Ex Parte Guaraldi

Patent Trial and Appeal Board

Apr 14, 2014

12290618 (P.T.A.B. Apr. 14, 2014)

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.
12/290,618 10/31/2008 Glenn Alan Guaraldi 6003.1165 2042
23280 7590 04/15/2014
Davidson, Davidson & Kappel, LLC
485 7th Avenue
14th Floor
New York, NY 10018
EXAMINER
NICHOLSON III, LESLIE AUGUST
ART UNIT PAPER NUMBER
3651
MAIL DATE DELIVERY MODE
04/15/2014 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 GLENN ALAN GUARALDI
________________

Appeal 2012-002809
Application 12/290,618
Technology Center 3600
________________

Before EDWARD A. BROWN, MICHAEL L. HOELTER and
FRANCES L. IPPOLITO, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2012-002809
Application 12/290,618

2
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner’s final rejection of claims 1-12 and 14-20. Br. 2. Independent
claim 13 has been allowed. Ans. 3. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates generally to printing presses and
more particularly to chains for conveying printed products.” Spec. para.
[0001]. Independent claim 1 is illustrative of the claims on appeal and is
reproduced below:
1. A saddle stitcher for conveying a printed product
comprising:
a saddle chain conveyor; and
a plurality of chain tops mounted on the saddle chain
conveyor defining a chain top conveyance line for transporting
a printed product;
at least one of the chain tops including a profiled top
edge so the at least one chain top does not extend beyond the
chain top conveyance line in a transition area.

REFERENCES RELIED ON BY THE EXAMINER
Anker US 5,375,824 Dec. 27, 1994
Hartsoe US 5,685,533 Nov. 11, 1997
Kinne US 7,281,706 B2 Oct. 16, 2007

THE REJECTIONS ON APPEAL
Claims 1-6, 8-12, 14, 15, and 17-20 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Kinne. Ans. 4.
Appeal 2012-002809
Application 12/290,618

3
Claims 1, 4-7, 9-12, 14, and 16-20 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Hartsoe. Ans. 7.
Claims 1, 4-7, 9-12, 14, and 16-20 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Anker. Ans. 9.
ANALYSIS
The rejection of claims 1-6, 8-12, 14, 15, and 17-20
as being anticipated by Kinne
Appellant separately argues claims 1, 2, 4, 12, 14, 18, 19 and 20. Br.
6-11. We address each such claim separately. The remaining claims stand
or fall with their respective parent claim. See 37 C.F.R. § 41.37(c)(1)(vii)
(2011).
Claim 1
The Examiner identifies Kinne’s chain conveyor 50 and chain tops 52,
54 as corresponding to the claimed conveyor and chain tops. Ans. 4. The
Examiner also references Kinne figure 4B as illustrating “a profiled top edge
so the at least one chain top does not extend beyond the chain top
conveyance line in a transition area” as claimed. Ans. 5.
Appellant initially contends that Kinne does not teach or disclose “‘a
plurality of chain tops mounted on the saddle chain conveyor defining a
chain top conveyance line for transporting a printed product’” as claimed.
Br. 6. Kinne discloses the structure of “an endless main gatherer chain 50”
and Kinne figure 4B illustrates chain 50 along with “roof segment 52
immediately adjacent a stop surface 54.1 of one of the drivers 54.” Kinne
3:60-66 and 6:7-8. Additionally, Kinne teaches that “the copies 30 to be
stitched as well as the copies 32 then stitched” are transported to the transfer
station “by the main gatherer chain 50.” Kinne 4:2-6. Accordingly,
Appeal 2012-002809
Application 12/290,618

4
Appellant’s contention that Kinne does not teach or disclose chain tops (i.e.,
items 52, 54) mounted on the saddle chain conveyor (i.e., item 50) which
define a chain top conveyance line for transporting a printed product (i.e.,
items 30, 32) is not persuasive.
Appellant further contends that Kinne figure 4B does not disclose “‘a
transition area,’” but the Examiner identifies a first transition area of Kinne
as being “the transition from chain tops 52 to ejector belts 29.1” and
“[a]nother transition area can be the transition from chain 40 to chain 50.”
Ans. 17. Appellant does not show how the Examiner erred in these findings
regarding the claimed “transition area.”
Appellant further contends that Kinne lacks the limitation “‘at least
one of the chain tops including a profiled top edge so the at least one chain
top does not extend beyond the chain top conveyance line in a transition
area’” as also claimed. Br. 6. Kinne teaches that adjacent components of
chains 40 and 50 “are flush along the conveying stringer or strand.” Kinne
4:24-43; see also Ans. 15. Kinne further teaches that the relied-upon “main
gatherer chain 50 [along with secondary chain 40] jointly constitute a
pitched roof forming a ridge region F along the conveying stringer.” Kinne
4:16-22. Referenced figure 4B of Kinne (Ans. 5) illustrates this ridge region
F of roof segment 52 as having a curvature. The Examiner further finds that
Kinne’s roof segment 52 has “a profiled top edge very similar to the profiled
top edge disclosed by Applicant in the figures of the instant application,
while figures 2 and 3 show the roof segments in a transition area.” Ans. 14.
The Examiner further finds that “because Kinne discloses a profiled top edge
substantially similar to that disclosed by Applicant . . . the same expected
result of the instant application must also occur in Kinne, in that at least one
Appeal 2012-002809
Application 12/290,618

5
of the chain tops of Kinne does not extend beyond the chain top conveyance
line in a transition area.” Ans. 15; see also Ans. 16. It is well settled that
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 products do not
necessarily or inherently possess the characteristics of his claimed product.”
In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
Appellant contends that the arrangement shown in Kinne figures 2 and
4B “would result in the roof segments 52 extending beyond the ‘chain top
conveyance line’ when copy is transferred from main gathering line 50 to
transfer station 29” and further that “[t]he curved or rounded appearance of
roof segments 52 shown in Fig. 4B is not sufficient support for the
anticipation rejection.” Br. 7. We disagree with Appellant’s contention
because Appellant does not explain where Kinne discloses that segments 52
extend beyond the “chain top conveyance line” as asserted. Further,
Appellant does not dispute that Kinne’s segments 52 are shown as being
curved or rounded (i.e., “profiled”).1 In view of the record presented,
Appellant’s contention is not persuasive of Examiner error.
Appellant also contends that Kinne’s drivers 54 are “on one side of
the chain 50.” Br. 6. However, claim 1 only addresses a “top edge” and
thus the illustration in Kinne of drivers 54 also being on “one side” of the
conveyor chain is not persuasive of Examiner error.
Appellant also contends that at the transition area from chain tops 52
to ejector belts 29.1, there is no advantage for Kinne “to provide a profiled

1 While Kinne does not describe that the drawings show this structure, that
does not mean “that things patent drawings show clearly are to be
disregarded.” In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972).
Appeal 2012-002809
Application 12/290,618

6
top edge of roof segments 52 in the transfer area” and further, that there is
no reason why Kinne “would provide ‘at least one chain top including a
profiled top edge’ as recited in claim 1.” Br. 7. The Examiner responds to
the effect that the rejection at hand is an anticipation rejection based on the
structure shown in Kinne while “Appellant’s argument rather appears to be
arguing an obviousness type rejection that has not been made.” Ans. 17. As
discussed above, we agree with the Examiner in that Appellant has not
shown where any structure recited in claim 1 is lacking in Kinne. Ans. 15.
Appellant further contends that “drivers 54 do not form part of the
pitched roof ridge region F created by segments 52 and thus, drivers do not
define ‘a chain top conveyance line’ as recited in claim 1.” Br. 7. This
argument is analogous to arguing art separately. Here, the Examiner
identified both items 52 and 54 as corresponding to the claimed “chain
tops,” not just item 54 as here argued by Appellant. Ans. 4. Further, when
discussing chain conveyor 50, Kinne states that “[t]he section illustrated in
FIG. 4B includes a plurality of roof segments 52 and one of the above-
mentioned drivers 54.” Kinne 5:52-53. In view of the above, Appellant’s
contention that drivers 54 “do not define ‘a chain top conveyance line’” is
not persuasive. Br. 7.
Appellant also contends that Kinne’s driver 54 does not include “a
profiled top edge.” Br. 8. Again, Appellant focuses on only one of the
chain tops identified by the Examiner. Ans. 4. Appellant does not dispute
that Kinne’s roof segment 52 is illustrated as being curved or rounded. See
Kinne fig. 4B.
Accordingly, and in view of the record presented, we sustain the
Examiner’s rejection of claims 1, 8-11, 15, and 17.
Appeal 2012-002809
Application 12/290,618

7
Claim 2
Claim 2 depends from claim 1 and includes the additional limitation
that “at least one of the chain tops does not include the profiled top edge.”
Here, the Examiner identifies Kinne’s driver 54 as not including the profiled
top edge as claimed. Ans. 5, referencing figs. 4A, 4B. Appellant initially
repeats the argument above that “driver 54 is not a chain top or roof
segment.” Br. 8. For similar reasons, we do not find this argument
persuasive. Appellant also mis-construes the Examiner’s basis for the
rejection of claim 2 by asserting that the Examiner relies on Kinne’s driver
54 for both showing a chain top that is profiled and a chain top that is not
profiled. Br. 8. Appellant ignores the Examiner’s reliance on Kinne’s roof
segment 52 and that “chain tops 52 and 54 together define a chain top
conveyance line as shown in at least figures 2, 3, 4B.” Ans. 19; see also
Ans. 4, 20-21. Appellant’s contention is not persuasive and accordingly, we
sustain the Examiner’s rejection of claims 2 and 3.
Claim 4
Claim 4 depends from claim 1 and includes the additional limitation
that the at least one profiled chain top “includes a trailing surface that
remains within a plane of the chain top in the transition area.” The
Examiner identifies certain language in Kinne as disclosing this feature but
Appellant contends that the portions identified by the Examiner do not
discuss such a “trailing surface” as claimed. Ans. 5; Br. 9. In response, the
Examiner further states that “at least figure 4B clearly shows the structure of
the chain tops each including a trailing surface.” Ans. 22. Appellant does
not indicate how Kinne figure 4B fails to illustrate the claimed trailing
surface. Accordingly, we sustain the Examiner’s rejection of claims 4-6.
Appeal 2012-002809
Application 12/290,618

8
Claim 12
With respect to independent method claim 12, Appellant relies on the
same contentions “[a]s argued above with respect to claim 1.” Br. 9; see
also Br. 10. Such arguments are not persuasive for similar reasons and
accordingly, we sustain the Examiner’s rejection of claim 12.
Claim 14
Claim 14 depends from claim 12 and includes the additional limitation
directed to a “trailing surface” similar to that recited in claim 4 discussed
supra. Appellant repeats the argument that Kinne’s roof segment 52 does
not include such a “trailing surface” (Br. 10) but this argument is not
persuasive for the reasons set forth with respect to claim 4. Further,
Appellant’s recitation of the limitation in question and the naked assertion
that Kinne fails to teach same is not persuasive. See In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.”). Accordingly,
we sustain the Examiner’s rejection of claim 14.
Claim 18
Claim 18 depends from claim 1 and includes the additional limitation
that “the chain top is composed of two halves fastened together.” The
Examiner references Kinne figure 4B for disclosing this limitation and
particularly item 52. Ans. 7, 27. Appellant “submits driver 54 is not a chain
top” nor is it “composed of two halves fastened together’” as claimed. Br.
10. Appellant’s focus on driver 54 and not roof segment 52 as relied on by
Appeal 2012-002809
Application 12/290,618

9
the Examiner is not persuasive of Examiner error. We sustain the
Examiner’s rejection of claim 18.
Claims 19 and 20
Claims 19 and 20 depend from claims 1 and 4 respectively. Claim 19
includes the additional limitation “wherein the profiled top edge does not
contact a spine of the book in the transition area” while claim 20 includes
the limitation “wherein the trailing surface does not disrupt the book in the
transition area during a transfer.” The Examiner finds the recited limitations
to be functional in nature, not structural, and as such, Kinne is capable of
performing these functions. Ans. 7, 27-33. Appellant addresses the
Examiner’s rejection apparently as if it were based on inherency in stating
whether a “characteristic may occur or be present in the prior art is not
sufficient to establish the inherency of that result or characteristic.” Br. 11.
The Examiner clarifies “that inherency was not used as a basis of rejection”
and as such, Appellant’s “argument is moot.” Ans. 29, 33. We agree with
the Examiner that the additional limitations recited in claims 19 and 20 are
functional in nature and we further agree with the Examiner that
“[a]pparatus claims must be structurally distinguishable from the prior art”
and also that “apparatus claims cover what a device is, not what a device
does.” Ans. 28. Appellant does not present any such structural distinction
over Kinne and that required by claims 19 and 20 and as such, we sustain the
Examiner’s rejection of claims 19 and 20.
The rejection of claims 1, 4-7, 9-12, 14, and 16-20
as being anticipated by Hartsoe
The Examiner finds that Hartsoe discloses a plurality of chain tops
(items 17, 20) and that “at least one of the chain tops include[s] a profiled
Appeal 2012-002809
Application 12/290,618

10
top edge.” Ans. 7. Appellant disputes that Hartsoe discloses a chain top that
includes “a profiled top edge.” Br. 12. The Examiner references figures 2,
17, and 20 of Hartsoe for disclosing chain conveyor 22 and its associated
chain tops (Ans. 7, 35), but the figures relied upon disclose chain tops that
are flat or square across the top. In this regard, Appellant’s Specification
makes a distinction between chain tops that are squared and those that are
“profiled.” Spec. para. [0025]. Appellant’s Specification states that
“[s]quared chain tops 222 [are] dispersed amongst profiled chain tops 122.”
Spec. para. [0025]. Hence, the Examiner does not explain how Hartsoe’s
disclosure of flat or squared chain tops also discloses chain tops that have “a
profiled top edge” as claimed.
Appellant further separately argues independent claim 12 which also
includes the limitation of “a profiled top edge” discussed above with respect
to claim 1. For similar reasons, we do not sustain the Examiner’s rejection
of claim 12.
Accordingly, because we do not sustain the Examiner’s rejection of
both independent claims on appeal (i.e., claims 1 and 12), we likewise do not
sustain the rejection of dependent claims 4-7, 9-11, 14, and 16-20 as being
anticipated by Hartsoe.
The rejection of claims 1, 4-7, 9-12, 14, and 16-20
as being anticipated by Anker
As noted above, both independent claims 1 and 12 include the
limitation of “a profiled top edge” and Appellant contends that Anker fails to
disclose this limitation. Br. 14. More specifically, Appellant contends that
Anker disclose “top edges that are straight across.” Br. 14; see also Br. 15.
Appeal 2012-002809
Application 12/290,618

11
The Examiner has identified Anker’s conveyor 22 and associated
chain tops 26 as corresponding to Appellant’s claimed structure and further
“that figure[s] 1, 2 [of Anker] show[] a profile[d] top edge.” Ans. 9, 43.
Anker figures 1 and 2 disclose chain top 26 as having a flat or square shape.
However, Anker teaches that “[t]he particular form of the chains 22 and 32,
and specifically the links 26 and 36 and associated pusher pins 28 and 38 is
not critical to the claimed invention.” Anker 5:44-46. Nevertheless, the
broad disclosure that a particular form is not critical to the claimed invention
is not the same as disclosing, for anticipation purposes, a chain top that
specifically includes “a profiled top edge” when the Examiner fails to
identify where such is taught. In view of Appellant’s distinction between a
straight edge and a profiled edge (Spec. para. [0025]), we do not sustain the
Examiner’s rejection of claim 1 as being anticipated by Anker. We likewise
do not sustain the rejection of claims 4-7, 9-12, 14, and 16-20.

DECISION
The Examiner’s rejection of claims 1-6, 8-12, 14, 15, and 17-20 as
being anticipated by Kinne is affirmed.
The Examiner’s rejection of claims 1, 4-7, 9-12, 14, and 16-20 as
being anticipated by Hartsoe is reversed.
The Examiner’s rejection of claims 1, 4-7, 9-12, 14, and 16-20 as
being anticipated by Anker is reversed.
In summary, the Examiner’s rejection of claims 1-6, 8-12, 14, 15, and
17-20 are sustained while the Examiner’s rejection of claims 7 and 16 are
reversed.

Appeal 2012-002809
Application 12/290,618

12
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-IN-PART

mls