Ex parte Loffler

Board of Patent Appeals and Interferences

Jan 21, 1999

08384847 (B.P.A.I. Jan. 21, 1999)

Application for patent filed February 7, 1995. 1
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte GERHARD LOFFLER
________________
Appeal No. 97-2885
Application 08/384,8471
________________
ON BRIEF
________________
Before CALVERT, ABRAMS and McQUADE, Administrative Patent
Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Gerhard Loffler appeals from the final rejection of
claims 1 and 2, the only claims pending in the application.
We reverse and enter a new rejection of claim 2 pursuant to 37
Appeal No. 97-2885
Application 08/384,847
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CFR § 1.196(b).
The invention relates to "a multicolor printing method
wherein a printed image on a printed material is attained with
at least two passes" (specification, page 1). A copy of
appealed claims 1 and 2 appears in the appendix to the
appellant's brief (Paper No. 15).
The references relied upon by the examiner as evidence of
obviousness are:
Minschart 4,994,975 Feb. 19,
1991
Steiner et al. (Steiner) 5,181,257 Jan. 19,
1993
Sainio et al. (Sainio) 5,412,577 May 2, 1995
(filed Oct. 28, 1992)
Claims 1 and 2 stand rejected:
a) under 35 U.S.C. § 112, first paragraph, as being based
on a specification which fails to provide an enabling
disclosure; and
b) under 35 U.S.C. § 103 as being unpatentable over
Sainio or Steiner in view of Minschart.
Reference is made to the appellant's brief (Paper No. 15)
Appeal No. 97-2885
Application 08/384,847
The examiner has refused entry of the reply brief filed2
by the appellant on February 24, 1998 (Paper No. 18).
Accordingly, we have not considered the arguments advanced in
the reply brief in reviewing the merits of the instant appeal.
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and to the examiner's answer (Paper No. 16) for the respective
positions of the appellant and the examiner with regard to the
merits of these rejections.2
The first rejection rests on the examiner's determination
that the appellant's specification fails to comply with the
enablement provision of 35 U.S.C. § 112, first paragraph. The
dispositive issue with regard to this provision is whether the
appellant's disclosure, considering the level of ordinary
skill in the art as of the date of the appellant's
application, would have enabled a person of such skill to make
and use the appellant's invention without undue
experimentation. In re Strahilevitz, 668 F.2d 1229, 1232, 212
USPQ 561, 563-64 (CCPA 1982). In calling into question the
enablement of the appellant's disclosure, the examiner has the
Appeal No. 97-2885
Application 08/384,847
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initial burden of advancing acceptable reasoning inconsistent
with enablement. Id. In essence, the examiner contends that
"[t]he disclosure is inadequate in disclosing what specific
computer hardware, circuit components and computer software is
encompassed by the recited system components as disclosed and
claimed so as to enable the
desired press functions relating to registration to be
performed" (answer, page 3). A review of the record, however,
indicates that the appellant has made a fairly detailed
disclosure of the hardware components and associated
operational relationships involved in the claimed method (see,
for example, specification pages 5 through 13 and drawing
Figures 1 through 3). Given the relatively specific and
straightforward nature of this disclosure, it is not evident,
nor has the examiner cogently explained, why the appellant's
specification would not have enabled a person of ordinary
skill in the art to make and use the claimed invention without
undue experimentation.
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 112, first paragraph, rejection of claims 1 and 2.
Appeal No. 97-2885
Application 08/384,847
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Nor shall we sustain the standing 35 U.S.C. § 103
rejection of claim 2 as being unpatentable over Sainio or
Steiner in view of Minschart.
For the reasons expressed below, claim 2 is indefinite.
Thus, the standing prior art rejection thereof must fall since
it is necessarily based on speculative assumption as to the
meaning of the claim. See In re Steele, 305 F.2d 859, 862-63,
134 USPQ 292, 295 (CCPA 1962). It should be understood,
however, that our
decision in this regard rests solely on the indefiniteness of
the claimed subject matter, and does not reflect on the
adequacy of the prior art evidence applied to support the
rejection.
As for the standing 35 U.S.C. § 103 rejection of claim 1,
the appellant's basic argument that the applied references
would not have suggested a method meeting the claim
limitations requiring a multicolor printing of a printed image
on printed material in at least two passes through a printing
machine wherein image signals picked up by an image pickup
device in a first pass of the printed material through the
Appeal No. 97-2885
Application 08/384,847
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machine are stored and applied to a steering or control
process in subsequent passes of the printed material through
the machine is well taken. In this regard, neither Sainio nor
Steiner teaches passing printed material through a printing
machine in multiple passes, much less using image signals
picked up in the first pass in a steering or control process
in subsequent passes of the printed material through the
machine. Minschart's disclosure of a web registration method
fails to cure these deficiencies.
Consequently, we shall not sustain the standing 35 U.S.C.
§ 103 rejection of claim 1 as being unpatentable over Sainio
or Steiner in view of Minschart.
The following rejection is entered pursuant to 37 U.S.C.
§ 196(b).
Claim 2 is rejected under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly
claim the subject matter the appellant regards as the
invention.
The scope of claim 2 is indefinite for the following
reasons. To begin with, the "obtaining" step recited in the
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Application 08/384,847
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claim is unclear in that it does not indicate how or when the
image signals are generated. This problem is compounded in
the "applying" step wherein the reference to the "at least one
subsequent pass of the printed material through the printing
machine" lacks a proper antecedent basis due to the failure of
the claim to recite any preceding pass of the printed material
through the machine. Finally, the reference in the "applying"
step to "the stored ink coverage values" lacks a proper
antecedent basis since the "storing" step in the claim is
directed to the image signals rather than to the ink coverage
values obtained from the image signals.
In summary:
a) the decision of the examiner to reject claims 1 and 2
under 35 U.S.C. § 112, first paragraph, and under 35 U.S.C. §
103 is reversed; and
b) a new 35 U.S.C. § 112, second paragraph, rejection of
claim 2 is entered pursuant to 37 CFR § 1.196(b).
Appeal No. 97-2885
Application 08/384,847
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This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR § 1.196(b) provides that, “A new ground of rejection
shall not be considered final for purposes of judicial
review.”
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings
(§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED; 37 CFR § 1.196(b)
Appeal No. 97-2885
Application 08/384,847
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IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
NEAL E. ABRAMS ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 97-2885
Application 08/384,847
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Lerner and Greensburg
P. O. Box 2480
Hollywood, FL 33022-2490
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