Ex Parte Jung et al

Board of Patent Appeals and Interferences

Sep 24, 2009

10960127 (B.P.A.I. Sep. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JOCHEN JUNG,
RUDOLF LEIB, and ALEXANDER WEBER
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Appeal 2009-007090
Application 10/960,127
Technology Center 2800
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Decided: September 24, 2009
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Before BRADLEY R. GARRIS, CHARLES F. WARREN, and
TERRY J. OWENS, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board from the decision of the Primary
Examiner finally rejecting claims 1 through 3 in the Office Action mailed
November 28, 2007. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R.
§ 41.31(a) (2008).
We affirm the decision of the Primary Examiner.
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Claim 1 illustrates Appellants’ invention of a sheet-fed printing press,
and is representative of the claims on appeal:
1. A sheet-fed printing press, comprising:
a cylinder for transporting a printing material sheet; and
a dryer oriented at said cylinder and having a concave contour adapted
to said cylinder, said dryer subdivided into a blower part and an air guide
part, said concave contour being formed on said air guiding part and said
blower part mounted so as to be displaceable relative to said air guiding part.
The Examiner relies upon the evidence in this reference (Ans. 2):
Goldner 3,502,991 Sep. 11, 1962
Appellants request review of the ground of rejection under 35 U.S.C.
§ 102(b) advanced on appeal by the Examiner (App. Br. 3): appealed claims
1 through 3 over Goldner. Ans. 3.
Appellants argue the claims as a group. App. Br. 3 and 6. Thus, we
decide this appeal based on claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2008).
Issue
The issue in this appeal is whether Appellants have shown that the
evidence in Goldner does not support the Examiner’s finding of prima facie
anticipation with respect to the claimed printing press encompassed by claim
1.
Opinion
We considered the totality of the record in light of Appellants’
arguments with respect to claim 1 and the ground of rejection advanced on
Appeal. See, e.g., In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (“‘On
appeal to the Board, an applicant can overcome a rejection by showing
insufficient evidence of prima facie obviousness or by rebutting the prima
facie case with evidence of secondary indicia of nonobviousness.’”) (quoting
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In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)); In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992) (“After evidence or argument is submitted by
the applicant in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration to
persuasiveness of argument.”) (citing, inter alia, In re Spada, 911 F.2d 705,
707 n.3 (Fed. Cir. 1990)).
We are of the opinion Appellants have not established that the
evidence in Goldner does not support the Examiner’s finding of prima facie
anticipation.
We agree with the Examiner’s findings of fact from Goldner to which
we add the following findings of fact. As illustrated by Goldner Figures 1,
2, and 5, the reference would have disclosed blower 33, mounted below
dryer unit 13, is attached to each air guide head 14 through, among other
things, nozzle 29, flexible hose 27, and nozzle 28. Goldner, col. 3,
ll. 27-61.
The Examiner submits blower 33 and associated parts 27-29 are
“mounted so as to be displaceable relative to the air guiding part [14] as
shown in Figs. 1 and 5 of Goldner,” and “[s]ince these blower parts are
separate components for the air guiding part (14)[,] . . . these blower parts
are ‘capable’ of being displaced/moved/removed relative to the air guiding
part.” Ans. 3-4.
Appellants submit Goldner does not disclose that blower 33 and
associated parts 27-29 are displaceable relative to the air guiding part as
claimed, arguing that “the blower (33) is fixed and therefore, is not mounted
so as to be displaceable relative to the heads (14)” which “are comparable to
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the air guiding part of the” claimed invention. App. Br. 4-6; Reply Br. 2.
Appellants contend the claim term “displaceable” in “Claim 1 requires that
some sort of a structural element is necessary, which allows for the
displacement of the blower relative to the air guiding part,” pointing out the
Specification provides a configuration of such an arrangement. Reply Br.
2-3, citing Spec. 4:24 to 5:7 and Fig. 1. On this basis, Appellants argue
Goldner does not mount blower 33 to be displaceable relative to the air
guide part in a manner comparable to the invention as claimed, but fixedly
rests blower 33 on the floor. Reply Br. 3-4. According to Appellants, a
person of ordinary skill in this art would recognize that Goldner’s blower 33
is “fixedly mounted to the floor via screws or bolts so as to prevent
movement.” Reply Br. 4. Appellants further argue the Examiner arbitrarily
includes components 27-29 with blower 33. Reply Br. 5.
On this record, we agree with the Examiner. We interpret the claim
language “said dryer subdivided into a blower part and an air guide part, . . .
[and] said blower part mounted so as to be displaceable relative to said air
guiding part” by giving the terms the broadest reasonable interpretation in
light of the Specification. We find no definition of any of the terms in the
Specification. We also find no basis in the claim language or the
Specification to read any disclosure or embodiment in the Specification into
claim 1 as a limitation. Thus, the subject claim language means the blower
part of the dryer is mounted in any manner so as to be displaceable, that is,
removable from its position, in any manner relative to the air guiding part of
the dryer. See, e.g., In re ICON Health and Fitness, Inc., 496 F.3d 1374,
1379 (Fed. Cir. 2007); In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
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1364 (Fed. Cir. 2004), and cases cited therein; In re Morris, 127 F.3d 1048,
1054-55 (Fed. Cir. 1997).
It is well settled that the Examiner must establish a prima facie case of
anticipation under § 102(b) by showing, as a matter of fact, that each and
every element of the claimed invention, arranged as required by the claim, is
found in a single prior art reference, either expressly or under the principles
of inherency, in a manner sufficient to have placed a person of ordinary skill
in the art in possession thereof within the meaning of § 102(b). See, e.g.,
In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997), and cases cited
therein; In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re Bond,
910 F.2d 831, 832-33 (Fed. Cir. 1990), and cases cited therein; Diversitech
Corp. v. Century Steps, Inc., 850 F.2d 675, 677-78, (Fed. Cir. 1988);
Lindemann Maschinenfabrik GMBH v. Am. Hoist and Derrick Co., 730 F.2d
1452, 1458 (Fed. Cir. 1984). Whether the teachings and inferences that one
skilled in this art would have found in the disclosure of a single reference
would have placed this person in possession of the claimed invention, taking
into account this person’s own knowledge of the particular art, is a question
of fact. See, e.g., In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (“A
reference anticipates a claim if it discloses the claimed invention ‘such that a
skilled artisan could take its teachings in combination with his own
knowledge of the particular art and be in possession of the invention.’”)
(quoting, In re LeGrice, 301 F.2d 929, 936 (CCPA 1962));
In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]n considering the
disclosure of a reference, it is proper to take into account not only specific
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teachings of the reference but also the inferences which one skilled in the art
would reasonably be expected to draw therefrom.” (citation omitted)).
We agree with the Examiner that Goldner would have reasonably
described to one skilled in this art a dryer in which blower 33 is mounted
below dryer unit 13 and attached to each air guide head 14 through, among
other things, nozzle 29, flexible hose 27, and nozzle 28, which thus are
included in the blower part of Goldner’s dryer. We further agree with the
Examiner that one of ordinary skill in this art would have reasonably
inferred from Goldner’s description that the blower part can be removed
from the air guide part 14 through at least the removal of nozzle 28. Indeed,
this person would have reasonably inferred that disassembly of the blower
part from the air guide part would be necessary to remove the blower part
from its position for any purpose and that blower 30 can be moved by
removing any means, such as screws and bolts, holding it to the floor.
Conclusion
Accordingly, we have again evaluated all of the evidence of
anticipation found in Goldner with Appellants’ countervailing evidence of
and argument for non-anticipation, and based thereon we find, by a
preponderance of the evidence and weight of argument, that the claimed
invention encompassed by appealed claims 1 through 3 would have been
anticipated as a matter of fact under 35 U.S.C. § 102(b).
The Primary Examiner’s decision is affirmed.

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Application 10/960,127
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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)(v).
AFFIRMED

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