Ex Parte Stemmle

Board of Patent Appeals and Interferences

Mar 26, 2012

11187384 (B.P.A.I. Mar. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DENIS J. STEMMLE
____________

Appeal 2009-012133
Application 11/187,384
Technology Center 3700
____________

Before LINDA E. HORNER, GAY ANN SPAHN, and
CHARLES N. GREENHUT, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Denis J. Stemmle (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s rejection of claims 1-14 and 18. Appellant cancelled
claims 15-17. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
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The Claimed Subject Matter
The claimed subject matter is directed to an in-line deformation
binding apparatus for rapid and repeatable package creation. Spec. 1, para.
[0002]. Claim 1, reproduced below, with emphasis added, is illustrative of
the subject matter on appeal.
1. A deformation binding apparatus for
fabricating a package having an enclosed area
formed therein, comprising:
an axial binding mechanism for deformation
binding a sheet material,
a radial binding mechanism for deformation
binding the sheet material, the radial binding
mechanism dispensed in-line with the axial binding
mechanism along a linear feed path,
wherein, at times when the sheet material
passes along the linear feed path, the axial binding
mechanism and the radial binding mechanism bind
the sheet material along first and second bind lines,
respectively, which are orthogonal to each other
thereby forming the package.

App. Br. 12.
Independent claim 2 recites all the limitations of independent claim 1,
and further defines the axial binding mechanism as including first and
second rotating elements each having teeth and a rotational axis, wherein the
teeth are disposed axially and substantially parallel with respect to the
rotational axis and are disposed to intermesh with each other during a
portion of the rotation of the first and second rotating elements. App. Br. 12.

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The Rejections
The following Examiner’s rejections are before us for review.1
Claim 1 is rejected under 35 U.S.C. § 102(b) as anticipated by
Stemmle ʼ282 (US 2003/0234282 A1, pub. Dec. 25, 2003). Ans. 3-4.
Claims 1-3 and 8-10 are rejected under 35 U.S.C. § 102(b) as
anticipated by Stemmle ʼ161 (US 2004/0114161 A1, pub. Jun. 17, 2004).
Ans. 4-5.
Claims 1-3, 8, 9, and 11 are rejected under 35 U.S.C. § 102(b) as
anticipated by Noe (US 2,580,456, iss. Jan 1, 1952). Ans. 5-7.
Claims 1-10 and 12 are rejected under 35 U.S.C. § 102(b) as
anticipated by Salfisberg (US 2,103,390, iss. Dec. 28, 1937). Ans. 7-10.
Claims 13, 14, and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Salfisberg. Ans. 11-12.

OPINION
Anticipation based on Stemmle ʼ282
The Examiner determines that Stemmle ʼ282 discloses an apparatus
including an axial binding mechanism 321 and a radial binding mechanism
321 which are dispensed in-line with each other along a linear feed path in
order to anticipate independent claim 1. Ans. 3.
Appellant contends that Stemmle ʼ282 fails to disclose axial and radial
binding mechanisms because Stemmle ʼ282 “merely shows a schematic
block diagram of a generic, non-descript device which, in ways not disclosed

1 The Examiner withdrew the rejection of claim 4 under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellant regards as the invention.
See Ans. 3.
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or described, results in orthogonal sealing lines.” Br. 6. Appellant also
contend that Stemmle ʼ282 does not disclose “that the sheet material follows
any defined feed path.” Id.
We agree with Appellant. Stemmle ʼ282 discloses an embodiment of
an apparatus for fabricating an enclosure from sheet material 304 to enclose
content material 306 therein and have information printed 350, 352, and 354
thereon. See Fig. 3 and paras. [0002], [0047], and [0054]. After initial
placement of the content material 306 and folding of the sheet material 304,
“[t]he folded material is then passed through sealing device 321” which “is
used to seal portions of the folded material[, f]or example, sealing device
321 can attach the material along edge portion 316, can seal along opposed
surface portions 310(a) and 310(b) to form attachment areas 319 and 327.”
Para. [0053]. Emphasis omitted. Although Stemmle ʼ282 discloses that
sealing device 321 performs sealing along the short and long edges of the
folded material, there is no express disclosure of either axial or radial
binding mechanisms, or a radial binding mechanism that is dispensed in-line
with an axial binding mechanism along a linear feed path as required by
claim 1.
In view of the dearth of disclosure in Stemmle ʼ282, we are
constrained to reverse the Examiner’s rejection of claim 1 under 35 U.S.C.
§ 102(b) as anticipated by Stemmle ʼ282.
Anticipation based on Stemmle ‘161
The Examiner determines that Stemmle ʼ161 discloses an axial
binding mechanism 122, 302, and a radial binding mechanism 106, 108
which is dispensed in-line with the axial binding mechanism along a linear
feed path in order to anticipate independent claims 1 and 2. Ans. 4.
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Appellant contends that Stemmle ʼ161 does not disclose or illustrate
“axial and radial binding mechanisms” and “a linear feed path.” App. Br. 6,
7 (acknowledging that “Claim 2 has . . . all the claim limitation[s] of claim
1.”).
We agree with Appellant. Figures 1-9 of Stemmle ʼ161 depict an
apparatus and different steps in the process to form an enclosure or package.
Paras. [0019]-[0027]. In particular, Figure 9 shows the sealing of the
enclosure, wherein sheet material 104 and content material 201 have been
folded together to form enclosure 292 and sealing rollers 122(a) and 122(b)
are used to seal edge 270 to edge 280. Para. [0027], [0043]. With respect
to sealing rollers 122 and 302, Stemmle ʼ161 discloses that:
[t]he sealing devices 122 and 302 are used to seal
portions of the folded material. For example,
sealing device 122 may attach the material along
edge portion as described herein. Sealing devices
122 and 302 may seal along selected portions such
as the long edges, short edges, or any combination
thereof.

Para. [0049]. While Figure 9 of Stemmle ʼ161 appears to depict that sealing
rollers 122(a) and 122(b) are sealing the enclosure 292 along the long edges
thereof in order to constitute an axial binding mechanism, it is not clear if
sealing rollers 302(a) and 302(b) are sealing along the long edges of the
enclosure 292 in order to constitute an axial binding mechanism. Moreover,
Stemmle ʼ161 discloses that reference characters 106(a), 106(b), 108(a), and
108(b) represent creasing rollers “to receive and crease sheet material 104.”
Para. [0034]. Thus, creasing rollers 106(a), 106(b), 108(a), and 108(b) may
crease the sheet material 104, but do not bind the sheet material 104 and
therefore, cannot constitute a radial binding mechanism. Additionally, even
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if creasing rollers 106(a), 106(b), 108(a), and 108(b) could constitute a radial
binding mechanism, creasing rollers 106(a), 106(b), 108(a), and 108(b) are
not in-line along a linear feed path with the axial binding mechanism 122(a),
122(b), 302(a), 302(b) as suggested by the Examiner, since the word “linear”
is defined as “of, relating to, resembling, or having a graph that is a line and
esp. a straight line : STRAIGHT,”2 but the feed path in Stemmle ʼ161forms
an L-shaped path including first and second linear feed paths that are
perpendicular to each other.
Accordingly, we do not sustain the Examiner’s rejection of
independent claims 1 and 2, and claims 3 and 8-10 dependent upon
independent claim 2, under 35 U.S.C. § 102(b) as anticipated by Stemmle
ʼ161.
Anticipation based on Noe
The Examiner determines that Noe discloses an axial binding
mechanism 102, 104, and a radial binding mechanism 80, 233 which is
dispensed in-line with the axial binding mechanism along a linear feed path,
in order to anticipate independent claims 1 and 2. Ans. 6.
Appellant contends that Noe does not disclose or illustrate “axial and
radial binding mechanisms” and “a linear feed path.” App. Br. 6, 7
(acknowledging that “Claim 2 has . . . all the claim limitation[s] of claim
1.”).
We agree with Appellant. Noe discloses a packaging machine. Title.
In operation, tape 28 is drawn from roll 30 and is directed through the tube
former 78 where the tape 28 is laterally bent from its flat form into a blank

2 MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY, Tenth Edition,
Copyright 1997.
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or uncut tube 178 having the edge margins 32 as spirally overlapped
longitudinal seam layers, which are knurled or secured together by wheel 80
and back knurling wheel 233. Col. 6, ll. 19-32; col. 9, ll. 47-50. The tube is
then cut to form cover 26 which is blown into one of the recesses 86 in the
drum 88. Col. 6, ll. 32-40. The drum 88 rotates to a position W, wherein the
drum 88 is stopped and the cover receives filler 20. Col. 6, ll. 41-50. The
filled cover 26 then passes between the knurling wheels 102 and back idler
wheels 104 at opposite sides of the drum 88 wherein the cover ends 36 are
knurled or secured together to close and complete the finished packages 38.
Col. 6, ll. 51-58. As shown in Figure 7, the axis of knurling wheel 80 is
perpendicular to the axis of knurling wheels 102 and back idler wheels 104.
Thus, we are persuaded by Appellant’s contention that Noe’s radial binding
mechanism 80, 233 is not dispensed in-line with the axial binding
mechanism 102, 104 along a linear feed path as suggested by the Examiner,
because the feed path of the radial binding mechanism 80, 233 is
perpendicular to the feed path of the radial binding mechanism 102, 104 and
thus, is not along a linear feed path as required by claims 1 and 2.
Accordingly, we do not sustain the Examiner’s rejection of
independent claims 1 and 2, and claims 3, 8, 9, and 11 dependent upon
independent claim 2, under 35 U.S.C. § 102(b) as anticipated by Noe.
Anticipation based on Salfisberg
Independent claim 1
The Examiner determines that Salfisberg’s Figure 4 discloses an axial
binding mechanism 71, 72, and a radial binding mechanism 71, 72 which is
dispensed in-line with the axial binding mechanism along a linear feed path,
in order to anticipate independent claim 1. Ans. 7-8.
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Appellant contends that Salfisberg does not disclose or illustrate
“axial and radial binding mechanisms” and does not disclose “a linear feed
path for creating . . . deformation bind lines.” App. Br. 6.
Salfisberg discloses a packaging machine (Title) for producing
individually packaged articles, such as samples of chewing gum. Title; p. 1,
col. 2, ll. 1-15. As shown in Figure 1A, three sticks of chewing gum 2, 3, 4
are formed into a single package unit 1 of envelope receptacles 5, 6, 7
formed between continuous strip-like layers of material 8 and 9 by sealing
above, below, and between the sticks. See p. 1, col. 2, ll. 16-45. The
apparatus for forming such a package structure is shown in top plan view in
Figure 4, wherein bonding roller 71 is depicted and is above bonding roller
72 as shown in Figure 5. P. 1, col. 1, ll. 38-39 and p. 3, col. 1, ll. 47-50.
The bonding rollers 71, 72 have mechanically complementary crimping
surfaces adapted to mutually engage along the plane of the layers 8 and 9 as
they come off of table 14. P. 3, col. 1, ll. 33-36. As depicted in Figure 4 and
5, bonding roller 71 has a strip of crimping surface that extends the length of
the roller at two equidistant positions on the circumference of the roller to
produce the bonding areas above and below the sticks of gum. See Figs. 4-5.
Figure 4 also depicts that along the length of bonding roller 71 there are four
crimping surfaces that extend all the way around the circumference of the
roller, with two end crimping surfaces being wider than two internal
crimping surfaces. See Fig. 4. These four crimping surfaces form the
bonding areas along the long sides of and between the sticks of gum shown
in Figure 1A. See Fig. 1A and p. 3, col. 1, ll. 42-47.
We are not persuaded by Appellant’s contention that Salfisberg does
not disclose axial and radial binding mechanisms and a linear feed path.
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Indeed, Salfisberg discloses an axial binding mechanism in the form of the
two strips of crimping surface that each extend along the entire length of
bonding rollers 71 and 72 and are equidistant from each other around the
circumference of the bonding rollers 71, 72. See Salfisberg, p. 3, col. 1, ll.
33-36, and 42-50 and Figs. 4 and 5. Salfisberg also discloses a radial
bonding mechanism in the form of the four strips of crimping surface that
extend around the circumference of bonding rollers 71 and 72. See id.
Appellant has failed to adequately explain why the four strips of crimping
surface are not “dispensed in-line” with the two strips of crimping surface
“along a linear feed path” in order to satisfy the recitations of independent
claim 1.
Accordingly, as we are not persuaded by Appellant’s contention of
error in the Examiner’s findings, we sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 102(b) as anticipated by Salfisberg.
Independent claim 2 and dependent claims 3, 4, 8, 9, and 12
The Examiner makes the same findings for independent claim 2 as
discussed above with respect to Salfisberg and independent claim 1. Ans. 7-
8. In addition, the Examiner finds that the axial binding mechanism
comprises first and second rotating elements 71, 72 each having a rotation
axis and plurality of teeth, wherein the teeth are disposed axially with
respect to the rotational axis, and the teeth of the first and second rotating
elements are disposed to intermesh with each other during a portion of the
rotation of the first and second rotating elements. Ans. 8.
Appellant makes the same contentions for independent claim 2 as
discussed above with respect to independent claim 1. Appellant additionally
contends that Salfisberg does not “include ‘rotating elements having a
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plurality of teeth disposed axially and substantially parallel with respect to
the rotational axis’.” Br. 7. In other words, Appellant argues that
Salfisberg’s rolling/knurling wheels “have teeth which are each disposed
along a radial line emanating from the rotational axis and all of the teeth
circumscribe the rotational axis so as to form a circular array of teeth.” Id.
Appellant also contends that Salfisberg’s rolling elements have “continuous
teeth or knurls about the circumference of the wheel,” whereas the axial
binding mechanism is claimed to have a linear array of teeth “intermesh[ing]
with each other during a portion of the rotation of the first and second
rotating elements” so as to form one bind line along a leading edge portion
of the package and intermesh again to form another bind line along at
trailing edge of the package. Br. 7-8
First, for the reasons discussed supra with respect to independent
claim 1, we are not persuaded that Salfisberg fails to disclose independent
claim 2’s axial and radial binding mechanisms and a linear feed path.
Second, we are also not persuaded that Salfisberg’s crimping surfaces do not
meet claim 2’s recitations of “having a plurality of teeth disposed axially and
substantially parallel with respect to the rotational axis.” Salfisberg
discloses bonding rollers 71, 72 have an axial binding mechanism in the
form of two crimping surfaces that each include a plurality of teeth that
extend across the length of bonding rollers 71, 72 at two equidistantly
spaced positions along the circumference of the rollers 71, 72 (see square
shaded area at top and bottom of bonding roller 71 in Fig. 5) in order to
crimp layers of material 8, 9 before and after the sticks of chewing gum 2, 3,
4 to create envelope receptacles 5, 6, 7 shown in Figure 1A. As is shown in
Figure 1, each of these squares forming the lengthwise crimping surfaces
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have multiple rows of teeth in order to bond layers of material 8, 9 before
and after the sticks of chewing gum shown in Figure 1A. Appellant has not
adequately explained why the teeth of Salfisberg’s crimping surfaces do not
satisfy claim 2’s recitation of being “disposed axially and substantially
parallel with respect to the rotational axis,” particularly in light of
Salfisberg’s teeth appearing to intermesh once along a leading edge portion
of the package and intermesh again along a trailing edge of the package
similar to Appellant’s deformation binding apparatus.
Appellant also contends that Salfisberg’s axial and radial binding
mechanisms do not show operations that are either in-line and/or
sequentially/independently performed.” Br. 8.
We disagree. For the reasons discussed supra with respect to
independent claim 1, we agree with the Examiner that Salfisberg’s axial and
radial binding mechanisms are “dispensed in-line.” With respect to
Appellant’s contention that Salfisberg’s operations are not sequentially
and/or independently performed, we note that this contention is not
commensurate with the scope of the claim because the claims do not recite
that the operations of the axial and radial binding mechanisms must be
sequentially and/or independently performed.
In view of the foregoing, we sustain the Examiner’s rejection of
independent claim 2, and claims 3-10 and 12 dependent upon independent
claim 2, under 35 U.S.C. § 102(b) as anticipated by Salfisberg.
Obviousness based on Salfisberg
Claim 13
Claim 13 depends from claim 2 and calls for the deformation binding
apparatus to further include “an axial perforation mechanism for producing a
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perforation line orthogonal to the linear feed path of the sheet material, the
perforation line facilitating detachment of a portion the mailpiece [sic]
corresponding to one of the bind lines.” Br. 14.
The Examiner finds that Salfisberg fails to disclose the limitation of
claim 13, but asserts that “it is old and well known in the art to employ
perforation mechanism on sheet material to facilitate the separation of the
sheet.” Ans. 11. The Examiner concludes that it would have been obvious
to one of ordinary skill in the art “to have modified Salfisberg apparatus so
that it also has the axial perforation as recited in claim 13 to provide
perforation line orthogonal to the linear feed path to facilitate separation of
final package.” Id.
Appellant contends that “there is no suggestion, teaching or
motivation in Salfisberg to include a perforation line to facilitate folding or
separation along an axial line.” Br. 9.
We are not persuaded by Appellant’s contention. First, the Examiner
has not modified Salfisberg to include a perforation line as suggested by
Appellant, but rather has modified Salfisberg to include an axial perforation
mechanism as recited in claim 13. Second, rigid application of a “teaching,
suggestion, motivation” test for nonobviousness is incompatible with
Supreme Court precedent. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
419 (2007). The Examiner thus need not establish the existence of a
teaching, suggestion, and motivation in modifying a prior art reference by
something old and well known in the art; rather, the Examiner must provide
an articulated reasoning with some rational underpinning to support a legal
conclusion of obviousness. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
The analysis need not seek out precise teachings directed to the specific
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subject matter of the claim, but can take into account the inferences and the
creative steps that a person of ordinary skill in the art would employ. KSR at
418. In the present case, the Examiner has found, and Appellant has not
contested, that using a perforation mechanism to facilitate separation of
sheet material is old and well known in the art and the Examiner has
concluded that a person of ordinary skill in the art would include a
perforation mechanism in Salfisberg to facilitate separation. The
Examiner’s articulated reasoning appears to have a rational basis and
Appellant has not explained why this is not the case.
Accordingly, we sustain the Examiner’s rejection of claim 13 under
35 U.S.C. § 103(a) as unpatentable over Salfisberg.
Claim 14
Claim 14 depends from claim 2 and calls for the deformation binding
apparatus to further include “a position sensor for issuing a position signal
indicative of the rotational position of the first and second rotating elements,
and a controller, responsive to the position signal, for indexing the
intermeshing teeth of the first and second rotating elements with an edge of
the sheet material.” Br. 15.
The Examiner finds that “it is old and well known in the art to employ
sensors and controllers in apparatus to gain better control of the product
outcome.” Ans. 11. The Examiner concludes that it would have been
obvious to one of ordinary skill in the art to modify Salfisberg’s apparatus to
include a sensor and controller “to provide a better means to control and
monitor the apparatus.” Ans. 11-12.
Appellant contends that “there is no suggestion, teaching or
motivation in Salfisberg to include such a sensor or controller, especially
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since Salfisberg does not disclose a separate, in-line axial binding
mechanism” because “to the extent that both a radial and axial binding
mechanism are combined, there is no opportunity or need to position the
axial binding mechanism with ‘an edge of the sheet material’ as required by
Claim 14.” Br. 9-10. More particularly, Appellant contends that since
“[t]he axial binding operation occurs as a function of the wheel diameter and
offers no ability, structure or control which would allow further radial
binding . . . the binding mechanism of Salfisberg does not provide any
flexibility with respect to the location of the bind lines.”
We are not persuaded by Appellant’s contentions. As shown in
Figure 4 of Salfisberg, three sticks of chewing gum are placed between
continuous strip-like layers of material 8, 9 to be sent through the bonding
rollers 71, 72 in order to form the envelope receptacles shown in Figure 1A.
Since it would be undesirable to have the crimping surfaces of the bonding
rollers 71, 72 roll over the sticks of chewing gum, it is important to maintain
the alignment of the radial binding mechanism of the rollers 71, 72 with an
edge of the layers of material 8, 9. Thus, the Examiner’s articulated
reasoning of including old and well known sensors and controllers in order
to provide better means to control and monitor Salfisberg’s apparatus has a
rational basis and Appellant has failed to explain why this is not the case.
Accordingly, we sustain the Examiner’s rejection of claim 14 under
35 U.S.C. § 103(a) as unpatentable over Salfisberg.
Claim 18
Claim 18 depends from claim 13 and recites that “the plurality of teeth
of the first and second rotating elements are discontinuous.” Br. 15.
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The Examiner finds that Salfisberg discloses “that the plurality of
teeth of the first and second rotating elements are discontinuous (figures 4
and 5).” Ans. 12.
Appellant contends that Salfisberg uses a “well-known drawing
convention which does not require that a draftsperson include all the teeth
about the circumference of a roller or wheel, but nonetheless is intended to
convey a continuous tooth pattern.” Br. 10.
We disagree. The convention Appellant is referring to concerns the
four crimping areas of Salfisberg’s bonding rollers 71, 72 that extend around
the entire circumference at four different locations along the length thereof.
However, these four crimping surfaces of Salfisberg’s bonding rollers 71, 72
constitute the radial binding mechanism, not the axial binding mechanism
which has the first and second rotating elements with a plurality of teeth.
Salfisberg’s axial binding mechanism is constituted by the two crimping
surfaces along the entire length of the bonding rollers 71, 72 at two
equidistantly spaced locations around the circumference thereof and it is
these two crimping surfaces which the Examiner finds to be discontinuous.
Indeed, Salfisberg’s Figure 5 shows the discontinuous nature of the teeth of
the two crimping surfaces of bonding rollers 71, 72 by the square cross-
hatched areas at the top and bottom of bonding roller 71 and at the top of
partial bonding roller 72. Thus, the Examiner’s finding concerning the
discontinuity of the teeth of Salfisberg’s axial binding mechanism is
supported by a preponderance of the evidence.
Accordingly, we sustain the Examiner’s rejection of claim 18 under
35 U.S.C. § 103(a) as unpatentable over Salfisberg.

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DECISION
We reverse the Examiner’s rejections of: claim 1 under 35 U.S.C.
§ 102(b) as anticipated by Stemmle ʼ282; claims 1-3 and 8-10 under 35
U.S.C. § 102(b) as anticipated by Stemmle ʼ161; and claims 1-3, 8, 9, and 11
under 35 U.S.C. § 102(b) as anticipated by Noe.
We affirm the Examiner’s rejections of: claims 1-10 and 12 under 35
U.S.C. § 102(b) as anticipated by Salfisberg; and claims 13, 14 and 18 under
35 U.S.C. § 103(a) as unpatentable over Salfisberg.
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-IN-PART

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