Ex Parte Germain et al

Board of Patent Appeals and Interferences

Sep 13, 2007

10861057 (B.P.A.I. Sep. 13, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte PATRICK C. ST. GERMAIN
and VERNON C. WICKMAN
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Appeal 2007-2861
Application 10/861,057
Technology Center 3700
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Decided: September 13, 2007
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Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-4. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
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Appellants claim a gripper 10 for a web folding cylinder 5 comprising
a fixed jaw 90, a cam follower arm 35, and a gripper member 15 having a
second end 80 defining a movable jaw 25 for rotatable, operable association
with the fixed jaw 90 (claim 1; fig. 1). Further details regarding the claimed
subject matter are set forth in representative claims 1 and 2 which read as
follows:
1. A gripper for a web folding cylinder comprising:

a fixed jaw on the folding cylinder;

a cam follower arm within and rotatably connected to the folding
cylinder proximal to a first end of the arm and operably connected to a cam
follower at a second end of the arm, the cam follower arm second end being
spring-biased for rotation towards a cam; and

a gripper member within the folding cylinder, the gripper member
having opposed first and second ends and a medial portion between the first
and the second ends rotatably connected to the folding cylinder, the gripper
member first end operably associated with the cam follower arm first end,
and the gripper member second end defining a movable jaw for rotatable,
operable association with the fixed jaw on the folding cylinder, the gripper
member first end being spring-biased for rotation towards the cam follower
arm first end.
2. The gripper of claim 1 wherein the cam follower arm and the
gripper member each define an involute profile.
The reference set forth below is relied upon by the Examiner as
evidence of anticipation and obviousness:
Dufour US 6,322,487 B1 Nov. 27, 2001
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Claims 1 and 3 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Dufour.
Claims 2 and 4 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dufour.
For the reasons which follow, we will sustain each of these rejections.

THE § 102 REJECTION
Appellants argue that the Examiner’s anticipation finding is incorrect
because Dufour does not disclose a gripper for a web folding cylinder. In
this regard, Appellants explain that Dufour’s gripper (i.e., gripper finger 130
and gripper bar 132) is carried by deceleration drum 114 and contend that
this deceleration drum is not a folding cylinder (Appeal Br. 4; Reply Br. 1).
This contention is unpersuasive for a number of reasons.
First, the appealed claims are directed to the subcombination of a
gripper rather than to the combination of a web folding cylinder with a
gripper carried thereby. Therefore, that the claimed gripper is for a web
folding cylinder does not distinguish an otherwise identical prior art gripper
for a deceleration drum. Second, Dufour’s deceleration drum 114 via the
seizing device 128 contained therein indisputably performs a web (a.k.a.
signature) folding function (Dufour, col. 4, ll. 16-29; claim 10 bridging
col. 7-8; claim 20 at col. 8; fig. 1). Because this deceleration drum is a
cylinder and performs a web folding function, we share the Examiner’s
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finding that deceleration drum 114 corresponds to the web folding cylinder
recited in the appealed claims.
Appellants also argue that Dufour’s gripper bar 132 is not a fixed jaw
as required by the appealed claims (Reply Br. 1). However, gripper bar 132
is expressly disclosed as fixedly mounted and as performing the web (a.k.a.
signature) gripping function performed by Appellants’ claimed jaw (Dufour,
col. 4, ll. 25-29). We recognize that Dufour’s gripper bar 132 is not fixed
relative to deceleration drum (i.e., folding cylinder) 114. However, the
appealed claims do not require the fixed jaw to be immovable or fixed
relative to a web folding cylinder. For these reasons, we agree with the
Examiner’s finding that Patentee’s gripper bar 132 satisfies the fixed jaw
requirement of the appealed claims.
In addition, we perceive no merit in Appellants’ assertion that
“[Dufour’s] linkage 139 is not the presently claimed cam follower arm
rotatably connected to the folding cylinder” (Reply Br. 1). This is because
linkage 39 structurally corresponds to an arm and is designed to follow cam
138 (Dufour, col. 5, ll. 11-24; fig. 1). It is appropriate, therefore, to find this
linkage as corresponding to the here-claimed cam follower arm. Moreover,
linkage 139 unquestionably rotates during movement (fig. 1) and is
connected, albeit indirectly, to the deceleration drum (i.e., folding cylinder)
114, thus satisfying the rotatably connected requirement of Appellants’
claims.
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Finally, Appellants clearly are incorrect in urging that gripper finger
130 of Dufour does not interact with gripper bar 132 (Reply Br. 1).
Consistent with the claim requirement that the gripper member interacts with
the fixed jaw, Patentee’s gripper finger (i.e., gripper member) 130 interacts
with fixedly mounted gripper bar (i.e., fixed jaw) 132 to thereby grip and
fold the web (a.k.a. signature) (Dufour, col. 4, ll. 25-29; col. 5, ll. 36-49;
claims 25 and 27 at cols. 9-10; figs. 1-2).
For the above-stated reasons, Appellants have failed to show error in
the Examiner’s finding that claims 1 and 3 are anticipated by Dufour.
Accordingly, we sustain the Examiner’s § 102 rejection of these claims as
being anticipated by Dufour.

THE § 103 REJECTION
Rejected claims 2 and 4 require that the cam follower arm and the
gripper member each define an involute profile. According to the Examiner,
Dufour’s gripper member (i.e., gripper finger) 130 defines an involute
profile (Answer 4), and Patentee’s cam follower arm (i.e., linkage) 139
either defines an involute profile (Answer 6-7) or would have been provided
with an involute profile by one with ordinary skill in this art (Answer 4).
Appellants argue that Dufour’s gripper finger 130 and linkage 139 are
not in contact with one another so that they do not define involute profiles
nor would there have been any reason to provide them with involute profiles
(Appeal Br. 4-5). In this regard, Appellants define the term “involute
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profile” as “a profile such that during moving contact the contact point of the
faces lies along a straight line” (Reply Br. 2).
The deficiency of the Appellants’ argument is that the rejected claims
do not require, as Appellants presume, that the respective involute profiles of
the cam follower arm and the gripper member are in direct contact with one
another. Stated differently, these claims encompass a cam follower arm and
gripper member, each defining an involute profile for contact with another
element but not necessarily each other, which are connected indirectly.
Significantly, Dufour’s linkage (i.e., cam follower arm) 139 and gripper
finger (i.e., gripper member) 130 are connected to one another indirectly
(col. 5, ll. 11-23; figs. 1-3). Moreover, during moving contact, the contact
point of the respective faces for gripper finger 130 and linkage 139
reasonably appears to lie along a straight line (fig. 2) as required by
Appellants’ afore-quoted definition, and Appellants do not argue otherwise
with any reasonable specificity. While these contact points are with other
elements rather than each other, we again emphasize that the rejected claims
do not require direct connection or contact, and again Appellants do not
argue otherwise with any reasonable specificity. Under these circumstances,
it is appropriate to require Appellants to prove that Dufour’s linkage 139 and
gripper finger 130 respectively do not actually possess an involute profile,
and no such proof has been submitted in the record of this appeal. See In re
Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977) (Where
patentability rests upon a characteristic of the claimed invention not
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disclosed in the prior art, the PTO has no reasonable method of determining
whether there is, in fact, a patentable difference between the prior art and the
claimed invention. Therefore, where the claimed and prior art products are
identical or substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an applicant to prove
that the prior art product does not necessarily possess the characteristics of
the claimed product.).
In light of the foregoing, we agree with the Examiner’s finding that
Dufour’s gripper finger 130 and linkage 139 each define an involute profile,
thereby satisfying the argued features of the rejected claims. Therefore, we
sustain the Examiner’s § 103 rejection of claims 2 and 4 as being
unpatentable over Dufour. See In re Fracalossi, 681 F.2d 792, 794,
215 USPQ 569, 571 (CCPA 1982)(lack of novelty is the epitome of
obviousness).

CONCLUSION
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

clj

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Application 10/861,057

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