Ex Parte Bock

Board of Patent Appeals and Interferences

Jul 2, 2008

10307447 (B.P.A.I. Jul. 2, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KARL JOSEF BOCK
____________

Appeal 2008-0001
Application 10/307,447
Technology Center 3600
____________

Decided: July 2, 2008
____________

Before TERRY J. OWENS, JOSEPH A. FISCHETTI, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1-45. Oral arguments were presented on June 12, 2008.
We have jurisdiction under 35 U.S.C. § 6(b) (2002). We AFFIRM.

Appeal 2008-0001
Application 10/307,447

THE INVENTION
The Appellant’s claimed invention is directed to a winding machine
for a material web. The process provides that the reel spool and/or reel drum
are traversed, preferably axially, with respect to the direction of the fed
material web. The reel drum and wound reel formed on the reel spool are
held in contact with one another during the winding procedure.
(Specification, 3:5-7 and 3:21-24). Claim 1, reproduced below, is
representative of the subject matter of appeal.
1. A process for winding a material web onto a reel spool to produce a
wound reel, the process comprising:
producing the material web;
online smoothing of the produced material web;
guiding the smoothed material web over a reel drum and through a nip
formed between the reel drum and one of the reel spool and the wound reel;
reeling the smoothed material web while transversely moving at least
one of the reel drum and the one of the reel spool and the wound reel relative
to a web travel direction; and
maintaining contact between the reel drum and the one of the reel
spool and the wound reel during the reeling of the smoothed material web.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Flinsch (as translated) DE 282 Jul. 6, 1877
Beisswanger US 6,311,922 B1 Nov. 6, 2001
Böck US 6,536,705 B1 Mar. 25, 2003

2
Appeal 2008-0001
Application 10/307,447

The following rejections are before us for review1:
1. Claims 1-6, 13-27, and 32-45 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Appellant’s Admitted Prior Art and DE 282.
2. Claims 1-45 are rejected under the judicially created doctrine of
obviousness-type double patenting as unpatentable over claims 1-16 of US
Patent 6,311,922 in view of Appellant’s Admitted Prior Art.

FINDINGS OF FACT
We find the following enumerated findings of fact are supported at
least by a preponderance of the evidence2:
1. Webster’s New World Dictionary, Third College Edition, (1988) lists
the primary definition of “transverse” as: lying, situated, placed, etc. across;
crossing from side to side: opposed to LONGITUDINAL (sense 2).
2. DE 282 discloses that the reels i and h are maintained in contact
during the reeling of a web. The upper part o-p of the fork element is guided
in the bar q which can be displaced or shifted. Figures 2 and 3 both show
the reels i and h maintained in contact. As the hoisting sheave t shifts the
bar q sidewise the position of the elements indicated at Figure 2 takes place
(in which the reels are maintained in contact). When a further rotation of the
axis s through 180 degrees takes place the opposite position takes place

1 We note that Examiner’s Answer has not maintained all the rejections that
were made in the Final Rejection mailed August 11, 2004. As those
rejections were not presented in the Answer they are considered withdrawn.
2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
3
Appeal 2008-0001
Application 10/307,447

shown by the dotted lines in Figure 3 (where contact between the reels is
also maintained). Reel i moves from side to side or transversely across reel
h (Figures 2-3).
3. DE 282 discloses that air is squeezed out of the material stock as it is
stretched from right to left. (See DE 282 translation, page 3).
4. DE 282 discloses a lower roller h which rolls and is therefore
moveable about its axis. The longitudinal tension of the web material is
considered to be essentially equal in order for the web to remain on the
device.

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18,
(1966). See also KSR, 127 S.Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)

4
Appeal 2008-0001
Application 10/307,447

ANALYSIS
With regards to claims 1, 21, 40, and 44-45 the Appellant argues that
there is “no language in DE 282 that states that reel i is always in contact
with the drum h by the force of gravity” (Reply Br. 2-3). The Appellant
further argues that in DE 282 “the drawings do not necessarily show that the
reel i is always maintained in contact with the drum h by the force of
gravity” (Reply Br. 3). The Appellant also argues with respect to claims 1,
21, and 44 that DE ‘282 does not show transverse movement because rod o-
p moves in an actuate path. In contrast the Examiner argues that since the
reel rests on the drum h by force of gravity, that contact is always
maintained between the reel i and drum h (Ans. 7). The Examiner also
argues that the DE 282 shows transverse movement of the reel i.
We disagree with the Appellant. The independent claims 1, 21, 40,
and 44-45 all require “maintaining contact between the reel drum and one of
the reel spool and the wound reel during reeling” or similar language. We
find that the disclosure of DE 282 discloses that contact is maintained
between rolls i and h (FF 2) as shown in Figures 2 and 3. The DE 282
reference describes how bar q is shifted to produce transverse movement of
reel i (FF 2). Claims 1, 21, and 44 also include limitations drawn to
“transversely moving at least one of the reel drum and the one of the reel
spool” or similar language. Giving the term “transverse” (FF 1) its broadest
reasonable interpretation in view of the Specification we find the reel i to
“transversely move” across reel h since it moves across reel h from side to
side (FF 2). The Specification does not provide a definition of a
“transverse” that is inconsistent with our definition, and we decline to read a
5
Appeal 2008-0001
Application 10/307,447

specific embodiment of a “transverse” movement from the detailed
description into the claims. The modification of the Appellant’s Admitted
Prior Art to include transverse movement of a spool as taught by DE 282 is
considered an obvious combination for the benefits of preventing folds and
creases, pressing air out of the web, and tightly rolling the web (DE 282,
p. 3).
For the reasons above, the rejection of claims 1, 21, 40 and 44-45
under 35 U.S.C. § 103(a) as unpatentable over Appellant’s Admitted Prior
Art and DE 282 is sustained.
The Appellant argues with regards to claim 13 that the prior art does
not suggest a moveable guide roll (Reply Br. 4). We disagree with the
Appellant in this regard to claim 13 because we find the lower roller h to be
movable about its axis (FF 4). The Appellant argues with regard to claims
16 and 35 that the prior art does not suggest providing essentially equal
tensions in both edges of the web. We disagree with the Appellant in this
regard to claims 16 and 35 because we find the longitudinal tension of the
web material to be essentially equal in order for the web to remain on the
device (FF 5). For these reasons the rejection of claims 13, 16, and 35
under 35 U.S.C. § 103(a) as unpatentable over Appellant’s Admitted Prior
Art and DE 282 is sustained
With respect to the rejection under 35 U.S.C. § 103(a) for claims 2-6,
14-15, 17-20, 22-27, 32-34, 36-39, and 41-43 the Appellant’s arguments are
the same as those made with regards to claims 1, 21, and 40. Note that a
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim (37 C.F.R. §
6
Appeal 2008-0001
Application 10/307,447

41.37). For claims 2-6, 14-15, 17-20, 22-27, 32-34, 36-39, and 41-43 the
Appellant only argues the same arguments as addressed above and then
merely states what each claim recites. For the reasons given above with
respect to claims 1, 21, and 40, the rejection of claims 2-6, 14-15, 17-20, 22-
27, 32-34, 36-39, and 41-43 under 35 U.S.C. § 103(a) is also sustained.
We turn now to the rejection of claims 1-45 under the judicially
created doctrine of obviousness-type double patenting over claims 1-16 of
Beisswanger in view of the Appellant’s Admitted Prior Art. The issue to
consider when determining whether a nonstatutory basis exists for a double
patenting rejection is whether a claim in the application defines an invention
that is merely an obvious variation of an invention claimed in another patent.
The analysis employed in an obviousness-type double patenting
determination parallels the guidelines for an obviousness determination
under 35 U.S.C. § 103(a). In re Braat, 937 F.2d 589, 593-94 (Fed. Cir.
1991); see also In re Longi, 759 F.2d 887, 892 n. 4 (Fed. Cir. 1985). As
such, to determine obviousness we consider the factors set forth in Graham
at 17-18, (1) the scope and content of the prior art; (2) the differences
between the prior art and the claims at issue; (3) the level of ordinary skill in
the art; and (4) where in evidence, so-called secondary considerations.
The Appellant notes that Beisswanger in claim 1 recites “cyclically
inclining at least one of the reel and carrying drum” and “cyclically inclining
the reel” (Reply Br. 7). The Appellant submits that “cyclically inclining”
does not fairly teach or suggest “transversely moving at least one of the reel
drum or reel spool” as recited in claim 1 of the invention because changing
the axis of the reel is not transverse movement (Reply Br. 7). The Appellant
7
Appeal 2008-0001
Application 10/307,447

argues that claims 1, 21, and 40 are not rendered obvious because they each
recite transverse movement (Br. 67). The Appellant also argues that claims
1, 21, 40, and 44-45 are patentable because Beisswanger fails to disclose
“producing the material web” or “online smoothing” (Br. 67). The
Examiner in contrast argues that the Appellant has disclosed that
“production of a material web and online smoothing” is admitted prior art at
pages 1-3 of the Specification (Ans. 6). The Examiner argues it would have
been obvious to provide the Beisswanger apparatus and process of claims 1-
16 with the Appellant’s Admitted Prior Art.
We disagree with the Appellant that “cyclically inclining the reel”
does not teach or suggest “transversely moving at least one of the reel drum
or reel spool”. The Specification acknowledges that traversing movement is
a well-known concept to those skilled in the art in printing press
construction (Spec. 3:9-20). Traversing movement will clearly assist in the
removal of air from the web material. The Appellant has not disputed that
the “production of a material web and online smoothing” is admitted prior in
the Specification. Moreover, Beisswanger’s web that is wound in the claims
necessarily must have been produced. We find the modification of the
apparatus and process of Beisswanger’s claims 1-16 to include the
transverse movement of a reel, the production of a material web and online
smoothing a combination of known elements for the obvious advantage of
producing an air-free, smooth web.
For the above reasons, we affirm the double patenting rejection of
claims 1, 21, 40, and 44-45.
8
Appeal 2008-0001
Application 10/307,447

As the Appellant has not separately argued the double patenting
rejection of claims 2-20, 22-39, and 41-43 the rejection of those claims is
also sustained.

CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1-6, 13-27, and 32-45 under 35 U.S.C. § 103(a) as
unpatentable over Appellant’s Admitted Prior Art and DE 282.
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1-45 are rejected under the judicially created doctrine of
obviousness-type double patenting as unpatentable over claims 1-16 of US
Patent 6,311,922 in view of Appellant’s Admitted Prior Art.

DECISON
The Examiner’s rejection of claims 1-45 is sustained.

AFFIRMED

JRG

GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
9