Ex Parte 6619168 et al

Board of Patent Appeals and Interferences

Jun 15, 2012

95001355 (B.P.A.I. Jun. 15, 2012)

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.
95/001,355 05/26/2010 6619168 1286.009 9938
24314 7590 06/15/2012
JANSSON SHUPE & MUNGER LTD.
245 MAIN STREET
RACINE, WI 53403
EXAMINER
DAWSON, GLENN K
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
06/15/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

ZUND SYSTEMTECHNIK AG and ZUND AMERICA, INC.
Requester and Appellant

v.

I-CUT, INC.
Patent Owner and Respondent,
____________________

Appeal 2011-010621
Reexamination Control 95/001,355
Patent US 6,619,168 B2
Technology Center 3900
____________________

Before RICHARD M. LEBOVITZ, DANIEL S. SONG and
JOSIAH C. COCKS, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON REHEARING
The Requester, who is the appellant in this appeal, requests rehearing
pursuant to 37 C.F.R. § 41.79 (“Req. Reh’g”) of the Decision mailed
November 21, 2011 (“Dec.”) in which we affirmed the Examiner’s
determination involving the patentability of claims in U.S. Patent No.
Appeal 2011-010621
Reexamination Control 95/001,355
Patent US 6,619,168 B2
Technology Center 3900

2
6,619,168 B2 (“the ‘168 patent”), which issued September 16, 2003. The
Requester requests reconsideration of our decision to affirm the Examiner’s
determination not to adopt the rejection of claims 1-3, 8, 9, 12, and 13 of
U.S. Patent No. 6,619,168 under 35 U.S.C. § 102(b) as anticipated by
Summagraphics (European Patent No. EP 0704283 Al, published March 4,
1996).
In reviewing the non-adopted rejection, we chose claim 1, which is
reproduced below, as representative (bracketed numbers [1]-[3] are added to
the original claim to mark the limitations at issue in the appeal):
1. In a method for cutting a graphics area including graphics
from a sheet of material bearing such graphics area and a
plurality of registration marks in predetermined positions with
respect thereto at the time the graphics are applied, a subset of
the marks being initial-position/orientation-determining marks
on no more than one side of the graphics area, the method being
of a type including (a) placing the sheet of material on a sheet-
receiving surface, (b) sensing the subset in a field of view of a
main sensor to determine a position and orientation of the sheet
of material and approximate positions of the plurality of
registration marks at the time of cutting, (c) sensing precise
positions of the marks, and (d) cutting the graphics area from
the sheet of material in response to the precise positions of the
marks with respect to the graphics area at that time, the
improvement comprising: [1] if the subset is not in an expected
location, [2] automatically determining a coordinate region of
the subset on the sheet-receiving surface; and [3] in response to
determining the coordinate region of the subset, automatically
repositioning the main sensor to the coordinate region such that
the subset is within the field of view of the main sensor

whereby cutting occurs precisely despite two-dimensional
distortion of the sheet of material prior to cutting.
Appeal 2011-010621
Reexamination Control 95/001,355
Patent US 6,619,168 B2
Technology Center 3900

3
Our discussion of the rejection focused on steps [1]-[3] of claim 1 said
by the Patent Owner to be an improvement over the prior art. We found that
Summagraphics described steps [1] and [2], but not [3] (Dec. 16). The
Requester contends that we erred in this conclusion. The Requester states:
However, a close reading of the disclosure of the ‘168 patent
establishes that the steps of [2] “automatically determining” and
[3] “automatically repositioning” are one in the same. While
each step is due patentable weight, the board has assigned too
much importance to that which is not said in Summagraphics
and not enough to what is disclosed in the ‘168 patent.
(Req. Reh’g 3-4) (bracketed numerals added).
The Requester’s interpretation of limitations [2] and [3] is not
consistent with the express language of claim 1 as it would be understood by
one of ordinary skill in the art in the light of the ‘168 patent specification.
Claim 1 specifies that the step [3] of “automatically repositioning the
main sensor to the coordinate region” is done “in response to [2]
determining the coordinate region.” It is not evident how the steps of [2]
“automatically determining” and [3] “automatically repositioning” could be
“one in the same” when the second recited step [3] is performed “in
response” to the first step [2]. The Requester’s interpretation disregards the
recitation of “in response to determining the coordinate region of the subset”
whose plain meaning would indicate that “repositioning” of the sensor was
accomplished in reply and after the coordinate region was automatically
determined.
It is true that the terms in a claim must be interpreted in light of the
written description of a patent. In re Suitco Surface, Inc., 603 F.3d 1255,
1259 (Fed. Cir. 2010); In re ICON Health & Fitness, Inc., 496 F.3d 1374,
Appeal 2011-010621
Reexamination Control 95/001,355
Patent US 6,619,168 B2
Technology Center 3900

4
1379 (Fed. Cir. 2007). However, the Requester did not identify adequate
evidence that the written description of the ‘168 patent imbued the phrase
“in response to determining the coordinate region of the subset” with a
meaning different from the plain and ordinary meaning of the terms in the
claim. The Requester cited disclosure in the ‘168 patent describing how the
sensor was moved (Req. Reh’g 3-4). The Requester contends
The ‘168 patent discloses, in reference to FIGS. 4A and 4B,
that the main sensor 22 is directed to move in a given pattern
and wherein the sensor begins at a location F1, which is
associated with the expected location of the subset 46. If the
subset 46 is not at the expected location, F1, the sensor 22
moves in a predetermined pattern until the “coordinate region
45 of subset 46 [ ] [is] within the field of view of the main
sensor 22.” Col. 7, lns. 5-8. Thus, the steps of determining the
coordinate region of the subset on the sheet-receiving surface
and the repositioning the main sensor are one in the same.
(Id. at 4.)
We do not agree. The passage cited by the Requester simply refers to
the movement of the sensor, but does not teach that [2] determining the
coordinate region and [3] repositioning the sensor are the same steps. To the
contrary, the ‘168 patent describes express embodiments in which the
“automatically determining” and “automatically repositioning” are different
steps. For example, the ‘168 patent discloses:
In certain embodiments of the invention, the automatic
determining step includes enlarging the field of view of the
main sensor, thereby locating the coordinate region of the
subset within an enlarged field of view. The main sensor is
then repositioned, including shrinking the field of view of
the main sensor, such that the subset is within the field of view
of the main sensor.
Appeal 2011-010621
Reexamination Control 95/001,355
Patent US 6,619,168 B2
Technology Center 3900

5
‘168 patent, col. 3, ll. 60-66 (emphases added). Thus, the patent clearly
describes a step [2] in which the coordinate region is automatically
determined using an enlarged field of view, followed by [3] repositioning
the main sensor which includes shrinking the field of view of the main
sensor. Thus, the steps are not “one in the same” as the Requester contends.
In sum, we are not persuaded that we erred in affirming the
Examiner’s determination not to adopt the rejection of claims 1-3, 8, 9, 12,
and 13 as anticipated by Summagraphics.

REHEARING DENIED

KMF

CC:
Patent Owner:
Peter N. Jansson
JANSSON SHUPE & MUNGER LTD.
245 Main Street
Racine, WI 53403

Third Party Requester:

James F. Boyle
BOYLE FREDRICKSON SC
840 N. Plankinton Avenue
Milwaukee, WI 53203