Ex Parte Hearn

Board of Patent Appeals and Interferences

Mar 31, 2010

09533685 (B.P.A.I. Mar. 31, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MICHAEL LEE HEARN
____________________

Appeal 2008-002791
Application 09/533,685
Technology Center 3700
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Decided: March 31, 2010
____________________

Before: LINDA E. HORNER, WILLIAM F. PATE III, and
JOHN C. KERINS, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
22-30, 33-38, and 40.1 We have jurisdiction under 35 U.S.C. § 6(b).

1 Similar claims in this application have been before the Board before in
Appeal No. 2005-2097. The decision was rendered on January 18, 2006.
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The claims are directed to a cutting and nipping device for accurately
cutting signatures in a bookmaking process. Claim 22, reproduced below, is
illustrative of the claimed subject matter:
22. A cutting and nipping device for cutting and nipping a
web, comprising:
a first cutting cylinder having a first segmented cutting
blade with axially spaced first blade edges and having first
blade sides and a first cutting cylinder nipping surface
extending circumferentially about the first cutting cylinder from
the first blade sides; and
a first anvil cylinder having a first anvil cylinder nipping
surface extending circumferentially about the first anvil
cylinder;
the first cutting cylinder nipping surface and the first
anvil cylinder nipping surface providing a first nip for the web
about the first segmented cutting blade,
the first blade edges extending radially beyond the first
cutting cylinder nipping surface when the first blade edges are
apart from the first anvil cylinder.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Brown ‘410
Henc
Sauer
Wolfberg
Marcus
Jespersen
Brown ‘914
Irsik
US 2,951,410
US 3,119,312
US 3,522,762
US 3,866,497
US 3,921,481
US 4,142,431
US 5,359,914
US 5,967,512
Sep. 6, 1960
Jan. 28, 1964
Aug. 4, 1970
Feb. 18, 1975
Nov. 25, 1975
Mar. 6, 1979
Nov. 1, 1994
Oct. 19, 1999
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Application 09/533,685

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Bussey, III
Kirkpatrick, Jr.
US 6,418,827 B1
US 6,435,069 B1
Jul. 16, 2002
Aug. 20, 2002

REJECTIONS
Claims 22, 26 and 33 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Bussey. Ans. 3.
Claims 22, 26, 28, 30, 33 and 36 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Wolfberg. Ans. 4.
Claims 22, 26, 28 and 33 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Brown ‘410 and Jespersen. Ans. 5.
Claims 22, 26, 28, 30, 33 and 36 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Marcus in view of Wolfberg. Ans. 6.
Claim 26 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bussey and Henc or Sauer. Ans. 7.
Claims 26 and 28 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wolfberg and Henc or Sauer. Ans. 8.
Claims 26 and 28 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Marcus, Wolfberg and Henc or Sauer. Ans. 8.
Claims 26 and 28 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brown ‘410, Jespersen, and Henc or Sauer. Ans. 9.
Claims 23, 27, 29, 34, 37 and 40 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Marcus, Wolfberg, Henc or Sauer and
Brown ‘914. Ans. 9.
Claims 24, 25, 35, and 38 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Marcus, Wolfberg, Henc or Sauer and Kirkpatrick.
Ans. 10.
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Claims 23, 24, 27, 29, 34, 35 and 40 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Brown ‘410, Jespersen, Henc or Sauer,
and Irsik. Ans. 10.
ANALYSIS
We have carefully reviewed the rejections on appeal in light of the
arguments of the Appellant and the Examiner. As a result of this review, we
have reached the determination that the applied prior art does not establish
the lack of novelty or the prima facie obviousness of the claims on appeal.
Accordingly, all rejections on appeal are reversed. Our reasons follow.
In the prior appeal, the panel construed the claim term “nip” in a web
printing press as being the location where the web is squeezed or
compressed together so that the web in the nip does not slip or move with
respect to the cylinder in a way that could affect print-to-print or print-to-cut
registration. See prior decision at 5. We adopt this claim construction as our
own, and will construe the claims and the prior art based on this definition.
Turning to the rejection under § 102 based on the Bussey reference,
Bussey discloses a perforating machine for perforating plastic foam web and
plastic bubble web. See col. 2, ll. 11-16. During the perforating operation,
the web to be perforated is supported by brush roll 45. See col. 5, ll. 20-22.
Bussey states, "[t]he brush roll 45 may be formed of a plurality of
upstanding filaments so as to provide a suitable surface for gently supporting
the traveling web 15 and for rotating therewith." See col. 5, ll. 43-46. This
sentence is dispositive of this rejection. Bussey clearly states that the web is
merely gently supported by the brush roll 45, and this gentle support is
inimical to the Appellant’s claimed nip. Accordingly, claims 22, 26, and 33
do not lack novelty over the Bussey reference.
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Turning to the rejection of claims 22, 26, 28, 30, 33, and 36 as
anticipated by Wolfberg, we will not sustain this rejection. We acknowledge
the Examiner's argument that Wolfberg would be capable of engaging the
web of business forms in a nip during perforating, especially if the web were
thicker. This rejection is based on the principle of inherency, and the
Examiner must show that the disclosure of Wolfberg necessarily provides
the claimed nip. The Examiner has not sustained this burden. We are in
agreement with the panel that reviewed a rejection in the previous appeal
based on the Wolfberg reference and determined that the Examiner's
rejection was based on speculation and conjecture. The Examiner can point
to no disclosure in Wolfberg that the claimed nip is formed. In fact, it is
possible that if the claimed nip were formed in the device of Wolfberg, the
compression of the web would result in carbon paper transfer on the
underlying sheets. Therefore, the Examiner has not established that claims
22, 26, 28, 30, 33, and 36 lack novelty over the Wolfberg disclosure.
Turning to the rejection of claims 22, 26, 28, and 33 under § 103 as
unpatentable over Brown ‘410 in view of Jespersen, we will not sustain this
rejection. Brown is directed to an apparatus for cutting chaff. The chaff is
cut on an angle and thereafter dispersed. See col. 1, ll. 15-19 and col. 4, ll.
73-75. Brown differs from the claimed subject matter in that the claimed
subject matter requires a segmented blade. Jespersen discloses a paper towel
dispenser with a segmented blade that perforates the paper towel material
before it is dispensed so that the user may sever the web. See col. 4, ll. 24-
43. We are in agreement with the Appellant that there is no articulated
reasoning with a rational underpinning for the combination of these two
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references. It is unclear why one of ordinary skill would use a segmented
blade in the chaff dispenser of Brown. The Examiner's rejection appears to
posit a situation in which a user would manually separate the pieces of chaff
after perforation. We regard this as a far-fetched scenario. Accordingly, we
will not sustain this obviousness rejection.
Next considering the rejection of claims 22, 26, 28, 30, 33, and 36 as
unpatentable over Marcus in view of Wolfberg under § 103, we will not
sustain this rejection. Marcus is directed to a cutter for cutting a web of
newspaper. Marcus discloses a knife 34 surrounded by elastomeric cheeks
40 and 46. See col. 3, ll. 10-16; 17-45. A receptacle 12a is provided for
receiving the knife blade 12. See col. 3, ll. 46-48. These elastomeric
members are designed so that the paper or web compresses the first and
second cheeks. See col. 2, ll. 27-29. However, Marcus does not disclose a
first cutting cylinder nipping surface extending circumferentially about the
first cutting cylinder from the blade sides. If any nipping is occurring in
Marcus it is directly at the cutting surface, and there is no nipping extending
out circumferentially from the blade. Since we have already determined that
Wolfberg does not disclose the claimed nipping, neither Wolfberg nor
Marcus discloses this claimed feature. Therefore, the rejection of these
claims under § 103 cannot be sustained.
Concerning the rejection of claim 26 as unpatentable over Bussey in
view of Henc or Sauer, neither Henc nor Sauer ameliorates the difficulties
we have found with the base reference Bussey. Therefore the rejection of
claim 26 under § 103 as unpatentable over Bussey in view of Henc or Sauer
is reversed.
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Regarding the rejection of claims 26 and 28 as unpatentable over
Wolfberg in view of Henc or Sauer or as unpatentable over Marcus,
Wolfberg, Henc and Sauer, as we have seen, neither Wolfberg nor Marcus
discloses the claimed nipping and Henc and Sauer are not cited for this
claimed feature. Thus, the rejections of these claims are not sustained.
Concerning the rejection of claims 26 and 28 as being unpatentable
over Brown ‘410, Jespersen, and Henc or Sauer, Henc and Sauer add
nothing that we have found to be lacking in the combined teachings of
Brown and Jespersen. Accordingly this rejection is reversed.
Similarly the rejection of claims 23, 27, 29, 34, 37, and 40 as
unpatentable over Marcus, Wolfberg, Henc or Sauer, and Brown ‘914 is not
sustained. This rejection is reversed, inasmuch as neither Marcus nor
Wolfberg discloses the claimed nipping relationship and Henc, Sauer and
Brown also do not provide this feature.
Lastly, the rejection of claim 24, 25, 35, and 38 as unpatentable over
Marcus, Wolfberg, Henc or Sauer and Kirkpatrick and the rejection of
claims 23, 24, 27, 29, 34, 35, and 40 as unpatentable over Brown ‘410,
Jespersen, Henc, Sauer and Irsik are not sustained for the same reasons.

DECISION
For the above reasons, the Examiner’s rejections of all of the claims
on appeal are reversed.

REVERSED

Vsh

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