first roll, means for simultaneously cutting the film and sealing the film together on both sides of the cut thereby creating a film curtain, means for achieving print registration by adjusting the distance between the means for and cutting the film and where the product stops before sealing and cutting the film, means for pulling the film from the first roll after cutting and sealing the film, and means for sensing a registration mark on the film. Appeal Brief filed Sept. 18, 2017 (“Second Appeal Brief”), section (8) (unnumbered page). Appellant argues that the Examiner must interpret and examine the claims in accordance with 35 U.S.C. § 112(f), and the Examiner does not disagree with Appellant. See, e.g., First Appeal Brief, unnumbered page 4. In order for the Examiner to establish that an element in the prior art discloses a claim recitation interpreted in accordance with § 112(f), the Examiner must establish either that the structure of the prior art element is the same as the structure disclosed in Appellant’s Specification which provides the claimed function, or the two structures are “equivalent[].” In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994). Two structures may Appeal 2018-008602 Application 14/070,519 6 be “equivalent” for purposes of § 112(f) if they perform the identical function, in substantially the same way, to provide substantially the same result. Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1364 (Fed. Cir. 2000). An equivalence determination may consider evidence that one of ordinary skill in the art would have recognized the interchangeability of the prior art structure and the structure disclosed in Appellant’s Specification which performs the function in question. Caterpillar Inc. v. Deere & Co., 224 F.3d 1374, 1380 (Fed. Cir. 2000). Further, two structures may be equivalent if there are insubstantial differences between them. IMS Technology, Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1436, (Fed. Cir. 2000). In this case, the Examiner does not support adequately that the prior art discloses the same or equivalent structures for any of the claimed means recitations that we reproduce above. For example, in the Final Office Action, the Examiner finds that, “Suga teaches means (37, 27, 17, 20, 18) for achieving print registration ([c]ol. 4, [ll.] 34–35) by adjusting the distance between the sealing bar (23, 24) and where the product (19) stops before sealing and cutting the film (12) ([c]ol. 4, [ll.] 34–55, Fig. 1).” Final Action 6 (bold omitted). There is no identification, by the Examiner, of the structure in Appellant’s Specification that achieves print registration, and there is no explanation as to whether Suga’s structures are the same as the claimed structure whose function it is to achieve print registration, or whether Suga’s structures and the structure disclosed in Appellant’s Specification are equivalent to one another. In response to the Final Office Action, Appellant argues that, “Suga does not teach [the claimed] print registration [means].” First Appeal Br., Appeal 2018-008602 Application 14/070,519 7 unnumbered page 4; see also id. at unnumbered pages 4–5. In response, in the Answer the Examiner reiterates the above statement from the Final Office Action’s rejection. See Answer 3. To the extent that the Examiner addresses Appellant’s argument, the Examiner finds that “[t]he [O]ffice interprets the limitation ‘print registration’ to mean that the apparatus is capable of registering or detecting a print or mark on the film.” Nevertheless, the Examiner does not establish either that Suga’s structures are the same as the structure in Appellant’s Specification whose function it is to achieve print registration, or that Suga’s structures are equivalent to the structure disclosed by Appellant. We will not undertake such an analysis to independently determine whether these structures are either the same or equivalents. Thus, we do not sustain the Examiner’s rejection of claim 1. Independent claim 7 is a method claim that recites, inter alia, adjusting the distance between the sealing bar and where the product stops before sealing and cutting the film to achieving print registration. The Examiner relies on Suga to disclose this limitation in the same manner the Examiner relies on Suga in the rejection of claim 1. See Final Action 8. Thus, claim 7 includes similar recitations to claim 1, and the Examiner relies on similar findings. We also determine that those findings are deficient here, as the Examiner does not explain adequately how the Examiner relies on Suga with the respect to the requirements of this claim. Therefore, we do not sustain claim 7’s rejection. We also do not sustain the Examiner’s obviousness rejection of claims 3–6 and 9 that depend from, and which the Examiner rejects with, the independent claims. Appeal 2018-008602 Application 14/070,519 8 Rejection III Claims 2 and 8 depend from independent claims 1 and 7. The Examiner does not rely on Kiener to disclose anything that would remedy the above deficiency in the independent claim’s rejection. Thus, we do not sustain the Examiner’s obviousness rejection of claims 2 and 8. Independent claim 11 includes similar recitations as those discussed above with respect to claim 1. Inasmuch as the Examiner does not rely on Kiener to disclose anything that would remedy the above deficiency in claim 1’s rejection, we do not sustain the Examiner’s obviousness rejection of claim 11. DECISION We REVERSE the Examiner’s indefiniteness and obviousness rejections of claims 1–11. REVERSED Copy with citationCopy as parenthetical citation