Ex Parte Anderson et al

Patent Trial and Appeal Board

Aug 28, 2013

11467248 (P.T.A.B. Aug. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BRADLEY J ANDERSON,
WILLIAM I. HERRMANN,
LEONARD T. SCHROATH, and BRUCE L. JOHNSON
____________________

Appeal 2011-009930
Application 11/467,248
Technology Center 3700
____________________

Before: PHILLIP J. KAUFFMAN, PATRICK R. SCANLON, and
BARRY L. GROSSMAN, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
13, 14, 18, 19, and 48-50.1 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The Invention
Appellants’ claimed invention relates to a media wrapper for use in a
printing device. Spec., para. [0004]. Claim 13, reproduced below, is the
sole independent claim on appeal:
13. A method of packaging media used in a document
producing device comprising:
sectioning a packaging wrapper surrounding said media;
providing a pull tab for separating said sectioning of said
packaging wrapper for detaching a section of said packaging
wrapper for exposing a portion of said media, while a second
portion of said media remains in a second section of said
packaging wrapper; and
placing a label on said second section of said packaging
wrapper that identifies at least one of a color and type of said
media in said packaging wrapper, such that, when said media in
said second section of said packaging wrapper is placed in said
document producing device, said media is available to said
document producing device while said label remains visible to a
user of said document producing device to identify said media.

Evidence Relied Upon
Nakamura US 6,546,210 B1 Apr. 8, 2003
Fujiwara ‘317
Prenn
Fujiwara
US 2003/0164317 A1
WO 01/81093 A2
WO 01/89957 A1
Sep. 4, 2003
Nov. 1, 2001
Nov. 29, 2001

1 Appellants state that they reserve the right to respond to the
restriction/election of claims 15-17 and 20, but acknowledge that the matter
is not being pursued on appeal. Reply Br. 2-3; see also App. Br. 4.
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The Rejections
The following rejections are before us on appeal:
I. Claims 13, 14, 18, and 19 under 35 U.S.C. § 102(b) as anticipated by
Prenn.
II. Claims 48-50 under 35 U.S.C. § 103(a) as unpatentable over Prenn.
III. Claims 13, 14, 18, 19, and 48-50 under 35 U.S.C. § 103(a) as
unpatentable over Fujiwara and Nakamura.

OPINION
Claim Construction
The Examiner determined that claim 13 does not call for the step of
placing the packaging media into a document producing device, and does
not specify the structure of the document producing device. Ans. 10. The
Examiner interprets that the language following the claimed phrase “such
that” is merely a statement of the intended result of the placing step. Ans.
10. According to the Examiner, in this context, “such that” should be
interpreted like a “whereby” clause that merely expresses an intended result
of a process step positively recited. Ans. 11.
The Examiner is correct that claim 13 does not call for the step of
placing the packaging media into a document producing device, nor specify
the structure of the document producing device. However, as Appellants
correctly point out, claim 13 is directed to a method of packaging media
used in a document producing device, not a method of utilizing packaging
media in a document producing device. See Reply Br. 5.
We also agree with the Examiner that a “whereby clause in a method
claim is not given weight when it simply expresses the intended result of a
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process step positively recited.” See Minton v. Nat’l Ass’n of Securities
Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003). However, the language
following “such that” in claim 13 does not merely state an intended result of
the limitations of the claimed process; rather, it ties the claim together.
Claim 13 calls for placing the label on the second section of the packing
wrapper in a specific manner, namely, it must be placed such that when
media contained in the second section of the packaging wrapper is placed in
a document producing device so that the media is available to the document
producing device, the label remains visible to a user of that document
producing device to identify the media. In other words, claim 13 calls for
the step of placing the label so that it is capable of the claimed function
(being visible to a user of the document printing device to identify the
media) when positioned as claimed (so that the media is available to the
document producing device).

I. Anticipation by Prenn
The Examiner’s finding that Prenn discloses placing a label (bar code
63) as claimed is incorrect. See Ans. 4. Prenn’s label (bar code 63) is
placed on the packaging wrapper (print media package 15) so that sensor 81
of print media tray 11 may read it. App. Br. 11-12; Prenn, p. 7, l. 27 - p. 8, l.
17; figs. 1, 3A, 3B. When so positioned, the media is available to the
document producing device; however, the label (bar code 63) is inside laser
printer 10 and is not visible to a user of the document producing device.
The Examiner’s alternative finding that Prenn discloses that the
marking “MULTIPURPOSE PAPER” may be placed anywhere on the wrapper
and would be visible to a user of the packaged media is also incorrect. See
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Ans. 11-12. First, this finding does not properly address the limitation at
issue, which requires that the label be visible to a user of the document
printing device to identify the media when positioned so that the media is
available to the document producing device. Second, as Appellants
correctly point out, Prenn does not disclose that the label “MULTIPURPOSE
PAPER” can appear anywhere on the packaging wrapper. Reply Br. 7.
Rather, Prenn discloses that the print media packaging is not limited to paper
and may contain any type of print media. Prenn, p. 7, ll. 8-11.
As such, we do not sustain the rejection of independent claim 13 and
its dependent claims 14, 18, and 19.

II. Obviousness over Prenn
Claims 48-50 contain the step of placing the label by virtue of their
dependence from independent claim 13. The Examiner relies upon the same
erroneous claim construction and findings analyzed with regard to claim 13,
supra. See Ans. 5-6. As such, we do not sustain the rejection of claims 48-
50.

III. Obviousness over Fujiwara and Nakamura
Relying upon the same erroneous claim construction, the Examiner
found that Nakamura discloses the step of placing a label (second cut sheet
information 57b) as claimed. Ans. 6-9, 12; Nakamura, col. 13, l. 17.
However, as Appellants correctly point out, bar code reader 46 is located
within the document producing device (printer) and therefore, Nakamura’s
label (second cut sheet information 57a) cannot be placed so that it is visible

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to a user when the media is available to the document producing device as
claimed. Reply Br. 10; Nakamura, col. 9, ll. 27-30; col. 9, l. 53 - col. 10, l.
5; col. 13, l. 17; figs. 3, 10.
DECISION
We reverse the Examiner’s decision to reject claims 13, 14, 18, 19,
and 48-50.

REVERSED

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