Ex Parte Vrotacoe et al

Patent Trial and Appeal Board

Mar 31, 2017

13914000 (P.T.A.B. Mar. 31, 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.
13/914,000 06/10/2013 James Brian Vrotacoe 6003.1281 4284
23280 7590 04/04/2017
Davidson, Davidson & Kappel, LLC
589 8th Avenue
16th Floor
New York, NY 10018
EXAMINER
CULLER, JILL E
ART UNIT PAPER NUMBER
2854
NOTIFICATION DATE DELIVERY MODE
04/04/2017 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):
ddk @ ddkpatent .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES BRIAN VROTACOE, DANIEL PAUL GAGNE, and
MICHAEL ROBERT LEMELIN
Appeal 2016-002458
Application 13/914,000
Technology Center 2800
Before ADRIENE LEPIANE HANLON, BEVERLY A. FRANKLIN, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants request our review under 35 U.S.C. § 134 of the
Examiner’s decision rejecting claims 1—12. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
Appeal 2016-002458
Application 13/914,000
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants’ subject matter on appeal and is
set forth below:
1. A printing press comprising:
a first printing unit including a first plate cylinder, a first
blanket cylinder and an impression cylinder forming a first printing
nip with the first blanket cylinder;
a first bowed roller upstream of the first printing unit spreading
a web before the web enters the first printing nip;
a second printing unit downstream of the first printing unit
including a second plate cylinder, a second blanket cylinder and a
second impression cylinder forming a second printing nip with the
second blanket cylinder; and
a second bowed roller between the first printing unit and
the second printing unit, the second bowed roller spreading the
web before the web enters the second printing nip.
The Examiner relies on the following prior art references as evidence
of unpatentability:
1. Claims 1—10 are rejected under 35 U.S.C. § 103(a) as being obvious
over Ohta in view of Kobayashi.
Ohta
Kurihara
Kobayashi
5,285,726
5,729,878
6,829,992 B2
Feb. 15, 1994
Mar. 24, 1998
Dec. 14, 2004
THE REJECTIONS
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Application 13/914,000
2. Claims 11 and 12 are rejected under 35 U.S.C. § 103(a) as being
obvious over Ohta in view of Kobayashi, as applied to claims 1 to 10 above,
and further in view of Kurihara.
ANALYSIS
We consider certain claims (identified, infra) in this appeal, based
upon Appellants’ presented arguments. 37 C.F.R. § 41.37(c)(l)(iv) (2014).
We sustain the § 103(a) rejections advanced in this appeal based on
the findings of fact, conclusions of law, and rebuttals to arguments well
expressed by the Examiner in the Final Action and in the Answer, and add
the following for emphasis. We have thoroughly reviewed the record,
including Appellants’ Appeal Brief and Reply Brief, in making our
determinations herein.
The Examiner relies upon Ohta for teaching certain claimed elements,
but for “a second bowed roller between the first printing unit and the second
printing unit, the second bowed roller spreading the web before the web
enters the second printing nip” as required by claim 1. The Examiner relies
upon Kobayashi for teaching this aspect of the claimed subject matter (the
Examiner states that Kobayashi teaches use of a web adjustment device 100,
and that a bowed roller is a known type of web adjustment device). The
Examiner states that Kobayashi teaches it is advantageous to employ a web
adjusting device between printing units. Final Act. 2—5.
Appellants argue that Kobayashi teaches a printing press comprising:
a first printing unit including a first plate cylinder, a first blanket cylinder,
and an impression cylinder, forming a first printing nip with the first blanket
cylinder; a second printing unit downstream of the first printing
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Application 13/914,000
unit including a second plate cylinder, a second blanket cylinder, and a
second impression cylinder, forming a second printing nip with the second
blanket cylinder, and a web adjustment device, between the first printing
unit and the second printing unit for spreading the web before the web enters
the second printing nip. Appellants argue that thus Kobayashi does not
teach or show “a first bowed roller” or “a second bowed roller.” Appeal Br.
7-8.
We are unpersuaded by the aforementioned argument. The Examiner
relies upon Ohta for teaching a first bowed roller before the first printing
unit, and relies upon Kobayashi for teaching a web adjustment device
between a first and second printing unit. Appellants’ aforementioned
arguments therefore do not address squarely what the combined teachings of
Ohta in view of Kobayashi reasonably would have suggested to one of
ordinary skill in the art. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981). The Examiner made
this point on page 2 of the Answer.
Appellants also argue that Ohta teaches away from “a second bowed
roller between the first printing unit and the second printing unit, the second
bowed roller spreading the web before the web enters the second printing
nip.” Appellants state that
Ohta teaches that “[t]he enlargement of the width by a water supply
will be further enlarged by a first water supply, but is scarcely
enlarged by a further water supply. Thus, the second to the fourth
printed image is printed on the paper web W, which moves through
the printing section P2 up to P4 in sequence after travelling the length
of the printing section P1, and the image completely coincides with
the image formerly printed.” . . . Further, Ohta teaches “[i]n practicing
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Application 13/914,000
this invention, succeeding printing is done after the width of the paper
web is stabilized as it is in the first printing.”
Appeal Br. 8 (quoting Ohta, col. 3,1. 56 through col. 4,1. 11). Appellants
submit that therefore Ohta teaches away from the claimed invention because
Appellants believe that Ohta teaches that locating an expander roller
between the first printing unit and the second printing unit is useless and
unnecessary because the width of the web is already fully expanded and
stabilized. Appeal Br. 8—9. Reply Br. 2.
Appellants state that one skilled in the art would not combine the
invention of Ohta with additional bowed expanding rollers after the first
printing unit as there is no reason to try to expand the width of the web
because Ohta teaches that the width of the web is fully expanded and
stabilized as of the first printing. Appeal Br. 9. Reply Br. 2. Appellants
submit that one skilled in the art would understand that the invention of Ohta
fully expands and stabilizes the web “as it is in the first printing,” and
therefore would not waste money using additional bowed rollers after the
first printing unit in order to expand an already fully expanded web. Appeal
Br. 9—10. Reply Br. 1—4.
In response, the Examiner states that this does not rise to the level of a
teaching away, and further states that although Appellants argue that Ohta
suggests that a second bowed roller may not be necessary, this does not
actually constitute a “teaching away” from additional bowed rollers. Ans. 3.
The Examiner also states that there is no teaching that an additional bowed
roller cannot be included. Id. We agree, and note that the Court in In re
Urbanski, 809 F.3d 1237 (2016) stated:
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In cases involving mechanical device or apparatus
claims, we have held that “[i]f references taken in
combination would produce a ‘seemingly inoperative
device,’ . . . such references teach away from the
combination and thus cannot serve as predicates for a
prima facie case of obviousness.” McGinley v.
Franklin Sports, Inc., 262 F.3d 1339, 1354 (Fed. Cir.
2001) (quoting In re Sponnoble, 405 F.2d 578, 587
(CCPA 1969); see also In re Gordon, 733 F.2d 900,
902 (Fed. Cir. 1984)).
Id., at 1243.
On this record, we thus agree with the Examiner that the teachings of
Ohta discussed by Appellants do not rise to the level of a teaching away, and
we are thus unpersuaded of error in the Examiner’s conclusion that it would
have been obvious to have included additional web spreading device(s), with
the known associated capabilities that come with a web spreading device,
between respective printing units, as taught by Kobayashi, in the invention
of Ohta. We additionally add that “[a] reference may be said to teach away
when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant.” In re
Gurley, 27 F.3d 551,553 (Fed.Cir.1994). Assuming, arguendo, that Ohta
may indicate that a second roller is not needed (Appellants argue that the
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Application 13/914,000
web is already stabilized)1, we cannot agree with Appellants’ argument that
this amounts to Ohta criticizing or discrediting the use of additional bowed
rollers to the extent that Ohta teaches away because bowed rollers serve to
expand the W'eb which is a desired result in Ohta’s invention (Reply Br. 3).
Ohta teaches that the expander roller 2 can change the power extending to
the web by changing the angle 0 and the contacting position A. Ohta, col. 3,
11. 5—12. As such, adjustments would accordingly be made (within the
ordinary skill in the art) to the angle and/or contacting position of any
additional rollers as needed to maintain the objectives of Ohta. Thus, one of
ordinary skill in the art would have understood that the web adjustment
device disclosed in Kobayashi (or the second bowed roller suggested by
Koyayashi) would be useful as either a supplemental or an alternative means
for ensuring that the width of the web is maintained during Ohta’s printing
process. With regard to the costs associated with the proposed modification,
we note that it is well settled that merely because “[a] combination would
not be made by businessmen for economic reasons does not mean that
persons skilled in the art would not make the combination.” In re
Fcirrenkopf 713 F.2d 714, 718 (Fed. Cir. 1983).
Appellants also argue that it is conclusory (Appeal Br. 9) or
speculative (Reply Br. 3 4) on the part of the Examiner to state that
Kobayashi teaches that it is advantageous to employ a web adjusting device
1 Attorney argument in a brief does not take the place of the factual
evidence required to rebut a prima facie case of obviousness. In re Geisler,
116 F.3d 1465, 1470 (Fed. Cir. 1997); In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974). While Appellants do discuss certain teachings in Ohta in an
effort to support their position, it cannot be said with certainty that another
web spreading device would not be useful in Ohta.
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between printing units in the device of Ohta. Implicit in the Examiner’s
position, however, is that inclusion of an additional web spreading device
carries with it the known associated capabilities that come with a web
spreading device, e.g., the ability to affect the web as needed.
With regard to the specific wrap angle recited in claims 2 and 3
(argued on pages 10-11 of the Appeal Brief), we are unpersuaded by
Appellants’ arguments for the reason provided by the Examiner on pages 4~
5 of the Answer.
With regard to the recited distance between the respective bowed
rollers recited in claim 4 (argued on pages 11—12 of the Appeal Brief), we
are unpersuaded by Appellants’ arguments for the reason provided by the
Examiner on page 5 of the Answer.
With regard to the third bowed roller recited in claim 5 (argued on
pages 12—13 of the Appeal Brief), we are unpersuaded by Appellants’
arguments for the reason provided by the Examiner on page 5 of the
Answer.
In view of the above, we affirm Rejection 1. Appellants do not
separately argue the claims rejected in Rejection 2, so we also affirm
Rejection 2 for the same reasons.
DECISION
Each rejection is affirmed.
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TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal maybe extended. See 37 C.F.R. § 1.136(a).
ORDER
AFFIRMED
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