Ex Parte Brown

Patent Trial and Appeal Board

Aug 21, 2018

12533830 (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/533,830 07/31/2009
34431 7590 08/23/2018
HANLEY, FLIGHT & ZIMMERMAN, LLC
150 S. WACKER DRIVE
SUITE 2200
CHICAGO, IL 60606
FIRST NAMED INVENTOR
Chris E. Brown
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.
20327/G 166A 8333
EXAMINER
PETERSON, KENNETH E
ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
08/23/2018 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):
mailroom@hfzlaw.com
jflight@hfzlaw.com
mhanley@hfzlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRIS E. BROWN
Appeal2017-000229
Application 12/533,830 1
Technology Center 3700
Before ANTON W. PETTING, MICHAEL C. ASTORINO, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant appeals from the
Examiner's decision rejecting claims 1-7, 11-17, 20, 22, 25, 26, and 31-35.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We REVERSE.
1 According to the Appellant, the real party in interest is "R.R.
DONNELLEY & SONS COMPANY." Appeal Br. 2.
Appeal2017-000229
Application 12/533,830
STATEMENT OF THE CASE
Claimed Subject Matter
Claims 1, 11, and 20 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A trimmer for use with a bindery system, comprising:
a cutting surface;
a first movable backstop adjacent the cutting surface to be
engaged by a first book intermediate;
a second movable backstop adjacent the cutting surface
and spaced from the first movable backstop, wherein the second
movable backstop is to be engaged by a second book
intermediate;
a cutter comprising an edge, the edge to cut a first face of
the first book intermediate to form a first book having a first size
and to cut a second face of the second book intermediate to form
a second book having a second size different than the first size;
a database comprising recipient data; and
a controller coupled to the database,
based on the recipient data, the controller to
determine an order that the first and second books are to be
produced,
in response to the controller determining a presence
of the first book intermediate near the cutting surface, the
controller to selectively activate the first movable backstop to
enable the engagement between the first book intermediate and
the first movable backstop, and
in response to the controller determining a presence
of the second book intermediate near the cutting surface, the
controller to selectively activate the second movable backstop to
enable the engagement between the second book intermediate
and the second movable backstop.
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Appeal2017-000229
Application 12/533,830
Rejections
We understand the Examiner to maintain the following grounds of
rejection from the Final Office Action mailed December 21, 2015 ("Final
Act.").
I. Claims 1-7, 11-17, 20, 22, 25, and 31-35 rejected under (pre-
AIA) 35 U.S.C. § 112, second paragraph, as indefinite.
II. Claims 1--4, 7, 11-15, 20, 22, 25, 26, and 33-35 rejected under
(pre-AIA) 35 U.S.C. § I03(a) as unpatentable over Graushar et al.
(US 2009/0000440 Al, pub. Jan. 1, 2009) ("Graushar"), Jureit et al.
(US 3,910,142, iss. Oct. 7, 197 5) ("Jureit"), and Paris, Jr. et al.
(US 4,175,458, iss. Nov. 27, 1979) ("Paris").
III. Claims 5, 6, 16, 17, 31, and 32 rejected under (pre-AIA)
35 U.S.C. § I03(a) as unpatentable over Graushar, Jureit, Paris, and
Kinson, Jr. (US 5,467,677, iss. Nov. 21, 1995) ("Kinson").
The Examiner has withdrawn some of the grounds of rejection from
the Final Office Action. Ans. 3. The Examiner has explicitly withdrawn the
rejection of independent claims 1, 11, and 20, and dependent claims 22, 25,
34, and 35 under (pre-AIA) 35 U.S.C. § I03(a) as unpatentable over Kinson
and Jureit. Id. The Examiner has not explicitly withdrawn the rejections of
claims 2-7, 12-17, 22, 25, 26, and 31-35 under (pre-AIA) 35 U.S.C.
§ I03(a) as unpatentable over Kinson and Jureit, or Kinson, Jureit, and Paris.
These rejections of claims 2-7, 12-17, 22, 25, 26, and 31-35 rely on the
withdrawn rejection of independent claims 1, 11, and 20 under (pre-AIA) 35
U.S.C. § I03(a) as unpatentable over Kinson and Jureit. The Examiner's
Answer provides no indication that the rejections of claims 2-7, 12-17, 22,
25, 26, and 31-35 under (pre-AIA) 35 U.S.C. § I03(a) as unpatentable over
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Appeal2017-000229
Application 12/533,830
Kinson and Jureit, or Kinson, Jureit, and Paris were maintained. Based on
the forgoing, we understand the Examiner to have also withdrawn the
rejections of claims 2-7, 12-17, 22, 25, 26, and 31-35 under (pre-AIA) 35
U.S.C. § 103(a) as unpatentable over Kinson and Jureit or Kinson, Jureit,
and Paris.
The Examiner has withdrawn some, but not all, reasons for rejecting
claims 1-7, 11-17, 20, 22, 25, and 31-35 under (pre-AIA) 35 U.S.C. § 112,
second paragraph, as indefinite (i.e., Rejection I). See Ans. 2---6.
ANALYSIS
Rejection I
The Examiner determines that the claim term "recipient data," as
recited in independent claims 1, 11, and 20, is indefinite. Final Act. 2-3.
The Examiner acknowledges that the Specification provides an example of
"recipient data" as "recipient addresses," but provides no firm definition for
the claim term. Id.; see Spec. ,r 20. The Examiner determines that the scope
of the term "recipient data" is unclear because the term may include
"recipient contact info [ rmation ]" or "anything at all that could possibly be
associated with a recipient." Final Act. 3; see Ans. 18.
The Appellant argues that the claim term "'recipient data' is not
inherently ambiguous or indefinite, but is well known to, and commonly
used by, persons of ordinary skill in the art" and that the Specification and
the claims use the term "consistently with its recognized, ordinary meaning."
Appeal Br. 15; see Reply Br. 3--4. The Appellant's argument is persuasive.
We are not convinced that one of ordinary skill in the art upon reading
the Specification would not be able to understand the metes and bounds of
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Appeal2017-000229
Application 12/533,830
the claim term "recipient data." Although the term "recipient data" is broad,
that does not mean that it is indefinite. Reply Br. 3; see In re Gardner, 427
F.2d 786, 788 (CCPA 1970).
Thus, we do not sustain the Examiner's rejection of independent
claims 1, 11, and 20, and claims dependent thereon, under (pre-AIA)
35 U.S.C. § 112, second paragraph, as indefinite (i.e., Rejection I).
Re} ections II & III
The Examiner finds that Graushar discloses much of the subject of
independent claims 1, 11, and 20, including a first movable or repositionable
backstop 50. See Final Act. 4--5, 6. However, the Examiner finds that
"Graushar does not have a second movable backstop." Final Act. 5. To
remedy this deficiency, the Examiner provides the following:
Examiner takes Official Notice that it is well known to
employ multiple actuable stops in lieu of just one repositionable
stop. It is an art recognized equivalent known for the same
purpose. For example, Jureit shows a cutter (168) and a plurality
of stops ( e.g. 106, 107) that are actuable by a controller (18)
based on the order of the workpieces. Paris shows a plurality of
stops (71) that are actuable by controls (line 12, column 3). The
function of Jureit and Paris, and many other similar references is
the same as the function of Graushar, namely to change the size
of the work being cut.
It would have been obvious to one of ordinary skill in the
art to have modified Graushar by providing additional movable
stops that can be controlled by the controller (318), since this is
an art recognized equivalent, and since individual stops can be
activated into position faster than a single stop can move to
different positions spaced from the blade.
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Application 12/533,830
Id. (emphases added). Here, the Examiner provides two reasons why one of
ordinary skill in the art would have modified Graushar's trimming assembly
to include second movable backstop.
First, the Examiner determines that the modification would have been
made because it is an art recognized equivalent to employ multiple actuable
stops in lieu of just one repositionable stop because they have the same
purpose. Id.; see Ans. 24 ("Graushar, Jureit and Paris provide ... evidence"
that "both features ( one movable stop and plural actuable stops) are both
known for the same purpose, in the same art of cutting workpieces to
multiple sizes."). To bolster this determination, the Examiner relies on
unidentified patents concerning "one movable stop" and "plural actuable
stops" classified in closely related USPC classifications and the Examiner's
years of experience. See Ans. 24. The foregoing fails to adequately support
the Examiner's finding that employing multiple actuable stops in lieu of just
one repositionable stop are art recognized equivalents. See Appeal Br. 37-
39. Here, the Examiner only shows that just one repositionable stop and
multiple actuable stops were known in the art to have the same purpose,
which is distinct from the art teaching that just one repositionable stop and
multiple actuable stops were art recognized equivalents. See, e.g., Smith v.
Hayashi, 209 USPQ 754, 759 (Bd. Pat. Int. 1980) ("The Smith et al.
disclosure makes it clear that various prior art photoconductors used in
electrophotography, including selenium, its alloys and Pc, may be used in
their layer 'b "' and "the disclosure of Smith et al. shows that both Pc and
selenium are known photoconductors in the art of electrophotography. This,
in our view, presents strong evidence of obviousness in substituting one for
the other in an electrophotographic environment as a photoconductor.").
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Second, the Examiner determines that the modification would have
been made because "individual stops can be activated into position faster
than a single stop can move to different positions spaced from the blade."
Ans. 8 (emphases added). Here, we understand the Examiner to suggest that
multiple movable or actuable individual stops have the ability to move to
different positions faster than a single stop can move to the same positions. 2
In this case, the Examiner fails to explain how this suggestion is adequately
supported. See Appeal Br. 33 n.8. For example, the ability for multiple
movable or actuable individual stops to move to different positions faster
than a single stop can move to the same positions suggests that under
different circumstances the same modification may result in the ability for
multiple movable or actuable individual stops to move to different positions
slower than a single stop can move to the same positions. Because the
modification may result logically in either a faster or slower movement with
no reason how this is beneficial, the Examiner's proposed modification
appears to lack an identifiable purpose. Moreover, we note that the
Appellant points out that "Graushar mentions a trimmer that produces books
at a rate of approximately 700 books per minute." Id. at 33 ( citing Graushar
,r,r 92, 102, 122, 131)). The Examiner does not respond to the Appellant's
point that Graushar's adjustable trimmer assembly produces about 700
books per minute or explain how the Examiner's proposed modification
would alter the book production rate.
2 The Appellant points out that the relationship between the Official Notice
taken by the Examiner and reasoning to modify Graushar as proposed by the
Examiner is unclear. Appeal Br. 32 n.7.
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Application 12/533,830
In this case, we determine that the Examiner's rejection lacks
adequate reasoning with rational underpinning. See In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds ...
[require] some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.") ( cited with approval in KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007)). Thus, we do not sustain
the Examiner's rejection of claims 1--4, 7, 11-15, 20, 22, 25, 26, and 33-35
as unpatentable over Graushar, Jureit, and Paris (i.e., Rejection II).
The remaining rejection based on Graushar, Jureit, and Paris in
combination with Kinson relies on the same unsupported reasoning as
discussed above and is not cured by additional findings and/ or reasoning
associated therewith. As such, we do not sustain the rejection of claims 5, 6,
16, 17, 31, and 32 as unpatentable over Graushar, Jureit, Paris, and Kinson
(i.e., Rejection III).
DECISION
We REVERSE the Examiner's decision rejecting claims 1-7, 11-17,
20, 22, 25, 26, and 31-35.
REVERSED
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