Ex Parte 6,672,187 et al

Board of Patent Appeals and Interferences

Aug 14, 2012

95001354 (B.P.A.I. Aug. 14, 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.
95/001,354 05/14/2010 6,672,187 1286.011 9880
7590 08/15/2012
JANSSON, SHUPE & MUNGER, LTD
245 MAIN STREET
RACINE, WI 53403
EXAMINER
DAWSON, GLENN K
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
08/15/2012 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 & ZUND AMERICA, INC.
Requester

v.

Patent of MIKKELSEN GRAPHIC ENGINEERING, INC.
Patent Owner
____________________

Appeal 2011-013537
Reexamination Control 95/001,354
Patent US 6,672,187
Technology Center 3900

____________

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

LEBOVITZ, Administrative Patent Judge.

DECISION ON PATENT OWNER’S REQUEST FOR REHEARING
Patent Owner requests rehearing pursuant to 37 CFR § 41.79 of the
portion of the Board’s decision of February 16, 2012 (“Dec. or “Decision”)
which reversed the Examiner’s determination not to adopt the rejection of
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claims 13 and 18 of US Patent 6,672,187 (“the ‘187 patent”) as anticipated
by Summagraphics1 and obviousness rejections based on Summagraphics.
Patent Owner’s Request for Rehearing, dated March 16, 2012 (“PO Req.
Reh’g”).

STATEMENT OF THE CASE
In the previous Decision, we reversed the Examiner’s determination
not to adopt the rejection of claims 13 and 18 under 35 U.S.C. § 102(b) as
anticipated by Summagraphics. Dec. 3, 12-17, & 20. We also reversed the
Examiner’s decision not to adopt the rejection of claims 13 and 18 under 35
U.S.C. § 103(a) as obvious over Summagraphics and Silverberg,2 and
Summagraphics and Arcaro. 3 Dec. 3 & 20. Patent Owner contends that we
overlooked a key portion of claim 13 and that our decision was based on a
misapprehension of the claim’s scope. PO Req. Reh’g 1. Patent Owner
contends that we did not give proper weight to the claim limitation recited in
claim 13 of a “reference feature identifier means for automatically
determining a coordinate region of the reference features if the reference
features are not in an expected coordinate region on the sheet-receiving
surface.” PO Req. Reh’g 3. Our discussion below focuses on this
limitation.

1 Gerard Verdonck, EP 0 704 283 A1, published March 4, 1998.
2 Eric Silverberg, et al., US 4,734,716, issued March 29, 1998.
3 David J. Arcaro, et al., US 5,790,915, issued August 4, 1998.
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Claim 13
13. In apparatus for cutting at least one graphics area from a
sheet of material bearing a combination of such graphics area(s)
and a plurality of registration marks in predetermined positions
with respect to the graphics area(s), such combination being in
a predetermined approximate position and orientation with
respect to a set of reference features of the sheet of
material, such apparatus including (a) a sheet-receiving surface,
(b) a main sensor, (c) a cutter operatively connected to the
sensor and adapted to move about the sheet-receiving surface to
cut the graphics area(s) from the sheet of material in response to
precise positions of the marks sensed by the main sensor, the
improvement comprising; reference feature identifier means for
automatically determining a coordinate region of the reference
features if the reference features are not in an expected
coordinate region on the sheet-receiving surface, and for
sensing metrics of the reference features in order to infer the
approximate positions of the registration marks when the
coordinate region of the reference features is known.

Claim interpretation
Claim 13 is directed to an apparatus. The apparatus is claimed in
Jepson format to indicate that the claimed invention is an improvement of a
conventional or known product. Dec. 5-6. The improvement is recited as
follows (reformatted from the original by adding paragraphs, spacing, and
indentations to emphasize the different limitations in the claims):
the improvement comprising:
reference feature identifier means
for automatically determining a coordinate region of the
reference features if the reference features are not in an
expected coordinate region on the sheet-receiving surface, and
for sensing metrics of the reference features in order to
infer the approximate positions of the registration marks when
the coordinate region of the reference features is known.
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The claimed “reference feature identifier means” is recited in the
claim to have two functions: 1) “automatically determining a coordinate
region of the reference features if the reference features are not in an
expected coordinate region on the sheet-receiving surface” and 2)
“sensing metrics of the reference features in order to infer the approximate
positions of the registration marks when the coordinate region of the
reference features is known.” The meaning of limitation 1), particularly the
“if” recitation, is in dispute in this Request for Rehearing.
Patent Owner’s position is that the “automatically determining” step is
“triggered only by the ‘if’ statement.” PO Req. Reh’g 4. In other words,
according to Appellant, it must first be ascertained that the reference features
are not in their expected location, and only then is the reference feature
identifier means instructed to automatically determine their coordinate
regions.
We do not agree with this narrow interpretation. The claim does not
recite instructions for first ascertaining whether the reference features are or
are not in their expected location. This function is not recited in the claim.
The claim only requires automatically determining reference features which
are not in their expected location (“automatically determining a coordinate
region of the reference features”). Thus, “if” a reference feature is not in the
expected coordinate region, and its coordinate region is automatically
determined, the limitation of the claim is met.
Patent Owner contends that the “if” trigger must be satisfied because
instructions in a controller for carrying out the “if” limitation “is at the heart
of the invention of the ‘187 Patent.” PO Req. Reh’g 4.
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We are not persuaded by this argument. In the “Summary of the
Invention,” the inventors stated:
The invention includes the addition of steps which
automatically enable the process to proceed regardless of
whether or not the sheet has been placed in an expected position
and orientation on the sheet-receiving surface. These steps
include determining whether the reference features are in an
expected coordinate region on the sheet receiving surface. If
the reference features of the sheet are not in the expected
coordinate region, the coordinate region of the reference
features is automatically determined.
‘187 patent, col. 3, ll.
In the embodiment described in the “Summary of the Invention” it
could be said that the step of “determining whether the reference features are
in an expected coordinate region on the sheet receiving surface” triggers the
next successive step of “automatically” determining the coordinate region of
the reference features which are not in their expected coordinate region. But
such trigger is not recited in claim 13 because there is no limitation requiring
instruction or function for the “reference feature identifier means” of
ascertaining reference features which are not in their expected locations.
The invention of claim 13 does not recite the function of “determining
whether the reference features are in an expected coordinate region on the
sheet receiving surface,” unlike the embodiment described in the “Summary
of the Invention.”
We decline to read the clause “if the reference features are not in an
expected coordinate region on the sheet-receiving surface” as an instruction
for “determining whether the reference features are in an expected
coordinate region on the sheet receiving surface” because the former clause
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is simply not recited in the form of an instruction or function. While the
claim covers embodiments comprising the instruction of identifying whether
a reference feature identifier is not in the expected location, the claim also
includes embodiments in which such instruction is absent.
Underlying the Patent Owner's argument is that the claims mean that
if and only if the step of “determining whether the reference features are in
an expected coordinate region on the sheet receiving surface” actually
results in the determination that reference features are not in an expected
coordinate region, does the reference feature identifier performs the next
successive step of “automatically” determining the coordinate region of the
reference features which are not in their expected coordinate region. But
such “if and only if” conditional performance of the successive step is
neither recited nor required in applying the broadest reasonable
interpretation of claim 13.

Summagraphics
Summagraphics automatically determines, using a “detector means,”
the actual positions of marker prints, the latter which constitute the
“reference features” of claim 13. FF2 & FF5;4 Dec. 10-11. At least some of
these reference features are not in their expected coordinate region as a
result of distortions, translations, and rotations of the sheet material from
which the graphics is cut. Summagraphics, p. 1, col. 1, ll. 48-52; p. 2, col. 2,
ll. 14-21; p. 3, col. 1, ll. 1-3. Thus, Summagraphics determines the positions
of reference features which are not in their expected location, meeting the

4 “FF” refers to the Findings of Fact in the previous decision.
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limitation of claim 13 of “automatically determining a coordinate region of
the reference features if the reference features are not in an expected
coordinate region on the sheet-receiving surface.”
Patent Owner contends that the “if” limitation is not met because
“Summagraphics scans the entire sheet to locate every marker, and when
this entire-sheet scan is complete, there is no further action which would
follow an ‘if’ statement if such a statement were present.” PO Req. Reh’g 3-
4.
This argument is not persuasive. As discussed above, the claim is not
limited to how or when it is determined that the reference features are not in
their expected location, as long the coordinate region of such features is
automatically determined, the latter being met by Summagraphics. We do
not interpret the so-called “if” clause to require an instruction in which it is
first determined that the reference features are not in their expected
locations, and automatically determining a coordinate region if, and only if,
reference features not in the expected coordinate region are found. By
scanning the sheet for all reference features, Summagraphics automatically
determines reference features not in their expected locations as required by
the claim.
With respect to limitation 2) above, Patent Owner contends that “there
is no inferring of the approximate positions of the markers - indeed, the
actual (not just approximate) positions of all of the markers are already
known once the entire-sheet scan is completed.” PO Req. Reh’g 4.
However, as discussed in the previous Decision, we interpreted the “in order
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to infer” clause of limitation 2) in claim 13 to describe an intended use of the
metric sensing information that does not further limit the claim. Dec. 14-15.

Summary
We decline to modify our decision in which we reversed the
Examiner’s determination not to adopt the rejection of claims 13 and 18 of
the ‘187 patent as anticipated by Summagraphics, and as obvious as set forth
in Rejections 2 and 3. Dec. 3 and 18.

ack

cc

Patent Owner:

JANSSON, SHUPE & MUNGER, LTD
245 MAIN STREET
RACINE, WI 53403

Third Party Requester:
BOYLE FREDRICKSON S.c.
840 NORTH PLANKINTON AVENUE
MILWAUKEE, WI 53203

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.
95/001,354 05/14/2010 6,672,187 1286.011 9880
7590 08/15/2012
JANSSON, SHUPE & MUNGER, LTD
245 MAIN STREET
RACINE, WI 53403
EXAMINER
DAWSON, GLENN K
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
08/15/2012 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 & ZUND AMERICA, INC.
Requester

v.

Patent of MIKKELSEN GRAPHIC ENGINEERING, INC.
Patent Owner
____________________

Appeal 2011-013537
Reexamination Control 95/001,354
Patent US 6,672,187
Technology Center 3900

____________

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

LEBOVITZ, Administrative Patent Judge.

DECISION ON REQUESTER’S REQUEST FOR REHEARING

Appeal 2011-013537
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The Third Party Requester and Appellant requests rehearing pursuant
to 37 CFR § 41.79 of the portion of the Board’s decision of February 16,
2012 (“Dec. or “Decision”) which affirmed the Examiner’s determination
not to adopt the rejection of claims 1, 7, 8, 17, and 19-22 of U.S. Patent
No. 6,672,187 (“the ‘187 patent”) under 35 U.S.C. § 102(b) as anticipated
by Summagraphics1 and to not adopt the rejections of claims 1, 3-8, 17, and
19-22 under 35 U.S.C. § 103(a) as obvious over Summagraphics in view of
either of Silverberg2 and Arcaro. 3 Third Party Requester’s Request for
Rehearing, dated March 16, 2012 (“TPR Req. Reh’g”).

ISSUE
Since claim 1 is at issue in this rehearing, we reproduce it below:
1. In a method for cutting at least one graphics area from a
sheet of material bearing a combination of such graphics area(s)
and a plurality of registration marks in predetermined positions
with respect to the graphics area(s), such combination being in
a predetermined approximate position and orientation with
respect to a set of reference features of the sheet of
material, the method including (a) placing the sheet of material
on a sheet-receiving surface, (b) sensing precise positions of the
marks with a main sensor, and (c) cutting the graphics area(s)
from the sheet of material in response to such precise positions,
the improvement comprising: automatically determining
whether the reference features are in an expected coordinate
region on the sheet-receiving surface; if the reference features
of the sheet of material are not in the expected coordinate
region, automatically determining the coordinate region of the
reference features on the sheet-receiving surface; sensing

1 Gerard Verdonck, EP 0 704 283 A1, published March 4, 1998.
2 Eric Silverberg, et al., US 4,734,716, issued March 29, 1998.
3 David J. Arcaro, et al., US 5,790,915, issued August 4, 1998.
Appeal 2011-013537
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Patent US 6,672,187

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metrics of the reference features to determine a position and
orientation of the sheet of material; and inferring therefrom the
approximate positions of the registration marks.

In the previous Decision, we concluded that claim 1 was not
anticipated by Summagraphics because Summagraphics does not describe
“inferring therefrom the approximate positions of the registration marks” as
recited in claim 1. Dec. 11. The Requester challenges this determination.
Requester contends:
Thus, contrary to the Board[’]s decision, Summagraphics
indeed discloses a device and method in which a reference
feature or subset of the marker prints is located by the detector
and then used to infer the locations of the rest of the marker
prints or registration marks.
TPR Req. Reh’g 5.
As explained in the Decision, Summagraphics describes detecting the
actual positions of marker prints and then comparing them to their expected
positions (FF24). Dec. 10. Marker prints satisfy the claimed limitation of
“reference features.” We concluded that this disclosure by Summagraphics
met the recited limitation in claim 1 of “automatically determining whether
the reference features are in an expected coordinate region on the sheet-
receiving surface.” Dec. at 10-11.
We further stated that “[w]hen the actual and expected positions do
not match (the ‘if’ clause in claim 1), Summagraphics describes ‘deriving a
transformation relatios’ which are used to generate transformed points and
then then to determine r infer the position of the figure which is to be cut out
from the sheet (FF3 & FF4).” Dec. 11. Based on this disclosure, we

4 “FF” refers to the Findings of Fact in the previous Decision.
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concluded that Summagraphics uses the “reference features” (or “marker
prints” of Summagraphics) to infer the position of a figure’s graphic area
(FF4). Id. Claim 1, however, requires that the “reference features” be used
to infer the position of “registration marks.” Id. Thus, Summagraphics
infers the position of the graphic art (“figure”) from the reference features,
not the position of registration marks (“marker prints”) as required by claim
1.
The Requester did not provide adequate evidence to rebut this
conclusion. In the Request for Rehearing, the Requester argues:
Summagraphics explicitly discloses “taking into account any
translation, rotation, or distortion of the sheet material” in
deriving the actual positions of the marker prints. In order to
determine the translation, rotation, or distortion, the device of
Summagraphics must determine the location of at least one
marker print, which constitutes the reference feature. The
method of Summagraphics then explicitly discloses deriving,
i.e., inferring, from the location of that reference feature or
marker print, the actual positions of the other marker prints,
e.g., registration marks.
TPR Req. Reh’g 5.
As indicated above, Summagraphics infers the position of the graphics
area. However, registrations marks are not part of the graphics area which is
to be cut out. Registration marks are described in the ‘187 patent as being
used to define the cutting path to cut out the graphic area. ‘187 patent, col.
6, l. 66 to col. 7, l. 5; col. 9, ll. 14-20. Figure 9B of the ’187 patent,
reproduced below, illustrates registration marks:

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Figure 9B shows graphic area 42a, which is to be cut from sheet 40,
and “registration marks” 44. ‘187 patent, col. 6, ll. 48-52; col. 8, ll. 28-34.
The registration marks are not part of the graphic area. Thus, inferring the
position of the graphic area by Summagraphics does not infer positions of
the registration marks. We thus decline to modify the Decision dated
February 16, 2012.

REHEARING DENIED
ack
cc
Patent Owner:

JANSSON, SHUPE & MUNGER, LTD
245 MAIN STREET
RACINE, WI 53403

Third Party Requester:
BOYLE FREDRICKSON S.c.
840 NORTH PLANKINTON AVENUE
MILWAUKEE, WI 53203