Ex Parte Bildstein et al

Patent Trial and Appeal Board

Aug 21, 2018

14070111 (P.T.A.B. Aug. 21, 2018)

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.
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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
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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
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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
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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
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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
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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
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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
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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
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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
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