Ex Parte Johns et al

Patent Trial and Appeal Board

Nov 26, 2012

11465694 (P.T.A.B. Nov. 26, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/465,694 08/18/2006 Albert D. Johns 20045-USA 1696
31743 7590 11/26/2012
Georgia-Pacific LLC
133 Peachtree Street NE - GA030-41
ATLANTA, GA 30303
EXAMINER
NGUYEN, THUKHANH T
ART UNIT PAPER NUMBER
1747
MAIL DATE DELIVERY MODE
11/26/2012 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,
Mark B. Littlejohn, Thomas W. Zelinski,
Kenneth J. Zirbel, and Luke G. Stumpf
________________

Appeal 2011-004782
Application 11/465,694
Technology Center 1700
________________

Before CHARLES F. WARREN, CATHERINE Q. TIMM, and
MARK NAGUMO, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

Appeal 2011-004782
Application 11/465,694
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DECISION ON APPEAL
Albert D. Johns, Mark B. Littlejohn, Thomas W. Zelinski,
Kenneth J. Zirbel, and Luke G. Stumpf (“Johns”) timely appeal under
35 U.S.C. § 134(a) from the final rejection1 of claims 1-17 and 23-27, which
are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
INTRODUCTION
The subject matter on appeal relates to an apparatus for producing
pressware.2 (Spec. 1.) The pressware can be in the form of a bowl, plate,
oval, deep dish, compartmented plate, multi-sided plate, etc. (Id. at 22.)
An apparatus for producing pressware typically comprises a scoring
station (optional), a blanking station (optional), and a forming station.
(Spec. 1.)
Figure 1, reproduced on the following page, shows pressware
apparatus 10 having scoring station 12, blanking station 11, conveying
system 14, and forming station 16. (Spec. 22.)

1 Office action mailed 16 March 2010.
2 Application 11/465,694, filed 18 August 2006, claiming the benefit of
US 60/709,649, filed 19 August 2005. The specification is referred to as
the “694 Specification,” and is cited as “Spec.”
The real party in interest is listed as Dixie Consumer Products LLC,
which is owned by Georgia-Pacific LLC, which is owned by Koch
Industries, Inc. (Appeal Brief, filed 05 August 2010 (“Br.”), 3.)
Appeal 2011-004782
Application 11/465,694
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{Figure 1 shows an apparatus for producing pressware}
As shown in Figure 1, scoring station 12, blanking station 11, and
conveying system 14 are oriented along the production direction 142, which
is the direction in which the web of material 148 and blanks 141 and 143 are
advanced during the production process. (Spec. 24.) Forming station 16 is
oriented in a “cross-direction” to the production direction 142, meaning that
it traverses the production direction (the orientation of the forming station is
typically perpendicular to the production direction). (Id. at 5.) Forming
station 16 includes forming tool 29, which comprises a plurality of die pairs
18, 20, 22, 24, 26, and 28. (Id. at 22.)
During operation of the apparatus, the web of material 148 (e.g.,
paperboard) is scored in scoring station 12 and cut in blanking station 11.
(Spec. 25.) Next, the blanks (e.g., 141 and 143) are gravity fed from feeder
slot 104 via conveying system 14 to the forming station 16. (Id.) In forming
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Application 11/465,694
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station 16, the blanks are physically stopped and centered between die
pairs 18, 20, 22, 24, 26, and 28. (Id. at 30.)
An individual die pair comprises an upper forming portion, called a
“segmented punch,” and a lower forming portion, called a “segmented die.”
(Spec. 5.)
Edited Figure 7, shown below (some labels omitted for clarity),
provides a schematic view of adjoining die pairs 18 and 20, each having an
upper forming portion or punch 34 and a lower segmented die forming
profile 42. (Spec. 25-6.)

{Edited Figure 7 shows a schematic view of die pairs 18 and 20}
As shown in Figure 7, in die pair 18, mounting member 130 is located
above punch portion 34, whereas in die pair 20, mounting member 132 is
located below the forming profile 42. (Spec. 24.) This “one up one down
arrangement” permits the overall height of adjoining die pairs 18 and 20 and
mounting members 130 and 132 to remain about equal. (Id.)
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Edited Figure 3, shown below (most labels omitted for clarity),
illustrates a one up and one down multi-level arrangement for the die pairs
18, 20, 22, 24, 26, and 28 in a pressware forming tool. (Spec. 23.)

{Edited Fig. 3 shows a schematic cross-section of a pressware forming tool}
The 694 Specification explains that although each of the die pairs is
generally identical in configuration, they are “arranged in a multi-level array
by utilizing a mounting member alternately placed above and below adjacent
pressware die pair.” (Spec. 24.) This arrangement positions each of the die
pairs 18, 20, 22, 24, 26, and 28 at a different elevation with respect to its
adjoining die pairs. As a result, the Specification teaches, there is room for
an additional die pair in a conventionally sized press (i.e., six die pairs
instead of five). (Id. at 11, 15.) The additional die pair “makes it possible to
utilize almost the entire press width for production, increasing throughput
by 20% and more over conventional techniques.” (Id. at 25.)
STATEMENT OF THE CASE
The claimed invention covers a forming station comprising a plurality
of die assemblies arranged in a cross-direction such that any two adjoining
die assemblies are positioned at a different elevation with respect to one
another.
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Representative Claim 1 reads:
1. A forming station comprising:
a plurality of die assemblies arranged in a cross-direction,
wherein at least one of the die assemblies has a
cross-directional width of from about a cross-directional
width of a pressware product formed in the die assembly
to about 105% of a cross-directional width of a
paperboard blank fed thereto, and
wherein any two adjoining die assemblies are
positioned at a different elevation with respect to one
another.
(Claims App., Br. 12; indentation, paragraphing, and emphasis added.)
The Examiner maintains the following grounds of rejection:3
A. Claims 1-4 and 7-9 stand rejected under 35 U.S.C. § 102(b) in
view of Troutner.4
B. Claims 1-4, 6-14, 23, and 25-27 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Fortney5 and Troutner.
C. Claim 5 stands rejected under 35 U.S.C. § 103(a) in view of the
combined teachings of Fortney, Troutner, and Johns ‘296.6
D. Claims 15-17 and 24 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Fortney, Troutner, and
Johns ‘729.7

3 Examiner’s Answer mailed 27 October 2010 (“Ans.”).
4 US 4,776,919, 11 October 1988 (Ans. 3-4).
5 US 6,527,687 B1, 04 March 2003 (Ans. 4-6).
6 US 6,908,296 B2, 21 June 2005 (Ans. 6-7).
7 US 7,070,729 B2, 04 July 2006 (Ans. 7-8).
Appeal 2011-004782
Application 11/465,694
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DISCUSSION
Johns argues the patentability of claims 1-17 and 23-27 generally; i.e.,
without setting forth separate reasons for patentability with respect to any
one or more claims apart from the others. (Br. 9-11.) Accordingly, the
claims stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Representative claim 1 stands rejected under 35 U.S.C. § 102(b) by
the Examiner as unpatentable over Troutner, and under 35 U.S.C. § 103(a)
in view of the combined teachings of Fortney and Troutner.
The critical issue for each rejection is the meaning of the limitation
“any two adjoining die assemblies are positioned at a different elevation
with respect to one another,” recited in the representative claim.
As originally filed, claim 1 recited “a plurality of die pairs.”8 Without
explanation, Johns amended representative claim 1 to recite “a plurality of
die assemblies.”9 (Claims App., Br. 12.)
The 694 Specification does not recite or define the term “die
assemblies.”
The Examiner interprets “die assembly” to be any die mechanism,
such as the lower press platen in Troutner. (Ans. 4.)

8 Original claim 1 was rejected under 35 U.S.C. § 102(b) over Fortney in
the Office Action mailed 21 August 2009.
9 On 23 November 2009, Johns responded to the Office Action by
amending claim 1 to its current form as follows: all recitations of “die pairs”
were amended to “die assemblies” and the clause “wherein any two
adjoining die assemblies are positioned at a different elevation with respect
to one another” was inserted at the end of the claim.
Appeal 2011-004782
Application 11/465,694
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Webster’s Third New International Dictionary defines the term “die”
as:
any of various tools or devices for imparting a desired
shape, form, or finish to a material: as [] one of a pair of
cutting or shaping tools that when moved toward each
other produce a certain desired form in or impress a
desired device on an object by pressure or by a blow, this
tool being the larger of the pair or the part into which the
punch enters.10
The Examiner’s interpretation is unchallenged by Johns and is
consistent with the dictionary definition of “die” and the prior art of record.
See, e.g., Johns ‘296, col. 5, ll. 4-5, describing Figure 1 as an exemplary
press containing upper punch assembly 130 and lower die assembly 140.
The Examiner finds that Troutner discloses a pressing apparatus
comprising a plurality of die assemblies that are capable of being positioned
at different elevations with respect to one another in order to form different
products or a product with different thicknesses. (Ans. 3.) As evidence of
anticipation, the Examiner cites (id.) the following passage: “The upper
press platens 16 are each connected to a different adjustment shaft 90 for
which contains a ball screw mechanism for vertical adjustment of the height
of such upper platens to vary the spacing between the upper and lower
platens in a range from 5½ to 19 inches.” (Troutner at col. 5, ll. 11-16.)
Embodiments of Troutner’s pressing apparatus are illustrated in
Figures 1 and 3, shown on the next page.

10 Webster’s Third New International Dictionary 628 (Philip Babcock Gove
ed., 1971).
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Appeal 2011-004782
Application 11/465,694
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Troutner Figures 1 and 3, on the previous page, depict opposed upper
press platens 16 and lower press platens 18 (the latter correspond to the
“plurality of die assemblies” recited in claim 1), vertical shafts 90, which
adjust the gap between upper platens 16 and lower platens 18, drive shaft 92,
which moves platens 16 relative to platens 18, and electric motor 96, which
drives shaft 92.
Johns argues that Troutner does not disclose a forming station having
adjoining die assemblies positioned at different elevations with respect to
one another. (Br. 9.) Rather, Johns argues, Troutner discloses a laminated
lumber press having upper and lower press platens 16 and 18 that are located
at the same elevation at all times, and that as a consequence, the press
platens are not independently adjustable. (Id.) For support, Johns cites (id.)
the following passage: “Each of these ball screw adjustment shafts 90 is
coupled to a common drive shaft 92 . . . The drive shaft is driven by an
electric motor 96 . . . which adjusts the height of the upper platens 16 during
the formation of the laminated lumber member.” (Troutner col. 5, ll. 16-23.)
Johns argues that the upper and lower platens must be located at the same
elevation throughout the forming station because, “otherwise, a planar
lumber structure would be impossible to fabricate.” (Br. 9.)
A reference is anticipatory under 35 U.S.C. § 102 only if it discloses
each and every element of the claimed invention, either explicitly or
inherently, and the elements are arranged or combined in the same manner
as in the claim. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009).
Anticipation is a factual inquiry that we resolve by the preponderance of the
evidence of record. E.g., In re Epstein, 32 F.3d 1559, 1564 (Fed. Cir. 1994).
Appeal 2011-004782
Application 11/465,694
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The Examiner’s finding that Troutner describes a device in which the
die assemblies are positioned at different elevations with respect to one
another is not supported by the preponderance of the evidence of record.
Each of the die assemblies in Figures 1 and 3 of Troutner is positioned
at an identical elevation with respect to its adjoining die assemblies.
Accordingly, the elements are not arranged or combined in the same manner
as in the claim, and anticipation does not lie.
As evidence supporting independent elevation adjustment, the
Examiner relies on the Troutner Abstract, which states that “laminated
lumber of different thicknesses” may be produced. However, for this phrase
to be consistent with the disclosed purpose, which is to produce uniformly
dimensional laminated lumber, and with the embodiments shown in
Figures 1 and 3, the Troutner Abstract must refer to an apparatus having the
ability to create different boards of various thicknesses (5½ to 19 inches)
rather than the ability to create a single board having varying thickness along
the length of the board. Because Troutner does not describe a machine
having adjoining die assemblies at different elevations in a single
embodiment, there cannot be anticipation.
To the extent that the Examiner finds that the die assemblies in
Troutner are “capable of positioning at a different elevation with respect to
one another” (Ans. 3), under conceivable theories of anticipation-by-
inherency or obviousness, the Examiner appears to misapprehend or
overlook the function and purpose of the Troutner apparatus.
Appeal 2011-004782
Application 11/465,694
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The lumber laminating press in Troutner contains a plurality of die
assemblies, each having an adjustment shaft 90 with a ball screw mechanism
that allows vertical adjustment of each upper press platen 16. However,
each of the adjustment shafts is coupled to a common drive shaft 92 and the
drive shaft is driven by an electric motor 96 that adjusts the height of all
upper platens 16 concurrently. This is so because the electric motor 96 and
the drive shaft 92 are fixed to the lumber press frame, which means that
when the motor turns the shaft, each ball screw mechanism in each
adjustment shaft 90 adjusts each upper platen 16 simultaneously. As Johns
argues (Br. 9), the Examiner has not directed our attention to credible
evidence that the prior art elements can be arranged or combined in the same
manner as the claim and still achieve the purposes taught by Troutner.11
With respect to the obviousness rejections, the Examiner finds that
Fortney fails to disclose a forming station apparatus having two adjoining
die assemblies positioned at a different elevation with respect to one another.
(Ans. 5.) Because Troutner does not cure this deficiency, and because the
Examiner does not rely on either Johns ‘296 or Johns ‘729 to cure this

11 As an aside, representative claim 1 requires “a plurality of die assemblies
arranged in a cross-direction.” (Claims App., Br. 12.) Figure 1 in the 694
Specification illustrates that the paperboard 148 is fed into the forming
station such that the production direction 142 is perpendicular to the
arrangement of the die pairs in forming tool 29.
In contrast, Figure 1 of Troutner illustrates that the lumber member 20
is fed into the laminating press such that the production direction is parallel
to the arrangement of the die pairs 16. Accordingly, Troutner fails to
disclose “a plurality of die assemblies arranged in a cross-direction,” as
required by representative claim 1.
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deficiency, each of the obviousness rejections B-D falls with the anticipation
rejection A.
ORDER
We reverse all appealed rejections over prior art.
REVERSED
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