Ex Parte Fleischer et al

Patent Trial and Appeal Board

Jul 20, 2016

13094965 (P.T.A.B. Jul. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/094,965 04/27/2011
3705 7590 07/22/2016
ECKERT SEAMANS CHERIN & MELLOTT
600 GRANT STREET
44THFLOOR
PITTSBURGH, PA 15219
FIRST NAMED INVENTOR
KARL FLEISCHER
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.
291448-00851 1657
EXAMINER
EV ANIS KO, LESLIE J
ART UNIT PAPER NUMBER
2854
NOTIFICATION DATE DELIVERY MODE
07/22/2016 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):
ipmail@eckertseamans.com
PTOL-90A (Rev. 04/07)
~UNITED STATES PATENT AND TR~ADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KARL FLEISCHER and ANTHONY JOSEPH VELLA
Appeal2014-008437
Application 13/094,965
Technology Center 2800
Before KEVIN C. TROCK, ADAM J. PYONIN, and
AARON W. MOORE, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from a Final
Rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
Introduction
Appellants' disclosure is directed to "can decorator machines and
methods for decorating cans used in the food and beverage packaging
Appeal2014-008437
Application 13/094,965
industries." Spec. 1:7-8. Claims 1, 11, and 17 are independent. Claim 1 is
reproduced below for reference (with emphasis added):
1. An ink station assembly for a can decorator machine
structured to decorate a plurality of cans, the ink station assembly
compnsmg:
an ink fountain structured to provide a supply of ink;
a fountain roll structured to receive said ink from the ink
fountain;
a distributor roll;
a ductor roll being cooperable with the fountain roll and
the distributor roll to transfer said ink from the fountain roll to
the distributor roll;
a number of oscillator rolls each having a longitudinal axis
and being structured to oscillate back and forth along said
longitudinal axis;
a number of transfer rolls each cooperating with at least
one of the oscillator rolls;
a printing plate cylinder including a printing plate; and
a single form roll cooperating with the printing plate
cylinder to apply said ink to the printing plate,
wherein the total number of rolls within said ink station
assembly is less than ten.
References and Rejections1
Claims 1, 5, 6, 11, and 13 stand rejected under 35 U.S.C. § 102(a) as
being anticipated by Appellants' Admitted Prior Art of Figures 1 and 5 and
Spec. 1-2 and 6 (hereinafter, "AAP A"). Final Act. 4.
Claims 1-9, 11-15, and 17-19 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over AAPA and Faddis (US 4,223,603; Sept.
23, 1980). Final Act. 9.
1 The Examiner has objected to the drawings. See Final Act. 2. Such
objections are petitionable matters that we do not consider on appeal. See,
e.g., MPEP § 706.01.
2
Appeal2014-008437
Application 13/094,965
Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over AAPA, Faddis, and Stirbis (US 4,741,266; May 3, 1988).
Final Act. 16.
Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over AAP A, Faddis, Stirbis, and Finan (US 2005/0045053 Al;
Mar. 3, 2005). Final Act. 17.
Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over AAPA, Faddis, and Finan. Final Act. 19.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments. We concur with Appellants' conclusions that the Examiner
erred, as discussed below. 2
A. 35 USC§ 102 Rejection
Appellants argue the Examiner erred in finding AAP A anticipates the
claim 1 limitation "wherein the total number of rolls within said ink station
assembly is less than ten." See Br. 15-16. Appellants contend that, in
contrast to the claim, "the specification describing AAP A specifically states,
'the prior art ink station assembly 32 ... includes at least 10 rolls."' Id. at 16
(quoting Spec. 6:17-18); see also Fig. 5.
We agree with Appellants, and disagree with the Examiner that "even
though the AAPA of Figure 5 has more than ten rolls of all types, the
2 Appellants raise additional issues in the Brief. We are persuaded of error
with regard to the identified issues discussed herein, which are dispositive as
to the rejections of all claims. Therefore, we do not reach the additional
ISsues.
3
Appeal2014-008437
Application 13/094,965
Examiner can broadly consider just select rolls of Figure 5 to comprise the
ink station assembly," so as to have the required "total number of rolls less
than 10." Ans. 3. We find the Examiner erred by selectively citing to only a
subset of the rolls shown in AAP A: the prior art does not show an ink
station assembly as claimed, as the prior art ink station assembly explicitly
has at least 10 rolls. Id.; see also Fig. 5. Further, Appellants correctly note
that the Examiner improperly disregards the claim limitation "less than 10
rolls" when construing the claim as open-ended. See Ans. 2; Br. 15; see also
Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008)
("[U]nless a reference discloses within the four comers of the document not
only all of the limitations claimed but also all of the limitations arranged or
combined in the same way as recited in the claim, it cannot be said to prove
prior invention of the thing claimed.").
Accordingly, we agree with Appellants that AAP A does not disclose
all limitations of claim 1, independent claim 11 which recites limitations
commensurate in scope, and dependent claims 5-6 and 13. See Br. 1 7.
B. 35 US.C. § 103 Rejection
The Examiner separately finds that "AAP A does not specifically teach
using only one single form roll that cooperates with the plate cylinder"
(Final Act. 9), but that "it would have been obvious to one of ordinary skill
in the art to provide the ink station assembly of AAP A with a single form
roller as taught by Faddis," which would result in "the total number of rolls
within the ink station assembly [to] be less than ten as now recited" (Final
Act. 10).
4
Appeal2014-008437
Application 13/094,965
Appellants argue "neither Faddis nor AAPA, nor the combination of
Faddis and AAP A, can be said to disclose or suggest 'a single form roll,' as
claimed," because in "Faddis as a whole, the planetary inker 30 includes,
and indeed requires for proper functionality, two form rollers 42, 42a (i.e.,
not a single form roll)." Br. 22.
We agree with Appellants the Examiner erred. See id. The Examiner
finds modifying AAP A with Faddis "would require simply the obvious
substitution of one form roller arrangement for another" (Final Act. 1 O);
however, "the planetary inker 30 of Faddis requires two ink roller trains,
each including a separate form roll, and requires 26 total rolls." Br. 23; see
Faddis 8:37--47; see also Faddis 6:41-56, Fig. 2. We do not agree that
replacing select rolls of AAPA with only a portion of Faddis's 26 rolls
(including two form rollers) is an obvious substitution. Rather, we are
persuaded that one of ordinary skill, in view of the paper inker of Faddis,
would not modify the ink station assembly of AAP A as claimed. See Br.
22-23.
Accordingly, we agree with Appellants that AAP A in view of Faddis
does not teach or suggest all limitations of claim 1, independent claims 11
and 17 which recite limitations commensurate in scope, and the remaining
claims which are dependent thereon. See Br. 23.
DECISION
The Examiner's rejections of claims 1-20 are reversed.
REVERSED
5