Ex Parte Kicinski et al

Patent Trial and Appeal Board

Jun 25, 2018

12769485 (P.T.A.B. Jun. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
121769,485
41804 7590
KLEMCHUK LLP
FILING DATE
04/28/2010
06/25/2018
8150 North Central Expressway
10th Floor
DALLAS, TX 75206
FIRST NAMED INVENTOR
Aaron Duke Kicinski
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.
1125.0004 7727
EXAMINER
NGUYEN, PHONG H
ART UNIT PAPER NUMBER
3724
MAILDATE DELIVERY MODE
06/25/2018 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 AARON DUKE KICINSKI and GREGORY DEAN BURGER
Appeal2017-001292
Application 12/769,485
Technology Center 3700
Before EDWARD A. BROWN, LEE L. STEPINA, and
ANTHONY KNIGHT, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Aaron Duke Kicinski and Gregory Dean Burger ("Appellants") 1 seek
review under 35 U.S.C. § 134(a) of the Examiner's decision, as set forth in
the Final Office Action dated October 7, 2015 ("Final Act."), rejecting
claims 2-8, 11, 13-15, 21, and 22. 2 We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 The Appeal Brief identifies Appellants as the real party in interest. Appeal
Br. 2
2 Claims 1, 9, 16, and 18 are cancelled, and claims 10, 12, 17, 19, and 20 are
withdrawn from consideration. Appeal Br. 2-3.
Appeal2017-001292
Application 12/769,485
CLAIMED SUBJECT MATTER
Claims 2 and 13 are independent. Claim 2, reproduced below, is
illustrative:
2. A rotary cutting die system for corrugated board
compnsmg:
a cylindrical anvil;
a substrate secured to a rotary cutting die disposed
adjacent to the cylindrical anvil; and
one or more scrap ejectors coupled to the substrate to
crush a scrap portion of the corrugated board by compressing
the scrap portion flat against the cylindrical anvil wherein upon
crushing, the scrap portion falls away from a usable portion of
the corrugated board that is not crushed, each of the one or
more scrap ejectors comprising a compressible portion having a
bottom surface affixed to the substrate and a protective layer
cured to a top surface of the compressible portion,
wherein the protective layer is cured directly to the top
surface of the compressible portion such that no other adhesive
material is between the compressible portion and the protective
layer.
Appeal Br. 19 (Claims App.).
REJECTIONS
1. Claim 21 is rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite.
2. Claims 2 and 4--7 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Cavlin (US 2005/0115372 Al, published June 2, 2005),
Gallagher (US 5,512,233, issued Apr. 30, 1996), Kanagawa (US
2010/0068499 Al, published Mar. 18, 2010), Lowery (US 3,264,166, issued
Aug. 2, 1966), Bunge (US 6,925,918 Bl, issued Aug. 9, 2005), Saunders
(US 4,306,476, issued Dec. 22, 1981), and Simpson (US 5,111,725, issued
May 12, 1992) ("Simpson '725").
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Application 12/769,485
3. Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Cavlin, Gallagher, Kanagawa, Lowery, Bunge, Saunders, Simpson
'725, Rice (US 2007/0095241 Al, published May 3, 2007), and Smith (US
3,552,244, issued Jan. 5, 1971).
4. Claims 8, 21, and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Cavlin, Gallagher, Kanagawa, Lowery, Bunge, Saunders, 3
Simpson '725, Simpson (US 4,499,802, issued Feb. 19, 1985) ("Simpson
'802"), and Smith.
5. Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Cavlin, Gallagher, Kanagawa, Lowery, Bunge, Saunders, 4 Simpson
'725, Simpson '802, Smith, Bishop (US 3,705,526, issued Dec. 12, 1972),
and Kirby (US 3,496,841, issued Feb. 24, 1970).
6. Claims 13-15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Cavlin, Gallagher, Kanagawa, Lowery, Bishop, Kirby,
Simpson '802, Bunge, Simpson '725, and Smith.
7. Claims 2-8, 21, and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Smithwick (2011/0203435 Al, published Aug. 25, 2011),
Gallagher, Kanagawa, Lowery, Bunge, and Saunders.
3 Claims 8, 21, and 22 depend from claim 2. Appeal Br. 20, 22-23 (Claims
App.). Saunders, which is applied to reject claim 2 (Rejection 1 ), is not
mentioned in Rejection 4. See Final Act. 9-10. We treat this omission as
inadvertent.
4 Claim 11 depends from claim 2. Appeal Br. 20 (Claims App.). Saunders
is not mentioned in Rejection 5. See Final Act. 10-11. We treat this
omission as inadvertent.
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Application 12/769,485
8. Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Smithwick, Gallagher, Kanagawa, Lowery, Bunge, Saunders, Bishop,
and Kirby.
9. Claims 13-15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Smithwick, Gallagher, Kanagawa, Lowery, Bishop,
Kirby, Simpson '802, Bunge, Simpson '725, and Smith.
ANALYSIS
Rejection 1
Dependent claim 21 further defines the scrap ejectors recited in claim
2 as comprising "one or more interior scrap ejectors that contact material
interior to the portion of the blank comprising the finished product; and one
or more exterior scrap ejectors that contact material of the blank external to
the portion of the blank comprising the finished product." Appeal Br. 22
(Claims App. (emphasis added)). The Examiner determines that claim 21 is
indefinite because "the interior scrap ejectors and the exterior scrap ejectors
do not contact the finished product." Final Act. 2, 3 (showing Examiner's
annotated version of Appellants' Fig. 1).
Appellants disagree with the Examiner, pointing out the Specification
describes that scrap ejectors 24 include interior scrap ejectors 24a and
exterior scrap ejectors 24b, for contacting material internal to and external to
the portion of blank 16 making up the finished product. Appeal Br. 7 (citing
Spec. i-f 23; see also Fig. 1 ). The Specification defines "interior" and
"exterior." Spec. i-f 24.
Claim 21 does not recite that either the interior scrap ejectors or the
exterior scrap ejectors contact the "finished product." Rather, the claim
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Application 12/769,485
recites that the interior scrap ejectors and the exterior scrap ejectors contact
material that is "interior to" and "external to," respectively, "the portion of
the blank comprising the finished product." As such, the language of claim
21 is consistent with the portions of the Specification discussed above.
The Examiner also determines, "it is unclear what kind of finished
product in the area of the cutting rule 28 is because the rotary cutting die
system rotates to make a cut, the area of the cutting rule 28 appears to be a
wasted area." Final Act. 3.
The Specification describes trim ejectors 28 as shown in Figure 1.
See, e.g., Spec. i-f 27. It is unclear to us how the Examiner's comment about
"cutting rule 28" pertains to the language of claim 21, or demonstrates that
the language is indefinite.
Accordingly, we agree with Appellants that the meaning of the subject
language in claim 21 is sufficiently clear in light of the Specification. Thus,
we do not sustain the rejection of claim 21 under 35 U.S.C. § 112, second
paragraph, as being indefinite.
Rejection 2
As for claim 2, the Examiner finds that Cavlin discloses a rotary
cutting die system for corrugated board comprising a cylindrical anvil (anvil
roller 12), a substrate secured to a rotary cutting die, and one or more scrap
ejectors coupled to the substrate, where each scrap ejector comprises a
compressible portion (rubber ejector 3) having a bottom surface affixed to
the substrate and a protective layer (sheet material 4) coupled to a top
surface of the compressible portion. Final Act. 4, 5 (annotated version of
Cavlin Fig. 4).
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Application 12/769,485
The Examiner finds that Cavlin does not disclose several features
recited in claim 2. Particularly, the Examiner finds that Cavlin does not
show a rotary cutting die, but finds it is well known in the art that the
"substrate" shown in Figure 4 of Cavlin is mounted to a rotary cutting die.
Id. at 5. Alternatively, the Examiner finds, "[t]o the degree [Appellants]
would argue that the rotary cutting die is not shown in Cavlin," this element
is taught by Simpson '725 and Bunge. Final Act. 5 (citing Simpson '725,
Fig. 1; Bunge, Fig. 1 ). The Examiner concludes that it would have been
obvious to one of ordinary skill in the art to provide a rotary die, as taught by
Simpson '725 and Bunge, in the cutting die assembly of Cavlin, "so that a
plurality of substrates with different cutting patterns can be used with the
same rotary cutting die system." Id.
Figure 4 of Cavlin illustrates punch form 1 including cutting knives 2,
rubber ejectors 3, sheet material 4, and anvil roller 12. Cavlin i-fi-1 42--43, Fig.
4. As shown, the top surfaces of rubber ejectors 3 contact an upper element
(unnumbered) of punch form 1. Id. at Fig. 4. The Examiner finds that the
upper element of punch form 1 corresponds to the claimed "substrate." See
Final Act. 5 (showing annotated Cavlin, Fig. 4). Cavlin describes that
during a die-cutting operation, packaging material 5 is fed between punch
form 1 and anvil roller 12. Cavlin i143, Fig. 1. Figure 4 shows how die-
cutting spill 11 is removed during the die-cutting operation. Id. i1 51, Fig. 4.
Cavlin discloses that sheet material 4 is smooth and has low surface friction
so that relative sliding occurs between sheet material 4 and packaging
material 5 during die-cutting. Id. i153.
Appellants contend that Cavlin does not teach "a substrate secured to
a rotary cutting die disposed adjacent to the cylindrical anvil," as claimed.
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Appeal Br. 8 (bolding omitted). Rather, Appellants contend, the portion of
punch form 1 labeled as a "substrate" by the Examiner is separated from the
anvil roller by at least sheet material 4 and rubber ejectors 3. Id.; see also
Final Act. 5.
Appellants' contention is persuasive. As recited in claim 2, the rotary
cutting die is secured to the "substrate" and "disposed adjacent to the
cylindrical anvil." Appeal Br. 19 (Claims App. (emphasis added)).
Appellants' Specification describes, "[i]n operation, the cutting die and the
anvil 14 may be disposed closely adjacent to each other and define a nip 22."
Spec. i-f 19. Appellants' Figure 1 shows blank 16 being fed in nip 22 and
subjected to die cutting. In light of this disclosure, we construe the recited
limitation "disposed adjacent to the cylindrical anvil" to mean "directly
facing" the cylindrical anvil such that the opposing surfaces of the cutting
die and anvil 14 define nip 22 between them in order to perform the
disclosed cutting of blank 16. Referring to Figure 4 of Cavlin, even
assuming the upper element of punch form 1 corresponds to the claimed
"substrate," and rubber ejectors 3 and associated sheet material 4 together
correspond to the claimed scrap ejector(s) and are coupled to the substrate,
the Examiner has not established, with evidence, that Cavlin also discloses
or suggests an element that corresponds to a rotary cutting die, as claimed.
Rather, Figure 4 of Cavlin shows that sheet material 4 is the element
"adjacent to" anvil roller 12, whereas the "substrate" is adjacent to rubber
ejectors 3, not anvil roller 12. The Examiner does not direct us to any
disclosure in Cavlin that suggests the punch form can alternatively have a
structure that includes a cylindrical anvil, substrate, rotary cutting die, and
scrap ejectors, arranged as required in claim 2.
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Appellants contend that Simpson '725 merely discloses an arcuate die
board 24 overlying a die roll 12, and Bunge merely discloses a cutting
cylinder 110 at least partially surrounded by a cylindrical cutting board or
die board 130. Appeal Br. 9.
Even if die board 24 disclosed in Simpson '725 or die board 130
disclosed in Bunge can be considered a "rotary cutting die," as claimed, we
agree with Appellants that the Examiner still has not demonstrated how such
die board would be combined with the punch form disclosed in Cavlin.
Appeal Br. 9. Particularly, the Examiner has not explained adequately how
Cavlin would be modified to result in the die board being secured to the
"substrate" and "disposed adjacent to" anvil roller 12, and also in rubber
ejectors 3 and sheet material 4 being coupled to the "substrate," as claimed.
Id. Additionally, the Examiner has not articulated an adequate reason with a
rational underpinning why one skilled in the art would have modified
Cavlin's structure to include a cylindrical anvil, substrate, rotary cutting die,
and scrap ejectors, arranged as in claim 2.
Claim 2 also recites the limitation, "the protective layer is cured
directly to the top surface of the compressible portion such that no other
adhesive material is between the compressible portion and the protective
layer." Appeal Br. 19 (Claims App. (emphasis added)). The Examiner finds
that "Cavlin does not teach the method of joining the compressible portion
and the protective layer without using adhesive." Final Act. 6. However,
the Examiner construes the limitation as a product-by-process limitation. Id.
The Examiner also finds that joining urethane layers using a curing method
is well known in the art, as taught by Gallagher, Kanagawa, and Lowery. Id.
(citing Gallagher, col. 6, 11. 30-40; Kanagawa i-fi-129-41; Lowery, cols. 1-2).
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Additionally, the Examiner finds that "Li]oining urethane layers by adhesive
material or a curing method are art equivalents known in the art." Id.
Therefore, the Examiner concludes, it would have been obvious "to use a
curing method for joining the protective layer and the compressible layer
since it has been held that substituting equivalents known for the same
purpose is obvious to one skilled in the art." Id. (citing MPEP § 2144.06).
Appellants contend that the applied combination fails to teach the
"cured" limitation. Appeal Br. 12. Particularly, in regard to the Examiner's
position that "'joining urethane layers using a curing method is well known
in the art,"' Appellants note "this is not even the claimed subject matter."
Id. at 13 (bolding omitted).
We agree. Claim 2 requires "the protective layer [be] cured directly
to the top surface of the compressible portion" and that "no other adhesive
material is between the compressible portion and the protective layer." Id. at
19 (Claims App.). Claim 2 does not recite that the compressible portion and
the protective layer are both composed of urethane such that two urethane
layers are cured to each other.
Cavlin discloses that ejector 3 is made of rubber, and "[t]he sheet
material may be of a material with low surface friction, such as Teflon
(PTFE), or at least partly provided with a surface with low surface friction."
Cavlin i-f 31. The Examiner does not identify any disclosure in Cavlin of
how rubber ejector 3 is secured to sheet material 4, or any disclosure that
rubber ejector 3 and sheet material 4 can both be formed of urethane.
Additionally, the Examiner has not articulated an adequate reason with a
rational underpinning why one of ordinary skill in the art would have
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modified Cavlin to result in both the rubber ejectors 3 and the sheet material
4 being composed of urethane.
The Examiner further finds that Cavlin does not teach that the scrap
ejectors crush the corrugated board. Final Act. 6. The Examiner finds,
however, that it is well known in the art that scraped portions of corrugated
board are crushed during the cutting process. Id. (citing Bunge, Figs. 5A-
5E; Sanders, Fig. 5). Therefore, the Examiner concludes, it would have been
obvious "to provide the scrap ejectors in Cavlin with a sufficient hardness
number for crushing the scrapped portions." Id. at 7.
Appellants contend that none of the applied references teaches a scrap
ejector that crushes a scrap portion/material of the corrugated board by
compressing the scrap portion/material flat against a cylindrical anvil
wherein upon crushing, the scrap portion/material falls away from a usable
portion of the corrugated board (or blank) that is not crushed, as claimed.
Appeal Br. 10-11. Moreover, Appellants contend, Cavlin not only does not
crush, but is meant to not crush, a corrugated board/product/box. Id. at 11
(citing http://www.topmatrix.com).
Cavlin discloses that packaging material 5 is clamped between sheet
material 4 and anvil 6. Cavlin i-f 42. High pressure is exerted against
packaging material 5 via the rubber ejectors 3 and sheet material 4, but
despite this clamping pressure, there is sliding between the packing material
5 and the sheet material 4 due to the low-friction surface. Id. i-f 43. Sheet
material 4 has a smooth and low-friction surface and low adhesion so that
the die-cutting spill 11 slides before it is cut off. Id. i-f 53. In light of this
designed sliding interaction between sheet material 4 and packaging material
5 in Cavlin, we are persuaded that the Examiner also has not articulated an
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adequate reason with a rational underpinning why one of ordinary skill in
the art would have modified Cavlin's "scrap ejectors" to have a sufficient
hardness to crush the scrapped portions of packing material 5, as proposed.
For the foregoing reasons, we do not sustain the rejection of claim 2,
or of claims 4--7 depending therefrom, as unpatentable over Cavlin,
Gallagher, Kanagawa, Lowery, Bunge, Saunders, and Simpson '725.
Re} ections 3-5
The Examiner's reliance on one or more of Rice, Smith, Simpson
'802, Bishop, and Kirby to reject dependent claims 3, 8, 11, 21, and 22 does
not cure the deficiencies of the rejection of parent claim 2. Final Act. 8-11.
Accordingly, we do not sustain the rejections of claims 3, 8, 11, 21, and 22
for the same reasons as for claim 2.
Rejection 6
The Examiner finds that Cavlin fails to teach several features recited
in claim 13 that we note are the same as, or similar to, features in claim 2.
Final Act. 12-14. These features in claim 13 are "a substrate secured to a
rotary cutting die disposed adjacent to the cylindrical anvil," "one or more
scrap ejectors coupled to the substrate to crush scrap material by
compressing the scrap material flat against the cylindrical anvil," and "the
protective layer is cured directly to the top surface of the compressible
portion such that no other adhesive material is between the compressible
portion and the protective layer." Appeal Br. 21 (Claims App. (emphasis
added)). For these features, the Examiner's findings and reasoning are
similar to those discussed above for claim 2. Final Act. 12-15.
Accordingly, for the reasons discussed above for claim 2, the Examiner's
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application of Cavlin, Gallagher, Kanagawa, Lowery, Bunge, Saunders, and
Simpson '725 also fails to meet these claim limitations in claim 13.
Additionally, the Examiner finds that Cavlin fails to teach "one or
more stabilizers positioned to contact a perimeter of a usable product portion
of a blank during cutting." Final Act 12. The Examiner relies on Bishop
and Kirby to address this omission of Cavlin. Id. at 14. The Examiner also
finds that the modified cutting die of Cavlin lacks scrap ejectors for scraps
and finished products. Id. The Examiner relies on Simpson '802 and Smith
to address this additional omission of Cavlin. Id. The Examiner also relies
on Smith to teach the limitation of "the product ejector positioned to contact
a substantial portion of the usable product portion of the blank during die
cutting." Id. at 15. As such, the Examiner does not rely on Bishop, Kirby,
Simpson '802, or Smith in a manner that cures the deficiencies of the
remaining references of the applied combination.
For the foregoing reasons, we do not sustain the rejection of claim 13,
or of claims 14 and 15 depending therefrom, as unpatentable over Cavlin,
Gallagher, Kanagawa, Lowery, Bishop, Kirby, Simpson '802, Bunge,
Simpson '725, and Smith.
Re} ections 7 and 8
Rejections 7 and 8 (claims 2-8, 11, 21, and 22) are based on
Smithwick as the "[p ]rimary reference" of the applied combination. Final
Act. 16-21. In the Appeal Brief, Appellants do not include Rejection 7 or 8
in the listing of the grounds of rejection to be reviewed on appeal. See
Appeal Br. 5. Consistent with the listing, in the Appeal Brief, Appellants do
not present any argument apprising us of error in the Examiner's findings or
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reasoning in support of these rejections. Accordingly, we sustain these
rejections of claims 2-8, 11, 21, and 22.
Rejection 9
Rejection 9 (claims 13-15) is also based on Smithwick as the
"[p]rimary reference" of the applied combination. Final Act. 21-25.
Appellants do not include this rejection in the listing of the grounds of
rejection to be reviewed on appeal. See Appeal Br. 5. Consistent with the
listing, Appellants do not present any argument against this rejection. We
note Appellants mention Smithwick in regard to the rejection of claim 13 in
Rejection 6. See id. at 15. However, Smithwick is not applied in Rejection
6. In the Reply Brief, Appellants mention Smithwick only in regard to the
rejection of claim 13 for Rejection 6. Reply Br. 11. Accordingly, because
Appellants do not apprise us of any error in the Examiner's findings or
reasoning in support of this rejection, which is based on a different
combination of references than Rejection 6, we sustain the rejection of
claims 13-15 as unpatentable over Smithwick, Gallagher, Kanagawa,
Lowery, Bishop, Kirby, Simpson '802, Bunge, Simpson '725, and Smith.
DECISION
We reverse the rejection of claim 21 under 35 U.S.C. § 112, second
paragraph.
We reverse the rejection of claims 2 and 4--7 under 35 U.S.C. § 103(a)
as unpatentable over Cavlin, Gallagher, Kanagawa, Lowery, Bunge,
Saunders, and Simpson '725.
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We reverse the rejection of claim 3 under 35 U.S.C. § 103(a) as
unpatentable over Cavlin, Gallagher, Kanagawa, Lowery, Bunge, Saunders,
Simpson '725, Rice, and Smith.
We reverse the rejection of claims 8, 21, and 22 under 35 U.S.C.
§ 103(a) as unpatentable over Cavlin, Gallagher, Kanagawa, Lowery,
Bunge, Saunders, Simpson '725, Simpson '802, and Smith.
We reverse the rejection of claim 11 under 35 U.S.C. § 103(a) as
unpatentable over Cavlin, Gallagher, Kanagawa, Lowery, Bunge, Saunders,
Simpson '725, Simpson '802, Smith, Bishop, and Kirby.
We reverse the rejection of claims 13-15 under 35 U.S.C. § 103(a) as
unpatentable over Cavlin, Gallagher, Kanagawa, Lowery, Bishop, Kirby,
Simpson '802, Bunge, Simpson '725, and Smith.
We affirm the rejection of claims 2-8, 21, and 22 under 35 U.S.C.
§ 103(a) as unpatentable over Smithwick, Gallagher, Kanagawa, Lowery,
Bunge, and Saunders.
We affirm the rejection of claim 11 under 35 U.S.C. § 103(a) as
unpatentable over Smithwick, Gallagher, Kanagawa, Lowery, Bunge,
Saunders, Bishop, and Kirby.
We affirm the rejection of claims 13-15 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Smithwick, Gallagher, Kanagawa, Lowery,
Bishop, Kirby, Simpson '802, Bunge, Simpson '725, and Smith.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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