Ex Parte Wetsch et alDownload PDFPatent Trial and Appeal BoardMay 13, 201412202928 (P.T.A.B. May. 13, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte THOMAS D. WETSCH and ROBERT TEGEL ____________ Appeal 2012-003493 Application 12/202,928 Technology Center 3700 ____________ Before JENNIFER D. BAHR, STEFAN STAICOVICI, and JILL D. HILL, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-003493 Application 12/202,928 2 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. Appeal 2012-003493 Application 12/202,928 3 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. Appeal 2012-003493 Application 12/202,928 4 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 . . .”). Appeal 2012-003493 Application 12/202,928 5 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. Appeal 2012-003493 Application 12/202,928 6 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 llw Copy with citationCopy as parenthetical citation