Ex Parte Wetsch et al

Patent Trial and Appeal Board

Jul 3, 2018

12550330 (P.T.A.B. Jul. 3, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/550,330 08/28/2009 Thomas D. Wetsch
30873 7590 07/06/2018
DORSEY & WHITNEY LLP - NEW YORK
ATTENTION: INTELLECTUAL PROPERTY - PATENT DOCKET
51 WEST 52ND STREET
NEW YORK, NY 10019-6119
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Pl91096.US.Ol-485252-326 1699
EXAMINER
TAWFIK, SAMEH
ART UNIT PAPER NUMBER
3721
NOTIFICATION DATE DELIVERY MODE
07/06/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ny.patent.docketing@dorsey.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS D. WETSCH and ROBERT TEGEL
Appeal2016-005556
Application 12/550,330
Technology Center 3700
Before EDWARD A. BROWN, ARTHUR M. PESLAK, and
SEAN P. O'HANLON, Administrative Patent Judges.
O'HANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Thomas D. Wetsch and Robert Tegel ("Appellants") 1 appeal under 35
U.S.C. § 134(a) from the Examiner's decision, as set forth in the Final
Office Action dated February 9, 2015 ("Final Act."), rejecting claims 2--4,
6-8, 13-18, 24, and 30-36. Appellants' representative presented oral
1 The Appeal Brief identifies Pregis Innovation Packaging LLC as the real
party in interest. Appeal Br. 3.
Appeal 2016-005556
Application 12/550,330
argument on June 28, 2018. We have jurisdiction over this appeal under 35
U.S.C. § 6(b).
We REVERSE.
SUMMARY OF THE INVENTION
Appellants' "disclosure relates to handling dunnage." Spec. i-f 1.
Claim 13 is the sole independent claim and is reproduced below from the
Claims Appendix:
13. A dunnage dispensing system, comprising:
a dunnage machine configured to eject dunnage from an
outfeed area; and
a dunnage accumulator comprising first and second
holding portions defining an accumulation space therebetween
and adapted to receive and accumulate dunnage from the
outfeed area into the accumulation space, at least one of the
holding portions being articulated to adjust the accumulation
space size.
REJECTIONS
Claims 2, 3, 6-8, 13-17, and 30-36 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Parker (US 5,088,972, issued Feb. 18,
1992).
Claims 4, 18, and 24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Demers (US 7 ,407 ,4 71 B2, issued Aug. 5, 2008) and
Official Notice.
ANALYSIS
Anticipation Rejection
The Examiner finds that Parker discloses all of the elements of claim
13. Final Act. 2-3. Although the Examiner does not clearly identify which
2
Appeal 2016-005556
Application 12/550,330
components of Parker correspond to the recited claim elements, we
understand the Examiner to define shredding device 32 as the recited
dunnage machine and crimping apparatus 30 as the dunnage accumulator.
Our understanding is based on the Examiner's interpretation of 1) Parker's
exit opening 42, which is part of shredding device 32 (see Parker 7:57-58),
as corresponding to the recited outfeed area of the dunnage machine (see
Final Act. 6), and 2) Parker's confined area 62', which is part of crimping
apparatus 30 (see Parker 8:34--42, 11: 18-20), as corresponding to the recited
accumulation space of the dunnage accumulator (see Final Act. 6). The
Examiner determines that "the limitations followed by the terms 'configured
to' and 'adapted to' are not positively [re]cited limitations and not fully
given patentable weight." Id. at 5 (we understand the Examiner to mean the
limitations following the terms "configured to" and "adapted to").
Continuing, the Examiner determines that "the recitation that an element is
'adapted to' perform a function is not a positive limitation but only requires
the ability to so perform" and "does not constitute a limitation in any
patentable sense." Ans. 6 (citing In re Hutchison, 154 F.2d 135 (CCPA
1946)).
Appellants traverse, arguing that Parker "fails to disclose a dunnage
machine that ejects dunnage from an outfeed area, and a dunnage
accumulator that accumulates dunnage from the outfeed area." Appeal Br.
10. We agree.
Parker discloses a crimping apparatus for attachment to a shredding
device. Parker 3: 10-11, 7:67-8: 11. Sheets of material are fed into the
shredding device, and a plurality of cut strips emerge. Id. at 7:40-45. The
strips are fed through exit opening 42 into confined area 62/62', and
3
Appeal 2016-005556
Application 12/550,330
continued feeding causes the strips to impact against a barrier and to fold
against themselves, thus crimping. Id. at 3:15-21, 8:43---64, 11:30-35, Figs.
9-12. Thus, as correctly noted by Appellants, Parker's confined area 62' is
where the cut strips are crimped into dunnage and, therefore, confined area
62' is part of the dunnage machine. See Appeal Br. 10.
A preponderance of the evidence does not support the Examiner's
interpretation that Parker's exit opening 42 is an outfeed area of a dunnage
machine, as no dunnage passes through exit opening 42. Even considering
the Examiner's broad interpretation of "configured to" to mean "has the
ability to," the Examiner has not set forth how Parker has the ability to eject
dunnage (i.e., crumpled paper (see, e.g., Spec. i-fi-14, 59, 81, Fig. 11)) from
exit opening 42. The Examiner has failed to establish that Parker discloses a
dunnage machine configured to eject dunnage from an outfeed area and a
dunnage accumulator adapted to receive and accumulate dunnage from the
outfeed area into an accumulation area as required by claim 13.
We further agree with Appellants that the Examiner has improperly
failed to address the "configured to" and "adapted to" recitations of claim 1.
See Appeal Br. 11-12. "[T]he phrase 'adapted to' generally means 'made
to,' 'designed to,' or 'configured to,' though it can also be used more
broadly to mean 'capable of or 'suitable for."' In re Man Mach. Interface
Techs. LLC, 822 F.3d 1282, 1286 (Fed. Cir. 2016) (citing In re Giannelli,
739 F.3d 1375, 1379 (Fed. Cir. 2014)). In Giannelli, the court looked to the
written description of the application and determined that the phrase
"adapted to," in view of the specification, has a narrower meaning than
"capable of' or "suited for." Giannelli, 739 F.3d at 1379; see also Aspex
Eyewear, Inc. v. Marchan Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir.
4
Appeal 2016-005556
Application 12/550,330
2012) (holding that "adapted to" required elements to be "designed or
configured to accomplish the specified objective, not simply that they can be
made to serve that purpose"). In this case, we likewise look to Appellants'
Specification to discern the meaning of "configured to" and "adapted to."
The Specification explains that the dunnage accumulator is adapted to
receive and accumulate dunnage 40 in accumulation space 517 via top and
bottom holding portions 504, 502 that are articulated relative to one another
to accommodate an accumulating amount of dunnage. Spec. i-f 105. Thus,
the Specification sets forth that the dunnage accumulator is specifically
designed to receive and accumulate dunnage in the accumulation space. In
light of the Specification, therefore, the "adapted to" recitation of claim 13
means "made to," "designed to," or "configured to," not merely "capable of'
or "suitable for." The Examiner, however, has not set forth how Parker
discloses an accumulation space designed or configured to accumulate
dunnage from the outfeed area.
Similarly, the Specification explains that the top and bottom holding
portions are connected to the dunnage machine on opposing sides of the
outfeed area, allowing the dunnage to pass through the outfeed area into the
accumulation space. Id. i-f 119. Thus, the Specification sets forth that the
dunnage machine is designed such that the dunnage accumulator is attached
thereto surrounding the outfeed area. In light of the Specification, therefore,
the "configured to" recitation of claim 13 means "made to," "designed to,"
or "configured to," not merely "capable of' or "suitable for." The Examiner,
however, has not set forth how Parker discloses a dunnage machine designed
or configured to eject dunnage from an outfeed area.
5
Appeal 2016-005556
Application 12/550,330
Accordingly, for the foregoing reasons, we do not sustain the
Examiner's rejection of claim 13, or its dependent claims 2, 3, 6-8, 14--17,
and 30-36, as being anticipated by Parker.
Obviousness Rejection
The Examiner finds that Demers discloses a dunnage dispensing
system as recited in claims 4, 18, and 24, but takes Official Notice "that a
use of sensors to sense a presence and amount of products in an accumulator
area associated with specific element[ s] of the accumulator is old and well
known." Final Act. 4.
Claims 4, 18, and 24 depend from claim 13. Claims App. The
Examiner has not addressed the limitations of claim 13, or of claims 4, 18,
and 24 other than the sensor of claim 4. Instead, the rejection of these
claims is merely conclusory. To establish a prima facie case of obviousness,
all the claim limitations must be taught or suggested by the prior art. See In
re Royka, 490 F.2d 981(CCPA1974). Furthermore, "rejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness." In re Kahn,
441F.3d977, 988 (Fed. Cir. 2006) (cited with approval in KSR Int'! Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007)). Because the rejection does not
satisfy these requirements, we do not sustain the rejection of claims 4, 18,
and 24 as being unpatentable over Demers and Official Notice.
DECISION
The Examiner's decision to reject claims 2--4, 6-8, 13-18, 24, and
30-36 is reversed.
6
Appeal 2016-005556
Application 12/550,330
REVERSED
7