Ex Parte Leimand

Patent Trial and Appeal Board

May 1, 2013

11410664 (P.T.A.B. May. 1, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte HENRIK LEIMAND
___________

Appeal 2010-012196
Application 11/410,664
Technology Center 2800
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Before JOHNNY A. KUMAR, TREVOR M. JEFFERSON, and
IRVIN E. BRANCH, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 11-15, 17-31, 33-48, 50-62, 64-68, 70-73, 75-79, 81-83, and 85-89.
Claims 1-l0, 16, 32, 49, 63, 69, 74, 80, 84, and 90-112 have been canceled.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Rather than reiterate the arguments of Appellant and the Examiner,
we refer to the Appeal Brief (“App. Br.”) filed December 8, 2009, the
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Answer (“Ans.”) mailed June 9, 2010, and the Reply Brief (“Reply Br.”)
filed August 9, 2010 for the respective details. We have considered in this
decision only those arguments Appellant actually raised in the Briefs. Any
other arguments which Appellant could have made but chose not to make in
the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

STATEMENT OF THE CASE
Introduction
Appellant’s invention relates to “a method of operation of a printing
unit and a printing unit for use in an offset machine comprising lacquer
application means and water application means” (Spec. 1:4-6). Claim 11,
which is illustrative of the invention, reads as follows:
11. A detachable unit for transferring water or lacquer in an
offset printing machine of a type having at least one printing
unit with a rotating cylinder used in printing, the detachable
unit being adapted for mounting to and detachment from the
offset printing machine, the detachable unit comprising:
at least one roller capable of rotating and applying a
water or lacquer to a rotating cylinder when the detachable unit
is mounted to the offset printing machine with the at least one
roller being in rotatable engagement with the rotating cylinder;
a doctor blade chamber device mounted to the at least
one roller, the doctor blade chamber device capable of
supplying the water or lacquer to the at least one roller;
a supporting frame for mounting the detachable unit on a
frame of the printing unit of the offset printing machine
adjacent to the rotating cylinder, the supporting frame being
adapted for detachable mounting to the frame of the printing
unit; and
means for moving the detachable unit between a first
position in which the at least one roller is in engagement with
the rotating cylinder and a second position in which the.at least
one roller is out of engagement with the rotating cylinder.
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The Rejections
Claims 11-13, 15, 17-24, 26-29, 31, 33-41, 43-46, 48, 50-57, 59-62,
64-68, 70-73, 75-79, 81-83, and 85-89 are rejected under 35 U.S.C. 103(a)
as being unpatentable over Johne (GB 2119711 A, Nov. 23, 1983) in view of
DeMoore (6,116,158, Sep. 12, 2000).
Claims 14, 30, and 47 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Johne in view of DeMoore and further in view of Fischer
(4,148,256, Apr. 10, 1979).
Claims 25, 42, and 58 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Johne in view of DeMoore and further in view of Herold
(5,588,365, Dec. 31, 1996).

ISSUE AND ANALYSIS
Based on Appellant’s arguments, the principal and dispositive issue of
whether the Examiner erred in rejecting exemplary claim 11 turns on
whether the teachings of the combination of the references would have
taught or suggested the claimed subject matter (App. Br. 14-18). In
particular, Appellant contends that the Examiner erred in rejecting the claims
as obvious over Johne and DeMoore because (1) DeMoore teaches away
from the claimed invention, and (2) the proposed combination is based on
impermissible hindsight. Id. at 6-9.

We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We disagree with Appellant’s
conclusions. We adopt as our own the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and the reasons set
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forth by the Examiner in the Examiner’s Answer in response to Appellant’s
Appeal Brief.
In response to each of the arguments raised by Appellant, the
Examiner presents detailed findings and responses, which are not rebutted
by Appellant in the Reply Brief.
In particular, the Examiner properly identifies the relevant teachings
in Johne and DeMoore and states how each claimed element is met by those
teachings (see Ans. 3-21). Additionally, because the proposed rejection is
based on the combination of the references, Appellant’s challenge to the
references individually is not persuasive of error in the Examiner’s position.
See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (stating that “one cannot
show non-obviousness by attacking references individually where . . . the
rejections are based on combinations of references.”). In this case, the
teaching value of Johne is in disclosing the lacquer and water application
unit, whereas the doctor blade chamber is disclosed by DeMoore.
We specifically agree with the Examiner’s stated position that
DeMoore does not teach away from the combination because the reference
expressly teaches that the doctor blade chamber device would reduce
evaporation of water or lacquer before or during the operation of the
detachable unit to provide the mounting and adjusting structure for
predictably facilitating the adjustment as well as maintenance operation of
the detachable unit. Ans. 10-11.
We also disagree with Appellant’s argument that the proposed
combination of Johne and DeMoore is motivated by impermissible
hindsight. It has been held that where the claimed subject matter involves
more than the simple substitution of one known element for another or the
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mere application of a known technique to a piece of prior art ready for the
improvement, a holding of obviousness must be based on “an apparent
reason to combine the known elements in the fashion claimed.” KSR Int’l.
Co. v. Teleflex Inc., 550 U.S. 398, 417-18 (2007). That is, “there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” Id. at 418 (quoting In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006)). Such reasoning can be based on interrelated
teachings of multiple patents, the effects of demands known to the design
community or present in the marketplace, and the background knowledge
possessed by a person having ordinary skill in the art. Id. at 417-18. In the
present case, the Examiner found that the proposed combination would have
resulted in “reducing evaporation of water or lacquer … so as to predictably
result in facilitating the adjustment as well as maintenance operation of the
detachable unit.” (Ans. 9). We find this articulated rationale to be sufficient
to justify this combination. In other words, we find that the proposed
combination would merely require the ordinarily skilled artisan to use
common sense, see KSR, 550 U.S. at 421, to appreciate that the sealed
doctor blade chamber of DeMoore would have improved Johne’s
maintenance operation (see Ans. 9).
Therefore, we agree with the Examiner that the combination of Johne
and DeMoore would have suggested all the recited limitations of
independent claim 11 to one of ordinary skill in the art.
Regarding the remaining claims, while Appellant raised additional
arguments for patentability of the cited claim (App. Br. 18-29), we find that
the Examiner has rebutted in the Answer each and every one of those
arguments supported by sufficient evidence. Ans. 5-7, 12-21. Therefore, we
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adopt the Examiner’s findings and underlying reasoning, which are
incorporated herein by reference. Consequently, we find no error in the
Examiner’s rejections of claims 11-15, 17-31, 33-48, 50-62, 64-68, 70-73,
75-79, 81-83, and 85-89.

CONCLUSIONS
The Examiner did not err in rejecting claims 11-13, 15, 17-24, 26-29,
31, 33-41, 43-46, 48, 50-57, 59-62, 64-68, 70-73, 75-79, 81-83, and 85-89 as
being unpatentable over Johne in view of DeMoore
The Examiner did not err in rejecting claims 14, 30, and 47 as being
unpatentable over Johne in view of DeMoore and further in view of Fischer.
The Examiner did not err in rejecting claims 25, 42, and 58 as being
unpatentable over Johne in view of DeMoore and further in view of Herold.
The Examiner did not err in rejecting claims 11-15, 17-31, 33-48, 50-
62, 64-68, 70-73, 75-79, 81-83, and 85-89 under 35 U.S.C. § 103(a).

DECISION
The decision of the Examiner rejecting claims 11-15, 17-31, 33-48,
50-62, 64-68, 70-73, 75-79, 81-83, and 85-89 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

ELD