Ex Parte Hoier et al

Patent Trial and Appeal Board

Aug 22, 2017

12089023 (P.T.A.B. Aug. 22, 2017)

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.
12/089,023 04/02/2008 Gunther Hoier 1322.1137101 8337
28075 7590 08/24/2017
SEAGER, TUFTE & WICKHEM, LLP
100 SOUTH 5TH STREET
SUITE 600
MINNEAPOLIS, MN 55402
EXAMINER
OLAMIT, JUSTIN N
ART UNIT PAPER NUMBER
2854
NOTIFICATION DATE DELIVERY MODE
08/24/2017 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):
GEN .USPTO@stwiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GUNTHER HOIER, VOLKMAR SCHWITZKY, and
JOHANNES SCHAEDE
Appeal 2016-008009
Application 12/089,0231
Technology Center 2800
Before BRADLEY R. GARRIS, ROMULO H. DELMENDO, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner’
rejections under 35 U.S.C. § 103(a) of claims 16—24.
We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
1 Appellants identify the real party in interest as KBA-Notasys S.A. App.
Br. 3.
Appeal 2016-008009
Application 12/089,023
BACKGROUND
The subject matter on appeal is directed to a printing machine having
multiple printing groups which can be used to print security papers, such as
banknotes. Spec. 1.
Claim 16, the only independent claim on appeal, is illustrative and
appears below with key limitations italicized.
16. A sheet-fed printing machine for security papers,
in particular banknotes, comprising a machine frame in which
is located a main printing group, the printing machine further
comprising an additional printing group, independent of the
main printing group, placed upstream of the main printing
group with respect to a direction of displacement of the sheets
and performing additional printing of the sheets prior to
printing by the main printing group,
wherein the additional printing group comprises:
an inking module comprising first and second inking
devices, and
an exchangeable printing module interposed
between the inking module and the machine frame of
the printing machine,
wherein the exchangeable printing module is an
Orlof-offset printing module, wherein the Orlof-offset
printing module comprises:
first and second chablon cylinders which are
respectively inked by the first and second inking
devices of the inking module, which first and second
chablon cylinders are one-segment cylinders;
an Orlof collecting cylinder contacting the first
and second chablon cylinders and collecting inks
supplied by the first and second chablon cylinders,
which Orlof collecting cylinder is a one-segment or
two-segment cylinder,
a single plate cylinder contacting the Orlof
collecting cylinder in order to be inked with the inks
collected by the Orlof collecting cylinder, which
single plate cylinder is a one- segment cylinder; and
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Application 12/089,023
a blanket cylinder contacting the single plate
cylinder and transferring the inks applied on the single
plate cylinder onto the sheets, which blanket cylinder
is a one-segment cylinder,
wherein the exchangeable printing module is
constructed as an independent self-supporting unit that is
capable of being coupled to or decoupled from the inking
module and the machine frame.
App. Br. 12.
REFERENCES
The Examiner relies on the following references as evidence of
unpatentability:
Germann
(“Germann ’515”)
4,697,515 Oct. 6, 1987
Germann
(“Germann ’378”)
5,042,378 Aug. 27, 1991
Rasmussen 5,697,297 Dec. 16, 1997
Giori 6,101,939 Aug. 15,2000
REJECTION ON APPEAL
Claims 16—24 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Giori, Germann ’378, Rasmussen, and Germann ’515.
STATEMENT OF THE CASE
The Examiner finds that Giori discloses the printing machine of claim
16, except for the following recited features: Orlof-offset printing modules;
exchangeable printing modules; and the Orlof collecting cylinder being
either a one- or two-segment cylinder. Final Act. 3—6. The Examiner relies
on Germann ’378, Rasmussen, and Germann ’515 respectively to satisfy
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Application 12/089,023
these limitations. Id. Having found these elements taught in the prior art,
the Examiner reasons that it would have been obvious to the ordinary skilled
artisan to modify Giori’s printing machine to include an Orlof-offset printing
module in the additional printing group as taught by Germann ’378 in order
“to improve the versatility of the machine by allowing it to print a multicolor
safety background for banknotes” (id. at 4) and to obtain “additional,
different security features to be printed that are not printed by conventional
offset printing techniques” (Ans. 2, 4). The Examiner reasons further that it
would have been obvious to make such Orlof-offset printing module
exchangeable as taught by Rasmussen for enhanced configurability of the
printing machine for using different printing technologies (Final Act. 5) and
to allow the module to be easily replaceable, such as if it was broken (Ans.
4—5). The Examiner concludes that it would have been also obvious to
substitute the three-segment collecting cylinders of Germann ’378 with the
two-segment collecting cylinder of Germann ’515 because substituting one
known Orlof collecting cylinder for another would achieve predictable
results in the printing of security markings on banknotes. Final Act. 5—6.
Appellants argue all claims as a group. We therefore select claim 16
as representative and decide the propriety of this appeal on the basis of claim
16 alone. 37 C.F.R. § 41.37(c)(i)(iv).
OPINION
We are not persuaded that Appellants have identified reversible error.
In re Jung, 637 F.3d 1356, 1365—66 (Fed. Cir. 2011) (explaining the Board’s
long-held practice of requiring Appellants to identify the alleged error in the
Examiner’s rejection). Therefore, we sustain the § 103 rejections advanced
in this appeal based on the findings of fact, conclusions of law, and rebuttals
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Application 12/089,023
to arguments expressed by the Examiner in the Final Action and in the
Answer. We add the following comments for emphasis and completeness.
First, we observe that Appellants make several arguments against the
references individually. App. Br. 7, 8, 10, 11; Reply Br. 2—3. It is well-
settled, however, that “[n]on-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references. . . . [The reference] must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a
whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Such
arguments are, therefore, unpersuasive of reversible error.
Appellants’ arguments that the skilled artisan would not have sought
to modify Giori’s device with the Orlof-offset technology of Germann ’378
(App. Br. 8—9; Reply Br. 2—3) are also unpersuasive of reversible error.
Specifically, Appellants contend that the Examiner’s rationale for combining
Giori and Germann ’378 is improper because Giori already teaches the
reason for making the combination, i.e., to print a multicolor safety
background for banknotes (App. Br. 8—9), and that the portion of Germann
’378 relied upon by the Examiner (Germann ‘378 2:45—47, (Ans. 2)) does
not evince any additional or different security features than those already
produced by Giori’s conventional offset method (Reply Br. 3). This
argument does not reveal error because, in their Reply Brief, Appellants do
not address the Examiner’s additional findings (Ans. 2—3, citing Germann
’515 1:12—28) regarding the benefits of using Orlof-offset printing to
generate security features. Moreover, even if Appellants successfully argued
that the Orlof-offset printing method yielded no additional benefits over the
conventional offset method, we emphasize that when “a structure already
known in the prior art [] is altered by the mere substitution of one element
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Application 12/089,023
for another known in the field, the combination must do more than yield a
predictable result.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007),
citing United States v. Adams, 383 U.S. 39, 50-51 (1966). “[W]hen the
question is whether a patent claiming the combination of elements of prior
art is obvious,” the answer depends on “whether the improvement is more
than the predictable use of prior art elements according to their established
functions.” KSR, 550 U.S. at 417. Here, Appellants do not argue any
unpredictable results when using the Orlof-offset printing technique and we
perceive none.
Appellants contend further that combining Giori and Germann ’378
“would not necessarily produce the alleged benefit” proffered by the
Examiner because “Germann ‘378 expressly teaches that the cited multicolor
safety background ‘is completed in the ‘intaglio printing unit’.” App. Br. 8;
Reply Br. 3. This contention is not persuasive of reversible error because it
does not establish that the multicolor safety background of Germann ’378 is
generated in its entirety in the intaglio unit. Indeed, Germann ’378 teaches
that a portion of the multicolor safety background is generated before it even
reaches the intaglio unit, because the sheets are routed first through printing
unit A, then through transport device B, and finally through intaglio printing
unite. Germann’378, Figs. 1-6,3:9-6:68. According to one embodiment,
upon being processed in unit A, the sheets “acquire a three-color offset print
on one side and a four-color collect print on the other side” thereby
producing a multicolor safety background. Id. at 6:50-58. Because printing
unit A is the region of the Germann ’378 printing machine which is
convertible between the offset and Orlof-offset printing positions (id. at
6:59-7:13), any benefits associated with using the Orlof-offset method over
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Application 12/089,023
the conventional offset method would be realized prior to the sheets being
processed in the intaglio unit.
We also agree with the Examiner (Ans. 4) that the skilled artisan
would have recognized the similarities between offset and Orlof-offset
printing technologies and, because Rasmussen teaches an offset module that
is exchangeable, the skilled artisan would have appreciated that the benefits
associated with providing an exchangeable offset module would be equally
applicable to Orlof-offset modules. We disagree with Appellants’ argument
(App. Br. 9), that the Examiner makes conclusory assertions regarding the
level of the skilled artisan. Moreover, we observe that when the Examiner
outlines the similarities between offset and Orlof-offset technologies, and
notes the benefits of exchangeability of which the skilled artisan would be
aware (e.g., to allow the module to be easily replaceable, such as if it was
broken (Ans. 4—5)), Appellants do not address the level of the skilled artisan
with any specificity. Instead, Appellants focus their arguments on what the
references fail to teach or suggest. Reply Br. 2. However, an obviousness
“analysis need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
KSR, 550 U.S. at 418. “A person of ordinary skill is also a person of
ordinary creativity, not an automaton.” Id. at 421.
Finally, Appellants’ argument that Germann ’378 teaches away from
using exchangeable modules because it contemplates the use of adjustable
cylinders (App. Br. 8) is likewise unpersuasive because Appellants have
pointed to no specific teaching within the reference that would discourage
the skilled artisan from modifying printing modules to make them
exchangeable. “The prior art’s mere disclosure of more than one alternative
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Application 12/089,023
does not constitute a teaching away from . . . alternatives because such
disclosure does not criticize, discredit, or otherwise discourage the solution
claimed.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Thus, for the reasons expressed by the Examiner and outlined above,
we sustain the rejection of claims 16—24.
SUMMARY
The Examiner’s final decision to reject claims 16—24 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)(1).
AFFIRMED
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