Ex Parte Keller

Board of Patent Appeals and Interferences

Feb 13, 2012

11401986 (B.P.A.I. Feb. 13, 2012)

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.
11/401,986 04/11/2006 Reinhard Keller MFA-20502/04 5655
25006 7590 02/13/2012
GIFFORD, KRASS, SPRINKLE,ANDERSON & CITKOWSKI, P.C
PO BOX 7021
TROY, MI 48007-7021
EXAMINER
HARMON, CHRISTOPHER R
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
02/13/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte REINHARD KELLER
____________________

Appeal 2010-001034
Application 11/401,986
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, LINDA E. HORNER, and
KEN B. BARRETT, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-001034
Application 11/401,986

2
STATEMENT OF THE CASE
Reinhard Keller (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting under 35 U.S.C. § 103(a) claims 1-4 and 6-8
as unpatentable over Cottrell (US 3,989,201, iss. Nov. 2, 1976) and Küng
(US 6,676,589 B2, iss. Jan. 13, 2004), claims 1-7 as unpatentable over
Cottrell and Ratzel ‘657 (US 7,258,657 B2, iss. Aug. 21, 2007), and claims
1, 2, 4, and 6-9 as unpatentable over Cottrell and Ratzel ‘813 (US 6,626,813
B1, iss. Sep. 30, 2003). We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

THE INVENTION
The claims are directed to a machine for the manufacture of paper
padding. Claim 1, reproduced below, is representative of the claimed
subject matter.
1. A machine for the manufacture of paper padding,
comprising:
a shaping device;
a dispensing roll;
a drive having at least one pair of rolls, said drive
provided in a housing to pull a paper web from said
dispensing roll through the shaping device and to form a
piece of padding from the paper web;
an auxiliary drive for said dispensing roll;
a shaft for said auxiliary drive that is rigidly connected to
at least one of the rolls of the drive and said shaft is guided
out of the housing;
a motor operable to rotate said shaft; and
a drive member which mechanically drivingly connects
said auxiliary drive to a portion of said shaft extending
Appeal 2010-001034
Application 11/401,986

3
outside of said housing so that rotation of said shaft
continuously rotatably drives said drive and also
continuously drives said auxiliary drive which in turn
continuously rotatably drives said dispensing roll.

OPINION
This appeal focuses on the last paragraph of claim 1. Specifically, the
issue presented is whether the Examiner has established by a preponderance
of the evidence that Cottrell discloses a machine as called for in claim 1
having a drive member that mechanically connects the auxiliary drive (read
by the Examiner on Cottrell’s friction roller 12 (Ans. 3)) to a portion of the
shaft (read by the Examiner on Cottrell’s pulley 31 (id.)) in such a manner
that “rotation of said shaft continuously rotatably drives said drive and also
continuously drives said auxiliary drive which in turn continuously rotatably
drives said dispensing roll.” See App. Br. 4-5; Reply Br. 1-2.
The Examiner correctly recognizes that claim 1 is directed to a
machine (i.e., apparatus), and does not require that the function (i.e., rotation
of said shaft continuously rotatably driving said drive and also continuously
driving said auxiliary drive which in turn continuously rotatably drives said
dispensing roll) recited in the claim actually be performed. See Ans. 7-8.
“[A]pparatus claims cover what a device is, not what a device does.”
Hewlett-Packard Co. v. Bausch & Lomb, Inc., 909 F.2d 1464, 1468 (Fed.
Cir. 1990). Once the Examiner establishes a reasonable basis that the prior
art is capable of performing the claimed function, the burden shifts to the
applicant to show that the prior art structure is not capable of performing the
claimed function. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997).
Appeal 2010-001034
Application 11/401,986

4
In this case, however, it is not apparent, and the Examiner has not set
forth adequate findings and/or technical reasoning to show, that Cottrell’s
structure is capable of performing the claimed function. The Examiner’s
statement that “[t]he drive system is considered fully capable of
continuously rotatably driving the aforementioned elements” (Ans. 8) simply
is not sufficiently illuminating to satisfy the Examiner’s burden.
All of the Examiner’s rejections are grounded in part on the
Examiner’s unsupported finding that Cottrell’s structure satisfies the
limitations in the last paragraph of claim 1, and thus cannot be sustained.

DECISION
For the above reasons, the Examiner’s decision is reversed.
REVERSED

hh