Ex Parte Beier et al

Patent Trial and Appeal Board

Jan 31, 2014

11114282 (P.T.A.B. Jan. 31, 2014)

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.
11/114,282 04/26/2005 Bernard Beier 600.1324 1836
23280 7590 01/31/2014
Davidson, Davidson & Kappel, LLC
485 7th Avenue
14th Floor
New York, NY 10018
EXAMINER
SIMMONS, JENNIFER E
ART UNIT PAPER NUMBER
2854
MAIL DATE DELIVERY MODE
01/31/2014 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 BERNARD BEIER,
UWE ERNST, and HEINER PITZ
____________

Appeal 2011-011518
Application 11/114,282
Technology Center 2800
____________

Before EDWARD C. KIMLIN, ADRIENE LEPIANE HANLON, and
PETER F. KRATZ, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 1-7, 9, and 11-18.
We have jurisdiction under 35 U.S.C. § 6(b). Claim 1 is illustrative:
1. A device for supplying radiant energy onto a printing substrate
traveling in path through a printing press in a transport direction, the printing
press including a printing unit and at least one printing nip in the printing
unit, the printing substrate including inked portion, the device comprising:
at least one radiant energy source emitting light on the printing
substrate traveling in the path through the printing press in the transport
direction downstream from the at least one printing nip in the printing unit,
the light being emitted over a width of the inked portion of the printing
substrate in a direction transverse to the transport direction so that a
Appeal 2011-011518
Application 11/114,282

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difference between a lowest value and a highest value in an intensity of the
light is less than 15% in the direction transverse to the transport direction;
and
an optical system ensuring that the light emitted by the at least one
energy source is substantially homogenous;
wherein within a depth of focus of about 1 to 3 mm of the optical
system, a power density does not vary more than 15%;
wherein the light impinges on the printing substrate at a position in the
path through the printing press and the position is selected such that at the
position, the printing substrate moves in a substantially filter-free manner
with respect to a propagation direction of the light so the printing substrate is
maintained at a focal distance of the at least one radiant energy source.

The Examiner relies upon the following references as evidence of
obviousness:
Dewey et al. (Dewey) 5,558,666 Sep. 24, 1996
King et al. (King) 5,768,017 June 16, 1998
Tanaka 6,393,042 B1 May 21, 2002
Pitz US 2003/0075063 A1 Apr. 24, 2003
Ishikawa et al. (Ishikawa) US 2003/0214571 A1 Nov. 20, 2003

Appellants' claimed invention is directed to a device for supplying
radiant energy onto a printing substrate which travels through a printing
press in a transport direction. Light is emitted from a radiant energy source
over a width of the inked portion of the substrate in a direction transverse to
the transport direction such that a difference between the lowest and highest
values in intensity of the light is less than 15% in the direction transverse to
the transport direction. Also, the device comprises an optical system which
ensures the light emitted by the energy source is substantially homogenous
wherein within a depth of focus of about 1 to 3 mm of the optical system a
power density does not vary more than 15%.
Appeal 2011-011518
Application 11/114,282

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Appealed claims 1, 2, 4-7, 9, and 11-18 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Pitz in view of Ishikawa and
Dewey. Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the stated combination of references further in view of
King.
We have thoroughly reviewed the respective positions advanced by
Appellants and the Examiner. In so doing, we agree with Appellants that the
applied prior art does not support the legal conclusion of obviousness for the
claimed subject matter. Accordingly, we will not sustain the Examiner’s
rejections.
There is no dispute that Pitz, like Appellants, discloses a device for
supplying radiant energy onto a printing substrate. However, as
acknowledged by the Examiner, Pitz does not disclose the claimed features
regarding the degree of intensity of the emitting light in a direction
transverse to the transport direction, and an optical system providing
substantially homogenous light wherein within a depth of focus of about 1 to
3 mm the power density does not vary more than 15%. The Examiner
proposes to modify the system of Pitz to include the exposure systems of
Ishikawa and Dewey.
We fully appreciate the considerable effort expended by the Examiner
in support of the conclusion of obviousness. However, inasmuch as neither
Ishikawa nor Dewey is directed to a printing system of the type disclosed by
Pitz, we agree with Appellants that the exposure system of Ishikawa and the
dermatological surgical device of Dewey would not have suggested the
proposed modifications of Pitz to one of ordinary skill in the art. In our
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Application 11/114,282

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view, the Examiner’s rationale is based more upon what could be done by
one of ordinary skill in the art rather than what would have been suggested
by the applied prior art. It is well settled that the evidence in support of the
conclusion of obviousness must emanate from the prior art and not the
applicants’ disclosure. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984).
In conclusion, based on the foregoing, we are constrained to reverse
the Examiner’s rejections.
REVERSED

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