Ex Parte Boss

Board of Patent Appeals and Interferences

Jan 5, 2006

09426023 (B.P.A.I. Jan. 5, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HEINZ BOSS
____________

Appeal No. 2005-1546
Application No. 09/426,023
____________

HEARD: DECEMBER 13, 2005
____________

Before FRANKFORT, NASE and BAHR, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal from the examiner's final rejection of claims 1 through 10,
all of the claims pending in the application.

As noted on page 1 of the specification, appellant’s invention relates to an apparatus for
collecting, stitching and/or cutting printed products. On page 5, it is indicated that the
primary object of the invention is to “provide a way for avoiding vibrations at the collector
chain, and to provide optimum prerequisites for addressing the printed products.”
Appeal No. 2005-1546
Application No. 09/426,023

2

Independent claim 1 is representative of the subject matter on appeal and a copy of that
claim can be found in the Appendix to appellant’s brief.

The prior art references relied upon by the examiner in rejecting the appealed claims
are:
Berger et al. (Berger) 4,768,766 Sept. 6, 1988
Harris, Jr. et al. (Harris) 5,114,128 May 19, 1992
Chang 5,777,443 Jul. 7, 1998

Claims 1 through 10 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Harris1.

Claim 4 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Harris in
view of Chang.

1 The Berger patent noted above is incorporated by reference into the Harris
patent. See, e.g., column 7, lines 36-41.
Appeal No. 2005-1546
Application No. 09/426,023

3
Rather than attempt to reiterate the examiner's full commentary with regard to the
above-noted rejections and the conflicting viewpoints advanced by the examiner and
appellant regarding those rejections, we make reference to the examiner's answer (mailed
November 24, 2004) for the reasoning in support of the rejections, and to appellant’s brief
(filed March 3, 2003) and reply brief (filed January 26, 2005) for the arguments
thereagainst.

OPINION

In reaching our decision in this appeal, we have given careful consideration to
appellant’s specification and claims, to the applied prior art references, and to the
respective positions articulated by appellant and the examiner. As a consequence of our
review, we have made the determinations which follow.

With respect to the rejection of claims 1 through 10 under 35 U.S.C. § 102(b) based on
Harris, while acknowledging that the apparatus of Harris/Berger is of the general type
disclosed in the present application and that it includes an endless collector chain (12) and
successively arranged feeders (14a-14d) mounted above the collector chain for placing the
printed products (16) on the collector chain, a stitching device (30) for stitching the printed
products, and a delivery unit (32) for removing printed products at a conveying end of the
Appeal No. 2005-1546
Application No. 09/426,023

4
collector chain and for supplying the printed products for further processing, appellant
argues that Harris/Berger does not include a “drive unit” like that defined in the claims on
appeal. More particularly, appellant asserts that Harris does not disclose or teach
appellant’s claim 1 limitation requiring:
a drive unit comprised of at least one first servo drive and a collector chain
drive, connected to the collector chain and configured to control the first
servo drive through a signal line in a synchronously timed manner, wherein
the first servo drive is configured to drive additional units of the apparatus.

Appellant further asserts that a servo drive is not required for the selective binding
production sequence described in Harris/Berger, and is not suggested by the Harris
reference.

The examiner’s contention (answer, pages 3-4) that the drive unit (20) of Harris is fully
responsive to that required in claim 1 on appeal is not understood. Harris merely indicates
that the chain (12) is driven by a motor (20) and that a signal representing chain movement
is coupled to line control data processor (22) as indicated by line (24) of Figure 1. Note
column 7, line 66 through column 8, line 1 of Harris. Nothing in Harris teaches or suggests
a drive unit including a first servo drive like that in appellant’s claim 1, or that such a servo
drive be controlled in the manner required in the claims before us on appeal. Nor has the
examiner clearly pointed to any such servo drive in Harris.

Appeal No. 2005-1546
Application No. 09/426,023

5
As for the Berger patent which is incorporated into the disclosure of Harris, we find
nothing therein which is responsive to the particular drive unit defined in the claims on
appeal and note that the examiner has not specifically pointed out where this reference
discloses or teaches at least one first servo drive and a collector chain drive, connected to
the collector chain and configured to control the first servo drive through a signal line in a
synchronously timed manner, wherein the first servo drive is configured to dive additional
units of the apparatus. In relying on Berger, it appears the examiner is somehow
attempting to read the drive seen in Figure 4 thereof as both the first servo drive and the
collector chain drive required in claim 1 on appeal, even though the claims on appeal
clearly require two different drives forming the “drive unit” therein and that the collector
chain drive be “configured to control the first servo drive through a signal line in a
synchronously timed manner,” while the first servo drive is configured to drive additional
units of the apparatus.

In light of the foregoing, we conclude that the examiner has not made out a prima facie
case of anticipation. Thus, we will not sustain the examiner’s rejection of claims 1 through
10 under
35 U.S.C. § 102(b) as being anticipated by Harris.

Appeal No. 2005-1546
Application No. 09/426,023

6
Concerning the examiner’s rejection of dependent claim 4 under 35 U.S.C. § 103(a)
based on Harris and Chang, we have additionally reviewed the Chang patent, but find
nothing therein which makes up for or otherwise provides response for the deficiencies of
Harris noted above. Accordingly, we refuse to sustain the examiner’s rejection of claim 4
under 35 U.S.C. § 103(a).

Appeal No. 2005-1546
Application No. 09/426,023

Παγε 7
In summary, we have decided not to sustain the examiner’s rejection of claims 1
through 10 under 35 U.S.C. § 102(b) based on Harris or that of claim 4 under 35 U.S.C. §
103(a) based on Harris and Chang. Thus, the decision of the examiner to reject claims 1
through 10 of the present application is reversed.
REVERSED

CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )

Appeal No. 2005-1546
Application No. 09/426,023

Παγε 8
Friedrich Kueffner
317 Madison Avenue
Suite 910
New York, NY 10017

CEF/ki
Comment [jvn1]: Type or Paste
Address