Ex Parte Kasper et al

Patent Trial and Appeal Board

Jun 12, 2013

11360294 (P.T.A.B. Jun. 12, 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.
11/360,294 02/23/2006 Kent Dirksen Kasper 6003.1031 9240
23280 7590 06/12/2013
Davidson, Davidson & Kappel, LLC
485 7th Avenue
14th Floor
New York, NY 10018
EXAMINER
YAN, REN LUO
ART UNIT PAPER NUMBER
2854
MAIL DATE DELIVERY MODE
06/12/2013 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 KENT DIRKSEN KASPER, DREW EDWIN KIEFABER,
and DANIEL MATTHEW PERDUE
____________

Appeal 2010-012004
Application 11/360,294
Technology Center 2800
____________

Before CAROLYN D. THOMAS, BRUCE R. WINSOR, and
CATHERINE SHIANG, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 2, 14, 18 and 19. We have jurisdiction under 35
U.S.C. § 6(b). We affirm-in-part.

STATEMENT OF THE CASE
The present invention relates to a web stabilization apparatus for
printing presses. See generally Spec. 0001. Claims 1 and 14 are illustrative:
1. A noncontact web stabilizer comprising:
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Application 11/360,294

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a first member located on one side of a web, the first member
positioned so that the distance between the web and the first member
having a planar surface angled with respect to the web decreases in
the direction that the web is moving; and

a second member located on an opposite side of the web, the second
member positioned so that the distance between the web and the
second member decreases in the direction that the web is moving;

the first and second members being adapted to prevent out-of-plane
vibrations of the web without contacting the web.

14. A print unit comprising:
a first plate cylinder;
a first blanket cylinder for contacting the first plate cylinder;
a second blanket cylinder for selective contact with a web passing
between the second blanket cylinder and the first blanket cylinder;
a second plate cylinder for contacting the second blanket cylinder;
a first sheet located on one side of a web upstream from the first
blanket cylinder, the first sheet positioned so that the distance between the
web and the first sheet decreases in the direction that the web is moving; and
a second sheet located on an opposite side of the web upstream from
the second blanket cylinder, the second sheet positioned so that the distance
between the web and the second sheet decreases in the direction that the web
is moving.

THE REJECTIONS
The Examiner rejected claims 1, 2, 14, 18 and 19 under 35 U.S.C.
§ 102(b) as anticipated by Roland (U.S. Patent No. 5,901,648; issued May
11, 1999). See Ans. 4-6.
1

1
Throughout this opinion, we refer to (1) the Appeal Brief filed April 9,
2010 (“App. Br.”); (2) the Examiner’s Answer mailed June 8, 2010
(“Ans.”); and (3) the Reply Brief filed August 9, 2010 (“Reply Br.”).
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ISSUES
The dispositive issues
2
presented by Appellants’ contentions are:
Under 35 U.S.C. § 102, has the Examiner erred by finding that Roland
discloses:
(a) “first and second members being adapted to prevent out-of-plane
vibrations of the web without contacting the web” as recited in
claim 1?
(b) “a first sheet” and “a second sheet” as recited in claim 14?
(c) “a first passive noncontact stabilizer” and “a second passive
noncontact stabilizer” as recited in claim 18?

ANALYSIS
Claims 1-2
On this record, we find that the Examiner erred in rejecting claim 1.
It is undisputed that Roland’s Figure 4 shows a first member 33
located on one side of a web 1, the first member 33 positioned so that the
distance between the web and the first member having a planar surface
angled with respect to the web decreases in the direction that the web is
moving. See Ans. 4; App. Br. 6-7. Similarly, it is undisputed that Roland’s
Figure 4 shows a second member 34 located on an opposite side of the web
1, the second member 34 positioned so that the distance between the web
and the second member decreases in the direction that the web is moving.
See id.

2
Appellants raise additional issues. However, as the identified issues are
dispositive of the appeal, we do not reach the additional issues.
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The issue is whether Roland discloses “first and second members
being adapted to prevent out-of-plane vibrations of the web without
contacting the web.” The Examiner finds that Roland’s Figure 4 shows that
members 33 and 34 are being “without contacting the web” See Ans. 4. The
Examiner explains that:
Since the structural arrangement of Roland et al as shown in
Fig. 4 is exactly the same as that defined by claim 1 and shown
in Figs. 5 and 6 of the present application, the first and second
protective elements 33 and 34 would inherently function to
prevent out-of-plane vibrations of the web without contacting
the web as recited.
Ans. 6-7. The Examiner then finds that Roland’s Figure 4 and the related
text teach the disputed claim limitation. See Ans. 5-6.
Appellants argue that “protective elements 33, 34 of Roland et al.
contact web 1 and physically hold web 1 to prevent web 1 from contacting
cylinders 6, 7 at the inlet side of gap 44.” See App. Br. 6 (emphasis in
original). Appellants further argue that “if finger-shaped elements 33, 34
prevented out-of-plane vibrations of web 1 without contacting web 1, finger-
shaped elements 33, 34 would [sic] have to physically hold web 1 away
from cylinders 6, 7.” See id. (emphasis in original).
3
Appellants contend
that:
Roland et al. does not state or in any way imply that Fig. 4
shows finger-shaped protective elements 33, 34 in the act of
holding web 1 away from cylinders 6, 7. Roland et al. merely
states, with respect to Fig. 4 and finger-shaped protective
elements 33, 34 holding web 1 away from cylinders 6, 7:
. . .

3
Appellants appear to have made a typographical error.
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This portion of Roland et al. [7:41-52] clearly does not
explicitly or implicitly disclose that Fig. 4 shows finger-shaped
protective elements 33 and 34 in the act of holding web 1 away
from cylinder 6, 7, but only purports that, if necessary, finger-
shaped protective elements 33, 34 can hold web 1 away from
cylinders 6, 7. . . if finger-shaped protective elements 33, 34
were supposed to hold web 1 away from cylinders 6, 7 without
contacting web 1, Roland et al. would have specifically stated
so. In fact, it is clear to one of skill in the art that Roland et al.
is discussing that physical contact by finger-shaped protective
elements 33, 34 holds the web away.

Reply Br. 3 (emphases added).
We agree with Appellants. Roland states that prior to its invention,
“the blanket cylinders always come into contact with one another. . .The
material web remaining between the blanket cylinders in the printing unit
can tear. . . .” Roland 1:56-63 (emphasis added). The objective of Roland is
to “provide a device for adjusting printing unit cylinders in printing units of
rotary printing presses whereby upper and lower printing unit cylinders,
respectively, are capable of being adjusted without damaging a material web
located in the printing unit within a gap between blanket cylinders.” Roland
2:8-14. Consistent with its objective, Roland discloses that “[i]n accordance
with yet a further feature of the invention, the adjusting device includes a
web guidance unit disposed in the printing unit at a web-infeed side thereof,
the web guidance unit having a protective element insertable into the gap.”
Roland 2:60-64.
The Examiner is correct that Roland’s Figure 4 does not show
members 33 and 34 contacting web 1. See Ans. 6. But in light of Roland’s
objective, one of ordinary skill in the art would have understood that while
web 1 is “held away from the outer cylindrical surfaces of the transfer
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cylinders 6 and 7” by members 33 and 34, members 33 and 34 do contact
web 1. Roland 7:44-45. Appellants argue that:
“finger-shaped” [in Roland] implies that each protective
element 33, 34 includes a plurality of fingers, each finger being
spaced apart from one another and being held by respective
bearing supports 37, 38. The spaces between the fingers of
protective element 33, 34 would let air pass through protective
element 33,34 so that they would not prevent out-of-plane
vibrations of web 1 [without contacting the web].
App. Br. 6. Even if the Examiner is correct that each of members 33 and 34
does not include a plurality of fingers (Ans. 7), the Examiner has not
persuasively explained why the Roland structure is “adapted to prevent out-
of-plane vibrations of the web without contacting the web.” Appellants have
presented a reasonable technical argument as to why Roland does not
disclose a structure “adapted to prevent out-of-plane vibrations of the web
without contacting the web.” See App. Br. 6. Although the Examiner
asserts that Appellants’ interpretation of Roland’s disclosure that protective
elements 33, 34 are “finger-shaped” (see Roland, col. 7, ll. 42-43) is “purely
based on speculation” (Ans. 7), the Examiner does not offer any
interpretation of “finger-shaped” that would necessarily negate Appellants’
technical argument. Therefore, we agree with Appellants that “the Examiner
has failed to establish, by any actual evidence or technical reasoning, that
[Roland’s] finger-shaped protective [elements] ‘necessarily’ can prevent out-
of-plane vibrations of web 1 without contacting web 1 and thus has failed to
show that Roland et al. anticipates claim 1.” Reply Br. 2 (emphasis added)
(citing MPEP § 2112, Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990).
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Accordingly, we do not sustain the Examiner’s rejection of (1) claim
1; and (2) dependent claim 2, which depends from claim 1 and was rejected
on the same ground.

Claim 14
The issue is whether Roland discloses “a first sheet” and
“a second sheet.” Similar to claim 1, the Examiner relies on Roland’s
members 33 and 34, and finds that they are “a first sheet” and
“a second sheet,” respectively. See Ans. 5.
Appellants argue that:
“finger-shaped” implies that each protective element 33, 34
includes a plurality of fingers, each finger being spaced apart
from one another and being held by respective bearing supports
37, 38. Such an arrangement is clearly different from a sheet,
which is typically understood as being a broad, thin, usually
rectangular piece of material.

App. Br. 7; see also Reply Br. 3-4.
Appellants then cite a dictionary and argue that Roland does not
disclose “a first sheet” and “a second sheet.”
We disagree. Even if “finger-shaped” indeed means a plurality of
fingers as argued by Appellants, Roland’s members 33 and 34 still disclose
“a first sheet” and “a second sheet,” respectively.
“During examination, ‘claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). And the
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words of a claim “are generally given their ordinary and customary
meaning.” Phillips v. AWH Corp, 415 F.3d 1303, 1312 (Fed Cir 2005) (en
banc) (citations omitted). The inventor has not assigned a special meaning
to the term sheet, and Appellants do not argue that the term has a special
meaning. See Spec.; App. Br. 7-8. Indeed, Appellants concede that the
ordinary and customary meaning of sheet governs by citing a dictionary.
App. Br. 7. While Appellants cite one definition from the dictionary, the
same dictionary also includes many definitions, including “[definition
number] 2.a. A broad, thin, usually rectangular mass or piece of material
such as . . . metal . . . ” (as cited by Appellants) (emphasis added) and
“[definition number] 3. A broad, flat, continuous surface or expanse.” See
http://www.thefreedictionary.com.
4
Roland’s members 33 and 34 are broad,
thin, flat, pieces of material having continuous surfaces, even if they are
multi-fingered as argued by Appellants. Therefore, we conclude that the
term “sheet” encompasses each of Roland’s members 33 and 34, when the
term is “given [its] broadest reasonable interpretation consistent with the
specification.” Am. Acad. of Sci. Tech Ctr., 367 F.3d at 1364. Accordingly,
Appellants have not persuasively rebutted the Examiner’s findings that
Roland’s members 33 and 34 disclose “a first sheet” and “a second sheet,”
respectively.

Claims 18 and 19
Similar to the term “without contacting the web” in claim 1, claim 18
recites “a first passive noncontact stabilizer” (emphases added). When they

4
We note that Appellants cite a current dictionary instead of a dictionary
dated at the time of the invention.
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are “given their broadest reasonable interpretation consistent with the
specification,” the terms “without contacting” and “noncontact” are nearly
identical. Am. Acad. of Sci. Tech Ctr., 367 F.3d at 1364. Therefore, for the
same reasons discussed above with respect to claim 1, we agree with
Appellants that Roland does not disclose the “noncontact” claim limitation
required by claim 18.
Accordingly, we do not sustain the Examiner’s rejection of (1) claim
18; and (2) dependent claim 19, which depends from claim 18 and was
rejected on the same ground.

ORDER
The Examiner’s decision rejecting claims 1, 2, 18 and 19 is reversed.
The Examiner’s decision rejecting claim 14 is affirmed.
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)(iv).

AFFIRMED-IN-PART

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