Smithwick, James M.

Patent Trials and Appeals Board

Jan 27, 2020

12708697 - (D) (P.T.A.B. Jan. 27, 2020)

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.
12/708,697 02/19/2010 James M. Smithwick 3489-054 5048
24112 7590 01/27/2020
COATS & BENNETT, PLLC
1400 Crescent Green, Suite 300
Cary, NC 27518
EXAMINER
DAVIES, SAMUEL ALLEN
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
01/27/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES M. SMITHWICK
Appeal 2019-003187
Application 12/708,697
Technology Center 3700
Before LINDA E. HORNER, MICHAEL J. FITZPATRICK, and
NATHAN A. ENGELS, Administrative Patent Judges.
HORNER, 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 1, 3‒10, 14, and 17‒21.2 We have
jurisdiction under 35 U.S.C. § 6(b).
The Examiner rejected one of the claims on appeal as indefinite and
rejected all of the claims on appeal as either anticipated by or unpatentable

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 Container
Graphics Corporation. Appeal Br. 2.
2 The appeal is taken from the Examiner’s decision as set forth in the
Non-Final Office Action dated January 3, 2017 (“Non-Final Act.”).
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over the prior art. Appellant does not contest the indefiniteness rejection.
Appellant argues, however, that the prior art does not anticipate or render
obvious the claimed subject matter. We agree with Appellant that the
Examiner’s findings as to anticipation are not supported by a preponderance
of the evidence and that the Examiner’s rationale in support of obviousness
is not sufficient. Thus, we do not sustain the anticipation and obviousness
rejections over the prior art. We sustain the uncontested indefiniteness
rejection. Thus, we affirm in part.
CLAIMED SUBJECT MATTER
The claims are directed to rotary cutting dies for cutting and scoring
corrugated board. Spec. ¶ 1. Most rotary cutting dies include a die cylinder,
having a die board mounted on the cylinder, and an anvil disposed adjacent
the die cylinder so as to define a nip between the cylinder and the anvil. Id.
¶ 2. The die board typically includes cutting blades, so that as the
corrugated board is fed through the nip, the edges of the board are trimmed.
Id. ¶¶ 2, 3. Elastomer trim transfer devices are mounted to the die board
adjacent the cutting blades to engage and separate the cut pieces of trim from
the resulting product board. Id. ¶ 3.
The Specification describes that over time, due to compression, the
elastomer trim transfer devices tend to bow and a small gap occurs between
the trim transfer devices and the adjacent trim cutting blades, in which small
pieces of trim can become lodged. Id. ¶ 4. In one aspect of the claimed
subject matter, the rotary cutting die includes a retainer mounted on the die
board adjacent the trim transfer device to confine the trim transfer device
between the retainer and the trim cutting blade to prevent a gap from
occurring. Id. ¶ 5.
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In another aspect of the claimed subject matter, the rotary cutting die
includes a preloading device mounted ahead of a leading trim cutting blade.
Id. ¶ 6. The preloading device engages the anvil and preloads the rotary die
cylinder ahead of the leading trim cutting blade loading the die cylinder. Id.
This gradual preloading of the die cylinder makes upstream printing
operations more efficient and avoids ink smudging. Id.
Claims 1, 14, and 18 are independent. Claims 1 and 14 are illustrative
of the subject matter on appeal and are reproduced below.
1. A rotary cutting die adapted to be mounted on a
rotary die cylinder for cutting corrugated board fed between the
cutting die and an anvil disposed adjacent the cutting die and
rotary die cylinder, the rotary cutting die comprising:
a. a die board configured to fit on the rotary die cylinder;
b. a trim cutting blade mounted on the die board for
cutting an outside trim piece from a sheet of corrugated board
to yield a die cut product;
c. the trim cutting blade having an outboard side and an
inboard side and disposed and positioned on the die board for
cutting an outer overall dimension of the die cut product;
d. an elastomer trim transfer device secured to the die
board adjacent the outboard side of the trim cutting blade for
engaging a cut trim piece and separating the cut trim piece from
the die cut product;
e. the elastomer trim transfer device having an outboard
side and an inboard side and wherein the elastomer trim transfer
device is secured to the die board directly adjacent the trim
cutting blade such that the inboard side of the elastomer trim
transfer device faces the outboard side of the trim cutting blade;
f. a retainer for engaging the elastomer trim transfer
device and causing the elastomer trim transfer device to be held
closely adjacent the outboard side of the trim cutting blade so as
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to generally prevent the cut trim piece from being wedged
between the outboard side of the trim cutting blade and the
inboard side of the elastomer trim transfer device;
g. the retainer being mounted on the die board such that
the retainer confines the elastomer trim transfer device between
the retainer and the outboard side of the trim cutting blade; and
h. wherein the elastomer trim transfer device is movable
back and forth within a space defined between the retainer and
the trim cutting blade.
14. A rotary cutting die adapted to be mounted on a
rotary die cylinder for cutting corrugated board fed between the
cutting die and an anvil disposed adjacent the cutting die and
rotary die cylinder, the rotary cutting die comprising:
a. a die board configured to fit on the rotary die cylinder;
b. a trim cutting blade mounted on the die board for
cutting an outside trim piece from a sheet of corrugated board
to yield a die cut product;
c. the trim cutting blade having an outboard side and an
inboard side and disposed and positioned on the die board for
cutting an outer overall dimension of the die cut product;
d. an elastomer trim transfer device secured to the die
board adjacent the outboard side of the trim cutting blade for
engaging the trim piece and transferring the trim piece away
from the trim cutting blade;
e. the elastomer trim transfer device having an outboard
side and an inboard side and wherein the elastomer trim transfer
device is secured to the die board directly adjacent the trim
cutting blade such that the inboard side of the elastomer trim
transfer device faces and engages the outboard side of the trim
cutting blade;
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f. a pre loading device mounted on a leading area of the
die board for engaging the anvil on each revolution of the rotary
die cylinder and preloading the rotary die cylinder; and
g. wherein the trim cutting blade is a leading trim cutting
blade and is disposed transversely across the die board and
wherein the preloading device is aligned with the trim cutting
blade and disposed ahead of the trim cutting blade such that on
each revolution of the rotary die cylinder, the preloading device
engages the anvil and preloads the rotary die cylinder prior to
the leading trim cutting blade loading the rotary die cylinder.
Appeal Br. 16‒19, Claims Appendix.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Takeda US 4,968,292 Nov. 6, 1990
Matsumoto US 6,688,198 B2 Feb. 10, 2004
Simpson US 7,017,463 B1 Mar. 28, 2006
Luquette US 2010/0037741 A1 Feb. 18, 2010
REJECTIONS
The following rejections are on appeal:
1. Claim 4 is rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite.
2. Claims 1, 3‒10, 18, 19, and 21 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Simpson and Matsumoto.
3. Claims 14 and 20 are rejected under 35 U.S.C. § 102(a) as
anticipated by Luquette.
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4. Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Luquette and Takeda.3
OPINION
Rejection of claim 4 as indefinite
The Examiner rejected claim 4 as indefinite because it is unclear
whether the recitations in dependent claim 4 of “at least one trim cutting
blade” and “at least one retainer” refer to the blade and retainer recited in
claim 1 or refer to additional blades and retainers. Non-Final Act. 3.
Appellant did not address this rejection of claim 4 in the Appeal Brief.
Appellant filed a Supplemental Appeal Brief to correct this omission. In the
Supplemental Appeal Brief, Appellant acknowledges that the recitations in
claim 4 “should have been prefaced with the word ‘the’” to make clear that
claim 4 is referring to the blade and retainer of claim 1. Supp. Appeal Br. 1.
Because Appellant has not asserted error in the Examiner’s rejection of
claim 4, we summarily sustain this ground of rejection.
Rejection of claims 1, 3‒10, 18, 19, and 21 as unpatentable over Simpson
and Matsumoto
The Examiner found that Simpson discloses the claimed rotary cutting
die comprising a die board, a trim cutting blade, and a trim transfer device
secured to the die board directly adjacent the trim cutting blade, as recited in
claims 1 and 18. Non-Final Act. 3‒4. The Examiner found that Simpson

3 The Non-Final Office Action included rejections under 35 U.S.C. § 103(a)
of claims 14 and 20 as unpatentable over Gordon (US 6,162,155, issued
Dec. 19, 2000) and of claim 17 as unpatentable over Gordon and Takeda.
Non-Final Act. 8‒14. The Examiner later withdrew these rejections and
entered new grounds of rejection based on Luquette. Ans. 7‒12.
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fails to disclose the claimed retainer. Id. at 4‒5. The Examiner found that
Matsumoto discloses “a cutting device with a blade (10) and similar
elastomer trim transfer device (13, 14; column 2, lines 35‒38), wherein the
cutting device further includes a retainer (20, 21).” Id. at 5. The Examiner
found it would have been obvious to one having ordinary skill in the art at
the time of the invention to modify Simpson to add the retainer, as taught in
Matsumoto, along the outboard side of Simpson’s trim transfer device “to
prevent movement of the elastomer trim transfer device in the traveling
direction of the work piece during the cutting process and to prevent crack
formation.” Id. at 6 (citing Matsumoto, col. 7, ll. 9‒13); see also Ans. 5.
The Examiner further explained that Simpson’s trim transfer device
(stripper 10) is designed to remain in contact with the trim cutting blade (44,
46), and, thus, “it is advantageous for the stripper (10) to remain in contact
with the blade throughout the cutting cycle.” Notice of Panel Decision from
Pre-Appeal Brief Review, dated June 12, 2017. The Examiner found that
Matsumoto’s teaching of a retainer (20, 21) is applicable to Simpson to
“improve[e] the ability of the elastomeric trim transfer device to remain in
contact with the blade” before, during, and after the cut and “limit[] the
movement of Simpson’s elastomeric trim transfer device such that it remains
in the intended location during operation, thereby reducing the likely hood
[sic] of undue stress being placed upon the workpiece which could result in
cracks or other damage[s], improving the accuracy of the cut and ensuring
the trim properly separates from the blade and product.” Id.4

4 Appellant seeks to have the Board dismiss the reasoning set forth in the
Pre-Appeal Brief Review Decision because Appellant asserts that this
reasoning amounts to a new ground of rejection. Appeal Br. 11. We do not
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Appellant argues the Examiner’s reasoning is flawed because the
Examiner has not shown adequate evidence that Simpson suffered from
problems with either movement of its trim transfer device or cracking.
Appeal Br. 10. Appellant also argues that the Examiner has failed to provide
adequate evidence to support finding that Simpson has a problem with
maintaining the trim transfer device flush against the trim cutting blade.
Appeal Br. 12. Appellant further argues that nothing in the record supports
the Examiner’s findings that Simpson’s work piece experiences undue
stress, inaccurate cuts, or problems with the trim separating from the blade
that would be cured by adding Matsumoto’s retainer. Id.
The Examiner responds that “[o]ne of ordinary skill in the art
recognizes that elastic materials deform when compressed, and in the
situation presented by a travelling cutting die, the elastomeric trim transfer
device will tend to compress and press away from the trim blade in the
travelling direction.” Ans. 14 (finding that Matsumoto recognizes the
problem of displacement of the devices 13, 14, in the traveling direction).
The Examiner’s reasoning is not based on rational underpinnings.
The Examiner fails to recognize that the problems addressed by Matsumoto
occur in a different environment than the rotary cutting die of Simpson. The

need to decide whether this reasoning constitutes a new ground of rejection
because the Examiner presented it to Appellant prior to Appellant’s filing of
its Appeal Brief. Thus, Appellant had a full and fair opportunity to address
this reasoning in this appeal. See 37 C.F.R. § 41.39(a)(1) (an appeal is taken
from the “rejection set forth in the Office action from which the appeal is
taken (as modified by any advisory action and pre-appeal brief conference
decision).”). Further, a request to seek review of an examiner’s failure to
designate a rejection as a new ground of rejection must be by way of petition
to the Director under 37 C.F.R. § 1.181. See 37 C.F.R. § 41.40(a).
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Examiner has not provided adequate evidence that the problems addressed in
Matsumoto are problems existing in Simpson.
Simpson, similar to Appellant’s invention, relates to a rotary cutting
die for cutting corrugated board by passing the board through the nip
between a rotating die and a rotating anvil. Simpson, 2:31‒36, Fig. 1. By
contrast, Matsumoto relates to an apparatus for cutting sheet-shaped
materials such as Fresnel lens sheets, lenticular lens sheets or the like.
Matsumoto, 1:8‒14. Matsumoto’s apparatus does not cut this sheet-shaped
material using a rotary die. Rather, Matsumoto’s apparatus includes a
cutting unit 7 that has a pair of blades 9 and 10 that face each other in the
vertical direction, while the sheet-shaped material 5 is supplied horizontally
between the blades. Id. at 4:30‒37, 8:27‒9:6, Figs. 1‒3.
In Matsumoto, the holding members disposed on either side of the
blades prevent the sheet from cracking while it is cut. Specifically, holding
members 11 and 12 are disposed on opposite sides of blade 9 and holding
members 13 and 14 are disposed on opposite sides of blade 10. Id. at 4:37‒
41. Matsumoto teaches that upper and lower blades 9, 10 can be aligned in a
manner to reduce the stress applied on the sheet-shaped material 5 and
prevent cracks from occurring on the product side 5b of the sheet-shaped
material 5. Id. at 5:23‒34. Matsumoto describes that, in one embodiment,
blades 9, 10 are arranged to provide a horizontal gap between the blade
edges so as to form notches on opposite surfaces of sheet-shaped material 5
during a first half of the cutting process, and then break the portion of
sheet-shaped material 5 corresponding to this gap during a second half of the
cutting process. Id. at 5:35‒47, Figs. 5B, 6B. In the context of this gap
embodiment, Matsumoto describes that, when the notches are formed on
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opposite surfaces of sheet-shaped material 5, the material is held from the
opposite surfaces by holding members 11, 12, 13, and 14, which prevents
cracks from occurring on the finished product side 5b of the sheet-shaped
material and prevents burrs from occurring on the cutting surface. Id. at
5:52‒64. Matsumoto describes that holding members 13 and 14 are kept in
their appropriate positions by means of displacement prevention members 20
and 21 abutting the holding members and preventing them from being
“displaced in the traveling direction of the sheet-shaped material 5.” Id. at
6:65‒7:16.
First, the Examiner has not provided adequate evidence that Simpson
is concerned with formation of cracks when using its rotary cutting die to
process corrugated board. Notably, Matsumoto’s apparatus is designed to
process different material than Simpson’s rotary cutting die. The
sheet-shaped material processed in Matsumoto appears to be made of a
hardened resin (Matsumoto 1:16‒43), which may be prone to cracking when
stresses from holding and cutting are placed upon the material, whereas
Simpson is directed to cutting corrugated board, which may not have similar
problems with cracking. The Examiner has not provided sufficient evidence
to substantiate the finding that the cracking problem being address in
Matsumoto is one that also is encountered in Simpson, such that
Matsumoto’s teachings would benefit Simpson’s device in the same manner.
Second, the Examiner has not provided adequate evidence that
Simpson’s cutting die would otherwise benefit from the addition of retainers,
as taught in Matsumoto. Although Simpson describes that filler region 20 of
stripper 10 “is designed to fit flush against the upper beveled area of a
respective trim blade 44 or 46,” Simpson does not describe that a problem
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exists with maintaining stripper 10 flush against the trim blade. Further,
Matsumoto uses retainers 20, 21 to address a problem of displacement of
holding members 13, 14 in the horizontal traveling direction of the
sheet-shaped material. It is not clear from this disclosure in Matsumoto that
movement of the corrugated board through the rotary cutting die of Simpson
would cause the same displacement problem. Further, as noted by
Appellant, the Examiner does not provide any evidentiary support in the
record for the findings that use of a retainer in Simpson would “improv[e]
the accuracy of the cut and ensur[e that] the trim properly separates from the
blade and product.” Panel Decision from Pre-Appeal Brief Review.
Third, the only support for the Examiner’s finding (Ans. 14) that
“[o]ne of ordinary skill in the art recognizes that elastic materials deform
when compressed, and in the situation presented by a travelling cutting die,
the elastomeric trim transfer device will tend to compress and press away
from the trim blade in the travelling direction” is found in Appellant’s
Specification. The Examiner improperly relied on the problem identified in
Appellant’s Specification, without sufficient evidence to show that
compression of the trim transfer device was an art-recognized problem at the
time of the invention.
Thus, the Examiner’s reasoning for modifying Simpson with the
teaching of Matsumoto lacks adequate factual underpinnings. For this
reason, we do not sustain the Examiner’s rejection of independent claims 1
and 18 and their dependent claims 3‒10, 19, and 21 as unpatentable under
35 U.S.C. § 103(a) over Simpson and Matsumoto.
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Rejection of claims 14 and 20 under 35 U.S.C. § 102(a) as anticipated by
Luquette
Independent claim 14 recites a rotary cutting die comprising “a
preloading device mounted on a leading area of the die board for engaging
the anvil on each revolution of the rotary die cylinder and preloading the
rotary die cylinder.” Appeal Br. 19 (Claims Appendix). The Examiner
found that Luquette discloses a rotary cutting die comprising the claimed
preloading device (30). Ans. 8‒9. The Examiner explained that Luquette’s
“scrap cutting blade 30 contacts the anvil die before the elastomer trim
transfer device and therefore is preloading the rotary cutting die against the
anvil die.” Ans. 9. Appellant argues that the Examiner’s interpretation of
“preloading device” to encompass the prior art scrap cutting blade 30 relies
on an unreasonably broad interpretation of the term “preloading device.”
Reply Br. 7.
We examine the description of the preloading device provided in
Appellant’s Specification. The Specification describes that “preloading
devices 150 provide a gradual load to the rotary die cutting apparatus 30
prior to the leading trim cutting blades 44 engaging the corrugated board and
cutting the trim against the anvil 50.” Spec. ¶ 43. This preloading device
“avoid[s] the abrupt loads caused by the leading trim blades on each
revolution of the rotary die cylinder 40.” Id. ¶ 42. In one example, the
Specification describes the preloading device as “one or more ramps that are
aligned with the leading trim cutting blades 44 and spaced ahead of the trim
cutting blades.” Id. ¶ 44 (describing preloading ramps depicted in Figure 2),
¶ 45 (describing that the ramps comprise urethane of a particular durometer
that engage the anvil so as to gradually load the rotary die cylinder). In
another embodiment, the preloading device is a segmented ramp formed of a
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series of upstanding elements that gradually preload the die cylinder. Id.
¶ 46.
Appellant argues that when viewed in light of the Specification, the
“preloading device” is “a device that applies a mechanical load to the rotary
die cylinder.” Reply Br. 7. We agree with Appellant’s interpretation of the
term in light of the description provided in the Specification discussed
above. Specifically, the preloading device calls for a structure capable of
applying a gradual load to the rotary die cylinder prior to the leading trim
blade loading the die cylinder on each revolution of the rotary die cylinder.
We further agree with Appellant that the Examiner’s finding that
Luquette’s scrap cutting blade 30 acts as a preloading device, i.e., applies a
mechanical load to the rotary die cylinder, by virtue of simply contacting the
anvil first during the cutting process, is speculative. Luquette is silent as to
whether scrap cutting blade 30 applies a load to the rotary die cylinder, and
the Examiner has not explained adequately how the interaction of scrap
cutting blade 30 with the anvil necessarily applies a pre-load to the rotary die
cylinder in Luquette. For these reasons, we do not sustain the rejection of
independent claim 14 or its dependent claim 20 as anticipated by Luquette.
Rejection of claim 17 under 35 U.S.C. § 103(a) as unpatentable over
Luquette and Takeda
The rejection of dependent claim 17 suffers from the same
deficiencies as discussed above in our analysis of claim 14. Thus, we
likewise do not sustain the rejection of claim 17 as unpatentable over
Luquette and Takeda.
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CONCLUSION
We sustain the rejection of claim 4 under 35 U.S.C. § 112, second
paragraph. We do not sustain the rejection of claims 14 and 20 under
35 U.S.C. § 102(a) and the rejections of claims 1, 3‒10, 17‒19, and 21 under
35 U.S.C. § 103(a). Thus, we affirm in part.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
4 112, second
paragraph
Indefiniteness 4
1, 3‒10,
18, 19, 21
103(a) Simpson, Matsumoto 1, 3‒10, 18,
19, 21
14, 20 102(a) Luquette 14, 20
17 103(a) Luquette, Takeda 17
Overall
Outcome
4 1, 3, 5‒10,
14, 17‒21
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED IN PART