Ex Parte Vrotacoe et alDownload PDFPatent Trial and Appeal BoardMar 31, 201713914000 (P.T.A.B. Mar. 31, 2017) Copy Citation 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 2 Appeal 2016-002458 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 3 Appeal 2016-002458 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 4 Appeal 2016-002458 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: 5 Appeal 2016-002458 Application 13/914,000 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 6 Appeal 2016-002458 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. 7 Appeal 2016-002458 Application 13/914,000 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. 8 Appeal 2016-002458 Application 13/914,000 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 9 Copy with citationCopy as parenthetical citation