Ex Parte DeNoble et alDownload PDFPatent Trials and Appeals BoardMay 30, 201913414393 - (D) (P.T.A.B. May. 30, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/414,393 03/07/2012 Adam D. DeNoble 26629 7590 06/03/2019 ZIOLKOWSKI PATENT SOLUTIONS GROUP, SC (ZPS) 136 S WISCONSIN ST PORT WASHINGTON, WI 53074 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. JOA1800.015 5819 EXAMINER KIR,ALBERT ART UNIT PAPER NUMBER 2489 NOTIFICATION DATE DELIVERY MODE 06/03/2019 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): info@zpspatents.com sml@zpspatents.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ADAM D. DENOBLE, JEFFREY DALE BROWN, ROBERT E. ANDREWS, GOTTFRIED JASON HOHM, and DENNIS J. FAUCHER Appeal2017-009434 Application 13/414,393 1 Technology Center 2400 Before JEREMY J. CURCURI, JUSTIN BUSCH, and PHILLIP A. BENNETT, Administrative Patent Judges. BENNETT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's non- final rejection of claim 1. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants' Brief ("App. Br.") identifies Curt G. Joa, Inc. as the real party in interest. App. Br. 3. Appeal2017-009434 Application 13/414,393 CLAIMED SUBJECT MATTER The claim is directed to an apparatus that corrects improperly oriented incoming webs by using (1) a vision system to detect the orientation, and (2) a web guide comprising a pair of actuatable guide plates which receives an instruction to initiate a correction sequence when an improper orientation is detected. Claim 1, reproduced below, is the only claim at issue: 1. An apparatus for correcting a misfeed in an incoming web having a first side and a second side, the apparatus comprising: a vision system for inspecting whether a continuous incoming web is properly oriented or improperly oriented, said vision system coupled to a controller; a web guide carrying said incoming web, said web guide comprising a pair of guide plates through which said incoming web is passed, said guide plates being actuatable between a closed, web controlling position and an open, web passing position; said vision system communicatively coupled to said web guide; said web guide receiving a signal from said controller to initiate a correction sequence when said vision system detects an improperly oriented condition. App. Br. 9 (Claims Appendix). REJECTION Claim 1 stands rejected under 35 U.S.C. § I03(a) as being unpatentable over Kranich et al. (EP 1433731 Al; published June 30, 2004, hereinafter "Kranich") and Klein et al. (US 6,006,669 issued Dec. 28, 1999, hereinafter "Klien"). Final Act. 2--4. 2 Appeal2017-009434 Application 13/414,393 ISSUE Has the Examiner provided sufficient reasoning to support the combination of Kranich and Klein? ANALYSIS In rejecting claim 1, the Examiner finds that Kranich teaches all of the limitations except that Kranich's web guide does not "compris[e] a pair of guide plates through which said incoming web is passed, said guide plates being actuable between a closed, web controlling position and an open, web passing portion." Non-Final Act. 5. The Examiner turns to Klein, finding that it teaches the missing limitation. Non-Final Act. 5 (citing Klein, col. 4, 11. 61---65, and Fig. 4, (items 46, 48)). The Examiner determines that an ordinarily skilled artisan would have found it obvious to incorporate Klein's guide plates into Kranich's web guide based on two motivations: (1) allowing access to the portion of the web within the guide, independently from the rotating web guide of Kranich; and (2) in order to provide the ability for holding and releasing the web material during Kranich's inspection process. Non-Final Act. 5 (citing Klein col. 4, 11. 55-59 and col. 1, 11. 5-8). Appellants argue the Examiner has not provided a sufficient rationale in support of the combination because "Kranich teaches away from the need to hold and release a web." App. Br. 7. Appellants assert that Kranich "eliminates twisters without the use of guide plates, and the use of guide plates in the Kranich invention is not feasible." App. Br. 7. Appellants further argue that because Kranich detects twisted webs and responsively rotates a rotor to ameliorate the twists, there would be no need to control the web using actuating guide plates as taught by Klein. App Br. 7. Appellants 3 Appeal2017-009434 Application 13/414,393 further argue "the use of actuatable guide plates in the Kranich reference would unnecessarily grab the web and prevent the sensors from properly detecting the position of lateral edges of the web." App. Br. 7-8. Appellants also contend that "Klein teaches away from correction of misfeeds, since the correction of misfeeds is not even contemplated." App. Br. 8; see also Reply Br. 3. We are not persuaded by Appellants' arguments. As explained by the Examiner, the language of claim 1 does not require that the recited "correction sequence" involve the use of the guide plates. Rather, the limitation recites that the "web guide receiv[ es] a signal from said controller to initiate a correction sequence when said vision system detects an improperly oriented condition." The claim requires only that the "web guide" receive a signal to initiate a "correction sequence," but it does not specify the actions that take place during the correction sequence. Appellants assert that because the claim recites the "web guide compris[ es] a pair of guide plates through which said incoming web is passed," the correction sequence is necessarily tied to the guide plates. This interpretation is incorrect. Although the web guide "compris[ es] a pair of guide plates," the term "comprise" is open-ended, and indicates that the web guide can include other components. Because the claim does not specify that the guide plates initiate, or otherwise perform the "correction sequence," and the web guide may include other components, the claim does not require that the "pair of guide plates" be used in connection with the recited "correction sequence." Each of Appellants' arguments rests on their narrow interpretation of the scope of claim 1. For example, Appellants assert that Kranich "teaches 4 Appeal2017-009434 Application 13/414,393 away from the need to hold and release a web" because it accomplishes the correction of a twisted web without the need for a guide plate. Reply Br. 3. We disagree. Although Kranich may arguably obviate the need to hold and release a web in connection with a correction sequence, the claims do not require that the guide plates operate during the correction sequence. Because the claims do not require that the guide plates be part of the correction sequence, incorporating Klein's guide plates into Kranich does not teach away from the claimed invention so long as purpose of the combination is not to improve the correction sequence. Appellants' argument essentially is that the references are not combinable because a person of skill would not have done so for the same reason as the inventor. However, our reviewing court has "repeatedly held that the motivation to modify a prior art reference to arrive at the claimed invention need not be the same motivation that the patentee had." Alcon Research, LTD. v. Apotex Inc., 687 F.3d 1362, 1368 (Fed. Cir. 2012) (citing In re Kahn, 441 F.3d 977,990 (Fed. Cir. 2006) ("[T]he skilled artisan need not be motivated to combine [the prior art] for the same reason contemplated by [ the inventor].")). Here, the Examiner finds that a person of skill in the art would have been motivated to incorporate Klein's guide plates for reasons other than to initiate or otherwise carry out a correction sequence for twisted web. Specifically, the Examiner finds that a person of ordinary skill in the art would have understood that supplementing Kranich with the actuating guide plates of Klein would allow for controlling positioning of the web in the closed position, and also would allow "increased access to the note web 14 at that point" when in an open position. Klein col. 1, 11. 5-8; col. 4, 11. 61- 5 Appeal2017-009434 Application 13/414,393 65); see also Ans. 5---6. We find the Examiner's reasoning to be rational, and supported by evidence drawn from the record. Appellants argue the use of guide plates in Kranich "is not feasible." App. Br. 7. But this argument again presumes that the use of the guide plates would be for the purpose of implementing a correction sequence-a presumption not supported by either the language of the claim or the Examiner's rationale. Nor is Appellants' argument that the references teach away from the invention persuasive. Appellants argue that Kranich teaches away from the use of guide plates. Reply Br. 3 ( citing Kranich ,r 6). However, the passage cited by Appellants does not discourage the use of guide plates. Rather, the issue described in the portion of Kranich relied upon by Appellants is a problem that arises from twisting, and not from the use of web guide elements. Similarly, Klein does not teach away from the claimed invention because "correction of misfeeds is not even contemplated." App. Br. 8. Klein does not "criticize, discredit, or otherwise discourage" the claimed solution. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Instead, and as acknowledged by Appellants, Klein is agnostic with respect to correcting misfeeds, as it simply does not address them at all. DECISION Because we find the Examiner's reasons for combining the teachings of Kranich and Klein are rational and supported by evidence drawn from the record, and because Appellants' arguments do not show any Examiner error, we affirm the Examiner's rejection of claim 1 under 35 U.S.C. § 103. 6 Appeal2017-009434 Application 13/414,393 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 7 Copy with citationCopy as parenthetical citation