Ex Parte Palla

Patent Trial and Appeal BoardNov 19, 2012

12041953 (P.T.A.B. Nov. 19, 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. 12/041,953 03/04/2008 Daniel A. Palla 04981-00637-US 2441 23416 7590 11/19/2012 CONNOLLY BOVE LODGE & HUTZ, LLP P O BOX 2207 WILMINGTON, DE 19899 EXAMINER WYROZEBSKI LEE, KATARZYNA I ART UNIT PAPER NUMBER 1746 MAIL DATE DELIVERY MODE 11/19/2012 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 APPEALS ____________ Ex parte DANIEL A. PALLA ____________ Appeal 2011-011356 Application 12/041,953 Technology Center 1700 ____________ Before BEVERLY A. FRANKLIN, LINDA M. GAUDETTE, and KAREN M. HASTINGS, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-011356 Application 12/041,953 2 Appellant appeals under 35 U.S.C. § 134 from the Examiner’s rejection of claims 1 and 2 under 35 U.S.C. § 103(a) as obvious over the combined prior art of Masurat1, and Johnson2.3 (Ans.4) The sole independent claim 1 is representative of the claimed subject matter: 1. A glue application detection system comprising a continuous paper substrate moving in a downstream direction along a path of travel, a glue applicator for continuously applying glue to selected portions of an upper surface of the paper substrate, a first direct contact capacitive sensor under the paper substrate upstream of the glue applicator and in direct contact with an under surface of the substrate constructed and arranged to produce a first signal representative of the dielectric constant of the paper substrate, a second direct contact capacitive sensor under the paper substrate downstream of the glue applicator and in direct contact with an under surface of the substrate with glue thereon constructed and arranged to produce a second signal representative of the dielectric constant of the paper substrate with glue thereon, and a control for determining differences between the first and second signals thereby indicating that glue has been applied to the paper substrate. ANALYSIS Upon consideration of the evidence on this record and each of Appellant’s contentions, we find that the preponderance of evidence on this record supports the Examiner’s conclusion that the subject matter of Appellant’s claims 1 and 2 is unpatentable. (Ans. generally). In assessing whether a claim to a combination of prior art elements would have been obvious, the question to be asked is whether the improvement of the claim is more than the predictable use of prior art 1 US 5,170,128 patented December 8, 1992. 2 US 4,389,969 patented June 28, 1983. 3 The Examiner withdrew the § 103 rejection based on Masurat and Taylor (Ans. 3). Appeal 2011-011356 Application 12/041,953 3 elements or steps according to their established functions. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). “[T]he 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.” Id. at 418. Appellant’s main arguments that Masurat fails to teach a capacitive sensor prior to the glue applicator (Br. 5; Reply Br. 2), and that Johnson does not cure this deficiency because he teaches a photodetector to sense the presence of a box blank (Br. 6; Reply Br. 3) are unavailing because they fail to consider the prior art as a whole, including the reasons set forth by the Examiner (Ans. 6, 7). Notably, Masurat exemplifies that capacitive sensors are known to detect the presence or absence of glue due to the dielectric constant (e.g., Masurat col. 3, ll. 41-61; col. 4, ll. 33-38). It is also known that the successful application of sufficient glue is necessary for successful completion of the manufacturing process (generally Masurat and Johnson; see also Appellant’s Spec. Background of the Invention para. [003] (“Detecting the presence or absence of glue as it is applied is a preemptive measure to prevent loss of quality or product failure latter in the process.”)). Johnson exemplifies that a sensor both before and after the glue applicator can aid in determining that glue is successfully applied to a box blank (Johnson, Fig. 1). Even assuming that Appellant is correct that Johnson does not teach a capacitive sensor before the glue applicator, a preponderance of the evidence supports the Examiner’s determination that rearranging the plurality of capacitive sensors of Masurat such that at least one capacitive sensor is Appeal 2011-011356 Application 12/041,953 4 located prior to the applicator would have been prima facie obvious in order to use the known technique of capacitive sensors to determine whether glue has been successfully applied (Ans. 4, 5). Appellant has not provided any persuasive reasoning or credible evidence why one of ordinary skill in the art would not have, using no more than ordinary creativity, predictably used a known capacitive sensor as exemplified in both Masurat and Johnson both before and after a glue applicator in order to determine whether glue has been applied to the paper substrate as recited in claim 1 (id.; see generally Br.; Reply Brief). See KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Accordingly, for the reasons stated above and in the Answer, the preponderance of the evidence supports the Examiner’s rejection on appeal. DECISION The decision of the Examiner 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). ORDER AFFIRMED sld