Pregis Innovative Packaging LLC

Patent Trials and Appeals Board

Aug 24, 2021

2021000891 (P.T.A.B. Aug. 24, 2021)

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.
15/282,885 09/30/2016 THOMAS D. WETSCH 194313.05201 5161
29880 7590 08/24/2021
Fox Rothschild LLP
997 Lenox Drive
Lawrenceville, NJ 08648
EXAMINER
KIM, CHRISTOPHER ROBIN
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
08/24/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ipdocket@foxrothschild.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte THOMAS D. WETSCH and ROBERT TEGEL

Appeal 2021-000891
Application 15/282,885
Technology Center 3700
____________

Before JOHN C. KERINS, KEVIN F. TURNER, and
MICHELE R. OSINSKI, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–25. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 The term “Appellant” is used herein to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Pregis Innovative Packaging LLC as the
real party in interest. Appeal Br. 3.
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Application 15/282,885

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THE CLAIMED SUBJECT MATTER
Appellant’s invention relates to a conversion apparatus for processing
dunnage material. Claim 1 is illustrative, and is reproduced below:
22. A conversion apparatus for processing a dunnage material
along a path, comprising:
a cutting member having an edge configured for cutting
or tearing the dunnage material; and
a biasing member located adjacent to the cutting member
and having a cutting position in which the dunnage
material passes between the biasing member and the
cutting member with the biasing member bending the
dunnage material to deflect the path around an end of the
cutting member so that in response to the dunnage
material being retracted back into the conversion
apparatus the cutting member begins to sever the
dunnage material.
Appeal Br. 23, Claims App.
THE REJECTIONS
The Examiner rejects:
(i) claims 1–3, 5–10, and 16–25 under 35 U.S.C. § 103 as being
unpatentable over Wetsch (US 2013/0092716 A1, published Apr. 18, 2013)
(hereinafter “Wetsch A”) in view of Wetsch (US 2008/0070773 A1,
published Mar. 20, 2008) (hereinafter “Wetsch B”);2
(ii) claim 4 under 35 U.S.C. § 103 as being unpatentable over Wetsch
A in view of Wetsch B and Newhouse (US 2012/0193463 A1, published
Aug. 2, 2012); and

2 These shorthand names are used to maintain consistency with the
terminology employed by Appellant and the Examiner during prosecution.
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Application 15/282,885

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(iii) claims 11–15 under 35 U.S.C. § 103 as being unpatentable over
Wetsch A in view of Wetsch B and Wetsch (US 2011/0053748 A1,
published Mar. 3, 2011) (hereinafter “Wetsch C”).

ANALYSIS
Claims 1–3, 5–10, and 16–25--§ 103--Wetsch A/Wetsch B
Claim Construction
The Examiner finds that the limitations in claim 1 reciting “a cutting
member,” and “a biasing member,” are generic placeholders coupled with
functional language, without reciting sufficient structure to perform the
recited functions and without any structural modifier. Final Act. 2. As such,
the Examiner deems that those limitations are to be interpreted in accordance
with 35 U.S.C. § 112(f). Id. Appellant does not contest the Examiner’s
position. The Examiner’s position stands.
Combination of Wetsch A and Wetsch B
The Examiner finds, as to claim 1, that Wetsch A discloses a
conversion apparatus for processing dunnage material having a cutting
member with an edge configured for cutting or tearing dunnage material,
and discloses that the conversion apparatus is configured to retract the
dunnage material to begin to sever the material. Final Act. 3. The Examiner
acknowledges that Wetsch A fails to disclose a biasing member located
adjacent to a cutting member, with the biasing member having a cutting
position in which the biasing member bends dunnage material to deflect the
path of the same around an end of the cutting member. Id. The Examiner
finds that elements 142, 144, and 130 in Wetsch B form a biasing member
which presses downward toward the dunnage material to bend the material
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Application 15/282,885

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around a cutting member. Id. The Examiner concludes that it would have
been obvious “to add the biasing member and its system of moving the
biasing member . . . of Wetsch B to the conversion apparatus of Wetsch A.”
Id. at 3–4. The Examiner asserts that the “motivation” for the modification
is to “assist[] the blade in cutting the dunnage material by placing additional
pressure” on the material. Id. at 4.
Several of Appellant’s arguments focus on the fact that, in the Wetsch
B apparatus, elements 142, 144, and 130, relied on by the Examiner,
cooperate with first and second sections 138, 140, of a bottom plate 136 to
immobilize the dunnage as it is cut; in contrast, the Wetsch A apparatus, as
well as the functional aspects of claim 1, rely on retraction of the dunnage
material in order to cut the dunnage. See, e.g., Appeal Br. 10, 12–13. These
arguments, for the most part, improperly argue aspects of Wetsch B
individually, without accounting for the modification of Wetsch A proposed
by the Examiner. Indeed, the Examiner makes clear that the basis for the
rejection does not include incorporating bottom plate sections 138, 140 of
Wetsch B into the Wetsch A apparatus, but rather only the elements actually
identified as being part of the modification are employed. Adv. Act. 2.3 By
implication, by not including the bottom plate sections of Wetsch B, the
modified version of Wetsch A would not immobilize the dunnage as it is cut.
Appellant additionally argues that the Examiner “has failed to provide
any explanation whatsoever as to how the two pushers [elements 140, 142 of
Wetsch B] will be included or arranged in the system of Wetsch A to be able
to purportedly replace the user’s hand and/or be capable of performing the
same function as the claimed invention.” Appeal Br. 15. This argument is

3 Advisory Action dated April 20, 2020.
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in response to the Examiner’s statement in the Advisory Action that, “[t]his
biasing member replaces the user’s hand [in Wetsch A] to apply the force to
the dunnage material in the direction of the cutting member.” Adv. Act. 2.
In the Answer, however, the Examiner responds to the argument, asserting
instead that “the biasing member of Wetsch B is added to Wetsch A not to
replace the force supplied by the hand, but to assist in the severing by
applying additional force to the dunnage against the cutting member which
Wetsch B teaches as being advantageous, as stated in [paragraph] [0070] of
Wetsch B.” Ans. 14. Appellant responds that, this being the case, the
operation of the modified Wetsch A apparatus would involve the user’s hand
bending the dunnage material to bend its path, and the added biasing
member of Wetsch B would merely add additional force to assist in cutting.
Reply Br. 8. In other words, the added biasing means from Wetsch B
“merely adds a force to assist in cutting, and is not meant to deflect the path
of the dunnage material,” as claimed; rather the user would perform that
function. Id. at 7–8.
The most recent Examiner’s position that the Wetsch B biasing
member would have obviously been employed on Wetsch A in addition to
the user interaction with the dunnage material as disclosed in Wetsch A is
not tenable, and, even if tenable, does not appear to fully meet the claim
limitation requiring the biasing member to function to bend the dunnage
material to deflect its path. We reproduce below a modified version of
Figure 5 of Wetsch A, which illustrates the user’s interaction with the
apparatus and dunnage material, and adds an illustration of elements 142,
144, and 130 of Wetsch B (reference numerals omitted/obscured, see Figure
8 of Wetsch B), regarded by the Examiner as the biasing member used to
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modify Wetsch A, shown in a position adjacent the edge of cutting member
20 above the user’s hand: 4

Depicted above is a modified version of Figure 5 of Wetsch A, which is a
side view of a line processing system with a tear assist apparatus employed
thereon. Wetsch A ¶¶ 23, 24.
As seen in the above illustration, and as described in Wetsch A, the
cutting operation involves the user pulling the dunnage material outwardly
to trigger a tear-assist apparatus that moves the material in a reverse
direction, i.e., retracted back into the conversion apparatus as recited in

4 Not illustrated is any actuating mechanism that would be required to move
elements 142, 144, and 130 toward and away from the claimed biasing
member cutting position. The rejection seemingly fails to account for how
such actuating mechanism could be implemented and still allow the user
space or clearance to interact with the moving material as intended.
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claim 1. Wetsch A ¶¶ 47, 62. Wetsch A also describes that the user pulls
and/or holds the material at an angle “E”, causing the material to be bent
around the edge of the cutting member, to facilitate the engagement of the
cutting member with the line of material. Id. Further, Wetsch A provides
that the downward force applied by the user pulling on the material causes
the cutting member to pivot to the position shown in phantom lines in the
above illustration, thereby actuating the reverse movement of the line of
material. Id. ¶ 62, 63.
Given the foregoing teachings of Wetsch A, we deem it speculative on
the Examiner’s part to reason that adding the biasing elements from Wetsch
B to the Wetsch A apparatus would provide any true assistance to the
severing process, even if the biasing elements were to provide some amount
of additional force to the dunnage against the cutting member. As such, the
Examiner’s stated reason to modify Wetsch A in view of Wetsch B lacks
rational underpinnings. Further, as suggested above, even if the biasing
elements were incorporated in Wetsch A, the considerable downward force
applied to the line of material by the user bends the material to deflect its
path around the end of the cutting member, and it is doubtful, in our view,
that any additional force applied by the biasing elements would function to
further bend the line of material out of its initial material path. Claim 1
requires the recited biasing member to perform such function.
In view of the foregoing, the rejection of claim 1 is not sustained. The
rejection is also not sustained as to claims 2, 3, 5–10, and 16–25, which
depend from claim 1.
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Claim 4--§ 103--Wetsch A/Wetsch B/Newhouse
The Examiner does not rely on Newhouse in any manner that
remedies the deficiencies in the combination of Wetsch A and Wetsch B
noted above. Accordingly, the rejection of dependent claim 4 is not
sustained.

Claims 11–15--§ 103--Wetsch A/Wetsch B/Wetsch C
The Examiner does not rely on Wetsch C in any manner that remedies
the deficiencies in the combination of Wetsch A and Wetsch B noted above.
Accordingly, the rejection of dependent claims 11–15 is not sustained.

CONCLUSION
The rejections of claims 1–25 under 35 U.S.C. §103 are reversed.

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 5–
10, 16–25
103 Wetsch A, Wetsch
B
1–3, 5–10,
16–25
4 103 Wetsch A, Wetsch
B, Newhouse
4
11–15 103 Wetsch A, Wetsch
B, Wetsch C
11–15
Overall
Outcome
1–25

REVERSED