Ex Parte Maria de Vroome

Board of Patent Appeals and Interferences

Jan 13, 2006

09999660 (B.P.A.I. Jan. 13, 2006)

The opinion in support of the decision being entered today was not written for publication and is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CLEMENS JOHANNES MARIA DE VROOME

____________

Appeal No. 2005-2417
Application No. 09/999,660
____________

ON BRIEF
____________

Before FRANKFORT, McQUADE, and BAHR, Administrative Patent Judges.
McQUADE, Administrative Patent Judge.

DECISION ON APPEAL
Clemens Johannes Maria de Vroome appeals from the examiner’s rejection
(mailed October 9, 2003) of claims 1, 3-31, 33 and 34, all of the claims pending in the
application.

THE INVENTION
The invention relates to “a method and a device for cooling . . . a printed paper
web” (specification, page 1). Representative claims 1 and 4 read as follows:

Claim l. A method of cooling a material web, which comprises:
moving the material web in a given direction over a cooling cylinder and at least
one other cylinder disposed at a location
selected from the group consisting of a location upline and a location downline from the
cooling cylinder, as viewed in the given direction of the web path;
carrying out the step of moving of the material web with looping sections of the
material web passing over the cylinders, the looping sections being connected for
moving the material web along the looping sections at least approximately on a web
path being meander-shaped, always curved or non-rectilinear; and
arranging the cylinders with respect to one another so as to
exclude contact pressure with one another between respective
two of the cylinders.

Claim 4. A device for cooling a material web comprising:
a cooling cylinder around which the material web movable on a web path is partly
looped; and
another cylinder disposed at a location selected from the
group consisting of downline from and upline from the cooling cylinder;
the material web having looping sections passing over said cylinders, the looping
sections being connected for moving the material web along the looping sections at
least approximately on a web path being meander-shaped, always curved or
non-rectilinear.

THE PRIOR ART

The references relied on by the examiner as evidence of

anticipation and obviousness are:

Tafel 4,920,881 May 01, 1990

Reichel 5,188,028 Feb. 23, 1993

Hahne 5,275,103 Jan. 04, 1994

THE REJECTIONS

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Application No. 09/999,660

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Claims 4-31, 33 and 34 stand rejected under 35 U.S.C. § 112, first paragraph, as
being based on a specification which fails to comply with the written description
requirement of this section of the statute.

Claims 1, 3-5, 10, 15-20, 30, 31, 33 and 34 stand rejected under 35 U.S.C. §
102(b) as being anticipated by Hahne.

Claims 1, 3, 18, 22, 23, 26, 27, 31 and 34 stand rejected under 35 U.S.C. §
102(b) as being anticipated by Reichel.

Claims 6-8 and 11-14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hahne.

Claim 9 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over
Hahne in view of Tafel.

Claims 24 and 25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over Reichel.

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Application No. 09/999,660

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Attention is directed to the brief (filed April 2, 2004) and answer (mailed June 16,
2004) for the respective positions of the appellant and examiner regarding the merits of
these rejections.

DISCUSSION

I. Petitionable matter

The appellant (see pages 13-14 in the brief) raises as an
issue on appeal the objection to the drawing set forth in the
Office action from which the appeal was taken. Although the
examiner (see page 3 in the answer) allows that the objection is
related to the 35 U.S.C. § 112, first paragraph, rejection, and
hence “may be appropriate for the Board to review” (answer, page
3), the stated basis for the objection under 37 CFR § 1.83(a)
shows that it is not directly connected to the merits of the
rejection. Hence, the drawing objection is properly reviewable
by petition to the Director rather than appeal to this Board (see
In re Hengehold, 440 F.2d 1395, 1403-1404, 169 USPQ 473, 479
(CCPA 1971)), and will not be further addressed in this decision.

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II. The 35 U.S.C. § 112, first paragraph, rejection

According to the examiner (see pages 4 and 5 in the answer),
the appellant’s specification lacks written descriptive support
for the recitation in independent claims 4, 18 and 30 that the
material web looping sections passing over the cylinders are
connected for moving the material web along the looping sections
“at least approximately on a web path being meander-shaped,
always curved or non-rectilinear,” and for the further recitation
in dependent claims 31, 33, and 34 that the web path has
“substantially no straight line section.”1

1 Although independent claim 1 also recites that the looping sections are connected for moving the
material web along the looping sections “at least approximately on a web path being meander-shaped,
always curved or non-rectilinear,” the examiner did not include it or dependent claim 3 in the rejection.
The test for determining compliance with the written
description requirement of § 112, ¶ 1, is whether the disclosure
of the application as originally filed reasonably conveys to the
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artisan that the inventor had possession at that time of the
later claimed subject matter, rather than the presence or absence
of literal support in the specification for the claim language.
In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir.
1983). The content of the drawings may also be considered in
determining compliance with the written description requirement.
Id.

The originally filed specification in this application
states the following with respect to the looping sections of the
material web:
a) “the method includes moving the material web on an at
least approximately always curved web path” (page 5);
b) “the material web can be moved . . . on a substantially
always curved path” (page 12);
c) “continuous curving of the web path results from the
looping sections of the material web” (page 12);
d) “[r]ectilinearly extending routes between the cylinders,
around which the material web is led, can hereby be prevented”
(page 12);
e) “a first, for example positive, curving passes
continuously into a second, for example, negative curving,
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k) “[t]he material web 5 . . . does not have or has only a
very, very short rectilinear free or clear web guidance at the
transition locations 45 and 46” (page 33).
without having a considerable rectilinearly running web section”
(page 13);
f) “paper transfer results without an intermediate region”
(page 16);
g) “the length of the intermediate section 14 of the
material web between the second cooling cylinder 9 and the third
cooling cylinder 13 is thereby reduced, as far as structurally
possible, and is decreased to a minimum” (page 26);
h) “the web course of the material web 5 virtually always
has a curve along the looping sections of the individual cooling
cylinders” (page 27);
i) “the material web 5 is always in contact with the surface
of one of the cooling cylinders . . . except at transition-points
between the cooling cylinders, which are reduced to a minimum
lengthwise” (page 27);
j) “[d]ue to the tight packing of the cooling cylinders 9,
13 and 15 and the offset arrangement, the first and second
transition positions 45 and 467 have virtually no rectilinear and
freely running web sections” (pages 32-33); and
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These portions of the originally filed specification clearly
provide the requisite written descriptive support for the claim
limitations in question. Due to the presence of the modifiers
“approximately” and/or “substantially,” none of these limitations
requires the stated material web movement to be strictly curved
or non-rectilinear with no straight line sections. Hence, the
examiner’s position that the application as originally filed
would not reasonably convey to the artisan that the appellant had
possession at that time of the subject matter recited in claims
4-31 is unfounded.

Accordingly, we shall not sustain the standing 35 U.S.C.
§ 112, first paragraph, rejection of claims 4-31, 33 and 34.

III. The 35 U.S.C. § 102(b) and 35 U.S.C. § 103(a) rejections

Each of the examiner’s prior art rejections rests on a
finding (see pages 5-8 in the answer) that Hahne meets the
limitations in independent claims 1, 4, 18 and 30 requiring the
looping sections passing over the cylinders to be connected for
moving the material web along the looping sections “at least
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Accordingly, we shall not sustain the standing 35 U.S.C.
§ 102(b) rejection of independent claims 1, 4, 18 and 30, and
dependent claims 3, 5, 10, 15-17, 19, 20, 31, 33 and 34, as being
approximately on a web path being meander-shaped, always curved
or non-rectilinear,” or that Reichel meets the same limitations
in independent claims 1 and 18. While both references disclose
rotary offset-printing machines having a cooling cylinder
arrangement located downstream of a dryer, neither goes into much
detail as to the spatial relationships between the cooling
cylinders. For purposes of treating the claim limitations at
issue, the examiner simply points to the sole drawing in Hahne
and Figure 1 in Reichel. These drawings, however, do not teach,
and would not have suggested, a cylinder arrangement wherein
material web looping sections passing over the cylinders are
connected for moving the material web along the looping sections
“at least approximately on a web path being meander-shaped,
always curved or non-rectilinear.” The examiner’s determination
to the contrary has no factual basis in the drawings or
underlying specifications of the references. The examiner’s
application of Tafel in combination with Hahne does not cure this
evidentiary deficiency.

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anticipated by Hahne, the standing 35 U.S.C. § 102(b) rejection
of independent claims 1 and 18, and dependent claims 3, 22, 23,
26, 27, 31 and 34, as being anticipated by Reichel, the standing
U.S.C. § 103(a) of dependent claims 6-8 and 11-14 as being
unpatentable over Hahne, the standing U.S.C. § 103(a) of
dependent claim 9 as being unpatentable over Hahne in view of
Tafel, or the standing U.S.C. § 103(a) of dependent claims 24 and
25 as being unpatentable over Reichel.

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SUMMARY
The decision of the examiner to reject claims 1, 3-31,
33 and 34 is reversed.

REVERSED

CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 2005-2417
Application No. 09/999,660

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