Ex Parte Matthes et al

Patent Trial and Appeal BoardJul 31, 2013

11485655 (P.T.A.B. Jul. 31, 2013)

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. 11/485,655 07/13/2006 Wolfgang Matthes A-4366 2229 24131 7590 08/01/2013 LERNER GREENBERG STEMER LLP P O BOX 2480 HOLLYWOOD, FL 33022-2480 EXAMINER NGUYEN, PHONG H ART UNIT PAPER NUMBER 3724 MAIL DATE DELIVERY MODE 08/01/2013 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 WOLFGANG MATTHES and FALK WAGNER ____________ Appeal 2011-008516 Application 11/485,655 Technology Center 3700 ____________ Before LYNNE H. BROWNE, ANNETTE R. REIMERS and CARL M. DeFRANCO, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-008516 Application 11/485,655 2 STATEMENT OF THE CASE Wolfgang Matthes and Falk Wagner (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner’s decision to reject (1) claims 1-3 and 5- 7 under 35 U.S.C. § 102(b) as anticipated by Ito (US 4,922,773; iss. May 8, 1990); and (2) claim 8 under 35 U.S.C. § 103(a) as unpatentable over Ito and Lorenzi (US 2004/0112195 A1; pub. Jun. 17, 2004). Claim 4 has been canceled. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION Appellants’ invention “relates to a device for the three-sided trimming of products, in particular unbound books.” Spec.1, ll. 15-16; fig 1. Claim 1, the sole independent claim, is illustrative of the claimed invention and is reproduced below: 1. A device for three-sided trimming of products, comprising: a cutter lifting assembly configured to be operable in a lifting movement defining a machine cycle with a cycle duration; a plurality of cutters, including cutters for head trimming, foot trimming, and front edge trimming of the products, mountable on said cutter lifting assembly, said cutter lifting assembly having a first cutting position and a second cutting position downstream of said first cutting position in a direction of travel of the products; a transport system for transporting the products into said first cutting position, and from said first cutting position into said second cutting position within a transport period; a lateral alignment configuration movable at least on one side_in a direction perpendicular to Appeal 2011-008516 Application 11/485,655 3 said head trimming and said foot trimming cutters, for performing a pushing movement against the product, for bringing the product into a cutting position; means for at least one of initiating and terminating the pushing movement of said alignment configuration to render at least one of a time of initiation of the pushing movement and a pushing duration of the pushing movement within the cycle duration substantially independent of the lifting movement of said cutter lifting assembly. ANALYSIS Anticipation by Ito - Claims 1-3 and 5-7 Independent claim 1 recites “[a] cutter lifting assembly having a first cutting position and a second cutting position downstream of said first cutting position in a direction of travel of the products.” App. Br., Clms. App’x. The Examiner finds that Ito teaches a plurality of cutters, including cutters (12, 22, 49) for head trimming, foot trimming, and front edge trimming of the products, mountable on the cutter lifting assembly, the cutter assembly having a first cutting position (at head/bottom cutters) and a second cutting position (at front cutter) downstream of the first cutting position. Ans. 4. Additionally, the Examiner reasons that [i]t appears that the [Appellants] argue[] the timing of the trimming process which a book is moved to the first cutting position for a first trimming action and then is moved to the second cutting position for a second trimming action. However, the timing of the trimming process at the first cutting position Appeal 2011-008516 Application 11/485,655 4 and the second cutting position is not claimed. Therefore, simultaneously cutting of a book at the first cutting position and the second cutting position in Ito reads on claim 1. Ans. 6-7. Appellants contend that “Ito explicitly discloses one cutting position. Ito does not disclose that the apparatus has two cutting positions disposed apart from one another in a direction of travel of the books.” App. Br. 6; Reply Br. 3. Appellants further contend that Ito does not disclose first and second cutting positions which serve to cut all three sides of a book. It is explicit that Ito discloses one and only one cutting position where all the cutting of each book takes place. Therefore, Ito does not disclose simultaneous cutting of books in different cutting positions. Reply Br. 5. Ito teaches that “[t]his invention relates to a three-side cutting apparatus which cuts a book or the like on its top, bottom and side at the same time.” Ito, col. 1, ll. 9-11 (emphasis added). In other words, contrary to Appellants’ assertion, Ito teaches simultaneous cutting of books in different cutting positions (i.e., top/bottom and side positions). Hence, we agree with the Examiner that Ito teaches a cutter lifting assembly having a first cutting position (top/bottom cutter 10) and a second cutting position (side cutter 49) downstream of the first cutting position (top/bottom cutter 10) in a direction of travel of the products (books) (the direction of the conveyor 6; fig. 1). See Ans. 6. Independent claim 1 also recites a transport system for transporting the products “from the first cutting position into the second cutting position.” App. Br., Clms. App’x. The Examiner finds that “Ito teaches that Appeal 2011-008516 Application 11/485,655 5 the transport system 6 first moves the book 7 into the first cutting position at cutters (12, 22; Fig. 1) and then into the second cutting position at cutter (49; Fig. 1).” Ans. 6. We disagree. As discussed supra, Ito teaches that the three-side cutting apparatus cuts a book at its top, bottom and side simultaneously. Ito further teaches that once the book 7 has been cut, “cutter 49 [and] cutter unit 10 . . . return to their upper standby position. The cut book 7 is transferred to and carried out by conveyor 6.” Ito, col. 8, ll. 22-25 (emphasis added); fig. 1. Contrary to the Examiner’s findings, Ito fails to teach that conveyor (transport system) 6 “transports the products [books] from a first cutting position into a second cutting position.” Accordingly, Ito fails to teach all the limitations of independent claim 1 and its dependent claims 2, 3 and 5-7. Therefore, the Examiner’s rejection of claims 1-3 and 5-7 as anticipated by Ito cannot be sustained. Obviousness over Ito and Lorenzi - Claim 8 The Examiner’s rejection of claim 8 over Ito and Lorenzi (see Ans. 5) is based on the same unsupported findings discussed supra with respect to the disclosure of Ito. For the same reasons discussed supra, we do not sustain the Examiner’s rejection of claim 8 as unpatentable over Ito and Lorenzi. DECISION We REVERSE the decision of the Examiner as to claims 1-3 and 5-8. REVERSED Klh