Ex Parte Johns et al

Patent Trial and Appeal Board

Nov 27, 2012

11465697 (P.T.A.B. Nov. 27, 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.
11/465,697 08/18/2006 Albert D. Johns 20169-USA 1701
31743 7590 11/28/2012
Georgia-Pacific LLC
133 Peachtree Street NE - GA030-41
ATLANTA, GA 30303
EXAMINER
TRUONG, THANH K
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
11/28/2012 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ALBERT D. JOHNS AND MIRCEA T. SOFRONIE
____________

Appeal 2010-011281
Application 11/465,697
Technology Center 3700
____________

Before STEFAN STAICOVICI, MICHELLE R. OSINSKI, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Albert D. Johns and Mircea T. Sofronie (“Appellants”) appeal under
35 U.S.C. § 134 from the Examiner’s decision rejecting claims 23-36.1 We
have jurisdiction under 35 U.S.C. § 6(b).

The Claimed Subject Matter
Claims 23 and 32 are representative of the claimed subject matter and
are reproduced below.
23. A die set for producing paperboard pressware from a
paperboard blank, comprising:
an inner die member having a peripheral face;
a draw ring surrounding the inner die member and
translationally mounted on said inner die member;
means for maintaining centering and alignment of said
inner die member and said draw ring including a frusto-conical
draw ring stop formed in said draw ring having a draw ring
contact face for abutment against a mating portion of the
peripheral face of the inner die member to limit translation of
the draw ring relative to the inner die member, wherein the
draw ring contact face is angularly inclined relative to a
translational axis of the draw ring, and wherein the angle of
inclination is not less than 10°;
an inner punch member having a peripheral face;
a reciprocable knockout adapted to remove formed plates
from said die set;
a pressure ring surrounding the inner punch member and
translationally mounted on said inner punch member;

1 Claims 1-22 were cancelled. See Amendment (Dec. 10, 2007) at 6
(cancelling claims 13-17); Amendment Accompanying RCE (Nov. 3, 2008)
at 6 (cancelling claims 1-12 and 18-22).
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means for maintaining centering and alignment of said
inner punch member and said pressure ring including an frusto-
conical punch ring stop formed in said pressure ring having an
pressure ring contact face for abutment against a mating portion
of the peripheral face of the inner punch member to limit
translation of the pressure ring relative to the inner punch
member, wherein:
the pressure ring contact face is angularly
inclined relative to a translational axis of the
pressure ring, and wherein the angle of inclination
is not less than 10°;
said pressure ring and said draw ring are
adapted to engage said pressware blank
therebetween prior to engagement of said
pressware blank by said inner die member and said
inner punch member;
said die set being configured and
dimensioned to withstand application of a force of
over 6,000 lbs to said pressware blank upon
closing of said punch and die against said
pressware blank;
said die set is adapted for operation in an
inclined orientation;
said frustoconical stops being adapted to
center and align the pressure and draw rings upon
opening of the die set; and
the translational axis thereof is inclined.

32. A die set for producing paperboard pressware,
comprising:
an inner die member having a concave inner face
opposite an outer peripheral face comprising an annular die
member stop formed therein having a frusto-conical inclined
external face; and
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an outer die ring surrounding the inner die member, the
outer die ring comprising an annular die ring stop having a
mating frusto-conical inclined internal face;
wherein the internal face of said die ring stop engages
against the external face of said inner die member stop to limit
the travel of the outer die ring relative to the inner die member
and said stops formed in said inner die member, and
wherein said outer die ring are configured to urge said
inner die member and said outer die ring toward alignment
upon opening of said die set.

References
The Examiner relies upon the following prior art references:

Christiansen US 4,824,357 Apr. 25, 1989
Ridgill US 5,326,244 Jul. 5, 1994

Figures 1-3 and paragraphs [0004] – [0009] (pages 2-4) of
Application 11/465,697 (Appellants’ Admitted Prior Art (“AAPA”)).

Rejections
The Examiner makes the following rejections:2
I. Claims 32-36 are rejected under 35 U.S.C. § 102(b) as
anticipated by Ridgill; and
II. Claims 23-36 are rejected under 35 U.S.C. § 103(a) as
unpatentable over AAPA, Ridgill, and Christiansen.

2 The Examiner withdrew an objection to the drawings and a rejection of
claims 23-27 under 35 U.S.C. § 112, second paragraph, for indefiniteness.
Ans. 3.
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SUMMARY OF DECISION
We AFFIRM.
OPINION
Rejection I – Ridgill
Appellants have not separately argued claims 33-36 such that the
rejected claims are argued as a group. Br. 13-14. We select claim 32 as
representative, and claims 33-36 stand or fall with claim 32. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011); see also, e.g., In re Lovin, 652 F.3d 1349, 1351
(Fed. Cir. 2011).
The Examiner found that Ridgill discloses each element of claims 32-
36. Ans. 4-5. Appellants assert that Ridgill does not disclose “a concave
inner face opposite an outer peripheral face” as required by the claims. Br.
13-14. Appellants contend that the cited portion of Ridgill is simply a
rounded corner of member 13, not a “concave inner face.” Id. at 13.
Appellants assert that a rounded corner is not concave because it “is not
hollowed or curved inward in accordance with the plain and ordinary
meaning of the term ‘concave.’” Id. Appellants also point out that Ridgill
never mentions the word “concave.” Id. Additionally, Appellants assert that
Ridgill’s rounded corner is not “arranged opposite an outer peripheral face.”
Id. at 13-14 (emphasis added). In particular, Appellants contend that Figure
1 of Ridgill discloses “an annular shoulder 39 that is offset well below and
exterior to the ‘round corner,’ not opposite an outer peripheral face.” Id.
In response, the Examiner notes that Ridgill discloses that “the
corner[,] although . . . small, . . . is concave nevertheless, and . . . is disposed
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opposite (placed across from) the incline surface (39).” Ans. 7. The
Examiner also includes an annotated version of Ridgill’s Figure 1, indicating
the disclosure of Ridgill found to satisfy these claim limitations. Id. at 8.
We agree with the Examiner that Ridgill discloses “a concave inner
face opposite an outer peripheral face” as required by the claims. First, even
accepting that “concave” should be construed as Appellants contend, the
inner face of Ridgill’s device identified by the Examiner in annotated Figure
1 of Ridgill is curved inward in relation to member 13. Second, because
Ridgill’s outer peripheral face includes the outer vertical face of member 13
and the incline surface 39, we agree with the Examiner’s finding that the
concave inner face of the inner die member is placed across, i.e., is opposite,
from an outer peripheral face comprising an annular die member stop. See
Ans. 7 (“the inner die member (13) [has] a concave inner face that is
opposite the outer peripheral face comprising an anuular [sic] die member
stop formed therein having a frusto-conical inclined external face (39) as
recited in claim 32”).
Accordingly, we sustain Rejection I.
Rejection II – AAPA, Ridgill, and Christiansen
The Examiner determined that AAPA, Ridgill, and Christiansen
render obvious the subject matter of claims 23-36. Ans. 5-7.
Appellants raise four arguments in response to Rejection II.
Appellants argue claims 23-27 as a group. Br. 14-15. We select claim 23 as
representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). First, Appellants
contend that the prior art combination does not disclose “means for
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maintaining centering and alignment of said inner die member and said draw
ring” or “means for maintaining centering and alignment of said inner punch
member and said pressure ring including a[] frusto-conical punch ring stop
formed in said pressure ring” as required by claim 23. See Br. 14-15. In
particular, Appellants acknowledge that Ridgill teaches “axially engaging
alignment,” but contend that neither Ridgill nor Christiansen teach “aligning
and centering.” Id. at 15.
In response, the Examiner noted that Ridgill teaches “axially engaging
alignment” and Christiansen teaches “aligning and guiding surfaces.” Ans.
8-9. Thus, the Examiner found that
each clearly teaches and suggests that the incline surfaces
between the inner die member and the draw ring, and between
the inner punch member and the pressure ring will tend to align
them with respect to the translation axis of the die assembly
(centering with respect to the translation axis of the die
assembly).
Id. at 9.
We agree with the Examiner that the references disclose aligning with
respect to the translation axis of the die assembly. By aligning in this
manner, the components are also centered with respect to the translation axis
as required by claim 23. Thus, Appellants have not persuaded us of error in
the Examiner’s findings and reasoning.
Appellants argue claims 28-31 as a group. Br. 16. We select claim 28
as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Second,
Appellants assert that the prior art combination does not disclose “means for
maintaining centering and alignment of said inner die member and said outer
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die ring comprising a circumferential frusto-conical stop formed integrally
with said outer die ring” as required by claim 28. Id. at 15-16.
The Examiner found that Ridgill discloses an inner die member (13)
and an outer die ring (33). Ans. 6. The Examiner also found that Ridgill
teaches that “[s]leeve 33 has an inwardly radiating annular flange 37 that is
in axially engaging alignment with an annular exterior shoulder 39 on mold
member 13.” Id. at 8 (quoting Ridgill, col. 4, ll. 19-21).
Accordingly, we agree with the Examiner that the prior art
combination discloses aligning and centering the inner die member and outer
die ring with respect to the translation axis. Ans. 9.
Appellants argue claims 32-36 as a group. Br. 16-17. We select
claim 32 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Appellants’ third argument repeats the position taken by Appellants with
respect to Rejection I—that the prior art does not disclose a concave “inner
face arranged opposite an outer peripheral face” as required by claim 32. Br.
16-17.
For the reasons we explained in addressing Rejection I, we agree with
the Examiner’s findings that the prior art discloses “an inner die member
having a concave inner face opposite an outer peripheral face comprising an
annular die member stop.”
Finally, Appellants assert that Rejection II is improper because the
Examiner did not establish a prima facie case of obviousness. Id. at 17-20.
Appellants contend that the combination of references was not predictable
because Ridgill and Christiansen are non-analogous art since neither is
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directed to a die assembly for pressware, and that the Examiner failed to
articulate a rational reason to support the legal conclusion of obviousness,
relying instead on Appellants’ Specification. Id.
The Examiner responded by noting that Ridgill and Christiansen are
in the same field of endeavor. Ans. 9. The Examiner also found that
Christiansen provides “an effective means to lift and stop the translational
movement of the female die.” Id. Thus, in combination, “Ridgill and
Christiansen provide an effective means to lift and stop the translational
movement of the inner die member, the female die member and their
associated members[,] the outer die ring and the draw ring, respectively.”
Id. at 9-10. Additionally, the Examiner explained that it would have been
obvious to one of ordinary skill in the art to combine the references because
“applying a known technique to a known device would have yield[ed]
predictable results to one of ordinary skill in the art at the time of the
invention.” Id. at 10.
“A reference qualifies as prior art for an obviousness determination
under § 103 only when it is analogous to the claimed invention.” In re
Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (citing Innovention Toys, LLC
v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011), and In re Bigio,
381 F.3d 1320, 1325 (Fed. Cir. 2004)). “Two separate tests define the scope
of analogous art: (1) whether the art is from the same field of endeavor,
regardless of the problem addressed and, (2) if the reference is not within the
field of the inventor’s endeavor, whether the reference still is reasonably
pertinent to the particular problem with which the inventor is involved.” Id.
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(quoting In re Bigio, 381 F.3d at 1325). The “field of endeavor” test
“requires the PTO to determine the appropriate field of endeavor by
reference to explanations of the invention’s subject matter in the patent
application, including the embodiments, function, and structure of the
claimed invention.” In re Bigio, 381 F.3d at 1325. If the structure and
function of the prior art would have been considered by a person of ordinary
skill in the art because of similarity to the structure and function of the
claimed invention as disclosed in the application, the prior art is properly
considered within the same field of endeavor. See id. at 1325-26.
Appellants have not persuaded us that Ridgill and Christiansen are
non-analogous art. Appellants define analogous art too narrowly.
Christiansen is directed to a molding device, as is Ridgill. See Christiansen,
Abstract (“Apparatus, for molding a seal in an annular metal casing . . . .”);
Ridgill, title (“AXIALLY COMPACT COMPRESSION MOLD”).
Appellants’ invention is directed to a forming die assembly.3 E.g., Spec.,
title (“FORMING DIE ASSEMBLY WITH ENHANCED STOP”). The
molding apparatuses of Ridgill and Christiansen would have been
considered by a person of ordinary skill in the molding art because of the

3 A “die” is “a metal device for shaping or [molding] a semisoft solid
material.” Chambers 21st Century Dictionary (2001), available at
http://www.credoreference.com/entry/chambdict/die_2) (last visited Nov.
20, 2012). A “mold” is “a hollow, shaped container into which a liquid
substance is poured so that it takes on the container’s shape when it cools
and sets.” Id., available at
http://www.credoreference.com/entry/chambdict/mould_2_or_n_american_
mold) (last visited Nov. 20, 2012).
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similarity in structure and function to the claimed subject matter.
Accordingly, we agree with the Examiner that Ridgill and Christiansen are
analogous art and were appropriately considered in determining the
patentability of the claims.
Second, Appellants have not persuaded us that the Examiner failed to
articulate an adequate reason with rational underpinnings as to why one of
ordinary skill in the art would have been prompted to combine the
references. The Examiner found that Christiansen discloses the elements
missing from Ridgill and further teaches that those elements provide an
effective means to lift and stop the translational movement of the female die.
See Ans. 9-10. Thus, the Examiner’s conclusion was based on the
disclosures of the prior art, not Appellants’ Specification. The Examiner
articulated an adequate reason with rational underpinnings for the proposed
combination (“to provide an effective means to lift and stop the translational
movement of the die set”). See Ans. 6. We further agree with the Examiner
that applying a known technique (e.g., from Christiansen) to a known device
(e.g., of Ridgill or AAPA) would have yielded predictable results to one of
ordinary skill in the art at the time of invention. E.g., KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 416 (2007) (“[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results”). Modifying the device of Ridgill
according to the teachings of Christiansen is merely an “application of a
known technique to a piece of prior art ready for the improvement.” Id. at
417. Appellants have not provided argument or evidence to suggest that the
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combination of the known technique and known device resulted in more
than merely the results predictable to one of ordinary skill in the art at the
time of invention.
Accordingly, we sustain Rejection II.

DECISION
We affirm the Examiner’s decision rejecting claims 23-36.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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