Ex Parte Perini

Patent Trial and Appeal Board

Oct 30, 2013

12145700 (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.
12/145,700 06/25/2008 Fabio PERINI 73058 3759
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 2011-008644
Application 12/145,700
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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Application 12/145,700

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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, 7-9 and 15-24.
Claims 2-6 and 10-14 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.

THE INVENTION
Appellant’s invention is directed to a method for treating elongated
rolls. Independent claim 1, reproduced below, is representative of the
claimed subject matter:
1. A method for treating elongated paper rolls, the
method comprising the steps:

providing a cut-off machine;

providing elongated paper rolls;

providing a trimming device;

trimming said elongated paper rolls with said
trimming device to form trimmed paper rolls;

supplying said trimmed paper rolls to said cut-off
machine; and

trimming said trimmed paper rolls with said cut-
off machine to form a plurality of rolls.

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THE REJECTIONS
Appellant appeals from the following rejections:
(i) claims 1 and 8 under 35 U.S.C. § 102(b) as being anticipated by
Boelen (US 4,558,617, issued Dec. 17, 1985);
(ii) claims 7, 9 and 15-24 under 35 U.S.C. § 103(a) as being
unpatentable over Boelen in view of Nystrand (US 3,905,260, issued Sep.
16, 1975);
(iii) claims 1, 7-9 and 15-24 under 35 U.S.C. § 103(a) as being
unpatentable over Nystrand in view of Boelen; and
(iv) claims 8, 9 and 18-24 under 35 U.S.C. § 103(a) as being
unpatentable over Nystrand in view of Newnes (US 2002/0038588 A1,
published Apr. 4, 2002) and Boelen.

ANALYSIS
Claims 1 and 8--Anticipation--Boelen
Appellant’s arguments relative to this rejection distill down to the
contention that the Examiner erroneously found that the claimed cut-off
machine and the claimed trimming device are both met by different sets of
cutting blades in the Boelen paper roll trimming and cutting apparatus.
Appeal Br. 10-13; Reply Br. 1-3. Appellant maintains that claims 1 and 8
require two different machines by separately reciting a “cut-off machine”
and a “trimming device” as well as the remaining method steps in those
claims.
The Examiner’s position is that the claim limitations directed to the
claimed trimming 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
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advancing to a cut-off machine in the form of blades 3-6, which operate to
trim or cut the paper roll into a plurality of rolls, as set forth in the claimed
method. Ans. 3-4. The Examiner takes the position that the claims lack
sufficient structural limitations in claiming the trimming device and cut-off
machine so as to define over different groups of blades within the apparatus
of Boelen. Ans. 9.
We do not find error in the Examiner’s position applying a broadest
reasonable interpretation to the claims such that claims 1 and 8 encompass
different sets of blades within a single apparatus or physical structure as
meeting the limitations calling for a trimming device and a cut-off machine.
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 trimming device and cut-off machine in the recited method,
including the trimming of the ends of an uncut paper roll by trimming blades
1 and 8 prior to the roll being delivered to the cut-off blades 3-6 where the
roll is cut into a plurality of rolls. The mere separate recitation of a
trimming “device” and a cut-off “machine” does not, as pointed out by the
Examiner, structurally define over the Boelen apparatus.
Appellant further maintains that the Examiner’s claim construction, in
which the claimed trimming device and cut-off machine are present in a
single physical structure, “is inconsistent with the all elements rule.” Appeal
Br. 11; Reply Br. 2. 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
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cut-off machine that cuts the trimmed rolls to form a plurality
of rolls as featured in the present invention.
Reply Br. 2-3. 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 not otherwise apprised us as to how
the Examiner’s claim construction violates what Appellant refers to as the
“all elements rule.”
The rejection of claims 1 and 8 as anticipated by Boelen is sustained.
Claims 7, 9 and 15-24--Obviousness--Boelen/Nystrand
Claims 7, 9, 21, 22
The Examiner finds that Boelen does not explicitly disclose the steps
of providing a rewinding machine and providing a paper roll storage
element, and cites to Nystrand as teaching the provision of a rewinding
machine and a paper roll storage element, in the form of a log transfer
unit 28. Ans. 4. The Examiner concludes that it would have been obvious
to provide these elements for the Boelen apparatus in order to produce the
elongated rolls and to supply them to a cutting station of the type employed
by Boelen to facilitate the handling and processing of paper rolls. Id.
For independent claim 21, Appellant maintains that the claims require
a first cutting device and a second cutting device to be two separate and
distinct machines, an argument we find to be unpersuasive for the reasons
discussed above.1

1 Claim 21 employs slightly different terminology from claims 1 and 8,
calling for first and second cutting devices instead of a trimming device and
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For the additional limitations introduced by claims 7, 9, 21 and 22,
while Appellant argues each of the claims under a separate heading, the
arguments presented are essentially the same. Appellant argues that persons
of ordinary skill in the art would not look to the teachings of Nystrand to
potentially modify the Boelen system because Nystrand involves a sawing
system that transversely cuts paper logs, and does not provide any teaching
or suggestion that the logs would undergo any further cutting after being cut
by the Nystrand sawing system. Appeal Br. 14. The arguments are
unpersuasive. As to the latter, the Examiner does not propose to modify
Boelen to include further cutting downstream of its trimming device and cut-
off machine. As to the former, the Examiner does not rely on any aspects of
the transverse cutting of the paper logs in Nystrand, but instead only cites to
the upstream provision of a rewinding machine and a paper roll storage
element, in concluding that it would have been obvious to include such
elements in the Boelen setup. That Nystrand employs a transverse cutter is
not seen as being probative of the nonobviousness of the claims.
Appellant additionally argues that, even if Nystrand is properly
combinable with Boelen, the Examiner erred in regarding the log transfer
unit 25 of Nystrand as being responsive to the claimed paper roll storage
element in the claims. Appeal Br. 14-15. As a result, according to

a cut-off machine, with the first cutting device performing a trimming
operation and the second cutting device cutting the remaining paper roll into
a plurality of paper rolls. Appeal Br., Claims Appendix. Insofar as claim 21
lacks any structural limitations that define over the sets of cutting blades in
Boelen, the first and second cutting devices are not seen as being materially
different from the trimming device and cut-off machine in other claims.
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Appellant, the combination fails to disclose or render obvious the claim in its
entirety. Appeal Br. 15.
Appellant describes the Nystrand log transfer unit as being “made up
of a plurality of bucket conveyors 26 that are supported between spaced
apart endless chains so as to move in a loop,” and that this is not a paper roll
storage element, “but rather a log moving means for moving logs from one
point to another.” Appeal Br. 15. Claims 7, 9, 21 and 22, however, simply
lack any structural limitations that distinguish over this log transfer unit of
Nystrand.
Claim 7, for example, calls for Appellant’s paper roll storage element
to somehow receive uncut paper rolls produced on a rewinding machine and
to deliver the uncut paper rolls to the trimming device, storing them prior to
such delivery. Thus, even assuming Appellant’s characterization of
Nystrand’s log transfer unit to be accurate, the unit stores the logs as they are
received from a supply source and are moved from that point to another
point. As such, the log transfer unit may properly be regarded as a log
storage unit as called for in the claims, in the absence of any claimed
structural differences, and in the absence of any recitation as to how or how
long the uncut paper rolls are to be stored prior to delivery to the trimming
device.
The rejection of claims 7, 9, 21 and 22 as unpatentable over Boelen in
view of Nystrand is sustained.
Claims 15, 18 and 23
Appellant presents separate arguments for the patentability of claim
15, and makes essentially the same arguments for the patentability of claims
18 and 23 under separate headings for those claims. These claims call for
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the recited elements to be arranged in a particular sequence, namely that the
rewinding machine be upstream of the paper roll storage element, that the
trimming device be located downstream of those two elements, and that the
cut-off machine be located downstream of all three of the other elements.
Appeal Br., Claims Appendix. The Examiner notes that the proposed
modification of Boelen in view of Nystrand meets these claimed positional
limitations. Ans. 4.
Appellant argues that Nystrand does not teach or suggest that the
paper logs are to be subject to further processing after being cut by the
sawing system therein, and, on the other hand, that Boelen does not teach
receiving “already trimmed rolls from a sawing system as featured in
Nystrand.” Appeal Br. 16. Appellant misconstrues the Examiner’s
proposed modification to Boelen.
The Examiner does not propose incorporating the entire device of
Nystrand upstream of the trimming and cutting devices in Boelen. The
Examiner’s proposed modification involves modifying Boelen to include
only the rewinder and log roll transfer/storage unit of Nystrand upstream of
the trimming and cutting devices of Boelen. Ans. 4.
Accordingly, Appellant’s arguments are not commensurate with the
Examiner’s findings and conclusions relative to the rejection of claims 15,
18 and 23. The rejection of these claims as being unpatentable over Boelen
in view of Nystrand is sustained.
Claims 16, 19
While presented under separate headings, Appellant’s arguments with
respect to these claims are essentially the same as those made with respect to
claims 15 and 18, from which these claims depend. For the reasons set forth
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above, the arguments are not seen as being persuasive, and the rejection of
claims 16 and 19 as being unpatentable over Boelen and Nystrand is
sustained.
Claims 17, 20, 24
Although argued under separate headings, the arguments for these
claims are essentially the same, in that the claims each call for there to be an
elongated paper roll path from the rewinding machine to the paper roll
storage element and from the paper roll storage element; and for there to be
a trimmed paper roll path from the trimming device to the cut-off machine.
Appeal Br., Claims Appendix.
Appellant argues that “Boelen discloses that the rolls are transferred in
the same direction A as the rolls are cut (see Figure 1). This does not
provide two separate paths as featured in the present invention.” Appeal Br.
18. To the extent that Appellant may be arguing that the claims call for the
elongated paper roll path and the trimmed paper roll path to move in
different directions, as the argument mentioning “same direction” appears to
suggest, the claims are not so limited.
Appellant appears to have intended to argue that Boelen provides only
a single path instead of two paths as claimed. However, the claimed paths
are recited only in terms of moving along the various processing elements
essentially in the order of their positioning. In the claims, the only
differentiation between the elongated paper roll path and the trimmed paper
roll path is that the former is inferentially upstream of the trimming device
and the latter is at and/or downstream of the trimming device, as they are
characterized only by whether the paper roll is elongated or trimmed.
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Appellant’s arguments thus fail to apprise us of error in the
Examiner’s position, in that the Examiner identifies, in Boelen, the paper
roll path upstream of the trimmer which is handling untrimmed, elongated
paper rolls as the “elongated paper roll path,” and the path from trimmer
device (blades 1, 8) to cut-off device (blades 3-6) which is handling the
trimmed paper roll, as the “trimmed paper roll path.” Ans. 5. The rejection
of claims 17, 20 and 24 as being unpatentable over Boelen and Nystrand is
sustained.
Claims 1, 7-9 and 15-24--Obviousness--Nystrand/Boelen
We do not sustain the rejection of claims 1, 7-9 and 15-24 as being
unpatentable over Nystrand in view of 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 step
of providing a trimming device and trimming the elongated paper rolls to
form trimmed rolls, and proposes to modify Nystrand to include a trimming
device, citing to Boelen for the proposition that trimming of paper rolls prior
to being cut off into a plurality of smaller rolls was known in the art.
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 (US 2,047,021, issued Jul. 7,
1936). 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 space requirements, such
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that the proposed modification would have been obvious to a person of
ordinary skill in the art.
Claims 8, 9 and 18-24--Obviousness--Nystrand/Newnes/Boelen
We also do not sustain the rejection of claims 8, 9 and 18-24 as being
unpatentable over Nystrand in view of Newnes and Boelen, 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.
DECISION
The decision of the Examiner to reject claims 1 and 8 under 35 U.S.C.
§ 102(b) as being anticipated by Boelen is affirmed.
The decision of the Examiner to reject claims 7, 9 and 15-24 under 35
U.S.C. § 103(a) over Boelen in view of Nystrand is affirmed.
The decision of the Examiner to reject claims 1, 7-9 and 15-24 under
35 U.S.C. § 103(a) over Nystrand in view of Boelen is reversed.
The decision of the Examiner to reject claims 8, 9 and 18-24 under 35
U.S.C. § 103(a) over Nystrand in view of Newnes and Boelen is reversed.
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

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