Ex Parte Herden et al

Patent Trial and Appeal Board

Jul 29, 2013

11800498 (P.T.A.B. Jul. 29, 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.
11/800,498 05/04/2007 Matthias Herden A-4498 9014
24131 7590 07/30/2013
LERNER GREENBERG STEMER LLP
P O BOX 2480
HOLLYWOOD, FL 33022-2480
EXAMINER
SUAREZ, ERNESTO A
ART UNIT PAPER NUMBER
3653
MAIL DATE DELIVERY MODE
07/30/2013 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 MATTHIAS HERDEN and BERNHARD WAGENSOMMER
____________

Appeal 2011-005082
Application 11/800,498
Technology Center 3600
____________

Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
GAY ANN SPAHN, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
rejection of claims 1, 3, 4, 6, and 10-12. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
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Claimed Subject Matter
Claim 1, reproduced below, with emphasis added, is illustrative of the
appealed subject matter.
1. A sheet transport apparatus in a sheet processing machine
being a printing press, the sheet transport apparatus being
disposed between a feeder and a first printing unit of the sheet
processing machine, the sheet transport apparatus comprising:
at least one driven transport belt for a transport of sheet
printing materials from the feeder to the first printing unit, said
driven transport belt configured for being driven at different
transport speeds, an acceptance speed for acceptance of the
sheet printing materials at the feeder being carried out at a
relatively low transport speed that is substantially or actually a
standstill, and a transfer speed for transfer of the sheet printing
materials at the first printing unit being carried out at a
relatively high transport speed in comparison to the relatively
low transport speed, the transfer speed corresponding to a
processing speed of the printing press; and
a suction head for transporting the printing materials
from the feeder toward a sheet acceptance of said transport
belt.

Independent claim 11 is directed to a printing press including, inter
alia, similar claim language as italicized in claim 1 supra.

Rejections
The following Examiner’s rejections are before us for review:
I. claims 1 and 11 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement;
II. claims 1 and 11 under 35 U.S.C. § 112, second paragraph, as
indefinite for failing to particularly point out and distinctly claim the subject
matter which Appellants regard as the invention; and
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III. claims 1, 3, 4, 6, and 10-12 under 35 U.S.C. § 102(b) as
anticipated by Wells (US 4,867,433, issued Sep. 19, 1989).

OPINION
Rejection I – Lack of Written Description
Appellants argue that the Specification supports the above-quoted
suction head claim language by stating that “the sheets 7 in the feeder are
removed from the stack 8 by a suction head 18, which lifts the sheets 7 by
lifting suckers 19 and transports them in the direction of the sheet
acceptance 26 by dragging suckers 21.” App. Br. 7 (citing Spec. 13, ll. 4-8).
The Examiner notes that the suction head claim language was added
by amendment to claims 1 and 11, and finds that this language constitutes
new matter which is not supported by the original disclosure. Ans. 3-4. In
particular, the Examiner explains that the sentence in the Specification on
which Appellants rely does not support the language that the “suction head
transport[s] the printing materials from the feeder,” because “it appears that
the claimed suction head is part of the claimed feeder.” Ans. 4.
As we understand the Examiner’s explanation of the rejection, the
Examiner is questioning Appellants’ use of the term “feeder,” because the
Examiner interprets the structure represented by reference numeral 18 as the
structure that is actually doing the function of feeding of the sheet 7.
Therefore, according to the Examiner, if the structure represented by
reference numeral 18 is doing the function of feeding the sheet 7, then that
structure is at least a part of the “feeder,” and cannot be said to transport the
sheet 7 from the feeder. However, we note that Appellants’ Specification
and Drawing Figures use the nomenclature that the structure represented by
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reference numeral 18 is a suction head and the structure represented by
reference numeral 2 is a feeder. As Appellants are allowed to be their own
lexicographer (see In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994)), and
as the Specification has no explicit definition for the term “feeder,” the term
“feeder” should be given its ordinary meaning and broadest reasonable
interpretation (see E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1368
(Fed. Cir. 2003)). “[T]he ordinary and customary meaning of a claim term
is the meaning that the term would have to a person of ordinary skill in the
art in question at the time of the invention….” Phillips v. AWH Corp., 415
F.3d 1303, 1313 (Fed. Cir. 2005) (en banc).
In the present case, a person of ordinary skill in the art would
understand the claim term “feeder” to be synonymous with “sheet feeder”
which has the ordinary and customary meaning of: “a mechanism that holds
a stack of paper and feeds each sheet into a printer one at a time”1; “a
mechanical device that feeds stacks of cut forms (letterheads, legal paper,
etc.) into a printer”2; and “a device that feeds paper into a printer one sheet
at a time.”3 Thus, Appellants’ usage of the term “feeder” appears to be
consistent with the ordinary and customary meaning of that term and we do
not agree with the Examiner that the Appellants’ addition of the claim

1 See Webopedia Computer Dictionary, IT Business Edge, Quinstreet
Enterprise, copyright 2013, accessed at http://www.webopedia.com/
TERM/S/sheet_feeder.html (last visited: July 20, 2013).
2 See Computer Desktop Encyclopedia, Computer Language Company, Inc.,
copyright 1981-2010, accessed at http://computer.yourdictionary.com/sheet-
feeder (last visited: July 20, 2013).
3 See Random House Dictionary, Random House, Inc., copyright 2013,
accessed at http://dictionary.reference.com/browse/sheet-feeder (last visited:
July 20, 2013).
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language that the suction head 18 is for transporting the printing materials 7
from the feeder 2 toward a sheet acceptance 26 of the transport belt 27 is
new matter that is not supported by the original disclosure.
Accordingly, we do not sustain the Examiner’s rejection of claims 1
and 11 under 35 U.S.C. § 112, first paragraph, for failing to comply with the
written description requirement.

Rejection II – Indefiniteness
Appellants argue that the suction head claim language is clear and “it
is easily understood how the suction head transports the printing material
from the feeder to the belt.” App. Br. 10.
The Examiner determines that the suction head claim language is
“lacking sufficient structure,” because it is unclear that the suction head is
“capable of transporting printing materials from the claimed feeder to a
belt,” when “the claimed suction head is part of the feeder.”
We again understand the Examiner to be questioning Appellants’
usage of the terms “feeder” and “suction head.” Indeed, the Examiner
indicates that “[i]t is unclear how the feeder 2 would be capable of
performing the function” of feeding the sheet 7 without the suction head, and
“because the suction head 18 is capable of feeding and does in fact feed the
printing materials 7 to the transport belt [27], the suction head 18 appears to
comprise the feeder.” Ans. 10-11.
As discussed supra with respect to the rejection of claims 1 and 11
under 35 U.S.C. § 112, first paragraph, a person of ordinary skill in the art
would understand the claim term “feeder” to be synonymous with “sheet
feeder” which has the ordinary and customary meaning of “a mechanism
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that holds a stack of paper and feeds each sheet into a printer one at a time.”
Because Appellants’ usage of the term “feeder” appears to be consistent with
the ordinary and customary meaning of that term and we do not agree with
the Examiner that the Appellants’ suction head claim language is unclear.
Accordingly, we do not sustain the Examiner’s rejection of claims 1
and 11 under 35 U.S.C. § 112, second paragraph, as indefinite.

Rejection III – Anticipation based on Wells
Appellants argue independent claims 1 and 11 as a group (App. Br.
11-15) and do not offer any separate arguments for claims 3, 4, 6, 10, and 12
(App. Br. 15). We select independent claim 1 as the representative claim
and claims 3, 4, 6, and 10-12 fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
Appellants argue that “Wells does not disclose a suction head,” but
“[i]nstead, Wells discloses a vacuum chamber (152) with a vacuum supply
ducts (154) for applying vacuum through the support surface (24) to secure
the bottom sheet to be fed on the belts (130).” App. Br. 12. Appellants also
argue that “Wells does not disclose that the vacuum chamber transports the
printing materials from the feeder toward a sheet acceptance of the transport
belt,” because “Wells explicitly discloses that the belts (130), while
stationary, are raised into static frictional engagement with the bottom
sheet in the stack” and thus, “Wells discloses that the sheet acceptance of the
belt is brought into contact with the sheet stack.” App. Br. 12-13 (citing
Wells, col. 9, ll. 25-28).
We are not persuaded by Appellants’ argument that “Wells does not
disclose that the vacuum chamber transports the printing materials from the
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feeder toward a sheet acceptance of the transport belt”, because it is well
settled that “a statement of intended use… does not qualify or distinguish the
structural apparatus claimed over the reference.” In re Sinex, 309 F.2d 488,
492 (CCPA 1962). In other words, Wells is not required to disclose that its
suction head (vacuum supply duct 152 working through support surface 24
in conjunction with the feed belt 130) transports the printing materials from
the feeder toward a sheet acceptance of the transport belt. Rather, Wells’
suction head only needs to be capable of performing the recited intended use
of “transporting the printing materials from the feeder toward a sheet
acceptance of said transport belt.” Thus, the Examiner correctly responds to
Appellants’ arguments by stating that “the claim language does not
structurally limit the suction head and does not preclude the vacuum
chamber (152) with the vacuum supply duct (154) of Wells from
anticipating the claimed suction head.” Ans. 11. We agree with the
Examiner that because the vacuum applied through support surface 24
draws, i.e., pulls or feeds, the bottom sheet into firm engagement with
feeding belts 130, vacuum chamber 152 and vacuum supply duct 154
constitute a suction head, as called for by independent claim 1. See Ans. 12.
Accordingly, we sustain the Examiner’s rejection of claim 1, and
claims 3, 4, 6, and 10-12 which fall therewith, under 35 U.S.C. § 102(b) as
anticipated by Wells.

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DECISION
We REVERSE the Examiner’s decision to reject claims 1 and 11
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement, and under 35 U.S.C. § 112, second paragraph, as
indefinite.
We AFFIRM the Examiner’s decision to reject claims 1, 3, 4, 6, and
10-12 under 35 U.S.C. § 102(b) as anticipated by Wells.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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