Ex Parte Berti et alDownload PDFPatent Trial and Appeal BoardSep 9, 201310661263 (P.T.A.B. Sep. 9, 2013) 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. 10/661,263 09/12/2003 Christopher Berti 600.1289 7788 23280 7590 09/09/2013 Davidson, Davidson & Kappel, LLC 485 7th Avenue 14th Floor New York, NY 10018 EXAMINER DICKERSON, CHAD S ART UNIT PAPER NUMBER 2672 MAIL DATE DELIVERY MODE 09/09/2013 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 CHRISTOPHER BERTI, BERNHARD BUCK, HOLGER FAULHAMMER, MICHAEL KRUEGER, JUERGEN MAASS, SVEN MADER, STEFAN MAIER, KAI OSKAR MUELLER, MATTHIAS NOELL, MARTIN RIESE, and BERNHARD ROSKOSCH ____________________ Appeal 2011-002029 Application 10/661,263 Technology Center 2600 ____________________ Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and CARLA M. KRIVAK, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-002029 Application 10/661,263 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a non-final rejection of claims 1-25. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. INVENTION Appellants’ claimed invention is generally related to "a method and a device for determining the optimum procedure for a job change on a printing-material processing machine with at least one control computer." (Spec. ¶[0002]). Independent claim 1, reproduced below, is representative of the subject matter on appeal. 1. A method for determining an optimum procedure for a job change between a first machine job and a subsequent machine job on a printing-material processing machine having at least one control computer, the method comprising: comparing first data of the first machine job to second data of the subsequent machine job using the at least one control computer, and establishing an order of adjustments and maintenance operations to be carried out during the job change between the first machine job and the subsequent machine job as a function of the comparing step; wherein the adjustments and maintenance operations to be carried out during the job change are performed on at least two different components of the printing press to prepare the at least two components for printing the subsequent machine job. Appeal 2011-002029 Application 10/661,263 3 REFERENCES Tada US 4,572,652 Feb. 25, 1986 Löffler US 5,010,820 Apr. 30, 1991 Pfeiffer US 5,447,102 Sep. 5, 1995 Zingher US 5,930,468 Jul. 27, 1999 Bauer US 2001/0039461 A1 Nov. 8, 2001 Yacoub US 2003/0011805 A1 Jan. 16, 2003 Rai US 2003/0149747 A1 Aug. 7, 2003 Silvester US 2003/0161292 A1 Aug. 28, 2003 Jackson US 7,064,848 B2 Jun. 20, 2006 (Filed Dec. 12, 2000) REJECTIONS Claims 3-6 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Applicants regard as the invention. Claims 1, 2, 8, 13, 17-22, and 25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Zingher and Löffler. Claim 3 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Zingher, Löffler, and Rai. Claim 4 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Zingher, Löffler, and Yacoub. Claims 5, 6, 9 and 12 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Zingher, Löffler, and Bauer. Claims 7 and 10 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Zingher, Löffler, Bauer, and Tada. Appeal 2011-002029 Application 10/661,263 4 Claim 11 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Zingher, Löffler, Bauer, and Silvester. Claims 14, 15, 23, and 24 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Zingher, Löffler, and Pfeiffer. Claim 16 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Zingher, Löffler, Bauer, and Jackson. ANALYSIS 35 U.S.C. § 112, second paragraph The Examiner rejected dependent claims 3-6 as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellants regard as their invention with respect to "a determination of the optimum procedure" and "the order of processes." (Ans. 5). We note that in an Office Action mailed on December 29, 2009 (“Office Action”), the Examiner previously rejected claims 1-7 and 13-25 as indefinite. (Office Action, 3). Appellants amended the claim language in an attempt to overcome the rejection prior to filing the Appeal Brief. The Examiner modified the rejection in the Examiner's Answer. Appellants filed a Reply Brief which was limited to addressing only the obviousness rejection. (Appellants did not file a petition within two months of the mailing of the Examiner's Answer disputing the new/modified ground of rejection.) Therefore, Appellants have not addressed the Examiner's rejection. Because arguments not made are waived, we sustain the Examiner’s rejection of claims 3-6 under 35 U.S.C. § 112, second paragraph. Appeal 2011-002029 Application 10/661,263 5 35 U.S.C. § 103 Appellants contend neither Zingher nor Löffler discloses the step of "establishing an order of adjustments and maintenance operations to be carried out during the job change between the first machine job and the subsequent machine job as a function of the comparing step" as recited in claim 1. (App. Br. 10; Reply Br. 2). The Examiner maintains Zingher teaches this limitation. (Ans. 41 citing Zingher, column 3). The Examiner interprets the claim language, as follows: The different steps that can happen between jobs, or during a job change, can be changing an ink profile, changing an inking unit film thickness gradient, or both. . . . These operations are considered as adjustment and maintenance operations. A single or several steps can happen when transitioning from one job to another. The number of steps chosen between jobs creates an arrangement, or order, that can be considered as an order of adjustments and maintenance operations since the system may choose to only adjust the ink profile, to adjust the inking unit film thickness gradient, or both for the transitioning from one job to the next. (Ans. 41) (internal footnote omitted). While we agree with the Examiner that the various combinations of steps may take place between jobs and Zingher teaches and fairly suggests ordering jobs to minimize changeover, we agree with Appellants that Zingher does not establish "an order of adjustments and maintenance operations to be carried out during the job change between the first machine job and the subsequent machine job as a function of the comparing step," as recited in claim 1. (App. Br. 10; Reply Br. 2-3). The Examiner further maintains that "if the Zingher reference does not arrange a step or steps in order to transition between jobs, then the system would not work as efficient." (Ans. 42). Appellants contend the Appeal 2011-002029 Application 10/661,263 6 Examiner has not addressed the specific language of independent claim 1 regarding "an order" of changing the ink profile. Appellants further contend the Examiner's rejection based on Zingher is based upon speculation and conjecture. (App. Br. 10-11; Reply Br. 2). We agree with Appellants. The Examiner further maintains if Appellants' arguments are found persuasive with respect to Zingher, the "Examiner believes that the Löffler [] discloses the feature of the 'establishing' step based on comparing print jobs as well." (Ans. 42; Löffler, cols. 12 and 13). We note the Examiner's proffered reliance upon Löffler's columns 12 and 13 is not stated in the grounds of the rejection, and the Examiner does not further detail how the teachings of Löffler teach or suggest the "establishing . . . " limitation. In the statement of the rejection, the Examiner has merely relied upon the teachings of Löffler at columns 4 and 5 for the "wherein . . ." limitation. (Ans. 8-9). From our review of Löffler's columns 12 and 13, we do not agree with the Examiner’s conclusion that Löffler "illustrates the disclosed feature of setting an arrangement or order of adjustment and maintenance operations based on the condition chosen or difference in inking profiles between jobs." (Ans. 42). We find there is teaching or suggestion of establishing an order in the identified teachings of Löffler. Again, we find the Examiner's rejection to be based upon speculation and conjecture. Such conjecture would require us to resort to speculation, unfounded assumptions, or hindsight reconstruction. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). Appellants contend Löffler does not disclose the claimed "establishing an order of adjustments and maintenance operations," as recited in claim 1. (App. Br. 10). We agree with Appellants. Therefore, we cannot agree with Appeal 2011-002029 Application 10/661,263 7 the Examiner's conclusion that the combination of Zingher and Löffler teaches or fairly suggests the invention recited in independent claim 1. For the above reasons, we do not sustain the rejection of independent claim 1, independent claim 13 which contains similar limitations, and dependent claims 2, 8, 13, 17-22, and 25. With respect to dependent claims 3-7, 9-12, 14-16, 23, and 24, the Examiner has not shown how the teachings of Rai, Yacoub, Bauer, Tada, Silvester, Pfeiffer, or Jackson cures the deficiencies noted above with respect to independent claims 1 and 13. Therefore, we do not sustain the obviousness rejection of claims 3-7, 9-12, 14-16, 23, and 24. CONCLUSION The Examiner did not err in rejecting claims 3-6 under 35 U.S.C. § 112, second paragraph. The Examiner erred in rejecting claims 1-25 under 35 U.S.C. § 103(a). DECISION The Examiner’s decision rejecting claims 3-6 is affirmed. The Examiner’s decision rejecting claims 1-25 is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART llw Copy with citationCopy as parenthetical citation