Ex Parte SHAH

Board of Patent Appeals and Interferences

Jan 9, 2012

09403796 (B.P.A.I. Jan. 9, 2012)

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.
09/403,796 10/25/1999 MUMTAZ SHAH 7704
60333 7590 01/10/2012
EDWIN D. SCHINDLER
4 HIGH OAKS COURT
P.O. BOX 4259
HUNTINGTON, NY 11743-0777
EXAMINER
PRONE, JASON D
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
01/10/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MUMTAZ SHAH
____________________

Appeal 2010-002507
Application 09/403,796
Technology Center 3700
____________________

Before: PHILLIP J. KAUFFMAN, CHARLES N. GREENHUT, and
JAMES P. CALVE, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-002507
Application 09/403,796
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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the rejection of claims
20-24. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
Independent claim 20, reproduced below, is the sole independent
claim on appeal.
20. Apparatus for cutting sheet material, comprising:
a unit freely movable in both linear and non-linear paths
having a lower part defining a sheet support surface for placing
a piece of sheet material;
an upper part defining an upper surface and disposed above
said lower part with a gap existing between said upper part and
said lower part for receiving the piece of sheet material;
a cutting blade secured in said upper and lower parts, and
extending across said gap, said sheet support surface and said
upper surface extending to either side of said cutting blade; and,
pressure means mounted on said upper part in said gap for
bearing on the piece of sheet material supported by said lower
part adjacent to said cutting blade, so that the piece of sheet
material is able to be inserted between said pressure means and
said sheet support surface for tensioning the piece of sheet
material in proximity of said cutting blade.
REJECTIONS
Appellant seeks review of the following rejections:
1. Claims 20-22 under 35 U.S.C. § 103(a) as unpatentable over Marcoux
(US 3,835,536; iss. Sept. 17, 1974) and Campbell (US 3,068,569; iss. Dec.
18, 1962).
2. Claim 23 under 35 U.S.C. § 103(a) as unpatentable over Marcoux,
Campbell, and Shah (GB 2 223 976 A, iss. Oct. 19, 1988).
3. Claim 24 under 35 U.S.C. § 103(a) as unpatentable over Marcoux,
Campbell, and Li (US 5,638,603; iss. Jun. 17, 1997).
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Application 09/403,796
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CONTENTIONS AND ISSUES
This appeal presents the following issues:
Is Marcoux’s apparatus freely movable in both a linear and a non-
linear path as called for in claim 20?
Is Campbell non-analogous art?
ANALYSIS
Appellant argues claims 20-22 as a group, and we select independent
claim 20 as representative. App. Br. 6-12; see 37 C.F.R. § 41.37(c)(1)(vii).
The rejections of claims 23 and 24 each rely, in part, on the same
combination of Marcoux and Campbell relied upon for the rejection of claim
20, and Appellant argues the patentability of claims 23 and 24 solely based
on their dependency from independent claim 20. Consequently, our analysis
of claim 20 is applicable to claims 23 and 24.
We agree with Appellant that claim 20 calls for an apparatus having a
structure capable of freely moving in both a linear and a non-linear path.
App. Br. 7.1
The Examiner found that Marcoux discloses the structure of claim 20
(except a pressure means as disclosed by Campbell), and found that
Marcoux’s structure is capable of movement in both a linear and a non-
linear path. Ans. 3-6. Though the Examiner’s explanation of the
interpretation of claim 20 differs from Appellant’s interpretation (see Ans. 4-
6), these findings demonstrate that the Examiner applied the same claim
construction asserted by Appellant, namely, that claim 20 calls for an

1 Appellant incorporates by reference the claim construction asserted in the
Amended Appeal Brief dated February 19, 2003, pp. 10-15.
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Application 09/403,796
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apparatus having a structure capable of freely moving in both a linear and a
non-linear path.2
The Examiner’s finding that Marcoux’s structure is capable of freely
moving in both a linear and non-linear path if so manipulated by the user, is
reasonable given that Marcoux’s device includes a lower part (plastic bottom
portion 27) having a smooth planar external bottom face 29 for sliding along
a support surface. See Ans. 3, 5-6; Marcoux, col. 3, ll. 47-48, 53-54; col. 4,
ll. 1-6; figs. 9, 10. This finding shifted the burden to Appellant to show that
such is not the case. See e.g., In re Schreiber, 128 F.3d 1473, 1478 (Fed.
Cir. 1997); In re Swinehart, 439 F.2d 210, 213 (CCPA 1971).
Appellant attempts to carry this burden by arguing that because
Marcoux’s opposite sides 23 and 24 form a straight edge adapted to run
along a ruler in either of two longitudinal directions, “non-linear cuts are not
intended and would not appear to be possible.” App. Br. 8-9. Appellant
also contends that Marcoux’s cutter is unable to cut sheet material in a
curved or non-linear path because the entire periphery of bottom portion 27
(end sharp edge 30 and lateral sharp edges 31’) forms a sharp edge. App.
Br. 9-10; Reply Br. 4-5.
We agree with Appellant that Marcoux discloses a cutting device that
includes a pair of substantially parallel opposite sides 23 and 24 that form a
straight edge adapted to run along a ruler 20. See Marcoux, col. 1, l. 3; col.
3, ll. 36-42; figs. 8-11. However, the fact that Marcoux’s device may be
used in conjunction with a ruler does not demonstrate that the device is
incapable of freely moving along a non-linear path. To the contrary,
Marcoux’s disclosure of use of the cutting device in conjunction with a ruler

2 Even though the Examiner referred to the freely movable limitation as “de
minimis” (Ans. 5), the Examiner gave the limitation appropriate weight.
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Application 09/403,796
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suggests Marcoux’s device would move in a non-linear path without the
guidance of the ruler.
We also agree with Appellant that the entire periphery of bottom
block-like portion 27 forms a continuous sharp edge (end sharp edges 31 and
lateral sharp edges 31’). See App. Br. 9-10; Reply Br. 4-5; Marcoux, col. 3,
ll. 60-66; figs. 8-11. This periphery forms an entrance ramp for the sheet
material. Id. Despite the continuous sharp edge of the bottom block-like
portion 27, Marcoux’s device is able to move in either longitudinal direction.
Marcoux, col. 4, ll. 1-6. We fail to see, and Appellant does not cogently
explain, how having a continuous sharp edge along the periphery of the
bottom portion 27 permits free movement along a linear path, yet prohibits
free movement along a non-linear path.
Appellant also argues that runner 15 of the claimed device permits
non-linear cuts and the absence of such a structure in Marcoux demonstrates
the Marcoux is incapable of non-linear movement. Reply Br. 5-6.
Appellant’s Specification describes that the underside of the lower part may
be provided with runners, slides, or rotatable members. Spec. 3:4-6.
However, claim 20 calls for the lower part to define a sheet support surface,
and does not call for runners of any type. The Specification describes
runners in the form of inverted domes. Spec. 4:7-8; figs. 1-3. Because the
language of claim 20 is broader than a particular embodiment disclosed in
the Specification, we decline to import such a limitation (runners) from the
Specification to the claims. See e.g., Superguide Corp. v. DirecTV Enters.,
Inc., 358 F.3d 870, 875 (Fed. Cir. 2004); E-Pass Techs., Inc. v. 3Com Corp.,
343 F.3d 1364, 1369 (Fed. Cir. 2003); see also Markem-Imaje Corp. v.
Zipher Ltd., 657 F.3d 1293, 1300-01 (Fed. Cir. 2011) (even if a device will
only operate if certain elements are included, that is not grounds to
Appeal 2010-002507
Application 09/403,796
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incorporate those elements into the construction of the claims).
Consequently, Appellant’s argument is unpersuasive because it is not
commensurate in scope with claim 20.
Appellant’s arguments that Marcoux’s device is incapable of free
movement along a non-linear path are unpersuasive, and thus, Appellant
failed to carry the burden of showing that Marcoux’s device is incapable of
freely moving along a non-linear path. Further, we fail to see, and Appellant
fails to identify, a structural distinction between the subject matter of claim
20 and Marcoux’s device. In re Schreiber, 128 F.3d,1473, 1477-78 (Fed.
Cir. 1997) (Claims directed to an apparatus must be distinguished from the
prior art in terms of structure rather than function, provided the structure is
capable of performing the function.).
Appellant also asserts that Campbell is non-analogous “vis-a-vis the
technical field of Appellant’s invention,” because, “an article for opening
sides of envelopes is not reasonably related, or analogous, to cutting sheets
of paper or other flat material,” and because it is Appellant’s disclosure that
defines the field of the invention. App. Br. 10 (fn1)3; Reply Br 6.
The Examiner found that paper envelopes, such as those disclosed in
Campbell, are sheet material and that Campbell’s device is capable of
cutting other sheet material. Ans. 7 (incorporating pp. 7-10 of the Office
Action dated July 11, 2001). The Examiner also found that Campbell was in
the field of Appellant’s endeavor because Campbell and the claimed device
are similar in structure and function in that each are handheld devices used
to cut paper or sheet material. Id.; see also In re Bigio, 381 F.3d 1320,
1325-27 (Fed. Cir. 2004) (The “field of endeavor” test asks if the structure

3 Incorporating argument from the Amended Appeal Brief filed February 19,
2003, pp. 21-24.
Appeal 2010-002507
Application 09/403,796
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and function of the prior art is such that it would be considered by a person
of ordinary skill in the art because of the similarity to the structure and
function of the claimed invention as disclosed in the application.).
Appellant’s argument is unpersuasive because it does not point to any
particular error in the Examiner’s findings.
As such, we sustain the rejection of claims 20-24.
CONCLUSIONS
Marcoux’s apparatus is freely movable in both a linear and a non-
linear path as called for in claim 20.
Campbell is analogous art.
DECISION
We affirm the Examiner’s decision to reject 20-24.

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).

AFFIRMED

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