Ex Parte Matthes et al

Patent Trial and Appeal Board

Oct 29, 2013

11510985 (P.T.A.B. Oct. 29, 2013)

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.
11/510,985 08/28/2006 Wolfgang Matthes A-4379 8671
24131 7590 10/29/2013
LERNER GREENBERG STEMER LLP
P O BOX 2480
HOLLYWOOD, FL 33022-2480
EXAMINER
ALIE, GHASSEM
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
10/29/2013 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 WOLFGANG MATTHES, ANDREAS STEINERT,
and FALK WAGNER
____________________

Appeal 2011-013352
Application 11/510,985
Technology Center 3700
____________________

Before: CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
LYNNE H. BROWNE, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-013352
Application 11/510,985
2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
4 and 6-8. App. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The claims are directed to a device for three-sided cropping of
products. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A device for the three-sided cropping of products, the device
comprising:
a lifting configuration being operable in a stroke
movement determining a machine cycle of the device;
knives to be mounted on said lifting configuration for at
least head cropping, foot cropping and front edge cropping of
the products;
a pressing device having a press bar for pressing the
products before cropping, said press bar being mounted to an
upper knife bridge in a spring loaded manner by compression
springs, said compression springs for applying a pressing force
of said press bar onto the products during a downward
movement of said upper knife bridge;
a press control; and
an adjusting device having an extendable and retractable
piston rod activated by said press control for assuming control
of the pressing force of said press bar.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
McCain
Chandler
Maeda
US 3,981,212
US 4,516,388
US 5,996,458
Sep. 21, 1976
May 14, 1985
Dec. 7, 1999
Appeal 2011-013352
Application 11/510,985
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REJECTIONS
Claims 1-4 and 6-8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over McCain and Maeda or Chandler. Ans. 4, 7.

OPINION
Appellants sought to improve the throughput of prior cropping
devices by more rapidly releasing the clamp or press bar from the workpiece
after cutting. Spec. 2. Claim 1 is the sole independent claim involved in this
appeal and is directed to a structure for being put to that use.
We agree with the Examiner’s premise that if a known or obvious
prior art structure is capable of performing the functional operations recited
then such a structure falls within the scope of the claim even if the prior art
does not expressly disclose that it can be put to such use. Ans. 4, 7, 9-11;
contra App. Br. 6-7. This is because identical structures must necessarily be
capable of performing identical functions. Thus, functional recitations serve
to define over the prior art only where those recitations result in a structural
distinction as compared to that prior art. See K-2 Corp. v. Salomon S.A., 191
F.3d 1356, 1363 (Fed. Cir. 1999). If no such structural distinction exists, the
prior art must be considered inherently capable of performing the recited
functions. In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997).
What is lacking in the Examiner’s analysis is an explanation of why
the Examiner believes that McCain’s handle 409H, interpreted as the recited
“adjusting device,” is capable of “assuming control of the pressing force of
[the] press bar” as required by the claim. The Examiner appears to believe
that the handle 409H adjusts the bias force of springs 412. Ans. 4-5, 7-8.
Such adjustment is cited as the reason supporting the Examiner’s proposed
combination with either Maeda or Chandler. Ans. 5, 8. On review of
Appeal 2011-013352
Application 11/510,985
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McCain and the Examiner’s Answer it is not apparent to us why the
Examiner believes McCain’s device possesses this capability.
We recognize that there are a number of elements depicted and not
fully described in McCain. Regarding the handle 409H, McCain only
discloses that it adjusts the position of the front knife clamp relative to the
side knife clamp. McCain, col. 14, ll. 19-22. We are unable to ascertain from
McCain or the Examiner’s Answer the basis for the Examiner’s belief that
McCain’s handle 409H could also be turned while clamp 400 is engaged
with the book to assume control of the force exerted by that clamp 400. The
examiner must provide sufficient evidence or scientific reasoning to
establish that there is a sound basis for the examiner’s belief that a functional
limitation is an inherent characteristic of the prior art. See In re Spada, 911
F.2d 705, 708 (Fed. Cir. 1990).
We also recognize that McCain discusses an objective similar to that
described by Appellants.
Thus the three-knife trimmer as heretofore constructed is one
where the book clamps are brought into engagement with the
book at the front knife station as an incident to the downward
cutting stroke of the front knife. Release of the clamps is a
function of the return stroke of the knife.
. . .
The separation of the clamp drive and the knife drive to allow
the foregoing advantages to be realized constitutes the primary
object of the present invention.
McCain, col. 1, l. 45 – col. 2, l. 8. However, the elements of McCain cited
by the Examiner do not appear to play a role in achieving this objective. In
rejecting the claims, the Examiner does not appear to rely on any of the
structure McCain employs to achieve this result. McCain, col. 16, ll. 40-46.
Appeal 2011-013352
Application 11/510,985
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For the reasons stated above, we must conclude that the Examiner has
not established the obviousness of the claimed subject matter.

DECISION
The Examiner’s rejections are reversed.

REVERSED

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