Ex Parte Hoedl et al

Patent Trial and Appeal Board

Apr 25, 2018

12115277 (P.T.A.B. Apr. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/115,277 05/05/2008
95402 7590 04/27/2018
LEYDIG, VOIT AND MA YER
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON A VENUE
CHICAGO, IL 60601
FIRST NAMED INVENTOR
Otto Hoed!
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
810089 4801
EXAMINER
PENNY, TABATHAL
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
04/27/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OTTO ROEDL, GUENTER JUNG, JANN NEUMANN, and
EDGAR DOERSAM 1
Appeal 2016-007251
Application 12/115,277
Technology Center 1700
Before MARK NAGUMO, JAMES C. HOUSEL, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-15. An oral hearing was held on April 19, 2018.
We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.
BACKGROUND
The subject matter on appeal relates to a method for metering a
coating liquid in a processing machine. E.g., Spec. ,r 2; Claim 1. Claim 1 is
1 Industrie-Automation Vertriebs-GmbH is identified as the real party in
interest. App. Br. 1.
Appeal 2016-007251
Application 12/115,277
reproduced below from page 12 (Claims Appendix) of the Appeal Brief
( emphasis added):
1. A method for metering a coating liquid in a processing machine having
a metering device including at least one applicator roller and one
counter-pressure cylinder that forms a coating nip and that guides the
printing substrate, the metering device being operatively connected to
a circulation system for circulating the coating liquid including a supply
line, a temperature-regulation unit disposed in the supply line, a return
line, a reservoir and a conveying pump, the method comprising:
pre-selecting, on a main regulation device, a first target temperature
value for the coating liquid in a first area defined by the circulation
system downstream of the temperature-regulation unit and between the
supply line and the coating nip;
conveying the coating liquid using the conveying pump in a direction
of the coating nip through the temperature regulation unit, the
temperature regulation unit including a container accommodating a
temperature regulator and a temperature-regulation medium within the
container, wherein the temperature regulation medium is a fluid other
than the coating liquid;
detecting a first actual temperature value at the temperature-regulation
unit using a first sensor disposed in the temperature regulation unit;
detecting a second actual temperature value of the coating liquid in the
first area using a second sensor;
transmitting at least one signal to the main regulation device for each
of the first and second temperature values detected;
comparing the second actual temperature value to the first target
temperature value using the main regulation device; and
sending at least one control signal from the main regulation device as
a function of the first actual temperature value and based on the
comparison of the second actual temperature value to the first target
temperature value so as to activate at least one of the temperature
regulator of the temperature-regulation unit to regulate the temperature
of coating liquid in the temperature regulation unit and the conveying
pump to regulate the volume flow of the coating liquid.
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Appeal 2016-007251
Application 12/115,277
REJECTIONS ON APPEAL
The claims stand rejected under 35 U.S.C. § I03(a) as follows:
1. Claims 1, 2, 4, and 14 in view of Bernd (DE 10305918 Al,
published Oct. 2, 2003), Eltner (DE 10152461 Al, published May 23, 2002),
and DeMoore (US 5,367,982, issued Nov. 29, 1994); 2
2. Claims 3 and 5-7 over Bernd, Eltner, DeMoore, and Kelley (US
6,379,463 Bl, issued Apr. 30, 2002);
3. Claims 8-10, 13, and 15 over Bernd, Eltner, DeMoore, and
Desaulniers (US 2002/0112636 Al, published Aug. 22, 2002);
4. Claims 11 and 12 over Bernd, Eltner, DeMoore, Kelley, and
Desaulniers.
ANALYSIS
The Examiner finds, inter alia, that Bernd teaches a method for
metering a coating liquid that is similar to the method of claim 1, including
the use of a heater for heating the coating liquid, except that Bernd "is silent
as to the method used for controlling the heater." Final Act. 2-3. The
Examiner determines that "one of ordinary skill in the art would have been
motivated to look to the related art to determine an appropriate method for
regulating a coating material heater" such as the heater of Bernd. Id. at 3.
2 In addition to machine translations of Bernd and Eltner, the record includes
what appear to be human translations of Bernd and Eltner. See, e.g., Foreign
References dated May 19, 2016. Because the human translations are more
comprehensible, we rely on the human translations in this Decision.
Additionally, we note that the Appellants have not objected to the
Examiner's use of the human translations, and the Appellants appear to have
had access to the human translations at least in time to address them in the
Reply Brief, if not earlier. See, e.g., Reply 4 ( quoting the human translation
of Eltner).
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Application 12/115,277
The Examiner finds that Eltner discloses "a method for preparing a
printing ink in a print machine by adjusting the temperature and viscosity of
the ink." Id. More specifically, the Examiner finds:
EL TNER et al. discloses the temperature of the coating liquid in
the reservoir 10 is controlled to a constant target temperature
which corresponds to a temperature based on the printing unit
and standard business practices, i.e. pre-selecting, on the main
regulation device a first target temperature value for the coating
liquid in a first area defined by the circulation system
downstream of the temperature regulation and between the
supply line and the coating nip (Fig. 1 and pg. 2 ln. 78-79).
EL TNER et al. further discloses detecting a first actual
temperature value of the coating liquid at the temperature-
regulation unit wherein the temperature regulation unit includes
a container, i.e. color line 34, accommodating a temperature
regulator 20 including water, oil, or air-flow heat exchangers, i.e.
a container a temperature-regulation medium which is not the
ink ....
Id. With little discussion beyond a citation to the portion of Eltner that
allegedly teaches each limitation, the Examiner further finds that Eltner
discloses "comparing the second actual temperature value to the first target
temperature value using the main regulation device," and "sending at least
one control signal from the main regulation device as a function of the first
actual temperature value and transmitting the signal to 28 the source of
voltage so as to activate the temperature regulator of the temperature
regulation unit, which would inherently regulate the temperature of the
coating liquid in the temperature regulation unit, based on the comparison."
Id. at 4 (citing Eltner page 2, lines 66-74 of the machine translation, which
corresponds to ,r 25 of the human translation).
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Appeal 2016-007251
Application 12/115,277
In the Answer, the Examiner also points to the following disclosure in
Eltner in support of the Examiner's finding that Eltner teaches a comparison
of the second measured temperature and the preselected target temperature:
Independently of the temperature control of ink 14---which is to
be introduced as a result of the temperature regulation unit 20--
in accordance with the invention, ink box 10 and/or the doctor
roll 12 can also be equipped with its own temperature control
device, which guarantees a temperature control of the flap cover
doctor to a constant temperature, preferably 30 °C.
Ans. 2 (citing ,r 25 of the human translation of Eltner).
The Examiner determines that "it would have been prima facie
obvious ... to use the temperature regulation system[] ofELTNER et al.,
with the heater[] of BERND et al., because one of ordinary skill in the art
would have had a reasonable expectation of predictably obtaining the heated
coating supply of BERND et al. by using the temperature regulation system
ofELTNER et al." Final Act. 4.
In view of those and other findings, the Examiner concludes that the
subject matter of claim 1 would have been obvious to a person of ordinary
skill in the art. Id. at 2-5.
The Appellants argue that Eltner does not teach a method in which a
second actual temperature of the coating liquid in the first area, i.e.,
downstream of the regulation unit and between the supply line and the
coating nip, is compared to a preselected target temperature, as required by
claim 1. See App. Br. 5---6. In particular, they argue that "Eltner is
specifically concerned with temperature fluctuations in the printing ink," and
that "any person influenced by Eltner would have been motivated to control
the temperature control device 20 to deliver ink at the temperature detected
by temperature sensor 24." Id.; see also Eltner Fig. 1.
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Appeal 2016-007251
Application 12/115,277
In the Reply Brief, with respect to the Examiner's discussion in the
Answer of Eltner's disclosure that "inkwell 10 and/or the duct roller 12 may
be provided with its/their own temperature control device, which ensures
temperature control of the duct to a constant temperature, advantageously
30 C," see Ans. 2; Eltner ,r 25, the Appellants argue that this disclosure
relates to a separate temperature control device that "would keep the
temperature of the duct roller 12 at a constant temperature," and is unrelated
to a comparison of the temperature measured by sensor 24 to a preselected
target temperature, see Reply 4--5.
The record supports the Appellants' arguments. With respect to the
Examiner's analysis in the Final Action, the portions of Eltner upon which
the Examiner intended to rely are somewhat unclear because the Examiner's
citations at that time were to a machine translation that was and remains
difficult to comprehend. However, as noted above, a more comprehensible
human translation was subsequently added to the record, and it is clear that
the Examiner was relying on various portions of ,r 25 of Eltner.
We agree with the Appellants that Eltner's disclosure of controlling
the duct roller 12 to a constant temperature such as 30°C, referenced by the
Examiner in the Answer, see Ans. 2-3, does not appear to be relevant to
whether Eltner teaches comparing a second actual temperature value of the
coating liquid to a preselected target temperature. Reply 4--5. That
disclosure of Eltner, by its plain language, concerns "temperature control of
duct [12] to a constant temperature" as provided by "its/their own
temperature control device." Eltner ,r 25 ( emphasis added). The Examiner
has not adequately established that a person of ordinary skill in the art would
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Application 12/115,277
have understood that disclosure to relate to a comparison of the temperature
measured by sensor 24 to a preselected target temperature.
The two sentences of Eltner immediately following that disclosure,
however, state:
The location of temperature sensor 24 in the inkwell 10 is not
absolutely necessary. Rather, it is possible to predetermine a
constant nominal temperature, which corresponds to a
temperature of the inking system in standard operation, or
respectively the temperature predetermined by the temperature
control device of the duct, for regulating the temperature of the
printing ink to be fed.
Eltner ,r 25 ( emphases added). Those two sentence could arguably be read
as suggesting a comparison of the temperature measured by sensor 24
(which need not be located in inkwell 10) to a "predetermine[d] ... constant
nominal temperature," i.e., a target temperature value as recited by claim 1,
and using that to "regulat[ e] the temperature of the printing ink to be fed."
See id. However, speculation and inference are necessary to reach that
interpretation of those two sentences, because the sentences themselves say
nothing specific about whether and/ or how temperature sensor 24 would be
used in connection with the "predetermine[ d] ... constant nominal
temperature," much less whether a comparison would be made.
Those two sentences could also arguably be read as suggesting that, in
the embodiment in which a "predetermine[ d] ... constant nominal
temperature" is used, temperature sensor 24 itself is not necessary, because
the system could simply be controlled to eject ink from nozzle 18 at a
temperature corresponding to the predetermined constant nominal
temperature. See Eltner ,r 25. But, in that case, there would be no
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Application 12/115,277
comparison of a temperature measured by sensor 24 to a predetermined
target temperature.
On the record before us, we find that the relevant disclosures of
Eltner, and the Examiner's analysis of those disclosures, lack adequate
clarity to establish by a preponderance of the evidence that Eltner teaches or
suggests comparing the temperature measured by sensor 24 to a target
temperature value, or sending a control signal based on that comparison, as
required by claim 1. Accordingly, we reverse the Examiner's rejection of
claim 1. Because all other claims on appeal depend from claim 1, and the
Examiner's analysis of those claims does not remedy the deficiency
described above, we likewise reverse the Examiner's rejection of those
claims.
CONCLUSION
We REVERSE the Examiner's rejections of claims 1-15.
REVERSED
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