Signode Industrial Group LLCDownload PDFPatent Trials and Appeals BoardDec 24, 20212021002456 (P.T.A.B. Dec. 24, 2021) 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. 16/030,416 07/09/2018 Jeffrey D. Termanas 026787-8221/70017-US-A 1097 124410 7590 12/24/2021 Neal, Gerber & Eisenberg LLP (SIG) 2 North LaSalle Street Suite 1700 Chicago, IL 60602 EXAMINER TAWFIK, SAMEH ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 12/24/2021 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): amasia@ngelaw.com ipusmail@ngelaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JEFFREY D. TERMANAS, DAVID C. THOMAS, and JANUSZ CIURKOT Appeal 2021-002456 Application 16/030,416 Technology Center 3700 Before JENNIFER D. BAHR, DANIEL S. SONG, and MICHELLE R. OSINSKI, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 21–27 under 35 U.S.C. § 102(a)(2) as being anticipated by Kasel (US 7,428,865 B1, issued Sept. 30, 2008).2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Signode Industrial Group LLC. Appeal Br. 2. 2 Claims 28–40 have been withdrawn from consideration. Final Act. 1 (Office Action Summary). No other claims are pending. Appeal 2021-002456 Application 16/030,416 2 CLAIMED SUBJECT MATTER Appellant’s invention is directed to “[a] device for forming and applying an edge protector to a corner of a load work[ing] in conjunction with a strapping machine that positions and tensions strap[s] around the load.” Spec. ¶ 7. Claim 21, reproduced below, is the only independent claim involved in this appeal and is illustrative of the claimed subject matter. 21. A strapping machine for forming an edge protector, positioning the edge protector on a load, and strapping the edge protector to the load, the strapping machine comprising: an edge protector former comprising: a shuttle movable between a home position and an application position closer to the load than the home position, the shuttle comprising a breaker assembly including a first member and a second member that is movable relative to the first member between: (1) a first position in which a first angle is formed between part of the second member and part of the first member; and (2) a second position in which a second angle smaller than the first angle is formed between the part of the second member and the part of the first member, and a drive operably connected to the shuttle to move the shuttle between the home position and the application position; a strapping system configured to position a strap around the edge protector and the load, tension the strap, and seal the strap to itself to form a tensioned strap loop around the edge protector and the load; and a controller operably coupled to the drive and the strapping system and configured to: control the drive to move the shuttle from the home position toward the application position to cause the second member to move relative to the first member from the first position to the second position to fold the edge protector; and after the folded edge protector is positioned on the load, control the strapping system to tension the strap Appeal 2021-002456 Application 16/030,416 3 around the edge protector and the load and seal the strap to itself to form the tensioned strap loop. OPINION The issue raised in this appeal is whether the Examiner errs in finding that Kasel’s controller (control system 112 including controller 114 and touch screen 116) is configured to control the drive to move the shuttle (shuttle mechanism 88) from the home position toward the application position to cause the second member (jaw 80 including jaw elements 82, 84 and support bracket 86) to move relative to the first member (pad clamp 76 and prefolder 78) from the first position to the second position to fold the edge protector (pad 64), as called for in claim 21. See Appeal Br. 5–6; Final Act. 2–3. Appellant argues that Kasel’s “jaw elements 82 and 84 and support bracket 86 do not move relative to the pad clamp 76 and pre-folder 78 to fold the corner pad 64.” Appeal Br. 5. Rather, Appellant contends, “jaw elements 82 and 84 and support bracket 86 move relative to the pad clamp 76 and the pre-folder 78 to move out of the way so the pre-folder 78 can contact and fold the corner pad 64.” Id. Appellant asserts that, in Kasel, the pivoting of jaw 80 (jaw elements 82, 84 and support bracket 86) relative to pad clamp 76 and prefolder 78 does not fold corner pad 64; rather, the pivoting of jaw elements 82, 84 and support bracket 86 enables prefolder 78 to fold corner pad 64. Id. at 6. The Examiner finds that Kasel moves the second member (jaw members 82, 84) relative to the first member (pad clamp 76 and prefolder 78) “‘to cause’ an action to come up with exactly the same result of the claimed invention, which is ‘fold the edge protector.’” Ans. 4. The Appeal 2021-002456 Application 16/030,416 4 Examiner “further maintains that the claimed term ‘to cause’” is “a recitation of the intended use of the claimed invention [and] must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art.” Id. at 5. The Examiner posits that the claim limitations that follow “to cause” in claim 21 are not positively recited, and thus “should not be given much patentable weight,” because “to cause” is “a broad and intended use term.” Id. at 5–6. Appellant asserts the Examiner errs in dismissing the argued claim limitations as being intended use entitled to little patentable weight. Reply Br. 3. According to Appellant, the argued “limitations require the claimed first and second members to be constructed, positioned, oriented, and otherwise configured in a particular manner and require the controller to be configured in a particular manner such that the movement of the claimed shuttle toward the application position causes the second member to move relative to the first member to fold the edge protector.” Id. There does not appear to be any dispute between the Examiner and Appellant as to what Kasel discloses. Rather, the resolution of this appeal turns on the proper construction of the controller limitations in claim 21. The Federal Circuit has described the correct inquiry for determining the broadest reasonable construction as follows: The correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is not whether the specification proscribes or precludes some broad reading of the claim term adopted by the examiner. And it is not simply an interpretation that is not inconsistent with the specification. It is an interpretation that corresponds with what and how the inventor describes his invention in the Appeal 2021-002456 Application 16/030,416 5 specification, i.e., an interpretation that is “consistent with the specification.” In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017) (holding that the Board’s construction of the claim term “body” as including components consistently identified and described in the appellant’s patent application specification separately from the “body” was “unreasonable” because it gave “the term ‘body’ . . . a strained breadth in the face of the otherwise different description in the specification”). Further, the Federal Circuit has interpreted “configured to” as meaning that the claimed device is made or designed to accomplish the recited function and instructs that one looks to the underlying disclosure in an application’s specification to ascertain what specific structural features are required of a structural element for it to be properly considered to be made or designed to accomplish the recited function. See In re Man Mach. Interface Tech. LLC, 822 F.3d 1282, 1286 (Fed. Cir. 2016). Appellant’s Specification describes the operation of folding edge protector E as follows: The movable plate 40 includes an arm 48 and a roller 50 extending outwardly and downwardly from a rear thereof that engages a track 52 in the support plate 22. The track 52 has an angled or sloping edge 54 along which the roller 50 rides. When the shuttle 26 is in the outboard or home position (see, FIGS. 9A and 9B), the roller 50 is elevated so that the movable plate 40 is in the 0 degree position. As the shuttle 26 moves off the home position (toward the load or toward the inbound position, see FIGS. 10A and 10B, and 11A and 11B), the roller 50 is urged downward which pivots the movable plate 40 to fold or break the edge protector E. Appeal 2021-002456 Application 16/030,416 6 Spec. ¶ 43. Thus, Appellant’s Specification and drawings describe an apparatus having components operably arranged so that movement of shuttle 26, by operation of drive 28, from the outboard or home position (in which fixed member/plate 38 and movable member/plate 40 lie in the same plane, with edge protector E supported in an unfolded state against the underside of members/plates 38 and 40, as shown in Figure 9A) toward the inbound position, eventually causes roller 50 extending from movable plate/member 40 to ride downwardly along sloping edge 54 of track 52 (as shown in Figures 10B and 11B), which, in turn, causes movable plate/member 40 to pivot downward relative to fixed plate/member 38 (as shown in Figure 11A), thereby folding edge protector E (as shown in Figure 10A). In other words, Appellant’s Specification and drawings describe a direct cause and effect relationship between all of the actions (i.e., move the shuttle, cause the movable member to move relative to the first member, and fold the edge protector). Claim 21 recites, in pertinent part, a controller “configured to: control the drive to move the shuttle from the home position toward the application position to cause the second member to move relative to the first member from the first position to the second position to fold the edge protector.” Appeal Br. 8 (Claims App.). Interpreting this language in accordance with its plain meaning, claim 1 recites a series of cause and effect relationships. The controller, drive, shuttle, first member, and second member must be operably arranged with respect to each other and the load and edge protector so that the drive moves the shuttle from the home position toward the application position, thereby causing the second member to move relative to the first member to the second position, thereby folding the edge protector. Appeal 2021-002456 Application 16/030,416 7 Moreover, as discussed above, this interpretation is consistent with the disclosure in the present application. The Examiner’s attempt to read all of the limitations after “to cause” in claim 21 as intended use entitled to little or no weight is consistent neither with the plain meaning of the claim language nor with how Appellant describes the invention in the Specification and, thus, is an unreasonable claim construction. Kasel’s device operates as follows: In operation, the pad applicator 62 starts with the gripping assembly 70 at the home position; in this position, the jaw 80 is closed. After the load L is squared and compressed, prior to the strap cycle commencing, a signal is received to apply a pad 64 at each of the upper corners U. The assembly 62 moves to the loading position (as sensed by the loading sensor 102), the jaw 80 is opened and a pad 64 is ejected [from] the magazine 66 into the jaw 80. The jaw 80 then closes and the assembly 62 moves to apply the pad 64 at the corner U. The edge sensor 108 senses the edge (corner U) of the load L and the assembly 62 stops moving inward. The clamp 76 and prefolder move 78 downward such that clamp 76 contacts and holds the pad 64 on the load L, the jaw 80 opens and pivots out of the way and the prefolder 78 moves into contact with the pad 64 to fold the pad 64. Kasel 6:7–21. Thus, in contrast to Appellant’s apparatus, as described and claimed, wherein there is a cause and effect relationship between the movement of the second member (movable member 40) relative to the first member (fixed member 38) and the folding of the edge protector, there is no cause and effect relationship in Kasel’s apparatus between movement of the second member (jaw 80) from the position shown in Figure 5 to the position shown in Figure 6 and the folding of pad 64. Rather, Kasel’s prefolder 78 moves Appeal 2021-002456 Application 16/030,416 8 downward into contact with pad 64 to fold pad 64. Kasel’s jaw 80 simply opens and pivots out of the way while prefolder 78 moves into contact with and folds pad 64. Thus, the Examiner errs in finding that Kasel anticipates the subject matter of claim 21. Accordingly, we do not sustain the rejection of claim 21, or of claims 22–27, which depend from claim 21, as being anticipated by Kasel. CONCLUSION The Examiner’s rejection of claims 21–27 is REVERSED. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 21–27 102(a)(2) Kasel 21–27 REVERSED Copy with citationCopy as parenthetical citation