Ex Parte De Luca

Patent Trial and Appeal Board

Feb 21, 2014

10532525 (P.T.A.B. Feb. 21, 2014)

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.
10/532,525 10/21/2005 Nicholas P. De Luca D-30335-01 6004
7590 02/21/2014
Daniel B Ruble
Sealed Air Corporation
Law Department
Post Office Box 464
Duncan, SC 29334
EXAMINER
WU, VICKI H
ART UNIT PAPER NUMBER
1745
MAIL DATE DELIVERY MODE
02/21/2014 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 NICHOLAS P. DE LUCA
________________

Appeal 2012-009662
Application 10/532,525
Technology Center 1700
________________

Before TERRY J. OWENS, MARK NAGUMO, and
DONNA M. PRAISS, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-009662
Application 10/532,525

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STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 21, 23, 24, 26-28, 31, 34-39, 48-51, and 53-55. We have
jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellant claims a machine for making a packaging cushion
insert. Claim 21 is illustrative:
21. A machine for making a packaging cushion insert
from sheet stock of cushioning material, the machine
comprising:
a conveyor adapted to movably support the sheet stock
and sequential discrete sheets of desired shapes;
one or more fluid jet cutting heads movable transversely
and longitudinally relative to the conveyor and adapted to cut
the sheet stock supported by the conveyor into the discrete
sheets; and
a platform below the conveyor adapted to receive the
discrete sheets from the conveyor, wherein the platform and
conveyor are movable relative each other:
i) to place the discrete sheets in stacked
arrangement on the platform when receiving the discrete sheets
from the conveyor; and
ii) to compress the stacked arrangement of discrete
sheets between the platform and the conveyor to produce the
packaging cushion insert.
The References
Landeck US 4,966,059 Oct. 30, 1990
Frank US 5,024,862 June 18, 1991
Bynum US 5,088,047 Feb. 11, 1992
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The Rejections
The claims stand rejected as follows: claims 48 and 49 under
35 U.S.C. § 102(b) over Bynum, claim 50 under 35 U.S.C. § 103 over
Bynum, claims 21, 23, 24, 26, 27, 35, 37, and 38 under 35 U.S.C. § 103 over
Bynum in view of Landeck, claims 31, 39, and 55 under 35 U.S.C. § 103
over Bynum in view of Landeck and Frank and claims 34, 51, 53, and 54
under 35 U.S.C. § 103 over Bynum in view of Frank.1,2
OPINION
We reverse the rejections.
Claims 48-50
“Anticipation requires that every limitation of the claim in issue be
disclosed, either expressly or under principles of inherency, in a single prior
art reference.” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868
F.2d 1251, 1255-56 (Fed. Cir. 1989).
Claim 48, which is the sole independent claim among claims 48-50,
requires a cutting area over a conveyor.
Bynum advances a rotating belt (86) such that a lamina on a printed
sheet (92) carried by the rotating belt is in exact registration with laminae
previously applied to a sandwich stack (60), causes the lamina to adhere to

1 The only rejection of claim 28, i.e., a rejection under
35 U.S.C. § 103 over Bynum in view of Frank (final rejection mailed
Mar. 9, 2011, p. 9) is withdrawn in the Examiner’s Answer (Ans. 4).
2 No rejection of claim 36 is before us. The Appellant does not include
claim 36 in the Appellant’s statement of the issues presented for review on
appeal (Br. 5) and the Examiner does not include in the Examiner’s Answer
(Ans. 5-20) the rejections of claim 36 made in the final rejection, i.e., a
rejection under 35 U.S.C. § 112, first paragraph, as failing to comply with
the enablement requirement and a rejection under 35 U.S.C. § 102(b) over
Bynum (final rejection mailed Mar. 29, 2011, pp. 2-3).
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the previously applied laminae using pressure between a rigidly mounted
backup plate (62) and upward movement of the sandwich stack, and then
cuts the lamina from the sheet using a cutter (99) that moves across the
width of the belt (col. 11, ll. 29-38; Fig. 3).
The Examiner argues that “over” means “upon the surface of” and
that, therefore, Bynum’s cutter (99) must be over the rotating belt (86)
because if it were under the belt it would be on the side of the belt opposite
the sheet (92) and, therefore, could not cut the sheet (Ans. 24).
“‘[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.’” In re
Translogic Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re
Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)).
According to its ordinary meaning, “over” is “used as a function word
to indicate motion or situation in a position higher than or above another”.3
The Appellant’s positioning of the cutting heads (46) above the
conveyor (53) (Fig. 6) indicates that the Appellant is using the term “over”
according to its ordinary meaning such that the term excludes Bynum’s
cutter (99) below the rotating belt (86) (Fig. 3). Thus, the Examiner has not
established a prima facie case of anticipation of the machine claimed in the
Appellant’s claims 48 and 49.
As for claim 50 rejected under 35 U.S.C. § 103, the Examiner
provides no argument that Bynum would have rendered a cutter over the
rotating belt prima facie obvious to one of ordinary skill in the art.

3 WEBSTER’S NEW COLLEGIATE DICTIONARY 817 (G. & C. Merriam 1973).
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Claims 21, 23, 24, 26, 27, 31, 35, and 37-39
Claim 21, which is the sole independent claim among claims 21, 23,
24, 26, 27, 31, 35, and 37-39, requires one or more fluid jet cutting heads.
Landeck uses water from a waterjet assembly (25)’s waterjet
nozzle (107) to cut a sheet passed under the waterjet nozzle, and uses a water
catch tank (53) to collect water emitted from the waterjet nozzle (col. 18,
ll. 12-22, 49-50; Fig. 3).
The Examiner argues that “the specific waterjet(s) of Landeck can be
oriented to point and cut at a plurality of different angles and directions, and
furthermore at a plurality of different axes (see axis of rotation 105,
Figure 1; col. 15 lines 48-50; col. 16 lines 33-41)” (Ans. 7).
Landeck’s Figure 1 shows a plan view wherein a downwardly-
directed waterjet cutting device (106) revolves along a path or circle (105)
about an arm (103)’s vertical rotational axis (col. 13, ll. 38-39, 53-56). The
other portions of Landeck relied upon by the Examiner (col. 15, lines 48-50;
col. 16, lines 33-41) do not disclose that the direction of the waterjet can be
other than downward.
The Examiner argues that one of ordinary skill in the art would have
substituted Landeck’s waterjet assembly for Bynum’s upwardly-facing
cutter (99; Fig. 3) because “waterjets in the conventional art are typically
operated at ultra-high velocity and pressure, and can be manipulated to cut at
a variety of different angles (including 90º to the vertical) in order to slice
and carve completely through materials including resinous sheets, plastics,
metals, etc.” (Ans. 7).
That argument is not well taken because it is unsupported by
evidence. The Examiner’s mere speculation is not a sufficient basis for a
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prima facie case of obviousness. See In re Warner, 379 F.2d 1011, 1017
(CCPA 1967); In re Sporck, 301 F.2d 686, 690 (CCPA 1962). Moreover,
the Examiner does not even speculate that waterjet cutters directed upwardly
like Bynum’s cutter were conventional or that it would have been prima
facie obvious, to one of ordinary skill in the art, to direct Bynum’s cutter
downwardly like Landeck’s waterjet cutter.
Thus, the Examiner has not established a prima facie case of
obviousness of the machine claimed in the Appellant’s claims 21, 23, 24, 26,
27, 31, 35, and 37-39.
Claims 34, 51, and 53-55
Claims 34 and 51, which are the independent claims among claims 34,
51, and 53-55, require a plurality of cutting heads adapted to cut multiple
sheets of the same shape oriented across a conveyor belt perpendicular to the
direction of travel of the conveyor belt.
Frank uses a shaping gantry (40) having two cutter assemblies (44,
46), each mounted on a rail (48, 50) and having a swivelable cutter (44d,
46d), to cut any shape in a moving ply (col. 3, ll. 23-37; Fig. 2a).
The Examiner argues that Frank’s cutters (44d, 46d) are “structurally
capable of cutting multiple sheets of the same shape oriented perpendicular
to the direction of travel of the conveyor (44d, 46d, Figure 2A-2F; col. 3
lines 23-41)” (Ans. 12).
Those portions of Frank disclose cutting, in the direction
perpendicular to the travel of the moving ply, a single sheet, not multiple
sheets. The Examiner has not established that Frank discloses, or would
have rendered prima facie obvious, to one of ordinary skill in the art, an
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apparatus capable of cutting multiple sheets oriented perpendicular to the
direction of travel of the moving ply.
DECISION/ORDER
The rejection of claims 48 and 49 under 35 U.S.C. § 102(b) over
Bynum and the rejections under 35 U.S.C. § 103 of claim 50 over Bynum,
claims 21, 23, 24, 26, 27, 35, 37, and 38 over Bynum in view of Landeck,
claims 31, 39, and 55 over Bynum in view of Landeck and Frank and
claims 34, 51, 53, and 54 over Bynum in view of Frank are reversed.
It is ordered that the Examiner’s decision is reversed
REVERSED

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