Ex Parte Hieronymus et al

Patent Trial and Appeal Board

Sep 10, 2013

11415052 (P.T.A.B. Sep. 10, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/415,052 05/01/2006 Jens Hieronymus A-4341 4700
24131 7590 09/11/2013
LERNER GREENBERG STEMER LLP
P O BOX 2480
HOLLYWOOD, FL 33022-2480
EXAMINER
HINZE, LEO T
ART UNIT PAPER NUMBER
2854
MAIL DATE DELIVERY MODE
09/11/2013 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 JENS HIERONYMUS, JURGEN MICHELS,
DIETER SCHAFFRATH, WOLFGANG SCHONBERGER,
BERNHARD SCHWAAB, and MICHAEL THIELEMANN
____________

Appeal 2011-004229
Application 11/415,052
Technology Center 1700
____________

Before CHUNG K. PAK, JEFFREY T. SMITH, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge

DECISION ON APPEAL

Appeal 2011-004229
Application 11/415,052

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Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 3, 6-8, and 11. We have jurisdiction over the
appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.

Claim 3 is illustrative of the claimed subject matter (emphasis added):
3. A printing press comprising:
an anilox inking unit with a screen roller and a clutch
integrated into said anilox inking unit, said clutch stopping
rotation of said screen roller during reverse running of the
printing press, said anilox inking unit including a roller resting
on said screen roller during a continuous printing operation, a
gear coaxial with said roller, a further gear coaxial with said
screen roller, and a multi-wheeled gear mechanism
interconnecting said gears, said clutch being integrated into
said gear mechanism;
a printing form cylinder;
an auxiliary motor integrated into said anilox inking unit
for rotating said screen roller during rotational standstill of said
printing form cylinder; and
a further clutch integrated into said anilox inking unit,
said further clutch preventing transmission of a main driving
gear mechanism movement to said auxiliary motor during
continuous printing operation.
The Examiner maintains, and Appellants appeal, the following
rejections:
1) claim 4 as indefinite under 35 U.S.C. § 112, second paragraph;
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Application 11/415,052

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2) claims 3, 4, 6, and 7 under 35 U.S.C. § 103(a) as unpatentable over
Franklin (US 6,745,689 B2, issued June 8, 2004) in view of
Achelpohl (US 5,787,811, issued Aug. 4, 1998); and
3) claims 3, 4, 6-8, and 11 under 35 USC § 103(a) as unpatentable
over Franklin in view of Dickerson (US 4,007,683, issued Feb. 15,
1977).

Appellants agree that the rejection of claim 4 under 35 U.S.C. § 112
as indefinite because it is inconsistent with claim 3 is appropriate, and state
that claim 4 “will be canceled” (Br. 5). Accordingly, we summarily affirm
the rejection of claim 4 under 112, second paragraph.
Appellants focus the arguments on sole independent claim 3 (id. at 7-
13). Appellants do not separately argue any of the rejected dependent claims
in either ground of rejection (id.).
ANALYSIS
Upon consideration of the evidence on this record and each of
Appellants’ contentions, we find that the preponderance of evidence on this
record supports the Examiner’s conclusion that the subject matter of
Appellants’ independent claim 3 is unpatentable over the combined prior art
of Franklin with either one of Achelpohl or Dickerson. Accordingly, we
sustain each of the Examiner’s rejections of the claims on appeal for the
reasons set forth in the Answer, including the Response to Argument
section, which we incorporate herein by reference.
We provide the following for emphasis only. The main issue on
appeal for claim 3 turns on the broadest reasonable interpretation of the
claim language “said clutch being integrated into said gear mechanism”. It
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is well established that “the PTO must give claims their broadest reasonable
construction consistent with the specification . . . Therefore, we look to the
specification to see if it provides a definition for claim terms, but otherwise
apply a broad interpretation.” In re ICON Health & Fitness, Inc., 496 F.3d
1374, 1379 (Fed. Cir. 2007). “[A]s applicants may amend claims to narrow
their scope, a broad construction during prosecution creates no unfairness to
the applicant or patentee.” Id. While the Examiner has set forth a broad and
yet reasonable interpretation of the claim language supported by a dictionary
(e.g., Ans. 5, 8, 11-13), Appellants have not pointed to any definitions or
disavowals in the Specification or otherwise clearly explaining why the
Examiner’s interpretation is unreasonable. Notably, Appellants have
provided no intrinsic or extrinsic evidence, or any persuasive line of
technical reasoning, explaining why the Examiner’s broadest reasonable
interpretation is in error (see generally Br.; no Reply Br. has been filed).
Accordingly, the Examiner’s § 103 rejections are affirmed.

ORDER
The rejection of claim 4 under 35 U.S.C. § 112, second paragraph, is
affirmed.
The rejection of claims 3, 4, 6, and 7 over the combined prior art of
Franklin and Achelpohl under 35 U.S.C. § 103 (a) is affirmed.
The rejection of claims 3, 4, 6-8 and 11 over the combined prior art of
Franklin and Dickerson under 35 U.S.C. § 103 (a) is affirmed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
Appeal 2011-004229
Application 11/415,052

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AFFIRMED

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