Signode Industrial Group LLC

Patent Trials and Appeals Board

Dec 24, 2021

2021002456 (P.T.A.B. Dec. 24, 2021)

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2 Claims 28–40 have been withdrawn from consideration.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.
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Application 16/030,416

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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
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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
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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
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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.
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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.
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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
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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