Ex Parte Doucet et al

Patent Trial and Appeal Board

Sep 17, 2012

11498656 (P.T.A.B. Sep. 17, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/498,656 08/03/2006 Louis John Doucet 6003.1068 9136
23280 7590 09/18/2012
Davidson, Davidson & Kappel, LLC
485 7th Avenue
14th Floor
New York, NY 10018
EXAMINER
MCCLAIN, GERALD
ART UNIT PAPER NUMBER
3653
MAIL DATE DELIVERY MODE
09/18/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte LOUIS JOHN DOUCET
and GLENN ALAN GUARALDI
________________

Appeal 2010-006495
Application 11/498,656
Technology Center 3600
________________

Before STEFAN STAICOVICI, MICHAEL C. ASTORINO and
MICHAEL L. HOELTER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-006495
Application 11/498,656

2
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1-6 (App. Br. 2). Claims 7-9 have been withdrawn (Id.).
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

THE CLAIMED SUBJECT MATTER
The claimed subject matter pertains to “printing presses and more
particularly to a transport device for transporting printed products” (Spec. ¶
[0001]). Sole independent claim 1 is representative of the claims on appeal
and is reproduced below:
1. A transport device for transporting printed products
comprising:
a first and a second tape for receiving and transporting
the printed products;
a first and second roller for guiding the tapes;
a nip-adjusting device adjusting a nip formed by the first
and second tapes at the first and second rollers; and
a sensor determining a thickness of the printed products,
the nip adjusting device being actuated as a function of the
sensor.

REFERENCE RELIED ON BY THE EXAMINER
Wamsley US 5,673,910 Oct 7, 1997

THE REJECTION ON APPEAL
Claims 1-6 are rejected under 35 U.S.C. § 102(b) as being anticipated
by Wamsley (Ans. 3).

Appeal 2010-006495
Application 11/498,656

3
ANALYSIS
The claim term “nip,” which is not in dispute, is used by Appellants in
the Specification consistent with its dictionary definition of “to catch hold of
and squeeze tightly between two surfaces, edges, or points: PINCH”
(Webster’s New Collegiate Dictionary 770 (1979)).
Each claim on appeal (i.e., claims 1-6) requires “a nip-adjusting
device adjusting a nip formed by the first and second tapes at the first and
second rollers.” The Examiner finds that Wamsley anticipates this limitation
and specifically identifies Wamsley’s item 140 as the nip adjusting device,
two belts 312 as the first and second tapes, and rollers 82, 88 as the first and
second rollers (Ans. 3, see also Ans. 4 for the Examiner’s annotation of
Wamsley’s Figs. 4 and 7). The Examiner does not identify a nip, but
Wamsley states that “[a] linear nip 122 is formed between the two sets 80
and 86 of rollers” (Wamsley 5:39-40, see also Fig. 5). Note that rollers 82
and 88, identified by the Examiner, are part of sets 80 and 86 respectively
(Wamsley 5:12-14). Wamsley describes item 312 as a “belt drive system”
connected to rollers 82 and 88 (Wamsley 14:55-56, see also Fig. 7).
Appellants contend that Wamsley does not teach “a nip formed by the
first and second tapes” and further that Wamsley’s “nip 122 is not formed by
the drive belt system 312” (App. Br. 5, see also Reply Br. 2). Appellants
also contend that Wamsley’s “drive belt system 312 plays no part in
positioning rollers against each other” (App. Br. 5, see also Reply Br. 2).
Appellants contend that the claimed first and second tapes (i.e.,
themselves) form the nip by physically contacting the product and that
Wamsley’s belt drive system 312 does not contact the product (App. Br. 5).
The Examiner, however, takes a more expansive interpretation of the
Appeal 2010-006495
Application 11/498,656

4
limitation “formed by” which does not require physical contact (Ans. 5).
The Examiner finds that since Wamsley’s belt drive system 312 is connected
with rollers 82 and 88, and since Wamsley teaches that rollers 82 and 88
form the nip, the belt drive system 312 thereby forms the nip (Ans. 5).
Wamsley’s belt drive system 312 drives the rollers (see Fig. 7). The
Examiner does not identify where Wamsley teaches or illustrates that belt
drive system 312 does anything other than rotate these rollers. In contrast,
Wamsley teaches that separate mechanisms (items 124, 126) not associated
with the belt drive system “are provided to adjust the width and
configuration of the nip 122” (Wamsley 5:40-42). We are not persuaded
that Wamsley’s belt drive system 312 acts on the rollers other than to rotate
them. Accordingly, we agree with Appellants that “drive belt system 312
plays no part in positioning rollers against each other” (App. Br. 5) and as
such, we are not persuaded that the claimed “nip formed by the first and
second tapes” is disclosed, whether expressly or inherently, by the identified
belt drive system. We reverse the rejection of claims 1-6.

DECISION
The rejection of claims 1-6 is reversed.

REVERSED

MP