Ex Parte Imkamp et al

Board of Patent Appeals and Interferences

May 22, 2012

11873267 (B.P.A.I. May. 22, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THOMAS IMKAMP, PETER PALMEN, and FRANK SCHMID
____________

Appeal 2010-007312
Application 11/873,267
Technology Center 3700
____________

Before LINDA E. HORNER, MICHAEL L. HOELTER, and
JAMES P. CALVE, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Thomas Imkamp et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 1, 2, 4, and 5 under
35 U.S.C. § 103(a) as unpatentable over Stokes (US 1,983,323; iss. Dec. 4,
1934) and Negrini (US 6,095,959; iss. Aug. 1, 2000). We have jurisdiction
under 35 U.S.C. § 6(b).
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We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
THE INVENTION
Appellants’ claimed invention relates to a flat-bed diecutting machine
for cutting and/or stamping and/or embossing sheet-like materials made of
paper, paperboard, or the like. Claim 1; Spec. 1, para. [0001]. Claim 1,
reproduced below, is representative of the subject matter on appeal.
1. A flat-bed diecutting machine for cutting and/or stamping
and/or embossing sheets, the flat-bed diecutting machine
comprising:
a first diecutting device;
at least one second diecutting device provided
downstream of the first diecutting device; and
a conveying device including a drive and arranged to
transport the sheets to be processed through the first and second
diecutting devices; wherein
the first diecutting device is equipped to stamp a foil onto
a sheet.
ISSUE
Does the structure of Stokes’s machine patentably differ from the
structure of the flat-bed diecutting machine called for in the claims?
ANALYSIS
Rejection based on Stokes and Negrini
We agree with Appellants that Negrini does not teach stamping a foil
onto a sheet. App. Br. 10. Instead, Negrini’s machine for wrapping material
around a group of cigarettes uses a reel 14 of a continuous band 9 of
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wrapping material that has a paper side 21 and an aluminum side 22. Col. 3,
ll. 15-18, 59-63. As such, we cannot sustain the Examiner’s rejection of
claims 1, 2, 4, and 5 based on Stokes and Negrini. The scope of the claims,
however, does not necessitate reliance on Negrini in combination with
Stokes for a determination of unpatentability. We hold that the subject
matter of the claims would have been obvious to one of ordinary skill in the
art at the time the invention was made in view of Stokes alone for the
reasons provided infra.
NEW GROUND OF REJECTION
Claims 1, 2, 4, and 5 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Stokes.
Claim Interpretation
The preamble of claim 1 recites “[a] flat-bed diecutting machine for
cutting and/or stamping and/or embossing sheets, the flat-bed diecutting
machine comprising.” The preamble does not recite the machine and sheets
in combination. The plain language of the preamble suggests claim 1 is
directed to a machine, and the intended use of that machine is to cut and/or
stamp, and/or emboss sheets. The body of the claim further recites certain
structural elements in terms of the function they are to perform with respect
to the sheets. For example, the claimed “conveying device” is “arranged to
transport the sheets to be processed through the first and second diecutting
devices” and the claimed “first diecutting device” is “equipped to stamp a
foil onto a sheet.”
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We interpret the language in the preamble “for cutting and/or
stamping and/or embossing sheets” as a statement of intended use. We
further interpret the functional language in the body of the claim as merely
requiring a conveying device capable of transporting sheets through the
diecutting devices and a first diecutting device capable of stamping a foil
onto a sheet. In other words, the sheets and foil of claim 1 are best described
as materials worked upon by the machine. Such materials do not serve to
patentably distinguish the apparatus. See In re Rishoi, 197 F.2d 342, 345
(CCPA 1952) (“there is no patentable combination between a device and the
material upon which it works” (citations omitted)). An article worked upon
by the claimed machine cannot be relied upon to structurally distinguish the
claimed machine from prior art machines even where, as here, that article is
recited in the body of the claim. In re Young, 75 F.2d 996 (CCPA 1935)
(where a claim to a machine for making concrete beams was not patentable
over the prior art, recitation in the body of the claim of the material worked
upon, a concrete beam, did not lend patentability to that claim).
Further, we understand “diecutting” when read in the context of
claim 1 and in light of Appellants’ Specification to refer to a device that cuts
and/or embosses and/or stamps a sheet. See, e.g., Claim 1, preamble and
Spec. 6-7, para. [0023] (describing that “the first diecutting device 3 may be
used to stamp a foil onto a sheet” and “[t]he second diecutting device 3’ may
then be used to carry out an embossing and/or diecutting operation on the
sheet that has been provided with a foil.”). With this claim interpretation in
mind, we examine the disclosure in Stokes.
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Stokes
Stokes discloses an apparatus for forming decorative blanks used to
form boxes. In Figure 1, a strip S of box material, such as cardboard,
strawboard, or the like, is fed from a roll R and a lining material L is fed
from a roll R1 into adhesive engagement with the upper surface of box
strip S. Stokes, p. 1, ll. 68-70 and 78-81. At station A, a stencil 1 applies
adhesive to the strips and a label X removed from a stack Y is superimposed
upon the strip for attachment thereto by the applied adhesive. Stokes, p. 1,
ll. 85-91. At station B, a die 2 applies desired embossing, printing, or the
like to the strips beyond the label. Stokes, p. 1, ll. 94-97. At station C,
punch 3 punches one or more openings out of strips. Stokes, p. 1, ll. 102-
105. At station D, stencil 4 applies adhesive to the strip in the regions
adjacent to the opening(s). Stokes, p. 1, ll. 106-108. At station D1, a piece
of cellophane, or other transparent or translucent material e, is applied to the
strip over the opening(s). Stokes, p. 1, l. 108 – p. 2, l. 3. At station E,
knives 7 and 8 score and partially cut through the strip, and at station F,
knives 9 notch and sever the strip to create a blank B. Stokes, p. 2, ll. 7-16.
Stokes discloses that “the sequence of the steps can be changed.” Stokes, p.
2, ll. 17-18.
Thus, while Stokes’s machine operates on a continuous strip of box
material, Stokes contemplates and suggests that the sequence of steps can be
changed such that the step at station F, during which the knives 9 sever the
strip to create a blank B, could occur earlier in the process. Further, Stokes
demonstrates, by virtue of the application of the label X at station A, that it
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was known in the art how to convey and operate upon sheets of material, as
opposed to a web. While Stokes uses drive rollers to convey the strip/web of
box material (Stokes, fig. 1), were station F moved so that the box material
was formed into blanks at the start of the processing line, then it would have
been obvious to one of ordinary skill to replace the drive rollers with a
suitable conventional conveying device, such as the conveying device used
to move label X from stack Y to the strip of box material, to convey the
blanks from station-to-station.
Stokes discloses at least three “diecutting devices,” viz, stencil 1, die
2, and punch 3, operating in-line on the box material. Stencil 1 is a
diecutting device equipped to stamp a label onto the box material. We see
no structural difference between the stencil of Stokes equipped to stamp a
label onto a strip of box material, and the claimed diecutting device
equipped to stamp a foil onto a sheet. If stencil 1 is viewed as the first
diecutting device, then die 2, which is used to emboss the box material, is
the second diecutting device provided downstream of the first diecutting
device.
Stokes discloses that the box material S can be lined with a liner L and
that die 2 can be used to emboss the lined box material. As such, die 2 also
appears equipped to stamp a liner onto a sheet. We see no structural
difference between the die 2 of Stokes equipped to emboss a liner onto a
strip of lined box material, and the claimed diecutting device equipped to
stamp a foil onto a sheet. If die 2 is viewed as the first diecutting device,
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then punch 3, which is used to cut a hole in the box material, is the second
diecutting device provided downstream of the first diecutting device.
Alternatively, labels X from stack Y can be viewed as sheets upon
which the die 2 and punch 3 operate, and the continuous strip of box
material is a conveying device including drive rollers that transports the
sheets from station-to-station. Again, Stokes’s machine meets the invention
of claim 1 because the die 2 is capable of stamping a foil onto label X and
the punch 3, which is used to cut a hole in label X, is provided downstream
of die 2.
Appellants fail to identify a structural distinction between the claimed
machine and those of the prior art. The Specification describes generally
that “a foil may be stamped onto a sheet in the first diecutting device” and
“the first diecutting device 3 may be used to stamp a foil onto a sheet.”
Spec., paras. [0009], [0023]. The Specification does not, however, describe
a different structure for the diecutting apparatus to render it specifically
capable of stamping a foil onto a sheet as opposed to stamping another type
of material onto a sheet.1 Further, Appellants have not presented any
arguments that structurally distinguish the claimed first diecutting device
equipped to stamp a foil onto a sheet from the prior art stencil 1 equipped to
apply a label to a strip of box material, or die 2 equipped to emboss a strip of
liner/box material and a label. In other words, neither the Specification nor

1 An ordinary meaning of “stamp” is “Mechanical Engineering: To exert
downward pressure on a material, as to compress, shape, or mark it.”
ACADEMIC PRESS DICTIONARY OF SCIENCE AND TECHNOLOGY (1992),
retrieved from http://www.credoreference.com/entry/ apdst/stamp.
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Appellants’ arguments have identified how the claimed diecutting device for
stamping a foil onto a sheet differs structurally from the prior art stencil 1 or
die 2 used to exert downward pressure on a strip of material. Appellants’
also have not identified a difference in the structure of a diecutting device
required to stamp a foil onto a strip of material as compared to the structure
of a diecutting device required to stamp a foil onto a sheet of material.
As such, we find that Stokes’s machine meets the claimed structure
and that its stencil 1 and/or die 2 are equipped to stamp a foil onto a sheet.
As such, use of Stokes’s machine to stamp a foil onto a sheet would be
nothing more than a new use for an old product. Such a distinction does not
patentably distinguish the subject matter of claim 1. See Roberts v. Ryer, 91
U.S. 150, 151 (1875) (“It is no new invention to use an old machine for a
new purpose. The inventor of a machine is entitled to the benefit of all the
uses to which it can be put, no matter whether he had conceived the idea of
the use or not.”).
Based on the suggestion found in Stokes, it would have been obvious
to one of ordinary skill in the art to modify the machine of Stokes to first cut
the box material into blanks prior to further processing and that in so doing it
would have been obvious to modify the conveying device to render it
capable of conveying blanks instead of a continuous strip of material from
station-to-station. The structures disclosed in Stokes in stations A and/or B
do not differ from the first diecutting device called for in claim 1 and are
equipped to stamp a foil onto a sheet, and the diecutting devices disclosed in
stations B and/or C of Stokes are provided downstream of the diecutting
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devices of stations A and B, respectively. As such, claim 1 is unpatentable
under 35 U.S.C. § 103(a) over Stokes.
Claim 2 calls for simply embossing or cutting a sheet that has been
provided with foil and does not otherwise specify the strength, thickness, or
materials of the sheet or foil. We find that die 2 and punch 3 of Stokes are
inherently capable of, and thus equipped to, carry out embossing and cutting
operations, respectively, on a sheet that has been provided with a foil.
Claim 4 calls for each of the first diecutting device, the second
diecutting device, and other individual processing stations to be independent
modules each having its own drive. Claim 5 depends from claim 4 and calls
for each of the drives to include a control unit and the individual control
units are connected to each other by a connection for exchanging data and/or
control signals. We find that it is inherent that each station in Stokes is
being operated and driven by its own control unit and that the control units
of the stations are connected to each other to exchange control signals to
control the movements of the different devices and so that the processing of
the material as it travels from station-to-station is synchronized and occurs
as efficiently as possible. Alternatively, we adopt the Examiner’s finding of
Official Notice that use of separate drives for different stations on the same
machine along with using a controlling unit to control the separate drives is
old, well known, and available in the art. See Final Office Action at p. 3.
Thus, it would have been obvious to one of ordinary skill in the art at the
time the invention was made to have modified Stokes’s machine to use
different drives for each independent station and to use individual control
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units to coordinate the operation of the drives, as a matter of engineering
design choice, in order to accelerate the processing of the box material
through the machine, better control each individual device, and automate the
process. Id.
CONCLUSION
The structure of Stokes’s machine does not patentably differ from the
structure of the flat-bed diecutting machine called for in the claims
DECISION
The decision of the Examiner to reject claims 1, 2, 4, and 5 is
REVERSED.
We enter a NEW GROUND OF REJECTION of claims 1, 2, 4, and 5
under 35 U.S.C. § 103(a) as unpatentable over Stokes pursuant to our
authority under 37 C.F.R. § 41.50(b) (2011). 37 C.F.R. § 41.50(b) provides
"[a] new ground of rejection pursuant to this paragraph shall not be
considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
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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).

REVERSED; 37 C.F.R. § 41.50(b)

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