Ex Parte Frey et al

Patent Trial and Appeal Board

Apr 27, 2016

12483325 (P.T.A.B. Apr. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/483,325 06/12/2009
48940 7590 04/27/2016
FITCH EVEN TABIN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 1600
CHICAGO, IL 60603-3406
FIRST NAMED INVENTOR
Jeffrey D. Frey JR.
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.
1410/94470 9037
EXAMINER
EV ANS, GEOFFREY S
ART UNIT PAPER NUMBER
3742
MAILDATE DELIVERY MODE
04/27/2016 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)
u-NITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY D. FREY, JR.,
DOUGLAS M. LEHMANN, and PAULE. DOLL
Appeal2014-003569
Application 12/483,325 1
Technology Center 3700
Before LINDA E. HORNER, MARK A. GEIER, and JASON W. MEL VIN,
Administrative Patent Judges.
MEL VIN, Administrative Patent Judge.
DECISION ON APPEAL
This appeal arises under 35 U.S.C. § 134(a), from a rejection of
claims 1-8 and 10-18. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Kraft Foods Group Brands LLC as the real party in
interest. Appeal Br. 3.
Appeal2014-003569
Application 12/483,325
BACKGROUND
The claims are directed to a method and apparatus for using a laser to
both score and emblazon a wrapping sheet. Spec. 1. The independent
claims are method claims 1 and 10, and apparatus claim 15. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method comprising:
using a laser to both score and emblazon a sheet to provide a
scored emblazoned sheet;
using the scored emblazoned sheet to wrap an item.
Appeal Br. 14 (Claims App.).
REJECTIONS
Appellants seek our review of the following rejections:
1. Claims 1, 4, 5, 8, and 15 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Guckenberger (U.S. Patent
No. 5,630,308, iss. May 20, 1997), Hughes (U.S. Patent No.
6,169,266 Bl, iss. Jan. 2, 2001), and Hoffmaster (U.S.
Patent No. 6,091,749, iss. July 18, 2000). Final Act. 2-3.
2. Claims 2 and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Guckenberger, Hughes, Hoffmaster, and
Kendall (U.S. Patent No. 6,207,925 Bl, iss. Mar. 27, 2001).
Final Act. 3.
3. Claims 3 and 16 stand rejected under 35 U.S.C. 103(a) as
unpatentable over Guckenberger, Hughes, Hoffmaster, and
Nedblake (U.S. Patent No. 6,863,756 B2, iss. Mar. 8, 2005).
Final Act. 3--4.
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Application 12/483,325
4. Claims 6, 7, and 18 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Guckenberger, Hughes, Hoffmaster,
Kurth (U.S. Patent No. 6,658,818 B2, iss. Dec. 9, 2003), and
Wu (U.S. Patent App. Pub. No. 2002/0056891 Al, pub. May
16, 2002). Final Act. 4.
5. Claims 10, 11, 13, and 14 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Guckenberger, Hughes,
Hoffmaster, Nedblake, Kurth, and Wu. Final Act. 4--5.
6. Claim 12 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Guckenberger, Hughes, Hoffmaster,
Nedblake, Kurth, Wu, and Kendall. Final Act. 5---6.
DISCUSSION
Claims 1 and 15
Appellants address claims 1 and 15 as a group, thus those claims stand
or fall together. Appeal Br. 8-11. We select claim 1 as representative. See
37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that "Guckenberger teaches a method of using a
laser to score a sheet to provide a scored sheet and wrapping an item." Final
Act. 2 (citations omitted). The Examiner further finds that "Hughes teaches
laser ablation removal of a layer of material to expose a colored layer, i.e.
emblazoning." Id. And the Examiner finds that Hoffmaster teaches "using a
laser to perform different types of material processing." Id. at 3. In light of
these findings, the Examiner concludes that "[i]t would have been obvious to
adapt Guckenberger in view of Hughes and Hoffmaster ... to emblazon a
sheet for aesthetic purposes and to use a single laser to perform both
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Application 12/483,325
emblazoning and scoring for economy with lower start up costs since a
printer is not required." Id.
Appellants argue that the Examiner's reasoning is flawed because
"Guckenberger already teaches how to accomplish providing an emblem"-
by using a printer. Appeal Br. 9. That argument does not address the
Examiner's reason, which relies on the benefit of eliminating
Guckenberger's printer. Final Act. 3. Thus, the fact that Guckenberger
included a printer for marking sheets of wrapping material does not apprise
of error in the rejection.
As to the benefit of eliminating Guckenberger's printer, Appellants
argue that any such economic benefit "depends upon the cost of the
wrapping material itself." Appeal Br. 10. In particular, Appellants assert
that, in the combination applied in the rejection, "[i]t is clear on its face that
the cost of providing such a multi-layered material is going to exceed the
cost of the simple wrapping material Guckenberger presently uses with his
printer." Id. This argument of relative economic benefit, however, ignores
that the Examiner relies on reduced "start up costs" by avoiding a printer.
Final Act. 3. To the extent that Appellants address the startup costs, they do
so by asserting that any savings from avoiding the purchase of a printer will
eventually be overcome by the additional, ongoing expense of a multilayer
wrapping sheet. Appeal Br. 11. Even assuming that Appellants correctly
identify an aspect of increased operating expenses with the combination
applied by the Examiner, that fact nonetheless fails to address the separate
benefit that would come from reduced initial expenses. Stated otherwise,
Appellants' argument does not undermine the Examiner's reasoning because
a person of ordinary skill interested in such systems may logically prioritize
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Application 12/483,325
startup cost over operating cost. In our view, the Examiner provides a
rational reason that a person of ordinary skill in the art would consider using
a laser to emblazon the sheets rather than a printer, i.e., "articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness." In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006). Thus,
Appellants' argument regarding the cost of wrapping material fails to
apprise us of error.
Accordingly, we sustain the rejection of claims 1 and 15.
Claim 10.
Claim 10 recites a method including, among other steps, "providing a
plurality of lasers," "exposing a substantially taut sheet to the plurality of
lasers," and "using each of the lasers to both score and emblazon a
corresponding portion" of the sheet. Appeal Br. 15 (Claims App.). Along
with findings regarding Guckenberger, Hughes, and Hoffmaster (analogous
to those described above for claim 1 ), the Examiner finds that Kurth
"teaches using multiple lasers," Wu teaches "using multiple lasers to emit
multiple laser beams for cutting," and Nedblake teaches "providing tension
to a web thereby making the web taut." Final Act. 5 (citations omitted).
Appellants first rely on the same arguments made for claims 1 and 15.
Appeal Br. 12. For the reasons described above, those arguments do not
show error in the rejection.
Appellants further argue that a system with multiple lasers, such as
used in the method of claim 10, need not use each laser for multiple
operations. Appeal Br. 12. According to Appellants, although Hoffmaster
teaches using a laser "to perform different types of material processing," that
teaching "is built upon the use of a single laser" and the Examiner's
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Application 12/483,325
rejection must therefore arise with hindsight. Id. We do not agree.
Appellants' argument amounts to attacking the references individually, an
approach that cannot demonstrate error in the rejection. In re Merck & Co.,
800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references."); see Appeal Br. 12
("[N]ot one of these prior art references suggests providing each of a
plurality of lasers with multiple capabilities.").
Appellants also argue that the Examiner uses hindsight by employing
Appellants' teachings. Appeal Br. 12. The Examiner explains further that a
person of skill would have sought to use multiple lasers as claimed for the
benefit of redundancy: "in the event of one laser becoming inoperable the
other lasers can be programmed to perform the operations that are no longer
being performed by the inoperable laser, allowing the device to continue
operation, albeit in a slower manner." Ans. 3. Appellants challenge this
reasoning, arguing that it "assumes facts not of record." Reply Br. 3. We do
not agree. The Examiner provides a logical reason for using multiple lasers
in a manner that each perform the scoring and emblazoning steps as claimed.
Kahn, 441 F .3d at 988. Moreover, Appellants have provided no reason that
the plurality of lasers produces a new and unexpected result, and "the mere
duplication of parts has no patentable significance unless a new and
unexpected result is produced." In re Harza, 274 F.2d 669, 671 (CCPA
1960).
Accordingly, we sustain the rejection of claim 10.
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Dependent claims
Regarding the dependent claims, Appellants rely on the arguments
made for the independent claims. Appeal Br. 13. Accordingly, we sustain
the rejections of claims 2-8, 11-14, and 16-18.
DECISION
For the above reasons, the Examiner's rejection of claims 1-8 and 10-
18 is affirmed.
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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