Ex parte Dawley et al.

Board of Patent Appeals and Interferences

Aug 22, 2000

08632687 (B.P.A.I. Aug. 22, 2000)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DOUGLAS J. DAWLEY and JAMES B. VROTACOE
_____________
Appeal No. 1998-2899
Application No. 08/632,687
______________
ON BRIEF
_______________
Before ABRAMS, STAAB, and GONZALES, Administrative Patent
Judges
GONZALES, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner's final
rejection of claims 32 through 39. Claims 1 through 3, 5
through 7, 24, 25, and 31 have been canceled. Claims 4, 8
through 23 and 26 through 30, the only other claims remaining
in the application, stand withdrawn from consideration under
Appeal No. 1998-2899
Application No. 08/632,687
We are inform by the appellants’ specification (pp. 2, 3) that1
printing sleeve procession is a phenomena caused by air trapped in the
interface between a tubular printing sleeve, e.g., printing blanket 16 (Fig.
1), and the outer surface of its corresponding mounting cylinder, e.g.,
blanket cylinder 14 (Fig. 1). The trapped air creates a continually advancing
wave (see bulge 26 in Fig. 1) in front of a nip between the mounting cylinder
and an adjacent cylinder against which it is pressed causing the printing
sleeve to bulge.
2
37 CFR
§ 1.142(b).
We REVERSE.
The subject matter on appeal is directed to an apparatus
for reducing procession of a gapless tubular printing sleeve
mounted on a cylinder. With reference to the appellants’1
Figure 3, the invention includes a groove 50 extending
straight across the circumferential surface of the mounting
cylinder 40 and connecting the interface of the mounting
cylinder 40 and the tubular printing sleeve (not shown) to an
air canal 60. During operation of the printing press, air
canal 60 is vented to atmosphere so that the fluid wave can
escape to a region of low pressure via the groove 50. See
specification, p. 8. Claim 32 is illustrative of the subject
matter on appeal and is reproduced in an appendix attached to
the brief (Paper No. 23).
Appeal No. 1998-2899
Application No. 08/632,687
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The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Fellows 4,030,415 Jun. 21,
1977
Smith 4,056,057 Nov. 01,
1977
Fischer 4,589,339 May 20,
1986
Tittgemeyer 4,913,048 Apr. 03,
1990
Vrotacoe 5,245,923 Sep. 21,
1993
Arkell 1,401,695 Jul. 30,
1975
(British)
The appealed claims stand finally rejected under 35
U.S.C.
§ 103(a) on the following grounds:
(1) Claims 32 through 35, 37 and 38, unpatentable over Fellows
in view of Arkell;
(2) Claim 36, unpatentable over Fellows in view of Arkell and
Smith; and
(3) Claim 39, unpatentable over Fellows in view of Arkell in
combination with Tittgemeyer, Vrotacoe or Fischer.
The full text of the examiner's rejections and response
to the arguments presented by the appellants appears in the
Appeal No. 1998-2899
Application No. 08/632,687
4
answer (Paper No. 24), while the complete statement of the
appellants’ arguments can be found in the brief (Paper No.
23).
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants’ specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. As a consequence of our review, we make the
determinations which follow.
Upon evaluation of all the evidence before us, it is our
conclusion that the evidence adduced by the examiner is
insufficient to establish a prima facie case of obviousness
with respect to the claims under appeal. Accordingly, we will
not sustain the examiner's rejections of claims 32 through 39
under 35 U.S.C. § 103.
Before addressing the examiner's rejections based upon
prior art, it is an essential prerequisite that the claimed
subject matter be fully understood. Analysis of whether a
Appeal No. 1998-2899
Application No. 08/632,687
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claim is patentable over the prior art under 35 U.S.C. §§ 102
and 103 begins with a determination of the scope of the claim.
The properly interpreted claim must then be compared with the
prior art. Accordingly, we will initially direct our
attention to the appellants' claim 32, which is the only
independent claim on appeal, to derive an understanding of the
scope and content thereof.
Claim 32 calls for an apparatus for reducing procession
of a gapless tubular printing sleeve comprising: a gapless
tubular printing sleeve; a cylinder having an outer
circumference which
is greater than the inner circumference of the printing
sleeve; a passage [e.g., air canal 60, Fig. 3] provided on the
circumferential surface of the cylinder through which
pressurized air is applied to rapidly expand the printing
sleeve for installation of the sleeve onto and removal of the
sleeve from the cylinder; and a means extending substantially
across a length of the cylinder for connecting an interface of
Appeal No. 1998-2899
Application No. 08/632,687
According to the appellants’ specification (p. 8), the ”low pressure2
region” may be the atmosphere.
6
the cylinder and the printing sleeve to a low pressure
region. 2
In construing the language “a means extending
substantially across a length of the cylinder for connecting
an interface of the cylinder and the printing sleeve to a low
pressure region,” we note that the “means” may comprise, for
example, a groove 50 as shown in Figure 3. The groove 50 is
described in the specification (p. 8) as extending “across the
circumferential surface of the cylinder” and as connecting the
interface of the cylinder 40 and a printing sleeve mounted
thereon to an air canal 60.
We also note the appellants’ argument on page 6 of the
brief that the circumferential grooves 26 in the embodiment
illustrated
in Figure 4 of Fellows do not meet the claimed means
limitation because the grooves 26 in Fellows would only allow
air trapped
between the blanket and cylinder at the circumferential
Appeal No. 1998-2899
Application No. 08/632,687
Six (6) mm is approximately ¼ inches and 30 cm is3
approximately 12 inches.
7
grooves to escape. In fact, Fellows teaches that the grooves
26 are arranged like grooves 10b in Figure 1 (col. 4, ll. 31,
32) and that circumferential grooves 10b in Figure 1 are 6 mm
wide (col. 2, l. 67) and “typically located 25 mms from the
ends of the tube 10 and at about 30 cms spacing along the
length of the tube 10" (col. 2, ll. 59-66). 3
In light of the specification and the arguments made in
the brief, we understand the language “a means extending
substantially across a length of the cylinder for connecting
an interface of the cylinder and the printing sleeve to a low
pressure region” as requiring the “means” to be unbroken or
continuous across the length of the cylindrical interface
between the cylinder and the printing sleeve such that all
trapped air in the interface will necessarily encounter the
“means” as the cylinder is rotated 360N.
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
Appeal No. 1998-2899
Application No. 08/632,687
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obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d
1955, 1956 (Fed. Cir. 1993). A prima facie case of
obviousness is established by presenting evidence that the
reference teachings would appear to be sufficient for one of
ordinary skill in the relevant art having the references
before him to arrive at the claimed invention. See In re
Lintner, 9 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972).
Furthermore, the conclusion that the claimed subject matter is
prima facie obvious must be supported
by evidence, as shown by some objective teaching in the prior
art or by knowledge generally available to one of ordinary
skill in the art that would have led that individual to
combine the relevant teachings of the references to arrive at
the claimed
invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988). Rejections based on § 103 must
rest on a factual basis with these facts being interpreted
without hindsight reconstruction of the invention from the
prior art. The examiner may not, because of doubt that the
invention is patentable, resort to speculation, unfounded
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Application No. 08/632,687
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assumption or
hindsight reconstruction to supply deficiencies in the factual
basis for the rejection. See In re Warner, 379 F.2d 1011,
1017, 154 USPQ 173, 177 (CCPA 1967), cert. denied, 389 U.S.
1057 (1968).
Fellows discloses a first embodiment (see Fig. 1) in
which a stretchable seamless printing sleeve 17 is fitted onto
a tube 10 having a larger external diameter than the internal
diameter of the sleeve. The tube 17 has a passageway 16 and a
series of spaced apart circumferential grooves 10b on its
outer surface. The passageway 16 and each of grooves 10b is
connected to the inside of the tube 10 which, in turn, may be
connected to a source of compressed air. Fellows teaches that
the printing roll is assembled by sliding the sleeve axially
over the seal 13 to the conical part 10a of the tube, at which
point the space 13a between seal 13, the end of the sleeve 17
and the end of the tube 10 becomes pressurized. As the sleeve
passes over the tube, the interior of the sleeve is internally
pressurized by compressed air distributed from inside the tube
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Application No. 08/632,687
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through the holes 10c and circumferentially through the
grooves 10b to expand the sleeve. See col. 3, ll. 21-39.
Once the sleeve is fully fitted on the
tube, the compressed air supply is removed and air inside the
tube escapes through passageway 16. Id. at 40-50.
Fellows also discloses a second embodiment (see Fig. 4)
in which the internal diameter of the sleeve 17 is larger than
the external diameter of the tube 10 so that the sleeve can
easily
slip over the tube. In this embodiment, the sleeve grips the
tube by a vacuum applied from inside the tube 10. The vacuum
is directed to the underside of the sleeve 17 by virtue of
circumferential grooves 26 (arranged like grooves 10b in FIG.
1) each connected to the inside of the tube 10 by a single
hole 27. See col. 4, ll. 25-42.
In reading claim 32 on Fellows, the examiner considers
the printing sleeve 17, the oversized tube 10 and the passage
16 in Figure 1 of Fellows to correspond to the claimed
printing sleeve, cylinder and passage, respectively. See
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Application No. 08/632,687
The “printing member” in Arkell is a printing plate, e.g., a4
lithographic plate or an intermediate rubber plate or blanket used in offset
printing to transfer print from a lithographic plate to paper. See p. 1, ll.
9-20. Arkell does not teach or suggest a gapless tubular printing sleeve.
11
answer, pp. 3, 4. The examiner further describes the
circumferential grooves 26 in Figure 4 of Fellows as a means
extending substantially across a length of the cylinder for
connecting an interface of the cylinder and the printing
sleeve to a low pressure region. Id.
at 4. However, the examiner relies on Arkell as teaching
grooves 22 (Fig. 2) extending substantially across a length of
the cylinder for securing a printing member in position on a4
cylinder by means of a vacuum. Id. The examiner then
concludes that
[i]t would have been obvious . . . to utilize groove
configurations on the cylinder surface in Fellows
(4,030,415) extending substantially across a length
of the cylinder in a manner as claimed, especially
in view of the teaching of the same as disclosed by
Arkell (G.B. 1 401 695). The motivation would have
involved merely the choice of conventional groove
configurations so as obtain air evacuation and
printing member securement in an optimum manner.
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Application No. 08/632,687
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Id. at 6.
The appellants argue that there is no motivation for
combining the two embodiments of Fellows so that both a
passage for pressurized air and the claimed means attached to
a low pressure area are provided on the same cylinder. See
brief, pp. 5, 6. We agree.
The embodiments shown in Figures 1 and 4 of Fellows are
so disparate (one uses an undersized sleeve mounted on an
oversized
cylinder by expanding the sleeve with compressed air, the
other uses an undersized cylinder connected to a vacuum source
for securing an oversized sleeve to the cylinder) that we know
of no reason why one of ordinary skill in the art would have
been motivated to combine their various features in the
specific manner set forth in claim 32.
Further, even if it had been obvious to modify the
embodiment shown in Figure 4 of Fellows by substituting axial
grooves for the circumferential grooves 26, the modified
structure would still lack the cylinder having an outer
Appeal No. 1998-2899
Application No. 08/632,687
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circumference which is greater than the inner circumference of
the printing sleeve as recited in claim 32.
In addition, while we recognize that Arkell does suggest
a printing plate vacuum hold down system including a cylinder
having either circumferential grooves 11 (Fig. 1) or axial
grooves 22 (Fig. 2), we know of no reason why one of ordinary
skill in the art would have been motivated to substitute the
axially extending grooves disclosed in Arkell, which are
connected to a vacuum within the mounting cylinder to maintain
a printing plate in position during operation of the printing
press, for the circumferential grooves 10b disclosed in Figure
1 of Fellows, which are connected to pressurized air inside
the printing cylinder to expand a printing sleeve during
mounting of the sleeve on the cylinder. Along this same line,
it is not absolutely clear to us that the axially extending
grooves 22 in Arkell, which are interconnected by a single
circumferential groove 24 to the interior of the cylinder,
would successfully perform the function of the circumferential
grooves 10b in the embodiment shown in Figure 1 of Fellows.
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Application No. 08/632,687
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In our view, the only suggestion for combining the
disparate teachings of Fellow’s Figure 1 and Figure 4
embodiments in the manner proposed by the examiner or for
modifying either the Figure 1 or the Figure 4 embodiment of
Fellows in view of Arkell stems from hindsight knowledge
derived from the appellants’ own disclosure. The use of such
hindsight knowledge to support an obviousness rejection under
35 U.S.C. § 103 is, of course, impermissible. See, for
example, W. L. Gore and Associates, Inc. v. Garlock, Inc., 721
F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983).
We also disagree with the examiner’s determination that
the circumferential grooves 26 in Figure 4 comprise a means
extending substantially across a length of the cylinder for
connecting an interface of the cylinder and the printing
sleeve to a low pressure region. As we have interpreted claim
32, supra, the language “a means extending substantially
across a length of the cylinder for connecting an interface of
the cylinder and the printing sleeve to a low pressure region”
Appeal No. 1998-2899
Application No. 08/632,687
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cannot be read on the widely spaced grooves 10b or 26 in
Fellows.
In light of the foregoing, we will not sustain the
standing § 103 rejection of independent claim 32 and dependent
claims 33 through 35, 37 and 38.
We have also reviewed the Smith reference applied along
with Fellows and Arkell by the examiner against claim 36, and
the Tittgemeyer, Vrotacoe and Fischer references applied along
with Fellows and Arkell by the examiner against claim 39 on
appeal. However, we find nothing in these additional
references which makes up for the deficiencies of Fellows and
Arkell discussed above regarding claim 32. Accordingly, we
will also not sustain the standing 35 U.S.C. § 103 rejections
of dependent claims 36 and 39.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 32 through 39 under 35 U.S.C. § 103 is reversed.
REVERSED
Appeal No. 1998-2899
Application No. 08/632,687
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NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
jfg/vsh
Appeal No. 1998-2899
Application No. 08/632,687
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