Ex Parte Elkinson et alDownload PDFPatent Trial and Appeal BoardJan 19, 201610980583 (P.T.A.B. Jan. 19, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 10/980,583 11103/2004 23280 7590 01/21/2016 Davidson, Davidson & Kappel, LLC 589 8th A venue 16th Floor New York, NY 10018 FIRST NAMED INVENTOR Brian Robert Elkinson 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. 6003.1005 6607 EXAMINER MORRISON, THOMAS A ART UNIT PAPER NUMBER 3653 NOTIFICATION DATE DELIVERY MODE 0112112016 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): ddk@ddkpatent.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRIAN ROBERT ELKINSON, DANIEL MATTHEW PERDUE, and LAWRENCE EDWARD ZAGAR Appeal2013-009155 Application 10/980,583 Technology Center 3600 Before HUBERT C. LORIN, BIBHU R. MOHANTY, and BRADLEY B. BAY AT, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants seek our review under 35 U.S.C. § 134 of the Final rejection of claims 1-5, 7-10, and 18-24. 1 We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF THE DECISION We REVERSE. 1 The Appellants have indicated that claims 11-17 have been canceled (App. Br. 2). Appeal2013-009155 Application 10/980,583 THE INVENTION The Appellants' claimed invention is directed to folder superstructures for web printing presses (Spec. i-f 1 ). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A printing press comprising: printing units printing on a web, the web being slit and formed into a ribbon bundle; a former folding the printed ribbon bundle; a first nip roll located downstream of the former and having a compressible outer layer; and a second nip roll forming a nip with the first nip roll. THE REJECTIONS The following rejections are before us for review: 2 1. Claims 1-3, 5, and 18-20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Weis (US 6,588,739 Bl, iss. July 8, 2003) and Bredenberg (US 5,904,094, iss. May 18, 1999). 2. Ciaim 4 is rejected under 35 U.S.C. § 103(a) as unpatentabie over Weis, Bredenberg, and Cote (US 2002/0063541 Al, pub. May 30, 2002). 3. Claims 7-8 and 23-24 are rejected under 35 U.S.C. § 103(a) as unpatentable over Weis, Bredenberg, and Rimai (US 6,556,798 B2, iss. Apr. 29, 2003). 4. Claims 9, 10, and 21 are rejected under 35 U.S.C. § 103(a) as unpatentable over Weis, Bredenberg, and Majaniemi (US 4,484,982, iss. Nov. 27, 1984). 2 The Examiner withdrew the rejection of claims 22 and 24 under 35 U.S.C. § 112, second paragraph, as being indefinite (Ans. 9). 2 Appeal2013-009155 Application 10/980,583 FINDil-.JGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence. 3 ANALYSIS The Appellants argue that the rejection of claim 1 is improper because Bredenberg fails to teach a nip roll having "a compressible outer layer" (App. Br. 5---6; see also Reply Br. 2-3). In contrast, the Examiner has determined that Bredenberg teaches nip rollers 12, 14 with compressible outer layers 20, 26, respectively (Ans. 2-3, 10 (citing Bredenberg, col. 3, 11. 30-35 and Fig. 2)). We agree with the Appellants because Bredenberg teaches that the outer layers 20, 26 are made from materials that the Appellants' Specification teaches are incompressible. Specifically, the Specification states: "Nip rolls with urethane or rubber outer layers are known. These rubber or urethane coatings are incompressible, as no air, microspheres or other gas inclusions are added to make them compressible" (Spec. i-f 3). Bredenberg teaches that coating 20 is a "resilient material, as e.g., rubber or urethane" (Bredenberg, col. 3, 11. 17-18), and Bredenberg similarly teaches that coating 26 is "a continuous rubber or polyurethane sleeve" (id. at col. 3, 11. 28-30). Bredenberg also teaches that the nip rollers 12, 14 may be "formed of compliant material, such that the deformation of the coating 20 of the first roller 12 mirrors the deformation of the coating 26 of the second roller 14" (id. at col. 3, 11. 30-35). However, Bredenberg is silent regarding 3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). 3 Appeal2013-009155 Application 10/980,583 the coatings 20, 26 being compressible, and there is no teaching in Bredenberg that coatings 20, 26 are made from rubber or urethane materials having air, microspheres, or other gas inclusions. Thus, Bredenberg's coatings 20, 26 would not be a "compressible outer layer" when the claim is read in light of the Specification and given its broadest reasonable interpretation. For these reasons, the rejections of claim 1 and its dependent claims are not sustained. CONCLUSIONS OF LAW We conclude that the Appellants have shown that the Examiner erred in rejecting the claims as listed in the Rejections section above. DECISION The Examiner's rejections of claims 1-5, 7-10, and 18-24 are reversed. REVERSED rvb 4 Copy with citationCopy as parenthetical citation