Ex Parte Kupershtoch et al

Patent Trial and Appeal Board

Jun 9, 2017

13534876 (P.T.A.B. Jun. 9, 2017)

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.
13/534,876 06/27/2012 Konstantin Kupershtoch 82997205 8754
22879
HP Tnr
7590 06/13/2017 EXAMINER
3390 E. Harmony Road
Mail Stop 35
TANKERSLEY, BLAKE A
FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER
2854
NOTIFICATION DATE DELIVERY MODE
06/13/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KONSTANTIN KUPERSHTOCH, ISAAC NAOR,
and OFER BEN BASSAT1
Appeal 2015-008302
Application 13/534,876
Technology Center 2800
Before CHUNG K. PAK, CATHERINE Q. TIMM, and BRIAN D. RANGE,
Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL2
1 The real party in interest is Hewlett-Packard Development Company, LP.
2 In explaining our Decision, we cite to the Specification dated June 27,
2012 (Spec.), Final Office Action dated June 5, 2014 (Final), the Appeal
Brief dated November 3, 2014 (Appeal Br.), the Supplemental Appeal Brief
dated May, 26, 2015 (Suppl. Appeal Br.), the Examiner’s Answer dated July
31, 2015 (Ans.), and the Reply Brief dated September 22, 2015 (Reply Br.).
Appeal 2015-008302
Application 13/534,876
STATEMENT OF CASE
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner’s decision to reject claims 1—20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
The claims are directed to a single drive system for controlling
multiple independent gripper shafts (see, e.g., claims 1 and 16), an
independently driven symmetric cam to individually open and close two
different gripper shafts (see, e.g., claim 11), and a method for printing using
the system of claim 1 (see, e.g., claim 12).
Appellants’ single drive system is part of an impression cylinder
assembly 130 within a printing system. Spec. 13, 16; Figs. 1—5. The
single drive system controls two independent gripper shafts 240 (240-1, 240-
2 in Fig. 2). Spec. 116; Figs. 1—5. Each gripper shaft 240 rotates in a first
direction to lift grippers 242 (gripper 242-1 shown in Figs. 2-53) above the
cylindrical impression cylinder 210 to grasp the leading edge of media sheet
215. Spec. 117. Thus, two media sheets (502-1, 502-2 in Fig. 5) can be
gripped, one by each set of grippers 242, and transported around impression
cylinder 210 as shown in Figure 5.
Claim 1, with reference numerals from the figures, is further
illustrative of the single drive system:
1. A single drive system for controlling multiple
independent gripper shafts comprising:
3 Gripper 242-2 is shown in Fig. 5, but is mislabeled 240-2 in the first figure
of Figure 5. Gripper 242-1 is correctly labeled in the third and fourth figures
of Figure 5.
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Application 13/534,876
an impression cylinder [210];
at least two gripper shafts [240-1, 240-2] on an
impression surface of the impression cylinder [210] to hold at
least two media sheets [215 (Fig. 2) or 502-1, 502-2 (Fig. 5)] to
the impression surface;
a dynamic cam [235] to independently actuate each of the
at least two gripper shafts [240-1, 240-2]; and
a single drive motor [200] to mechanically rotate the
dynamic cam [235] with respect to the impression cylinder
[210],
Claims Appendix, Suppl. Appeal Br. 22.
The Examiner maintains the following rejections:4
A. Claims 1—7, and 10 under 35 U.S.C. § 102(b) as anticipated by
Becker5;
B. Claim 8 under 35 U.S.C. § 103(a) as obvious over Becker in view of
Gorbing6;
C. Claim 9 under 35 U.S.C. § 103(a) as obvious over Becker in view of
Hauck7;
D. Claims 1—7 and 10-20 under 35 U.S.C. § 103(a) as obvious over Taig
in view of Becker;
E. Claim 8 under 35 U.S.C. § 103(a) as obvious over Taig8 in view of
Becker and Gorbing;
4 The Examiner has withdrawn the rejection of claim 17 under 35 U.S.C.
§ 112 12. Compare Final 3, with Ans. 3.
5 US 6,557,844 B2, issued May 6, 2003.
6 US 2009/0013889 Al, published Jan. 15, 2009.
7 US 5,862,757, issued Jan. 26, 1999.
8 US 7,731,190 B2, issued June 8,2010.
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Application 13/534,876
F. Claim 9 under 35 U.S.C. § 103(a) as obvious over Taig in view of
Becker and Hauck;
G. Claims 1—7, 10, and 11 on the ground of non-statutory double
patenting as unpatentable over claim 8 of Bassat9 in view of Becker;
H. Claim 8 on the ground of non-statutory double patenting as
unpatentable over claim 8 of Bassat in view of Becker and Gorbing;
I. Claim 9 on the ground of non-statutory double patenting as
unpatentable over claim 8 of Bassat in view of Becker and Hauck; and
J. Claims 12—20 on the ground of non-statutory double patenting as
unpatentable over claim 8 of Bassat in view of Becker and Taig.
OPINION
In affirming the decision of the Examiner to reject the claims, we
adopt the Examiner’s well-articulated findings of fact, conclusions of law,
and responses to arguments as set forth in the Final Office Action and
Answer. We add the following for emphasis.
9 Bassat et al., US 8,857,333 B2, issued Oct. 14, 2014. The Examiner had
maintained a provisional obviousness double patenting rejection over claim
8 of the underlying Application No. 13/407,269 as amended on April 11,
2014. The rejection is no longer provisional given the issuance of the patent.
The claims of the issued patent are the same as the claims of the April 11,
2014 Amendment. Thus, the substantive basis for the rejection remains the
same.
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Application 13/534,876
Anticipation by Becker
In addressing the Examiner’s rejection of claims 1—7, and 10 under 35
U.S.C. § 102(b) as anticipated by Becker, Appellants focus on the rejection
of claim l.10
Appellants contend that:
Becker does not teach or suggest “at least two gripper shafts on
an impression surface of the impression cylinder to hold at least
two media sheets to the impression surface, ” or “a single drive
motor to mechanically rotate the dynamic cam with respect to
the impression cylinder” (Claim 1) (emphasis added). The
Action appears to be reading these teachings improperly into
the Becker reference.
Appeal Br. 10.
Appellants’ first contention focuses on the “to hold at least two media
sheets” language of claim 1. As pointed out by the Examiner, this recitation
is a functional limitation within a claim to an apparatus. Ans. 5—6.
ft has long been held that “apparatus claims cover what a device is,
not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inci5 909
F.2d 1464, 1468 (Fed. Cir. 1990). Structures such as machines and articles
of manufacture must be distinguished from the prior art on the basis of
structure, and where there is reason to believe that the structure of the prior
art is inherently capable of performing the claimed function, the burden
shifts to the applicant to show that the claimed function patentably
distinguishes the claimed structure from the prior art structure. See In re
10 Appellants argue claim 11 under a separate heading, but as pointed out by
the Examiner (Ans. 7), claim 11 is not currently rejected as anticipated by
Becker.
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Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997); In re Hallman, 655 F.2d
212,215 (CCPA 1981).
The Examiner finds that Becker’s apparatus includes “at least two
gripper shafts (shafts of 13 and 15, see FIGS. 1 and 4) on an impression
surface of the impression cylinder (3) to hold at least two media sheets to the
impression surface (see FIG. 1).” Final 14.
A preponderance of the evidence supports the Examiner’s finding that
the shafts of gripper devices 13 and 15 have the same structure as the shafts
240 Appellants disclose in their Specification. Ans. 5; compare Appellants’
shafts 240-1, 240-2, with Becker’s shafts of gripper devices 13,15 shown in
Figs. 1 and 4, and Becker col. 7,11. 64—67 (“The gripper devices 13 and 15,
respectively, are each formed by a gripper shaft which is mounted in the
cylinder 3 so that it is rotatable in a non-illustrated manner.”).
Moreover, Becker’s description of the functioning of the grippers
supports the Examiner’s finding that the set of grippers 21 on gripper device
15 grips a different sheet than the grippers 21 on gripper device 13 such that
two sheets are held onto the impression cylinder surface. Becker describes
two gripper devices, each with a set of grippers 21. Becker col. 7,11. 48—67.
Each set of grippers 21 (the set on device 13 and the set on device 15) serves
“to grip the non-illustrated sheet to be transferred in a leading-edge region
thereof and to fix the respective sheet in an accurate position on the outer
peripheral surface 19 of the cylinder 5.” Id. (emphasis added). The word
“respective” indicates that there is more than one sheet.
Nor, as the Examiner points out, have Appellants persuasively
disputed the Examiner’s finding that Figure 1 of Becker shows both sets of
grippers 21 as extending in a counterclockwise direction from the gripper
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shafts of devices 13 and 15, which would make it impossible for a media
sheet that is held by a first gripper to also be held by the second gripper.
Ans. 5. This leads to the presumption that each set of grippers 21 is intended
to grip a separate sheet.
The evidence does not support Appellants’ argument that Becker
teaches merely to use one gripper to hold the sheet before it goes to
reversing drum 25, while the other gripper may accept the sheet when it
returns from the reversing drum 25 in the recto/verso printing mode of
printing. Reply Br. 7. The portions of Becker cited by Appellants describe
pivoting cam 31 to align cams 29 and 31 to change the opening and closing
times of both gripper devices 13 and 15 so that they open later. Becker col.
9,1. 60-col. 10,1. 16. Both will open later so that the respective sheet is
released while being gripped by reversing drum 25 so that each sheet held
can be reversed onto the reversing drum 25.
Lastly, at the very least, the two gripper shafts of Becker reasonably
appear to be capable of gripping different sheets in the same or similar
manner as the gripper shafts Appellants describe in their Specification based
on the similarities in structure between Becker’s shafts and Appellants’
shafts. The gripper shafts of Becker are generally cylindrical shafts that are
rotatable and have grippers associated with them just as Appellants’ shafts.
Compare Becker’s shaft shown at 13 in Fig. 4, with Appellants’ shaft 240-1
shown in Figs. 2 and 3.
Appellants have not identified a reversible error in the Examiner’s
finding that Becker’s shafts have the structure required by claim 1.
Appellants’ second contention seems to focus on the language “a
single drive motor to mechanically rotate the dynamic cam with respect to
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Application 13/534,876
the impression cylinder” recited in claim l.11 Appeal Br. 10. Appellants
correctly point out that Becker teaches a system using two cams. Appeal Br.
11. In Becker’s two cam system, cam 29 is fixed, but cam 31 can be rotated
by an actuating drive 41. Becker col. 8,11. 19—36. Becker rotates cam 31 to,
for instance, convert the transfer device 1 from recto printing to recto/verso
printing. Becker col. 9,11. 60-64. Appellants contend that “once set relative
to each other, the two cams do not rotate during operation.” Appeal Br. 12
(emphasis added).
Appellants’ argument is not persuasive because the Examiner has
reasonably established that Becker describes an apparatus having the
structure required by claim 1. The Examiner finds cam 31 is a dynamic cam
and actuating drive 41 is a single drive motor that mechanically rotates
dynamic cam 31. The Examiner acknowledges that cam 31 does not rotate
during operation. Ans. 6—7. However, as pointed out by the Examiner, the
cam 31 of Becker need not rotate during operation to have the structure
required by claim 1. Ans. 7. In terms of structure, claim 1 merely requires a
dynamic cam capable of independently actuating each of the two gripper
shafts and a single drive motor capable of mechanically rotating the dynamic
cam with respect to the impression cylinder. Becker teaches a cam 31 and
motor 41 having the required capabilities.
Appellants have not identified a reversible error in the Examiner’s
anticipation rejection.
11 Appellants’ argument in the Reply Brief (Reply Br. 10) focusing on “a” in
the clause “a dynamic cam to independently actuate each of the at least two
gripper shafts” is a new argument for which Appellants fail to provide good
cause as to why it was not presented in the Appeal Brief. We do not address
such new arguments. 37 C.F.R. § 41.41(b)(2) (2014).
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Obviousness of Claims 8 and 9 over Becker and either Gorbing or Hauck
The Examiner rejects claim 8 under 35 U.S.C. § 103(a) as obvious
over Becker in view of Gorbing and claim 9 under 35 U.S.C. § 103(a) as
obvious over Becker in view of Hauck. Final 16-17. Appellants offer no
additional argument over those advanced against the rejection of claim 1.
Appeal Br. 14. For the reasons we stated above, Appellants have not
identified a reversible error in these rejections.
Obviousness of claims 1—7 and 10—20 over Taig in view of Becker
The Examiner rejects claims 1—7 and 10-20 under 35 U.S.C. § 103(a)
as obvious over Taig in view of Becker. Final 17—22.
Appellants argue claims 1, 11, 12, and 16 under separate headings.
Thus, we select these claims as representative for addressing the issues on
appeal.
For claims 1,11, and 12, the issue on appeal is the same or similar as
that addressed above when discussing anticipation by Becker. Compare
Final 17—18, and Ans. 8—9, with Appeal Br. 15—17. As we explained above,
Appellants have not identified a reversible error in the Examiner’s findings
with regard to Becker’s teaching of gripper shafts capable of holding
multiple sheets on the impression cylinder in the same or similar manner as
Appellants’ gripper shafts.
With regard to claim 16, Appellants additionally argue that the
portions of Taig cited by the Examiner fail to teach or suggest that “the
dynamic cam is rotated at a different speed than the impression cylinder to
independently actuate each of the at least two gripper shafts” as required by
claim 16. Appeal Br. 19. But, as pointed out by the Examiner, Taig
suggests such differential rotation. Ans. 9—10. Taig teaches rotating an
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impression cylinder (impression drum 7) to print an image on a sheet held by
grippers. Taig col. 5,11. 60—62. Cam 9 also rotates. Taig col. 6,11. 43^46.
Taig teaches that a rotational movement of the impression cylinder
(impression drum 7) in relation to the rotation of the rotary cam causes the
cam follower 11 to elevate gripper axis 4 and gripper blades 13, and the
rotational angle of the rotary cam 9, relative to the rotational angle of the
impression drum 7, determines the points in time at which the gripper is
closed and opened. Taig col. 7,11. 9—15. Cam follower 11 is connected to,
and rotates with, impression cylinder 7. Taig col. 6,11. 46-48. Because both
the impression cylinder and cam are rotating, they must rotate at different
speeds in order to open and close the grippers as required by Taig. As
pointed out by the Examiner, if the impression cylinder and cam did not
rotate at different speeds, cam 9 would not move in relation to the cylinder 7
and the grippers would never be actuated between the open and closed
positions. Ans. 10.
Appellants have not identified a reversible error in the Examiner’s
rejection of claim 16.12
Obviousness over Taig, Becker, and either Gorbing or Hauck
With respect to the Examiner’s rejection of claim 8 as obvious over
Taig, Becker, and Gorbing and the Examiner’s rejection of claim 9 as
obvious over Taig, Becker, and Hauck, Appellants rely upon the arguments
made against the rejection of claim 1 over Taig and Becker. For the reasons
12 Appellants add an argument in the Reply Brief (Reply Br. 14—15)
concerning the additional rotation recited in the last clause of claim 16.
Appellants do not cite good cause for omitting this argument from the
Appeal Brief. Therefore, we do not address this argument.
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we explained above, we do not find those arguments persuasive of reversible
error.
Obviousness Double Patenting Rejections
With respect to the rejections made on the ground of non-statutory
double patenting, Appellants contend that the obviousness double patenting
rejections are improper for the same reasons as the anticipation and
obviousness rejections. For the reasons we explained above, we determine
that a preponderance of the evidence supports the Examiner’s findings of
fact and conclusions of law made in the anticipation and obviousness
rejections. Appellants have not identified a reversible error in the
obviousness double patenting rejections.
CONCLUSION
We sustain the Examiner’s rejections.
DECISION
The Examiner’s decision is affirmed.
TIME PERIOD FOR RESPONSE
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).
AFFIRMED
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