Ex Parte Perini

Board of Patent Appeals and Interferences

Mar 19, 2010

10524001 (B.P.A.I. Mar. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte FABIO PERINI
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Appeal 2009-008646
Application 10/524,001
Technology Center 3700
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Decided: March 19, 2010
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Before JENNIFER D. BAHR, JOHN C. KERINS, and STEVEN D.A.
MCCARTHY, Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2009-008646
Application 10/524,001

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STATEMENT OF THE CASE
Fabio Perini (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s final rejection of claims 1, 3-6, 25 and 26. Claims
12-24 have been withdrawn from consideration, and claims 2 and 7-11 have
been canceled. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
An oral hearing was conducted on March 16, 2010, with Brian M.
Duncan, Esq., appearing on behalf of Appellant.

SUMMARY OF DECISION
We REVERSE.

THE INVENTION
Appellant’s claimed invention is to an apparatus for producing small
paper rolls having a rewinding machine, a trimming device, a trimmed roll
store element, and a cutting-off machine. Independent claim 1 is reproduced
below, and is illustrative of the overall claimed subject matter:
1. An apparatus for producing small paper rolls,
the apparatus comprising:

a rewinding machine, said rewinding machine
producing elongated paper rolls;

a trimming device, said trimming device trimming
at least one end of each roll produced by said
rewinding machine to form trimmed rolls;

a trimmed roll store element, said trimmed roll
store element receiving said trimmed rolls from
said trimming device, said trimmed roll store
element storing the trimmed rolls;

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a cutting-off machine, said trimmed roll store
element supplying said trimmed rolls to said
cutting-off machine, said cutting-off machine
subdividing the trimmed rolls into a plurality of
small rolls.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Friden US 2,047,021 Jul. 7, 1936
Nystrand US 3,905,260 Sep. 16, 1975
Gambaro US 2002/0121170 A1 Sep. 5, 2002

The Examiner has rejected:
(i) claims 1, 3-6, 25 and 26 under 35 U.S.C. § 103(a) as being
unpatentable over Gambaro in view of Nystrand and Friden; and
(ii) claims 1, 25 and 26 under 35 U.S.C. § 103(a) as being
unpatentable over Nystrand in view of Friden.
ISSUES
Did the Examiner err in concluding that it would have been obvious,
in view of the combined teachings of Gambaro, Nystrand and Friden, to
modify the Gambaro apparatus to include a rewinder and a trimming device
in order to produce elongated rolls and supply them to a cutting station in the
same apparatus, and in order to trim the ends of the rolls prior to the step of
subdividing the rolls into a plurality of smaller rolls?
Did the Examiner err in concluding that it would have been obvious,
in view of the combined teachings of Nystrand and Friden, to modify the
Nystrand apparatus to include a trimming device in order to trim the ends of
the rolls and eliminate uneven or rough edges on the rolls?
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PRINCIPLES OF LAW
A rejection on obviousness grounds based upon a combination of
elements individually known in the prior art is proper only if there is an
apparent reason to combine the known elements in the fashion claimed.
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Such a rejection
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness. In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006). However, “the analysis need not seek out precise teachings directed
to the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” KSR Int’l Co., 550 U.S. at 418.

ANALYSIS
Claims 1, 3-6, 25 and 26--Obviousness--Gambaro/Nystrand/Friden
Claims 3-6, 25 and 26 all depend from independent claim 1.
Appellant presents arguments for each of the claims under separate headings
in the Appeal Brief. Claim 1 will first be addressed.
The Examiner found that the Gambaro patent discloses an apparatus
for producing small paper rolls including a store element for receiving and
storing rolls, and for supplying the rolls to a cutting-off machine, the cutting-
off machine operating to subdivide the rolls into a plurality of small rolls.
(Answer 3). The Examiner noted that Gambaro fails to explicitly teach the
provision of a rewinding machine for producing elongated paper rolls. The
Examiner, citing to the paper roll-producing apparatus of Nystrand,
concluded that it would have been obvious to provide a rewinding machine
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on the Gambaro apparatus in order to produce rolls and supply them to a
cutting station in the same apparatus. (Id.). The Examiner further noted that
the Gambaro/Nystrand combination does not teach the provision of a
trimming device. The Examiner here cited to the trimmer disclosed in
Friden for trimming the irregular ends of tubular elements, and concluded
that it would have been obvious to provide the Gambaro apparatus with a
trimming device in order to trim the ends of the paper rolls to eliminate
uneven or rough end edges prior to the step of subdividing the rolls into a
plurality of rolls. (Answer 3-4).
Appellant goes to considerable lengths in attacking the teachings of
the Gambaro, Nystrand and Friden references individually. (Appeal Br.,
passim; Reply Br., passim). The rejection is, however, based on a
combination of teachings of the references as a whole, and, as such, those
arguments are not probative of the existence of error in the rejection of claim
1 as being obvious. See In re Keller, 642 F.2d 413 (CCPA 1981); In re
Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986) (nonobviousness can not be
established by attacking references individually where rejections are based
on combinations of references).
Appellant further argues that persons of ordinary skill in the art would
not look to combine the teachings of Friden with those of Gambaro to
include a separate trimming device, because Gambaro itself discloses a
cutting machine that provides for both cutting and trimming of paper logs.
(Appeal Br. 10). Gambaro does disclose that, in the preferred operation of
that apparatus, “a relatively small portion of the substrate log is cut from
each end of the log by the outermost saw blades”. (Gambaro, p. 3, para.
[0054]). This cutting of one or both ends of the log is essentially what is
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done by Appellant, albeit in Appellant’s claimed apparatus, the trimming
device is a separate element from the cutting-off machine.
While the Examiner’s stated reason to combine the teachings of
Friden with Gambaro was for the purpose of providing a trimming of the
ends of the logs prior to the step of subdividing the logs into a plurality of
rolls (Answer 4), the Examiner has not asserted that there is any particular
benefit or advantage to performing the trimming prior to subdividing, as
contrasted to Gambaro’s contemporaneous trimming and subdividing. This
is particularly significant in that the proposed combination involves
providing additional equipment at the additional cost of such equipment, and
the likely attendant increase in factory space taken up by the additional
equipment, with the result that no additional or different function would be
performed by the modified Gambaro apparatus than is performed by the
Gambaro apparatus as disclosed.
The evidence and arguments of Appellant and the Examiner leads us
to conclude that the Examiner has not presented a persuasive reason to have
combined the teachings of Friden with those of Gambaro, or with those of
the combination of Gambaro and Nystrand, and thus the conclusion that
claim 1 would have been obvious in view of the combined teachings of the
three references can not be sustained. The rejection will also not be
sustained with respect to claims 3-6, 25 and 26, which all depend from claim
1.
Claims 1, 25 and 26--Obviousness--Nystrand/Friden
The Examiner found that the Nystrand patent discloses a rewinding
machine, a roll store element, and a cutting off machine as called for in
claim 1. The Examiner concluded that it would have been obvious, in view
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of the disclosure of a trimmer in Friden, to modify the Nystrand device to
include a trimming device, in order to trim the ends of the rolls and eliminate
uneven or rough edges on the rolls. (Answer 5-6).
Like the Gambaro apparatus discussed above, the Nystrand apparatus
employs a log saw to not only cut or subdivide a paper log into a plurality of
log rolls, but also to trim one or both ends of the log, producing thin trim
rolls or “cookies”, which are then disposed of. (Nystrand, col. 5,
ll. 8-25). As was the case with Gambaro and Friden above, the proposed
combination of Nystrand and Friden involves providing additional
equipment at the additional cost of such equipment, and the likely attendant
increase in factory space taken up by the additional equipment, with the
result that no apparent additional or different function would be performed
by the modified Nystrand apparatus than is performed by the Nystrand
apparatus as disclosed.
We again do not see a persuasive reason for a person of ordinary skill
in the art to have combined the teachings of Friden with those of Nystrand,
and thus the conclusion that claim 1 would have been obvious in view of the
combined teachings of these two references can not be sustained. The
rejection will also not be sustained with respect to claims 25 and 26, which
depend from claim 1.

CONCLUSIONS
The Examiner erred in rejecting claims 1, 3-6, 25 and 26 under 35
U.S.C. § 103(a) as being unpatentable over Gambaro, Nystrand and Friden;
and in rejecting claims 1, 25 and 26 under 35 U.S.C. § 103(a) as being
unpatentable over Nystrand and Friden.
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DECISION
The decision of the Examiner to reject claims 1, 3-6, 25 and 26 is
reversed.

REVERSED

Klh

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