Ex Parte Wetsch et al

Patent Trial and Appeal Board

May 13, 2014

12202928 (P.T.A.B. May. 13, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte THOMAS D. WETSCH and ROBERT TEGEL
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Appeal 2012-003493
Application 12/202,928
Technology Center 3700
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Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
JILL D. HILL, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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Application 12/202,928

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STATEMENT OF THE CASE
Thomas D. Wetsch and Robert Tegel (Appellants) appeal under 35
U.S.C. § 134 from the Examiner’s final decision rejecting under 35 U.S.C.
§ 103(a) claims 21, 22, and 26 as unpatentable over Kunihiro (JP 38-002011
B, publ. March 12, 1963) and Watanabe (JP 08-001837 A, publ. January 9,
1996)1. Claims 1-20, 23-25, and 27-32 have been canceled. App. Br. 2.
Appellants’ representative presented oral argument on May 8, 2014. We
have jurisdiction over this appeal under 35 U.S.C. § 6(b).

INVENTION
Appellants’ invention relates to “an apparatus for crumpling paper
sheeting for use in packaging.” Spec. 5, para. [00029].
Claims 21 and 26 are representative of the claimed invention and read
as follows:
21. A dunnage apparatus, comprising:
a crumpling device configured for crumpling sheets of an
unfolded substrate to produce low-density packaging dunnage
in a crumpled condition;
a feeder configured for feeding separate unfolded sheets
of the substrate into the crumpling device for crumpling; and
a dunnage accumulator associated with the crumpling
device for receiving and storing crumpled dunnage for access
by a user, wherein the dunnage accumulator is configured for
supporting the dunnage on lateral sides thereof and defines an
extraction opening between the sides to enable the dunnage to
be removed from the dunnage accumulator by a user pulling the
dunnage downwards from below the opening.

1 We derive our understanding of these references from the translations
contained in the image file wrapper of this application.
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Application 12/202,928

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26. A dunnage apparatus, comprising:
a crumpling device configured for crumpling sheets of an
unfolded substrate to produce low-density packaging dunnage
in a crumpled condition;
a feeder configured for feeding separate unfolded sheets
of the substrate into the crumpling device for crumpling; and
a dunnage accumulator including a pair of rails
configured to receive and support the crumpled dunnage, the
pair of rails forming an opening therebetween providing access
to the crumpled dunnage.

SUMMARY OF DECISION
We AFFIRM-IN-PART.

ANALYSIS
Claims 21 and 22
Independent claim 21 requires, inter alia, “[a] dunnage accumulator
[that] is configured for supporting the dunnage on lateral sides thereof and
defines an extraction opening between the sides to enable the dunnage to be
removed from the dunnage accumulator by a user pulling the dunnage
downwards from below the opening.” App. Br., Claims App’x.
The Examiner finds that Kunihiro discloses “element 9 as supporting
the dunnage material on lateral side[s], an extraction opening show[n]
between the sides/rails of element 9 (via top opening of 9 between two rails
via sides of 9) as the dunnage material [is] being dropped/pulled down.”
Ans. 6. The Examiner further opines that “whatever language follows the
claimed word ‘for’ in apparatus claims is not given much patentable weight
as it is an intended use language.” Ans. 7.
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Application 12/202,928

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Appellants are permitted to define a part of the invention in functional
terms. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (“A patent
applicant is free to recite features of an apparatus either structurally or
functionally.” (citation omitted)). In this case, we agree with Appellants that
independent claim 21 calls for a physical arrangement of the dunnage
accumulator such that a user is capable of removing the dunnage by “pulling
the dunnage downwards from below the opening.” Reply Br. 4-5. It is not
apparent, and the Examiner does not adequately explain, how Kunihiro’s
element 9 is capable of performing this function. In contrast to claim 21,
Kunihiro’s dunnage is removed by pulling the dunnage upwards from above
the opening of element 9. See Kunihiro, fig. 2.
The Examiner’s use of the teachings of Watanabe does not remedy the
deficiencies of Kunihiro as described supra. As such, the combined
teachings of Kunihiro and Watanabe fail to disclose a dunnage accumulator,
as called for by independent claim 21.
Accordingly, for the foregoing reasons, we do not sustain the rejection
of independent claim 21, and its dependent claim 22, under 35 U.S.C.
§ 103(a) as unpatentable over Kunihiro and Watanabe.

Claim 26
Independent claim 26 requires, inter alia, “a dunnage accumulator
including a pair of rails.” App. Br. A-2, Claims App’x.
The Examiner finds that the sides of Kunihiro’s element 9 constitute a
“pair of rails.” Ans. 6 (“. . . the applied art ‘011 show[s] element 9 . . . an
extraction opening between the sides/rails of element 9 . . .”).
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Appellants argue that the Examiner’s interpretation of the sides of
Kunihiro’s element 9 as the claimed “side rails” is unreasonably broad.
Reply Br. 4. Furthermore, Appellants contend that even if the sides of
Kunihiro’s element 9 can be considered as “rails,” the sides of element 9 do
not “receive and support the crumpled dunnage,” as called for by claim 26.
Id.
Claims are to be given their broadest reasonable interpretation
consistent with the Specification, reading claim language in light of the
Specification as it would be interpreted by one of ordinary skill in the art. In
re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). An
ordinary and customary meaning of the term “rail” is “a structural member
or support.” Merriam Webster’s Collegiate Dictionary (10th Ed. 1997).
Appellants’ Specification describes a dunnage accumulator having “a
receiving surface such as rails 15 or other supports.” Spec. para. [00039]
(emphasis added). The Specification further states that, “[t]he rails 15 or
supports are preferably formed of rails, such as made of rods, or another
structure to define an extraction opening 80.” Id (emphasis added). Hence,
Appellants’ Specification does not assign or suggest a particular definition to
the term “rail.” Although we appreciate that the claimed rails can be made
of rods, we must be careful not to read a particular embodiment appearing in
the written description into the claim if the claim language is broader than
the embodiment. See SuperGuide Corp. v. DirecTV Enterprises, Inc., 358
F.3d 870, 875 (Fed. Cir. 2004). As such, the Examiner correctly found that
the sides of Kunihiro’s element 9 constitute a “pair of rails,” that is, a pair of
structural members or supports. See Ans. 6.
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Application 12/202,928

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Finally, we note that because the dunnage is collected within
Kunihiro’s element 9, the sides do “receive and support the crumpled
dunnage,” as called for by claim 26.
In conclusion, for the foregoing reasons, we sustain the rejection of
independent claim 26 over the combined teachings of Kunihiro and
Watanabe.

SUMMARY
The Examiner’s decision rejecting claims 21 and 22 under 35 U.S.C.
§ 103(a) as unpatentable over Kunihiro and Watanabe is reversed.
The Examiner’s decision rejecting claim 26 under 35 U.S.C. § 103(a)
as unpatentable over Kunihiro and Watanabe is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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