The C.W. Zumbiel Company

Patent Trials and Appeals Board

Mar 29, 2022

2022000044 (P.T.A.B. Mar. 29, 2022)

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. 15/828,597 12/01/2017 Steven J. Block RWZ 155U 1028 26875 7590 03/29/2022 WOOD, HERRON & EVANS, LLP 2700 CAREW TOWER 441 VINE STREET CINCINNATI, OH 45202 EXAMINER IMAM, TANZIM ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 03/29/2022 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): usptodock@whe-law.com wjacobs@whe-law.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEVEN J. BLOCK and EDWARD A. ZUMBIEL Appeal 2022-000044 Application 15/828,597 Technology Center 3700 Before JILL D. HILL, CARL M. DEFRANCO, and LEE L. STEPINA, Administrative Patent Judges. HILL, 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, 3-6, 9-11, 13-16, 19-21, 23-26, and 28-33. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 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 The C.W. Zumbiel Company. Appeal Br. 2. Appeal 2022-000044 Application 15/828,597 2 BACKGROUND Appellant’s invention relates to 3D printed paperboard creasing/cutting rules. Claims 1, 11, and 21 are independent. Claim 1, reproduced below with certain portions emphasized, illustrates the claimed subject matter: 1. A cutting/creasing rule for use on a die board for producing a carton blank from a sheet of blank material, the rule comprising: a non-metal additive manufactured proximal portion; a non-metal additive manufactured distal portion projecting from the proximal portion; a non-metal additive manufactured tip on the distal portion which acts upon the sheet of blank material to form at least one of a cut and a crease in the sheet of blank material, wherein an inner face of the proximal portion confronting the die board and aligned with the tip is in contact with the die board to provide support to the tip; and an outer face on the proximal portion opposite from the die board and at a juncture with the distal portion, the outer face being parallel to the die board; wherein the proximal portion is integral with the distal portion; and wherein the distal portion has a cross-sectional configuration which is wider than the tip and less wide than the proximal portion and a material of the proximal portion is the same as a material of the distal portion, a width of the cross- sectional configuration of the distal portion continuously increasing from the tip to the proximal portion. Appeal 2022-000044 Application 15/828,597 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Simpson US 4,289,492 Sept. 15, 1981 Höhnen2 EP 2 886 320 A1 June 24, 2015 REJECTIONS I. Claims 11, 13-16, 19, 20, 29, and 32 stand rejected under 35 U.S.C. § 112(b) as being indefinite. II. Claims 1, 3-6, 9-11, 13-16, 19-21, 23-26, and 28-33 stand rejected under 35 U.S.C. § 103 as unpatentable over Simpson and Höhnen. ANALYSIS Rejection I; Indefiniteness Appellant does not address the pending indefiniteness rejection, which we, therefore, summarily sustain. See Appeal Br. 16, n. 1. Rejection II; Obviousness based on Simpson and Höhnen The Examiner finds that Simpson discloses each of the limitations of the rule of claim 1, except that the proximal and distal portions and tip of Simpson’s rule are not additive manufactured. Final Act. 4-5. The Examiner finds that Höhnen teaches using an additive manufactured rule. Id. at 5. The Examiner considers that it would have been obvious to additive manufacture the proximal and distal portions and tip of Simpson, “because 2 Although the first named inventor of EP 2 886 320 A1 is Uwe Theis, we use Höhnen (the second named inventor, i.e., Roland Höhnen) for consistency with the Examiner and Appellant. Appeal 2022-000044 Application 15/828,597 4 doing so would achieve the predictable result of rapidly and economically manufacturing the rule.” Id. at 5-6. Appellant argues, inter alia, that the combination of references does not disclose or suggest each claim limitation. Appeal Br. 5. Specifically, Appellant argues that the references do not disclose an inner face that is aligned with the tip and in contact with the die board. Id. at 8. According to Appellant, the Examiner’s interpretation of “aligned” is unreasonably broad, because one of ordinary skill in the art would have understood that the inner face is in alignment with the tip. Id. at 8-9; see also Reply Br. 5-8. In response, the Examiner provides an annotated version of Figure 5 of Simpson, reproduced below and annotated to indicate how the Examiner interprets the term “aligned.” Ans. 4. Figure 5 of Simpson, as annotated by the Examiner, is designated by the Examiner as “Figure 5y.” Ans. 4. The Examiner’s annotations include Appeal 2022-000044 Application 15/828,597 5 two dashed vertical lines, with one extending through tip 50 and the other extending through the point of contact of rule 42 with the underlying board, and which the Examiner indicates denote a constant horizontal distance therebetween. Id. The annotations also include a solid line extending through the tip and the above-noted point of contact. Id. According to the Examiner, the tip and inner face of Simpson are aligned, “because both the ‘inner face’ and the ‘tip’ shown in Figure 5x lie on a straight line (shown in a second annotated version of Figure 5 of Simpson, hereinafter Figure 5y, [above]) which passes through both the right end point of the ‘inner face’ and the center of the ‘tip.’” Id. Appellant has the better position. Appellant submitted an amendment on December 28, 2020 that added reference numeral 21 to Figures 10 and 11 to denote an inner face of the proximal portion, and an axis A extending generally perpendicular to die board 14 and through tip 20. The Specification was also amended to add the following, “and an inner face 21 confronting the die board 14 and in contact with the die board 14 aligned with the axis A in one embodiment and along the entire inner face 21 in other embodiments.” Spec. ¶ 42. Based on this disclosure, a skilled artisan would understand that the broadest reasonable interpretation of the term “an inner face of the proximal portion confronting the die board and aligned with the tip is in contact with the die board” that is consistent with the Specification requires the alignment to be along axis A and in contact with die board 14 at tip 20. See Reply Br. 7. This provides support to the tip, as claimed. See Appeal Br. i (Claims App.); see also Appeal Br. 13-14. If we were to construe the Examiner’s “straight line” as being aligned with the tip, any line passing through the inner face and the tip would be Appeal 2022-000044 Application 15/828,597 6 aligned with the tip. Construing the claims so that any line passing through the tip is “aligned” would read out that portion of the inner face that is “aligned with the tip” from the claims, which we decline to do. That is, any portion of the inner face that is in contact with the die board would meet the Examiner’s construction. Claims must not be construed so broadly as to vitiate an express limitation. See Texas Instruments, Inc. v. Int'l Trade Comm., 988 F.2d 1165, 1171 (Fed. Cir. 1993) (“[T]o construe the claims in the manner suggested by TI would read an express limitation out of the claims. This, we will not do.”). For these reasons, we do not sustain the rejection of claim 1, and claims 3-6, 9, 10, and 31 depending from claim 1. Independent claims 11 and 21 also recite “aligned with the tip.” Appeal Br. (Claims App. iii, v). We do not sustain the rejection of claims 11 and 21 and their dependent claims for the same reasons. CONCLUSION The Examiner’s indefiniteness rejection is affirmed and the obviousness rejection is reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 11, 13-16, 19, 20, 29, 32 112(b) Indefiniteness 11, 13-16, 19, 20, 29, 32 1, 3-6, 9- 11, 13-16, 19-21, 23- 26, 28-33 103 Simpson, Höhnen 1, 3-6, 9-11, 13-16, 19-21, 23-26, 28-33 Appeal 2022-000044 Application 15/828,597 7 Overall Outcome 11, 13-16, 19, 20, 29, 32 1, 3-6, 9, 10, 21, 23-26, 28, 30, 31, 33 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