Ex Parte Bildstein et alDownload PDFPatent Trial and Appeal BoardAug 21, 201814070111 (P.T.A.B. Aug. 21, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/070,111 11/01/2013 50447 7590 08/27/2018 DUFT BORNSEN & FETTIG, LLP 1526 SPRUCE STREET SUITE 302 BOULDER, CO 80302 FIRST NAMED INVENTOR Carl Bildstein 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 4-100_FN201306423 4931 EXAMINER MCCULLOUGH, MICHAEL C ART UNIT PAPER NUMBER 3654 NOTIFICATION DATE DELIVERY MODE 08/27/2018 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): docketing@dbflaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CARL BILDSTEIN, STUART BOLAND, SCOTT JOHNSON, and CASEY WALKER Appeal2017-005713 Application 14/070, 111 Technology Center 3600 Before LINDA E. HORNER, MICHELLE R. OSINSKI, and NATHAN A. ENGELS, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Carl Bildstein et al. ("Appellants") 1 appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 Appellants identify the real party in interest as Ricoh Company Ltd. Appeal Br. 3. Appeal2017-005713 Application 14/070, 111 THE CLAIMED SUBJECT MATTER Claims 1, 15, and 19 are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter on appeal. 1. An apparatus comprising: a steering frame for a continuous-forms printing system, compnsmg: a first roller oriented to tension a web of continuous-forms print media as the web proceeds through the steering frame; a second roller oriented to tension the web as the web proceeds through the steering frame; a first actuator configured to adjust a lateral position of the web by pivoting the first and second roller about a first axis that is perpendicular to a direction of travel of the web between the rollers and is further perpendicular to an axis of rotation about which the first roller rotates as the web proceeds; and a second actuator configured to adjust a direction of the web in-plane with a surface of the web by pivoting the second roller about a second axis that is parallel with the first axis. EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Blanding Burke Fuchs Pagilla us 5,019,864 us 6,164,201 US 7,590,378 B2 US 8,554,354 Bl THE REJECTIONS May 28, 1991 Dec. 26, 2000 Sept. 15, 2009 Oct. 8, 2013 I. Claims 1---6, 15, 19, and 20 stand rejected under 35 U.S.C. § 103 as unpatentable over Fuchs and Pagilla. Final Act. 2-3, 5-8. 2 Appeal2017-005713 Application 14/070, 111 II. Claims 7-14 stand rejected under 35 U.S.C. § 103 as unpatentable over Fuchs, Pagilla, and Burke. Id. at 3-5. III. Claims 16-18 stand rejected under 35 U.S.C. § 103 as unpatentable over Fuchs, Pagilla, and Blanding. Id. at 6. OPINION Rejection I Appellants argue claims 1-6, 15, 19, and 20 as a group. Appeal Br. 5-15. We select claim 1 as the representative claim, and claims 2---6, 15, 19, and 20 stand or fall therewith. 37 C.F.R. § 4I.37(c)(l)(iv). The Examiner finds that Fuchs discloses most of the limitations of independent claim 1, except for "a second actuator configured to adjust a direction of the web in-plane with a surface of the web by pivoting the second roller about a second axis that is parallel with the first axis [ about which the first and second rollers are pivoted]," as claimed. Final Act. 2-3. The Examiner finds that Pagilla discloses "a similar device that includes a second actuator ... configured to adjust a direction of the web in-plane with a surface of the web by pivoting a second roller (102) about a second axis (104) that is perpendicular to a direction ... of travel of the web between the rollers (402 and 102) and is further perpendicular to an axis of rotation ... about which the first roller (402) rotates as the web proceeds." Id. at 3 (citing Pagilla 3:40-42, 4:19-27, Abstr., Figs. 4A, 14, and 15). The Examiner concludes that it would have been obvious "to modify Fuchs ... by utilizing a second actuator, as disclosed by Pagilla ... , for the purpose of adaptively guiding a web." Id. As to "how or why to make the pivot axes parallel," the Examiner finds that "to include the second actuator of Pagilla for rotating the second roller of Fuchs would arrive at parallel 3 Appeal2017-005713 Application 14/070, 111 pivot axes." Ans. 6. The Examiner further determines that including a second actuator for pivoting the second roller of Fuchs has "an additional benefit [that] would be a reduction in size." Id; see also id. at 4--5 ("[B]y combining the frames[,] the footprint of the machine can be reduced (reduction in size) as compared to having steering frames arranged upstream/downstream of each other."). Appellants argue that a steering frame that utilizes a first axis to pivot both of its rollers and a parallel second axis to pivot one of its rollers "is absent from each of the cited references." Appeal Br. 7; see also id. at 8 ( emphasis omitted) ("Fuchs does not describe a frame that pivots different combinations of rollers about different parallel axes."), 9 (emphasis omitted) ("None of Pagilla's various types of guides use more than one pivot axis, and none of these types of guides pivot different combinations of rollers about different parallel axes."). This argument is unpersuasive because it attacks the references individually, and is not responsive to the rejection presented. "Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413,425 (CCPA 1981)). Here, as discussed above, the Examiner finds that Fuchs teaches a steering frame that utilizes a first axis to pivot both of its rollers, but the Examiner acknowledges that Fuchs fails to teach a parallel second axis to pivot only one of the same rollers. Final Act. 3. The Examiner relies on Pagi11a for teaching pivoting one of two rollers and determines that it would have been obvious to modify Fuchs to include a second actuator that pivots one of the two rollers. id. In other words, the Examiner's rejection relies on a 4 Appeal2017-005713 Application 14/070, 111 combination of prior aii disclosures rather than one reference alone. Appellants' argument that none of the cited references teaches the disputed limitation (see Appeal Br. 7) does not address the Examiner's findings and reasoning for the conclusion of obviousness presented in the rejection. Appellants argue that "[t]he cited references do not explain why a parallel axis frame would be beneficial or how to implement one. Appeal Br. 7; see also id. at 9 ("None of the cited references describe a benefit to pivoting two rollers of a frame via one axis and pivoting one of those rollers via an entirely different, parallel axis of the same steering frame."). Although the reason to combine the references identified by the Examiner may differ from that which influenced the inventors, that does not preclude a determination of obviousness. See In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (affirming an obviousness rejection, stating that "it is not necessary in order to establish a prirna facie case of obviousness ... that there be a suggestion or expectation from the prior art that the claimed [invention] will have the same or a similar utility as one newly discovered by applicant"). Here, the Examiner has reasoned that one of ordinary skill in the art would have been led to modify Fuchs so as to include a second actuator that is capable of pivoting just one of the rollers for purposes of adaptively guiding a web and allowing for a reduction in size. Ans. 6. That Fuchs and Pagilla fail to explicitly state that a parallel axis frame is beneficial for the same reasons as Appellants' (i.e., "to account for both positional and angular shifts in a web of print media") (Spec. ,i- 34) is not an indication of error in the Examiner's reasoning. Appellants argue that one of ordinary skill in the art would not have been led to pivot different combinations of rollers about different axes 5 Appeal2017-005713 Application 14/070, 111 because "neither reference" discusses this combination of features. Appeal Br. 9. More particularly, Appellants argue that "Pagilla never models a guide that has multiple pivot axes" (id. at 10 (emphasis omitted)) and "[g]iven that there is no reference model provided in Pagilla for ... the frame of Fuchs ... , the adaptive web guiding techniques of Pagilla could not be used on a parallel axis frame." ld. Appellants assert that "web dynamics for a parallel-axis frame cannot be mTived at by simply plugging the results of one model of Pagilla into another model" (id.) and one of ordinary skill in the art would not "be able to use Pagilla' s teachings for adaptive web control, because Pagilla cannot model the dynamics of a parallel axis frame" (id. at 11). \Ve are not persuaded by .Appellants' arguments because obviousness does not require a bodily incorporation of Pagilla's model into Fuchs's frame. In re Keller, 642 F.2d 413,425 (CCPA 1981) (citations omitted) ('The test for obviousness is not whether the features of a secondarv . ~ reference may be bodily incorporated into the stlucture of the prirnary reference .... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art."); In re Nievelt, 482 F .2d 965, 968 (CCP A 1973) ("Combining the teachings of references does not involve an ability to combine their specific structures."). Here, the Examiner relies on Pagilla for its teachings regarding a steering frame that utilizes an axis of rotation to pivot one of two rollers. Although Pagilla lacks a steering frame that utilizes another axis of rotation to pivot both rollers at once and some adaptation will be required in modifying the frame of Fuchs, Appellants have not provided any factual evidence or persuasive technical reasoning to show that the Examiner's proposed 6 Appeal2017-005713 Application 14/070, 111 modification of Fuchs's steering frame that utilizes an actuator to pivot both of its rollers along a first axis of rotation with Pagilla's teaching of utilizing an axis of rotation to pivot one of two rollers would have been beyond the level of ordinary skill in the art or unpredictable to a person of ordinary skill in the art. See KSR int 'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) ("A person of ordinary skill is also a person of ordinary creativity, not an automaton."); see also Ans. 4 ("It is the Examiner's position that modeling web dynamics for a guide with parallel pivot axes is within the scope of one of ordinary skill in the art . . . . The original disclosure does not provide a detailed analysis or equations on modeling a guide with parallel pivot ") axes .. Appellants also argue that "[c]ombining Pagilla with the guide of Fuchs to create a parallel axis guide would ... render Pagilla unsuited for its intended purpose of providing adaptive web control" "because Pagilla cannot model the dynamics of a parallel axis frame." Appeal Br. 11. We do not find this argurnent persuasive in that the Examiner is not modifying Pagilla, but is modifying Fuchs. The rekvant inquiry is whether Fuchs, not Pagilla, is rendered unsuitable for its intended purpose. In any event, even if one of ordinary skill in the art would not be able to use Pagilla's exact teachings for adaptive web control for modeling the dynamics of a parallel axis frame, Appellants have not persuasively explained that it would be beyond the level of ordinary skill to determine appropriate modeling for a parallel axis frame. To the extent Appellants are suggesting that Pagilla teaches away from a parallel axis frame by the use of "chaining multiple different types of frames together," we note that prior art does not teach away from claimed 7 Appeal2017-005713 Application 14/070, 111 subject matter merely by disclosing a different solution unless the prior art also criticizes, discredits, or otherwise discourages the solution claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Here, Appellants do not point to, nor do we independently find, any disclosure in Pagma that criticizes, discredits, or otherwise discourages adaptive web control with a parallel axis fiame. Appellants also argue that "Fuchs expresses no need for a steering frame that pivots a single roller about one axis and also pivots both rollers about a parallel axis." Appeal Br. 8; see also id. at 11 ("Fuchs does not discuss any benefit to be had by independently pivoting a single roller about an entirely new pivot axis."). AppeHants further argue that "neither Fuchs nor Pagilla describe size as being an issue that needs addressing." Reply Br. 3. Appellants' lines of argument imply that because Fuchs does not indicate any defects or disadvantages of its steering frame that pivots both rollers, there would be no reason whv one of ordinary skill in the art would have v ~ been led to modify Fuchs. \Ve find these arguments unpersuasive because it is not necessary for a determination of obviousness that the reference to be modified recognize or acknowledge a deficiency with its own design in order to provide a motivation to modify or improve it See KSR, 550 U.S. at 417 ("[l]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill."). AppeHants argue that "Fuchs already proposes frames that achieve the purposes of controlling web position and direction." Appeal Br. 11 ( citing Fuchs 8:63----66 (web position), 11: 1----4 (web direction)). According to 8 Appeal2017-005713 Application 14/070, 111 Appellants, "further complicating Fuchs' frame to implement an additional pivot axis for a single roller would substantially increase cost and complexity without providing any benefit." Id. Appellants' argument is unpersuasive in that the Examiner has identified the benefit of a reduction in size by combining frames, and Appellants do not persuasively explain why an increase in cost and complexity resulting from combining a rotating frame that rotates two rollers (Fuchs 3:8----12) with a device that rotates one roller (id. at 10:57----60, 10:66----11:7, Fig. 14; Pagilla 4:19----27, Fig. 4A) would necessarily have dissuaded one of ordinary skill in the art from modifying Fuchs as proposed by the Examiner. Our reviewing court has recognized that a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate any or all reasons to combine teachings. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (explaining that if there are tradeoffs involved regarding features, such things do not necessarily prevent the proposed combination); Winner Int'! Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) ("The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another."). Appellants assert that "neither reference discusses pivoting different combinations of rollers about different axes" and so one of ordinary skill in the art would not have been led to implement such a combination of features. Id. at 9 (emphasis omitted). According to Appellants, "the present combination of references has been subject to impermissible hindsight." Id. at 12. Appellants' argument is unavailing because Appellants do not 9 Appeal2017-005713 Application 14/070, 111 persuasively identify any flaw in the Examiner's reasoning or point to any knowledge relied on by the Examiner that was gleaned only from Appellants' disclosure and that was not otherwise within the level of ordinary skill in the art at the time of the invention. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) ("Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant's disclosure, such a reconstruction is proper."). For the foregoing reasons, we do not find that the Examiner erred in concluding that the subject matter of independent claim 1 is rendered obvious by Fuchs and Pagilla. We sustain the rejection of claim 1, and claims 2---6, 15, 19, and 20 falling therewith, under 35 U.S.C. § 103(a) as unpatentable over Fuchs and Pagilla. R(jection ll In contesting the rejection of dependent claims 7-14, Appellants rely on the same arguments and reasoning we found unpersuasive in connection with independent claim 1. Appeal Br. 15. Accordingly, for the same reasons discussed above in connection with the rejection of claim 1, we also sustain the rejection of claims 7----14 under 35 U.S.C. § 103 as unpatentable over Fuchs, Pagilla, and Burke. Rejection III In contesting the rejection of dependent claims 16-18, Appellants rely on the same arguments and reasoning we found unpersuasive in connection with independent claim 1. Appeal Br. 15. Accordingly, for the same 10 Appeal2017-005713 Application 14/070, 111 reasons discussed above in connection with the rejection of claim 1, we also sustain the rejection of claims 16----18 under 35 U.S.C. § 103 as unpatentable over Fuchs, Pagilla, and Blanding. DECISION The Examiner's decision to reject claims 1--6, 15, 19, and 20 under 35 U.S.C. § 103 as unpatentable over Fuchs and Pagilla is affirmed. The Examiner's decision to reject claims 7-14 under 35 U.S.C. § 103 as unpatentable over Fuchs, Pagilla, and Burke is affirmed. The Examiner's decision to reject claims 16-18 under 35 U.S.C. § 103 as unpatentable over Fuchs, Pagilla, and Blanding 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). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 11 Copy with citationCopy as parenthetical citation