Ex Parte Perini

Patent Trial and Appeal Board

Oct 30, 2013

12145693 (P.T.A.B. Oct. 30, 2013)

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.
12/145,693 06/25/2008 Fabio PERINI 73057 3749
23872 7590 10/31/2013
MCGLEW & TUTTLE, PC
P.O. BOX 9227
SCARBOROUGH STATION
SCARBOROUGH, NY 10510-9227
EXAMINER
ALIE, GHASSEM
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
10/31/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FABIO PERINI
____________

Appeal 2011-008950
Application 12/145,693
Technology Center 3700
____________

Before JOHN C. KERINS, WILLIAM A. CAPP, and SCOTT A. DANIELS,
Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Fabio Perini (Appellant) seeks our review under 35 U.S.C.
§ 134(a) of the Examiner’s final rejection of claims 1, 2, 5-8, 11 and 13-22.
Claims 3, 4, 9, 10 and 12 are canceled. We have jurisdiction under 35
U.S.C. § 6(b). An oral hearing was conducted on October 15, 2013, with
Brian M. Duncan, Esq., appearing on behalf of Appellant.
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).

THE INVENTION
Appellant’s invention is directed to an apparatus for producing small
paper rolls. Independent claim 18, reproduced below, is representative of
the claimed subject matter:
18. An apparatus for producing small paper rolls,
the apparatus comprising:

a first cutting device receiving uncut paper rolls,
said first cutting device cutting at least one end of
each of said uncut paper rolls to form a plurality of
trimmed rolls; and

a second cutting device located downstream of
said first cutting device, said second cutting device
receiving said trimmed rolls from said first cutting
device, said second cutting device cutting each of
said trimmed rolls to form a plurality of subdivided
rolls, each of said subdivided rolls having a length
that is less than a length of each of said trimmed
rolls.

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THE REJECTIONS
Appellant appeals from the following rejections:
(i) claim 18 under 35 U.S.C. § 102(b) as being anticipated by Newnes
(US 2002/0038588 A1, published Apr. 4, 2002)(hereafter “Newnes ‘588”);
(ii) claim 18 under 35 U.S.C. § 102(b) as being anticipated by
Newnes (US 2002/0007710 A1, published Jan. 24, 2002)(hereafter “Newnes
‘710”);
(iii) claim 18 under 35 U.S.C. § 102(b) as being anticipated by Hale
(US 5,142,955, issued Sep. 1, 1992);
(iv) claim 18 under 35 U.S.C. § 102(b) as being anticipated by
Boelen (US 4,558,617, issued Dec. 17, 1985);
(v) claims 1, 7, 15, 17, 18 and 19 under 35 U.S.C. § 103(a) as being
unpatentable over Nystrand (US 3,905,260, issued Sep. 16, 1975) in view of
Newnes ‘588, Newnes ‘710 or Hale, and further in view of Boelen;
(vi) claims 1, 2, 5, 6, 7, 8, 11, 13, 14 and 16 under 35 U.S.C. § 103(a)
as being unpatentable over Nystrand in view of Boelen and Friden (US
2,047,021, issued Jul. 7, 1936); and
(vii) claims 5, 11, 21 and 22 under 35 U.S.C. § 103(a) as being
unpatentable over Nystrand in view of Boelen, Friden and McConnell (US
3,282,444, issued Nov. 1, 1966).

ANALYSIS
Claim 18--Anticipation--Newnes ‘588
Because we below sustain the rejection of claim 18 as being
anticipated by Boelen, we need not and do not reach the merits of this
ground of rejection.
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Claim 18--Anticipation--Newnes ‘710
Because we below sustain the rejection of claim 18 as being
anticipated by Boelen, we need not and do not reach the merits of this
ground of rejection.
Claim 18--Anticipation--Hale
Because we below sustain the rejection of claim 18 as being
anticipated by Boelen, we need not and do not reach the merits of this
ground of rejection.
Claim 18--Anticipation--Boelen
Appellant’s arguments relative to this rejection distill down to the
contention that the Examiner erroneously found that the claimed first and
second cutting devices are both met by different sets of cutting blades in the
Boelen paper roll trimming and cutting apparatus. Appeal Br. 21-22; Reply
Br. 5-6. Appellant maintains that claim 18 requires two different machines
by virtue of separately reciting a “first cutting device that trims the uncut
paper rolls and a second cutting device that cuts the trimmed rolls into a
plurality of subdivided rolls.” Appeal Br. 21.
The Examiner’s position is that the claim limitations directed to the
claimed first cutting device are met by a pair of outboard blades 1, 8, in
Boelen, which operate to trim the ends of a paper roll prior to the paper roll
advancing to a second cutting device in the form of blades 3-6, which
operate to cut the paper roll to subdivide it into a plurality of rolls. Ans. 5.
The Examiner takes the position that the claims lack sufficient structural
limitations in claiming the first and second cutting devices so as to define
over different groups of blades within the apparatus of Boelen. Ans. 11.
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We do not find error in the Examiner’s position applying a broadest
reasonable interpretation to claim 18, such that the claim encompasses
different sets of blades within a single apparatus or physical structure as
meeting the limitations calling for first and second cutting devices.
Appellant has not pointed to any specific definitions in the Specification for
these limitations that precludes the elements from being disposed as parts of
a single physical structure. The different sets of blades perform the claimed
operations of the first and second cutting devices, including the trimming of
the ends of an uncut paper roll by first trimming blades 1 and 8 prior to the
roll being delivered to the second cutting device, or blades 3-6, where the
roll is cut into a plurality of rolls. The mere separate recitation of a first and
second cutting device does not, as pointed out by the Examiner, structurally
define over the Boelen apparatus. Ans. 11.
Appellant further maintains that the Examiner’s claim construction, in
which the claimed first and second cutting devices are present in a single
physical structure, is inconsistent with the “all elements rule.” Appeal Br.
11; Reply Br. 6. Appellant argues in this regard that “[a] single device
having a plurality of blades as featured in Boelen is not the equivalent of a
trimming device that trims paper rolls wherein the trimmed paper rolls are
supplied to a cut-off machine that cuts the trimmed rolls to form a plurality
of rolls as featured in the present invention.” Reply Br. 6. The issue here is
not one of equivalency, instead the issue is whether the claims patentably
define over the Boelen apparatus. As discussed above, we do not find error
in the Examiner’s position that Boelen includes both a trimming device and
a cut-off machine falling within the scope of claims 1 and 8. Appellant has
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not otherwise apprised us as to how the Examiner’s claim construction
violates what Appellant refers to as the “all elements rule.”
Appellant additionally “wishes to note that the Decision on Appeal in
the parent case (Serial No. 10/524,001) noted that a single device that trims
the rolls and subdivides the rolls does not anticipate the present invention.”
Appeal Br. 22. Appellant incorrectly states what that decision stands for.
While the Decision states that, “in Appellant’s claimed apparatus, the
trimming device is a separate element from the cutting-off machine,”
(Decision 6), the claim to which the statement is directed specifically called
for the presence of a “trimmed roll store element” disposed between the
claimed trimming device and the claimed cutting-off machine, resulting in
the two elements being separate. See Decision 2-3, Claim 1. No such
interposing structure is present in claim 18.
The rejection of claim 18 as anticipated by Boelen is sustained.
Claims 1, 7, 15, 17, 18 and 19--Obviousness--Nystrand/Newnes
‘588/Newnes ‘710/Hale/Boelen
We do not sustain the rejection of claims 1, 7, 15, 17, 18 and 19 as
being unpatentable over Nystrand in view of Newnes ‘588, Newnes ‘710,
Hale and Boelen, in view of the particular modification of Nystrand
proposed by the Examiner in this ground of rejection. The Examiner notes
that Nystrand does not explicitly teach a trimming device that trims the
elongated paper rolls prior to its cutting-off machine, and proposes to
modify Nystrand to include a trimming device, citing to the additional cited
references as evidencing that trimming of paper rolls prior to being cut off
into a plurality of smaller rolls was known in the art.
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This modification is essentially the same as that proposed by the
Examiner in prior Appeal No. 2009-008646, in a rejection of claims as being
unpatentable over Nystrand in view of Friden. For the same reasons as
stated in the Decision in that appeal, the Examiner has not established that
the provision of a separate trimming device on Nystrand, where Nystrand
already performs trimming with the same blades used to cut off smaller
paper rolls from an elongated paper roll, would have provided any benefit or
additional or different function, such that the additional cost of a trimmer
device and increased space requirements brought about by the proposed
modification would have given a person of ordinary skill in the art a reason
to make the modification.
Claims 1, 2, 5, 6, 7, 8, 11, 13, 14 and 16--Obviousness--
Nystrand/Boelen/Friden
We also do not sustain the rejection of claims 1, 2, 5, 6, 7, 8, 11, 13,
14 and 16 as being unpatentable over Nystrand in view of Boelen and
Friden, in that the Examiner’s proposed modification of Nystrand is
essentially the same as discussed in the preceding section. The Examiner
has not cogently explained why such a modification would have been
obvious to a person of ordinary skill in the art.
Claims 5, 11, 21 and 22--Obviousness--Nystrand/Boelen/Friden/McConnell
We further do not sustain the rejection of claims 5, 11, 21 and 22 as
being unpatentable over Nystrand in view of Boelen, Friden and McConnell,
in that the Examiner’s proposed modification of Nystrand is essentially the
same as discussed in the preceding section. The Examiner has not cogently
explained why such a modification would have been obvious to a person of
ordinary skill in the art.

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NEW GROUND OF REJECTION under 37 C.F.R. § 41.50(b)--Claims 1 and
7--Obviousness--Boelen/Nystrand
This ground of rejection parallels the rejection of claims 7, 9, 21 and
22 in related Appeal No. 2011-008644, a rejection which is affirmed in the
decision in that appeal mailed contemporaneously herewith. Claims 1 and 7
in the present appeal are drawn to an apparatus, while the claims in the
related appeal are directed to a method having apparatus limitations of
essentially the same scope.
With respect to claim 1, Boelen teaches the provision of a trimming
device (blades 1, 8) for trimming at least one end of each paper roll to form a
trimmed roll, and a cutting-off machine (blades 3-6 or 4-7) for sub-dividing
the trimmed rolls into a plurality of small rolls. Boelen does not explicitly
disclose a rewinding machine or a paper roll store element. With respect to
claim 7, Boelen discloses a first paper log cutting device (blades 1, 8) for
cutting each end of an uncut paper log to form a trimmed paper log, and a
second paper log cutting device (blades 3-6 or 4-7) receiving trimmed paper
logs from said first paper log cutting device for cutting a trimmed log into a
plurality of rolls. Boelen does not explicitly disclose a rewinding machine
or an uncut paper log storage unit.
The use of a rewinding machine for producing uncut paper rolls and
storage to store the uncut paper rolls is well-known in the art such as taught
by Nystrand. Nystrand teaches a rewinding machine to produce rolls that is
supplied to a severing machine or cutting machine 28. Nystrand also teaches
storage defined by log transfer unit 25 that stores the uncut paper rolls and
supplies the uncut rolls to the trimming machine 28. See Nystrand, fig. 2. It
would have been obvious to a person of ordinary skill in the art to provide a
rewinding machine and storage upstream in Boelen's apparatus in order to
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produce elongated rolls, and store and supply them to the cutting station in
the same apparatus or the floor of a factory and facilitate handling and
processing of paper rolls.
In making this rejection, we note that we have taken into account all
of Appellant’s arguments traversing the rejection of claims 7, 9, 21 and 22 as
being unpatentable over Boelen in view of Nystrand in related Appeal No.
2011-008644, and find those arguments to be unpersuasive as to the
patentability of claims 1 and 7 pending in this application. We leave it to the
Examiner to determine whether this new ground of rejection, or other
grounds of rejection applying the combination of Boelen and Nystrand with
additional references or other evidence, should be applied to the respective
dependent claims.

DECISION
We do not reach the rejections of claim 18 under 35 U.S.C. § 102(b)
as being anticipated by Newnes ‘588, Newnes ‘710 and Hale.
The decision of the Examiner to reject claim 18 under 35 U.S.C.
§ 102(b) as being anticipated by Boelen is affirmed.
The decision of the Examiner to reject claims 1, 7, 15, 17, 18 and 19
under 35 U.S.C. § 103(a) as being unpatentable over Nystrand in view of
Newnes ‘588, Newnes ‘710 or Hale, and further in view of Boelen is
reversed.
The decision of the Examiner to reject claims 1, 2, 5, 6, 7, 8, 11, 13,
14 and 16 under 35 U.S.C. § 103(a) as being unpatentable over Nystrand in
view of Boelen and Friden is reversed.
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The decision of the Examiner to reject claims 5, 11, 21 and 22 under
35 U.S.C. § 103(a) as being unpatentable over Nystrand in view of Boelen,
Friden and McConnell is reversed.
A NEW GROUND OF REJECTION of claims 1 and 7 under 35
U.S.C. §103(a) is entered.
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
“Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board.”
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
Section 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new
evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner,
in which event the proceeding will be remanded to
the examiner . . .
(2) Request rehearing. Request that the proceeding
be reheard under § 41.52 by the Board upon the
same record . . .
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
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the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
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-IN-PART; 37 C.F.R. § 41.50(b)

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