Ex Parte Jensen et al

Patent Trial and Appeal Board

Jul 27, 2018

13244451 (P.T.A.B. Jul. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/244,451 09/24/2011 Jorgen Jensen
21254 7590 07/27/2018
MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC
8321 OLD COURTHOUSE ROAD
SUITE 200
VIENNA, VA 22182-3817
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2859LN.eh 1092
EXAMINER
ALIE, GHASSEM
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
07/27/2018 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 JORGEN JENSEN;
JAN KARLSSON; and
NILS STRANDH
Appeal2016-004885
Application 13/244,451
Technology Center 3700
Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
BRENT M. DOUGAL, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner's final rejection of claims 1--4, 8, 9, and 11. App. Br. 1. Claims
5-7, 12, and 14--16 have been withdrawn while claims 10 and 13 have been
canceled. App. Br. 1, 43. Appellants' counsel presented oral argument on
June 26, 2018, a transcript thereof having been placed in the record
(hereinafter "Transcript," which we reference by page number only). We
have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Appellants identify Core Link AB as the real party in interest. App. Br. 1.
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Application 13/244,451
THE CLAIMED SUBJECT MATTER
The disclosed subject matter relates to a method of removing material
residues from a core. See Spec. ,r 1. 2 Method claim 1 is the sole
independent claim, is illustrative of the claims on appeal, and is reproduced
below.
1. A method of removing material residues from a core, the
core including layers of the material residues disposed on a
casing surface of the core, the method comprising:
lifting and tearing the material residues from the core;
processing the core with the material residues, using a
means for lifting and tearing devoid of a knife, to remove the
material residues from the core as close to the surface of the core
as possible without damaging the surface of the core; and
during said processing of the core, displacing said means
for lifting and tearing in an axial direction from a first position
on the core to a second position located past a distal end of the
core,
wherein said means for lifting and tearing allows a
plurality of reuses of the core in a same manner as a new and
unused core.
Surfus
St. Peter
Rosser, Sr.
Smith et al. 3
Perkins
Schwab
REFERENCES
us 1,555,391
us 1,838,011
us 2,537,237
us 3,605,542
us 4,779,498
us 5,094,003
Sept. 29, 1925
Dec. 22, 1931
Jan.9, 1951
Sept. 20, 1971
Oct. 25, 1988
Mar. 10, 1992
2 We reference Appellants' Published Application US 2012/0060865 Al,
dated March 15, 2012.
3 Hereinafter "Smith."
2
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Application 13/244,451
THE REJECTIONS ON APPEAL
Claims 1--4, 8, 9, and 11 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Claims 1--4, 8, 9, and 11 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement.
Claims 1, 2, 4, and 8 are rejected under 35 U.S.C. § 102(b) as
anticipated by St. Peter.
Claims 1, 2, and 4 are rejected under 35 U.S.C. § 102(b) as anticipated
by Schwab.
Claims 3 and 11 are rejected under 35 U.S.C. § 103(a) as unpatentable
over St. Peter and Smith.
Claims 3 and 11 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Schwab and Smith.
Claims 1--4, 8, 9, and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Perkins and Schwab or Smith.
Claims 1--4, 8, 9, and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Surfus and Schwab or Smith.
Claims 1--4, 8, 9, and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Rosser, Sr., Surfus, and Schwab or Smith.
BACKGROUND
During an interview on September 13, 2013, certain claims were
withdrawn from consideration due to an election made by Appellants. See
Non-Final Office Action Summary dated September 18, 2013. We were told
by Appellants' counsel at oral argument on June 26, 2018, that this was done
to focus solely on the "hook" embodiment depicted in Appellants'
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Application 13/244,451
Specification, in contrast to the "wheel" embodiment also depicted therein.
See Transcript 3, 9 ("that's why we haven't argued the wheel in any of our
appeal brief' and "[t]he wheel was restricted against, and it's not been
argued in this record"), 14, 15.
Nearly a year after the above restriction was made, i.e., on August 5,
2014, the Examiner issued a final office action containing an enablement
rejection directed to both the "hook" embodiment and the "wheel"
embodiment. Final Act. 3. The Examiner's focus on the "wheel"
embodiment at this time may have been in error because the Examiner,
thereafter, understood that the elected device was only the "hook"
embodiment. Ans. 15 ("it is not understood, how the elected device or tool
(Fig. 15) as a hook with a pointed tip is considered to be a device 'devoid of
a knife"'). Accordingly, because both Appellants and the Examiner
understand the elected embodiment to be the "hook" embodiment, we
proceed on this basis and investigate only Appellants' "hook" embodiment
(i.e., Spec. Figs. 8-15).
ANALYSIS
The rejection of claims 1-4, 8, 9, and 11
as failing to comply with the written description requirement
The Examiner addresses sole independent claim 1 stating,
"[ r ]egarding claim 1, the original disclosure does not teach that the means
for lifting and tearing is considered to be a means 'devoid of a knife."' Final
Act. 3. According to the Examiner, "[t]he original disclosure does not teach
that the means for lifting and tearing does not have a blade with a sharp
edge." Final Act. 3. Appellants disagree referencing Paragraphs 2 and 3 of
Appellants' Specification which describe potential damage to the core when
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Application 13/244,451
using knives, and a need to restore the core without damaging it. App. Br.
18, 19. Appellants also contend, "MPEP [ §] 2111.01 states that 'the words
of the claim must be given their plain meaning"' and Appellants provide a
"plain meaning" for the claim terms "devoid" and "knife." App. Br. 17-18.
Regarding "knife," Appellants state, "the claimed term 'knife' as defined by
the dictionary is 'any blade for cutting, as in a tool or machine, or having a
cutting edge. "'4 App. Br. 17. Appellants conclude, "[ t ]he specification
clearly satisfies the written description requirement for 'devoid of a knife"'
because "one of ordinary skill in the art at the time of the invention [ would]
know that Appellants had possession of the claimed invention." App. Br.
19.
The claim language in question is "a means for lifting and tearing
devoid of a knife."5 Appellants' Specification describes and illustrates a
"hook 7" having a "tip 8" such that "the hook 7 or its tip 8 will strive down
towards the casing surface ... while tearing up the tissue 3." Spec. ,r 27.
This same paragraph describes progressing through successive tissue layers
"until the surface 9 of the tip 8 comes into abutment against the casing
surface on the core 2." Appellants also describe how "the surface 9 may be
directed slightly upwards towards the tip 8 proper" and that this surface 9
may be rocked "towards and away from a parallel state with the casing
surface ... by pivoting the hook 7 and its tip 8 upwards or downwards."
Spec. ,r 27.
4 It is not clear which dictionary provides this definition, but for purposes of
analysis, this definition will be employed.
5 To "tear" is to "pull apart by force" or "to divide or disrupt by the pull of
contrary forces." See https://www.merriam-webster.com/dictionary/tear.
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Application 13/244,451
Appellants' description of hook 7 "tearing up" and the
upward/downward movement of the hook as it moves axially through the
tissue layers is indicative of a lifting and tearing motion. 6 The Examiner
does not explain how this is not the case. The question then becomes
whether Appellants' Specification describes such operation "devoid of a
knife."
As defined above, a "knife" is indicative of a cutting blade. 7 App. Br.
17. The Examiner contends, "[i]t is not clear how a hook with a relative
sharp point ... is devoid from a knife" and that a tool having "a sharp edge
or a pointed tip" is to be considered as having "cutting edges." Ans. 14: see
also id. at 15. The Examiner is, in effect, equating hook 7, and more
particularly tip 8, to a knife, and more particularly to performing a "cutting"
operation. However, as explained above, "cutting" of the tissue is not how
Appellants have described or depicted their invention. Instead, Appellants
disclose their invention in terms of "tearing up" and "splitting or tearing" of
the tissue to be removed, consistent with the irregular tissue edges shown.
Spec. ,r,r 27, 28; Figs. 10, 13. Further, as Appellants point out, the use of a
6 It is noted that St. Peter also distinguishes between cutting and tearing. See
St. Peter 2:55-64 ("there would be danger of said heel dragging upon said
core and hence seriously dulling the knife so that said heel would tear the
paper instead of cutting it and would soon become so obstructed as to be
utterly inefficient").
7 Cut material is depicted in the prior art as having a somewhat linear or
uniformly sliced edge. See Surfus Fig. 2; Schwab Fig. 1, both of which
employ a knife for cutting purposes (see, e.g., Surfus 2:24--37; Schwab Title,
Abstract). Compare such drawings to Appellants' Figures 10 and 13, which,
instead, depict a rather ragged, irregular tissue edge. Regarding the use of
drawings, our reviewing court has stated, "we did not mean that things
patent drawings show clearly are to be disregarded." In re Mraz, 455 F.2d
1069, 1072 (CCPA 1972).
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knife to remove unwanted tissue "often leads to damage to the extremely
sensitive casing material." App. Br. 18 (referencing Spec. ,r 2).
Consequently, and in view of the above, we are in agreement with
Appellants' contention that "one of ordinary skill in the art at the time of the
invention [ would] know that Appellants had possession of the claimed
invention," i.e., "means for lifting and tearing devoid of a knife." App. Br.
19. Accordingly, and based on the record presented, we do not sustain the
Examiner's written description rejection of claims 1--4, 8, 9, and 11.
The rejection of claims 1-4, 8, 9, and 11
as failing to comply with the enablement requirement
According to the Examiner, "[t]he claim(s) contains subject matter
which was not described in the specification in such a way as to enable one
skilled in the art to which it pertains, or with which it is most nearly
connected, to make and/or use the invention." Final Act. 3. In other words,
the Examiner asks, "[i]f the hook ... does not have a cutting edge or some
kind of sharp edge, how does it tear the material residues from a core?"
Final Act. 3. As discussed above, Appellants' Specification explains and
illustrates that as hook 7 is moved axially along the core, the tissue layer ( or
layers) caught above tip 8 moves along the tip to where the hook's curvature
becomes sufficient enough to cause the tissue to split or tear. Hence, the
Examiner's assumption that Appellants' Specification is directed to "a
cutting edge" ( and hence lacks any enablement "devoid of a knife") is
misplaced. We do not sustain the Examiner's rejection based on a lack of
enablement of claims 1--4, 8, 9, and 11.
The art rejections of (a) claims 1, 2, 4, and 8 as being anticipated by St.
Peter and/or by Schwab, and (b) claims 1-4, 8, 9, and 11 as being obvious
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over various combinations of St. Peter, Smith, Schwab, Perkins, Surfus, and
Rosser, Sr.
Each reference relied upon by the Examiner readily discloses a knife
having a cutting edge that cuts the tissue to be removed. For example,
regarding St. Peter, the Examiner references "means 29" (Final Act. 4), yet
this item 29 is clearly identified as a knife which "will cut the remaining
layers of the paper from the mandrel." St. Peter 2:35--42. The Examiner's
focus on "blunt edge 37" such that St. Peter is devoid of a "knife at least at
the edge 3 7 that contacts the casing surface" (Final Act. 4) is not persuasive
that St. Peter's corresponding lifting and tearing means 29 is "devoid of a
knife."
Regarding Schwab, the Examiner references "means 1 O" (Final Act.
5), yet this item 10 is a long-handled tool have a "blade 20" at one end.
Schwab Fig. 1; 2:34--38. This blade 20 is configured having "replaceable
cutting blade insert 23c" with this insert "formed of a particularly well
hardened steel to make a very sharp cutting edge." Schwab 2:46-50. The
Examiner also focuses on "edge 22b [being] a rounded edge" and thus, "the
means for lifting and tearing is devoid from a knife at least at the edge 22b."
Final Act. 6. The Examiner's focus on edge 22b is not persuasive that
Schwab's means 10 (incorporating cutting "blade 20") is devoid of a knife.
Regarding Perkins, the Examiner identifies "means 15 for lifting and
tearing devoid of a knife." Final Act. 7. Perkins teaches "plough means 15"
as "arranged to raise one of the cut edges 18" but, as is self-evident, the edge
has been cut prior to it being raised. Perkins 2:2--4. Such pre-cutting is
accomplished via "knife 12." Perkins 2:1-2. Hence, the Examiner is
mistaken that means 15 ( although itself lacking a knife) is configured for
"lifting and tearing" as recited. The Examiner then asserts that "means 15 is
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capable by itself to lift and tear residue material from the core." Final Act.
8. Appellants respond, "the Examiner has merely made a conclusory
statement" and that "Perkins does not teach that the plough 15 is capable of
lifting and tearing by itself." Reply Br. 6.
There is merit to Appellants' statement. First, Perkins teaches that
means 15 "lift[s] the ply off the mandrel by about 0.5 mm" (Perkins 2: 19--
20) and the Examiner does not indicate that this distance is sufficient enough
to cause tearing. Second, eliminating knife 12 would also eliminate the
purpose of means 15 which is to raise the ply "so that the cutter can cut the
cord without damage to the mandrel surface." Perkins 2:20-21.
Accordingly, because the Examiner must provide articulated reasoning with
rational underpinning, and may not rely on speculation, unfounded
reasoning, or hindsight reconstruction to supply deficiencies in the factual
basis, we are not persuaded the Examiner has met the initial burden of
establishing a prima facie case of obviousness premised upon Perkins.
Regarding Surfus, the Examiner identifies "means 19" as teaching this
limitation. Final Act. 10. Item 19 is identified as "skinning knife 19" that
has been "sharpened to a cutting edge as at 20" "so as to effectively cut the
pulp sheet." Surfus 2:27-34. The Examiner also stated that it would have
been obvious to rely on "Rosser' s tear and lift means" "since Surfus teaches
cutting means in a shape of a hook ... used to remove material residue[]
from cores." Final Act. 13. However, as above, the Examiner's reliance on
Surfus' knife 19 for teaching "a means for lifting and tearing devoid of a
knife" is misplaced.
Regarding Rosser, Sr., the Examiner identifies "means 8, 9 for lifting
and tearing devoid from a knife." Final Act. 12. However, Rosser, Sr.
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identifies items 8 and 9 as "blades" with blade 9 "used to cut the cover."
Rosser, Sr. 1 :50; 2:23-24. Accordingly, as above, the Examiner's reliance
on blades 8 and 9 for teaching the recited means is misplaced.
Regarding Smith, the Examiner relies on this reference to disclose
"the use of two means for tearing and lifting material residues." Final Act.
6-7. Smith discloses "ploughs 23" whose descent upon the roll to be
stripped is controlled. Smith 4: 1-11. Smith teaches, "[a]s the plough
assembly continues to descend, the ploughs rotating along the length of the
roll rip through successive layers of paper." Smith 4:12-14. The
Examiner's reliance on the secondary reference to Smith for teaching a
plurality of means or, for teaching proceeding through a number of material
turns (Final Act. 6-11, 13, 14), does not cure the parent reference of its
deficiencies noted above.
Accordingly, and based on the record presented, we do not sustain the
Examiner obviousness rejections of claims 1--4, 8, 9, and 11 as being
obvious over any of the cited combinations of St. Peter, Schwab, Perkins,
Surfus, Rosser, Sr., and Smith.
DECISION
The Examiner's rejections of claims 1--4, 8, 9, and 11 are reversed.
REVERSED
10