Ex Parte Gahan et al

Patent Trial and Appeal Board

Dec 23, 2014

11913634 (P.T.A.B. Dec. 23, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STUART MICHAEL GAHAN, TONY HOLLINGS, and
WESLEY CLEMENTS
_____________

Appeal 2012-012282
Application 11/913,634
Technology Center 2800
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Before CHARLES F. WARREN, MICHAEL P. COLAIANNI, and
N. WHITNEY WILSON, Administrative Patent Judges.

WILSON, Administrative Patent Judge.

DECISION ON APPEAL

Appellants1 appeal under 35 U.S.C. § 134 from the Primary
Examiner’s final rejection of claims 1–12. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We affirm.

1 The real party in interest is Goss Graphic Systems, Limited. (Appeal Br.
3).
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Application 11/913,634

2
CLAIMED SUBJECT MATTER
Appellants’ invention is directed to a printing unit and a method for
controlling such a printing unit (Abstract). The printing unit includes a
plurality of printing couple pairs, each printing couple pair comprising a
plate cylinder and a blanket cylinder and an inking system associated with
each printing couple pair (id.). The printing unit also has a primary module
carrying the printing couple pairs and, a pair of secondary modules carrying
the inking systems (id.). The secondary modules are movable relative to the
primary module from an operative into a non-operative position in which
each secondary module is separated from the primary module (id.) The
printing unit further includes an apparatus for loading/unloading printing
plates from the plate cylinders while the secondary modules are moving
relative to the primary modules into their non-operative positions (id.). The
printing unit is illustrated in the following annotated version of FIGS. 6 and
7 from the Specification:

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Application 11/913,634

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Annotated version of FIGS. 6 and 7 illustrate a side cross-sectional
elevation of a printing unit formed from a primary and a pair of secondary
modules, in a closed or operative position ready for printing (FIG. 6) and in
a partially open, non-operative position (FIG. 7).

Claim 7 is representative of the claims on appeal, and is reproduced
below from the Claims Appendix to the Brief:
7. A printing unit comprising a plurality of printing couple
pairs, each printing couple pair comprising a plate cylinder and
a blanket cylinder and an inking system associated with each
printing couple pair operable to supply ink to printing plates
mounted on the plate cylinders of said printing couple pairs, the
printing unit comprising a primary module carrying the printing
couple pairs and, a pair of secondary modules carrying the
inking systems, the secondary modules being movable relative
to the primary module from an operative into a non-operative
position in which each secondary module is separated from the
primary module, the printing unit further comprising apparatus
for loading/unloading printing plates from the plate cylinders of
the printing unit, wherein the printing unit is configured to
initiate operation of the apparatus for loading/unloading
printing plates from the plate cylinders of the printing unit to
unload printing plates therefrom when the secondary modules
move relative to the primary module into their non-operative
positions.

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REJECTIONS
Four rejections are appealed2:
(1) Claims 1–12 are rejected under 35 U.S.C. § 112, first paragraph as
not being enabled.
(2) Claim 7 is rejected under 35 U.S.C. § 102(b) as being anticipated
by Lamb.3
(3) Claim 1 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Lamb.
(4) Claims 2–6 and 8-12 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lamb in view of Marmin.4
Appellants do not advance separate arguments with regards to
Rejection (4) (Appeal Br. 9), and thus dependent claims 2–6 and 8–12 stand
or fall with independent claims 1 and 7. Accordingly, we will limit our
discussion to Rejections (1), (2), and (3).

2 Claims 1–12 are provisionally rejected on the grounds of nonstatutory
obviousness-type double patenting over claims 1–19 of U.S. Patent
Application No. 11/913,638 (“the ’638 Application”) in view of Lamb.
Applicants did not contest this rejection (Appeal Br. 9). However, the ’638
Application issued as U.S. Patent No. 8,550,000 on October 8, 2013. Thus,
this ground of rejection is moot.
3 Lamb et al., U.K. Patent Application GB 2 403 688 A, published January
12, 2005.
4 Marmin et al., U.S. Patent No. 5,758,579, issued June 2, 1998.
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REJECTION (1) - ENABLEMENT
The Examiner determines that the Specification is enabled for a
printing unit with primary and secondary modules that are movable relative
to each other and a plate unloading/loading apparatus for changing the plates
on the plate cylinder when the secondary modules are moved apart from the
primary module (Final Rej. 25). However, the Examiner also determines that
the Specification “does not reasonably provide enablement for a control
mechanism necessary for controlling the movement of secondary module
[sic] and the operation of the unloading/unloading apparatus during
movement of the secondary module as claimed” (id.). The Examiner further
determines that “the control mechanism and its functional steps” are not
described in the Specification or illustrated in the drawings so as to enable
one of ordinary skill in the art to make and use the invention (id.).
The Federal Circuit has articulated the requirements for meeting the
enablement requirement of § 112 as follows:
“…the specification of a patent must teach those skilled in the
art how to make and use the full scope of the claimed invention
without “undue experimentation…

“When rejecting a claim under the enablement requirement of
section 112, the PTO bears an initial burden of setting forth a
reasonable explanation as to why it believes that the scope of
protection provided by that claim is not adequately enabled by
the description of the invention provided in the specification of
the application; this includes, of course, providing sufficient
reasons for doubting any assertions in the specification as to the
scope of enablement. If the PTO meets this burden, the burden
then shifts to the applicant to provide suitable proofs indicating
that the specification is indeed enabling.”

5 Final Rejection mailed October 31, 2011.
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In re Wright, 999 F.2d 1557, 1561–1562 (Fed. Cir.1993) (internal citations
omitted).
In this instance, the Examiner has determined that the Specification is
enabled for the claimed apparatus, but suggests that without a detailed
explanation of a control mechanism “the specification appears to describe a
concept or a desired mode of operating a known prior art printing unit
without providing any structure necessary to enable such a desired mode of
operation” (Ans. 3). We disagree. As noted by Appellants (Appeal Br. 6),
the Specification provides a detailed description of how to carry out the
claimed method and construct the claimed apparatus (see, e.g., Spec. 12–15).
The element which has been cited as not being enabled – a control
mechanism – is not recited in the claims.
Accordingly, we reverse the enablement rejection.

REJECTION (2) – ANTICIPATION OF CLAIM 7
The Examiner finds that Lamb discloses each of the structural
elements recited in claim 7 (Final Rej. 5–6). Appellants argue that the
anticipation rejection should be reversed because Lamb does not disclose
“the concept of initiating a load/unload operation with the apparatus while
the secondary modules are moved relative to the primary module” (Appeal
Br. 7).6

6 Appellants also argue in the Reply Brief that Lamb does not disclose a
structural limitation of claim 7, namely that the claimed printing unit
comprises the apparatus for loading/unloading print plates from the plate
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Appellants’ argument is not persuasive, essentially for the reasons set
in the Answer at pages 3–4. We add the following for emphasis. It is well
established that while features of an apparatus may be recited either
structurally or functionally, claims directed to an apparatus (such as claim 7)
must be distinguished from the prior art by their structure, not their function.
In re Schreiber, 128 F.3d 1473, 1477–78 (Fed. Cir. 1997). Appellants do
not dispute that Lamb discloses the presently claimed structure, arguing only
that Lamb does not teach loading and unloading printing plates while the
secondary modules are moving (see, Appeal Brief 7–8). Such arguments do
not overcome the undisputed finding that Lamb’s structure contains each of
the structural elements set forth in claim 7, which is readily illustrated by a
comparison of FIGS. 1 and 2 from Lamb with FIGS. 6 and 7 from the
present invention:

cylinders of the printing unit (Reply Br. 2–3). This argument was raised for
the first time in the Reply Brief (see, Appeal Br. 7–8), and Appellants have
not provided a showing of good cause explaining why the argument was not
made in the Appeal Brief. Accordingly, we do not consider this argument.
37 C.F.R. § 41.41(b)(2) (“Any argument raised in the reply brief which was
not raised in the appeal brief, or is not responsive to an argument raised in
the examiner’s answer…will not be considered by the Board for purposes of
the present appeal, unless good cause is shown.”).
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FIGS. 6 and 7 from
Application on Appeal
FIGS. 1 and 2 from Lamb

A comparison of FIGS. 6 and 7 from the application on appeal with FIGS. 1
and 2 from Lamb.

Accordingly, we affirm the anticipation finding of claim 7 over Lamb.

REJECTION (3) – OBVIOUSNESS OF CLAIM 1
The Examiner inferentially acknowledges that Lamb does not
explicitly disclose the claimed step of unloading the printing plates from the
plate cylinders of the printing unit using the loading/unloading apparatus
while the secondary modules are moving relative to the primary module to
their non-operative positions (Final Rej. 7). The Examiner finds that Lamb
teaches that the secondary module need only move a sufficient distance from
the primary module to enable the plate changing mechanism to pass between
the secondary and primary modules, and that a person of ordinary skill in the
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art could instruct the plate changing mechanism to start unloading the plate
as soon as there was sufficient space between the primary and secondary
modules (id.). The Examiner concludes that it would have been obvious a
person of ordinary skill in the art to control the plate changing mechanism of
Lamb to start the plate uploading process while the secondary modules were
still moving to shorten the plate changing process and shorten the overall
downtime of the printing unit (id. at 7–8).
Appellant does not challenge the Examiner’s reasoning, arguing only
that claim 1 is patentable for the same reasons as claim 7 (the apparatus
claim), i.e. that Lamb does not disclose “the concept of initiating the
load/unload operation with the apparatus while the secondary modules are
moved relative to the primary module (Appeal Br. 9, emphasis in original).
However, Appellants do not dispute the Examiner’s reasoning as to why a
person of ordinary skill in the art would have modified Lamb’s method of
operation so as to initiate the load/unload sequence while the secondary
module is moving (i.e. completing the task more quickly so as to shorten
downtime).
Accordingly, we are not persuaded that the obviousness rejection of
claim 1 is in error.

CONCLUSION
We REVERSE the rejection of claims 1–12 under 35 U.S.C. § 112,
first paragraph as not being enabled.
We AFFIRM the rejection of Claim 7 under 35 U.S.C. § 102(b) as
anticipated by Lamb.
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We AFFIRM the rejection of claim 1 under 35 U.S.C. § 103(a) as
being unpatentable over Lamb.
We AFFIRM the rejection of claims 2–6 and 8–12 under
35 U.S.C. § 103(a) as being unpatentable over Lamb in view of Marmin.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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