Ex Parte Kasper et al

Board of Patent Appeals and Interferences

Nov 13, 2009

11345801 (B.P.A.I. Nov. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KENT DIRKSEN,
DREW EDWIN KIEFABER, and
DANIEL MATTHEW PERDUE
__________

Appeal 2009-011175
Application 11/345,801
Technology Center 2800
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Decided: November 13, 2009
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Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
9-15. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
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We AFFIRM.
Appellants’ invention is directed to a method of stabilizing a web to
be printed including the step of blowing air on one side of the web upstream
towards the blanket roller to blanket roller location while the first and
second blanket rollers are separated and rotating (claim 9).
Claims 9, 11, and 13 are illustrative:
9. A method for stabilizing a web to be printed comprising:

passing a web between a first blanket cylinder and a second blanket
cylinder at a blanket to blanket location;

separating the first blanket cylinder and the second blanket cylinder
from the web; and

blowing air on one side of the web upstream towards the blanket to
blanket location while the first and second blanket cylinders are separated
and rotating.

11. The method recited in claim 9 further comprising changing an
angle of the blowing air on one side of the web.

13. The method recited in claim 9 further comprising automatically
removing a plate from the first plate cylinder during the blowing step.

The Examiner relies on the following prior art as evidence of
unpatentability:
Bartell 5,924,619 Jul. 20, 1999
Fujishiro 6,662,721 B2 Dec. 16, 2003

Appellants’ Admitted Prior Art (AAPA) as shown in Figure 1

Appellants appeal the following rejections:
1. Claims 9-12, 14, and 15 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over AAPA in view of Bartell.
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2. Claim 13 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over AAPA in view of Bartell and Fujishiro.
Appellants argue claims 9, 10, 12, 14, and 15 as a group (Br. 4). We select
claim 9 as representative of the group. Appellants further argue claims 11
and 13 separately.

ISSUES
Rejection (1)
1. Have Appellants met their burden of showing that the Examiner
reversibly erred in determining that Bartell does not teach away
from blowing air while the separated blanket rollers are rotating
and the teachings of the art as whole would have suggested
“blowing air on one side of the web upstream towards the
blanket to blanket location while the first and second blanket
cylinders are separated and rotating” as required by claim 9?
We decide this issue in the negative.
2. Have Appellants met their burden of showing that the Examiner
reversibly erred in determining that Bartell would have
suggested changing the angle of the blowing air on one side of
the web while the cylinders are rotating as required by claim 11
via its dependency on claim 9? We decide this issue in the
negative.

Rejection (2)
3. With regard to rejection (2), have Appellants shown that the
Examiner reversibly erred in determining that the teaching of
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the AAPA, Bartell, and Fujishiro as a whole would have
suggested automatically removing a plate from the first plate
cylinder during the blowing step? We decide this issue in the
negative.

PRINCIPLES OF LAW
The applicant bears the procedural burden of showing error in the
Examiner’s rejections. 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
[under § 103] by showing insufficient evidence of prima facie obviousness”)
(citation and internal quote omitted).
The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art. In re
Keller, 642 F.2d 413, 425 (CCPA 1981).
A reference may be said to teach away “when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994). “The degree of teaching away will of course depend on
the particular facts; in general, a reference will teach away if it suggests that
the line of development flowing from the reference's disclosure is unlikely to
be productive of the result sought by the applicant.” Id.
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FACTUAL FINDINGS (FF)
We adopt the Examiner’s findings on pages 3-5 of the Answer as our
own and add the following additional findings of fact primarily for
completeness.
1. Appellants do not contest the Examiner’s stated reason for combining
Bartell’s air blowers with the AAPA (Br. generally; Ans. 4 and 5).
2. Appellants do not contest the Examiner’s stated reason for combining
Fujishiro, Bartell, and the AAPA (Br. generally; Ans. 5 and 8).
3. Bartell discloses that the separated blanket rollers are silent and
motionless with the web passing between the separated rollers (col. 2,
ll. 57-63; col. 3, ll. 1-20). Bartell does not teach that the blast air
cannot or must not be used with separated rotating cylinders (see
Bartell generally).
ANALYSIS
Issues (1), (2), and (3)
With regard to claim 9, Appellants argue that the Examiner admits in
the Final Office Action that neither the AAPA nor Bartell teach blowing air
on one side of the web upstream toward the blanket to blanket location while
the first and second blanket cylinders are separated and rotating such that the
combination fails to teach every claim feature (Br. 4). With regard to claim
11, Appellants argue that neither the AAPA nor Bartell teach or suggest
changing the blowing air angle on one side of the web while the separated
cylinders are rotating (Br. 5). With regard to claim 13, Appellants argue that
neither the AAPA, Bartell, nor Fujishiro teaches “automatically removing a
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plate from the first plate cylinder during the blowing step” as required by the
claim (Br. 5).
Appellants’ arguments regarding claims 9, 11, and 13 improperly
attack the references individually instead of addressing what the Examiner’s
stated combination of the references would have suggested to one of
ordinary skill in the art. Keller, 642 F.2d at 425. Appellants direct their
arguments to what each reference teaches, and do not persuasively address
the Examiner’s determinations regarding what the combined teachings of the
AAPA, Bartell, and Fujishiro would have suggested to an ordinarily skilled
artisan. Indeed, Appellants do not contest the Examiner’s stated reason for
combining the references to arrive at the claimed invention (FF 1 and 2).
Appellants further argue that Bartell’s teaching to pass the web
through unused printing units having separated and motionless blanket
cylinders while applying blowing air thereto teaches away from blowing air
toward separated and rotating blanket cylinders as claimed (Br. 4).
However, Bartell’s disclosure does not discourage using blowing air to
stabilize a web passing through two separated and rotating blanket cylinders
as taught by the AAPA. Gurley, 27 F.3d at 553. Accordingly, we do not
find that Bartell teaches away from the claimed invention.
Appellants have not shown that the Examiner reversibly erred in
determining that the teachings of the AAPA, Bartell, and Fujishiro as a
whole would have suggested the argued method steps of claims 9, 11, and 13
(Ans. 3-5 and 6-8).
For the above reasons, we affirm the Examiner’s § 103 rejection of
claims 9-12, 14, and 15 over AAPA in view of Bartell and the § 103
rejection of claim 13 over AAPA in view of Bartell and Fujishiro.
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DECISION
The Examiner’s decision 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)(2009).

ORDER
AFFIRMED

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