11729389 (P.T.A.B. Dec. 6, 2013)

Ex Parte Gotz et al

Patent Trial and Appeal BoardDec 6, 2013

11729389 (P.T.A.B. Dec. 6, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE 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. 11/729,389 03/28/2007 Reiner Gotz A-4476 5511 24131 7590 12/09/2013 LERNER GREENBERG STEMER LLP P O BOX 2480 HOLLYWOOD, FL 33022-2480 EXAMINER CULLER, JILL E ART UNIT PAPER NUMBER 2854 MAIL DATE DELIVERY MODE 12/09/2013 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 REINER GOTZ,1 Claudius Haas, Reiner Haas, and Marius Stelter ________________ Appeal 2011-007973 Application 11/729,389 Technology Center 2800 ________________ Before PETER F. KRATZ, MARK NAGUMO, and MICHAEL P. COLAIANNI, Administrative Patent Judges. NAGUMO, Administrative Patent Judge. DECISION ON APPEAL Reiner Gotz, Claudius Haas, Reiner Haas, and Marius Stelter (“Gotz”) timely appeal under 35 U.S.C. § 134(a) from the Final Rejection2 of claims 1 1 The real party in interest is listed as Heidelberger Druckmaschinen AG. (Appeal Brief, filed 18 October 2010 (“Br.”), 2.) 2 Office action mailed 8 July 2010 (“Final Rejection”; cited as “FR”). Appeal 2011-007973 Application 11/729,389 2 and 3, which are all of the pending claims. We have jurisdiction. 35 U.S.C. § 6. We reverse. OPINION A. Introduction3 The subject matter on appeal relates to methods of applying powder to freshly printed sheets. The 389 Specification teaches that a defined powder amount is applied to each freshly printed sheet to prevent ink transfer from one sheet to the next in the delivery stack. (Spec., para. bridging 1-2.) The Specification teaches further that the prior art4 teaches a maximum air impulse flow of about 0.04 newtons to apply the powder to the sheets, above which there is a “disadvantageous effect on the sheet run.” (Id. at 2, ll. 9-15.) The Specification teaches further that printing presses with a delivery having gripper bars for fixedly holding a sheet at the front and rear edges at the same time were known. (Id. at ll. 17-21, citing a German patent publication.) The claimed invention involves applying powder to sheets at an air flow impulse of 3.5 5to 10 newtons. The sheets are held by gripper bars at the front and rear edges. 3 Application 11/729,389, Method for applying powder to a printed sheet and printing press for carrying out the method, filed 28 March 2007, claiming the benefit of a German application filed 28 March 2006. The specification is referred to as the “389 Specification,” and is cited as “Spec.” 4 Reiner Haas and Günther Hess, U.S. Patent 6,413,580 (2002). Appeal 2011-007973 Application 11/729,389 3 Claim 1 is representative and reads: A method for applying powder to a printed sheet, the method comprising the following steps: ejecting air flows from a nozzle bar; setting the ejection of the air flows per meter length of the nozzle bar to produce a resultant force acting on the printed sheet of from 3.5 newtons to 10 newtons; transporting the printed sheet past the nozzle bar with a transport device including: a first chain conveyor having a first pair of endless chains carrying front gripper bars, and a second chain conveyor having a second pair of endless chains carrying rear gripper bars; and holding a front edge of the printed sheet with one of the front gripper bars and simultaneously holding a rear edge of the printed sheet with one of the rear gripper bars during transport. (Claims App., Br. 10; indentation and paragraphing added.) The Examiner maintains the following ground of rejection:5 Claims 1 and 3 stand rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Cole6 and Blaser.7 5 Examiner’s Answer mailed 5 January 2011 (“Ans.”). 6 Herbert Cole, Dry spray for preventing offset, U.S. Patent 2,266,849 (1941). 7 Peter T. Blaser, Sheet-guiding assembly in a delivery system of a printing press, U.S. Patent 5,431,386 (1995). Appeal 2011-007973 Application 11/729,389 4 B. Discussion Findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. As Gotz points out (Br. 6), the difficulty with the rejection is there is no evidence supporting the Examiner’s implicit finding that a force in the recited range of 3.5 newtons to 10 newtons would have been “an appropriate level of force” for the “parameters of the system, such as the size and composition of the printed sheet[s]” (FR. 3, last para.) used by Cole and by Blaser. Indeed, the only evidence of record regarding what persons having ordinary skill in the art would have regarded as an appropriate level of force is the 0.04 newtons reported by the prior art as an upper limit (Spec. 2, ll. 9-15.) The minimum force required to meet the claims is some 90 times larger. A prerequisite condition for the obviousness of optimization via routine experimentation is a recognition in the prior art of the range over which that optimization may be accomplished. When, as here, the range of pressure to be applied is some two orders of magnitude higher than the maximum pressure recognized by the prior art of record, and no explanation of why the routineer would have discounted that maximum is offered, a prima facie case of obviousness has not been established.8 8 Cf., e.g., In re Sebek, 465 F.2d 904, 907 (CCPA 1972) (“while it may ordinarily be the case that the determination of optimum values for the parameters of a prior art process would be at least prima facie obvious, that conclusion depends upon what the prior art discloses with respect to those parameters. Where . . . the prior art disclosure suggests the outer limits of Appeal 2011-007973 Application 11/729,389 5 C. Order We reverse the rejection of claims 1 and 3. REVERSED cdc the range of suitable values, and that the optimum resides within that range, and where there are indications elsewhere that in fact the optimum should be sought within that range, the determination of optimum values outside that range may not be obvious.”)