10733484 (B.P.A.I. Jul. 12, 2011)

Ex Parte Petermann

Board of Patent Appeals and InterferencesJul 12, 2011

10733484 (B.P.A.I. Jul. 12, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/733,484 12/11/2003 Rudolf Petermann 600.1300 7698 23280 7590 07/12/2011 Davidson, Davidson & Kappel, LLC 485 7th Avenue 14th Floor New York, NY 10018 EXAMINER FERGUSON SAMRETH, MARISSA LIANA ART UNIT PAPER NUMBER 2854 MAIL DATE DELIVERY MODE 07/12/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte RUDOLF PETERMANN ____________ Appeal 2009-008424 Application 10/733,484 Technology Center 2800 ____________ Before JOSEPH F. RUGGIERO, ROBERT E. NAPPI, and MARC S. HOFF, Administrative Patent Judges. RUGGIERO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection of claims 1-15, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Rather than reiterate the arguments of Appellant and the Examiner, reference is made to the Appeal Brief (filed May 12, 2006), the Answer Appeal 2009-008424 Application10/733,484 2 (mailed July 28, 2006), and the Reply Brief (filed October 2, 2006). Only those arguments actually made by Appellant have been considered in this decision. Arguments which Appellant could have made but chose not to make in the Briefs have not been considered and are deemed to be waived (see 37 C.F.R. § 41.37(c)(1)(vii)). Appellant’s Invention Appellant’s invention relates to the displaying of data during process sequences in a printing material processing machine. The data to be displayed, such as the values for opening of ink zones of an inking unit, is graphically superimposed on the printing material. See generally Spec. ¶ ¶ [0008] and [0024]. Claim 1 is illustrative of the invention and reads as follows: 1. A device for displaying data during process sequences in printing material processing machines comprising: a device graphically superimposing, on physically-existing printing material printed by the printing material processing machine, data to be displayed. The Examiner’s Rejections The Examiner rejected claims 1, 3, and 7-12 under 35 U.S.C. § 102(b) as being anticipated by Löffler (US 6,748,860 B2). The Examiner rejected claims 2, 4-6, and 13-15 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Löffler and Isogawa (JP 10307331 A). Appeal 2009-008424 Application10/733,484 3 ANALYSIS 35 U.S.C. § 102(b) REJECTION Appellant’s arguments with respect to independent claim 1 focus on the contention that Löffler does not disclose graphically superimposing data to be displayed “on physically-existing printing material printed by the printing material processing” as claimed. According to Appellant (App. Br. 8; Reply Br. 1-2), what is displayed on the display screen 3 of Löffler is an electronic image of the actual printed image that is produced as printed sheets pass by an image recording device 128. In Appellant’s view, Löffler discloses that the electronic image on the display screen is viewed directly, and there is no graphical superimposing of data on physically existing printed material as claimed. We agree with Appellant. As argued by Appellant, we find that Löffler discloses only the graphical superimposing of data, i.e., ink zone limit lines 14, on to an electronic image of printed sheet material, not on “physically-existing printing material printed by the printing material processing machine” as claimed (Fig. 2 col. 4, l. 48-col. 5, l. 9). Further, even assuming arguendo that the claimed graphical superimposing feature can be interpreted as a mere “intended use” limitation as contended by the Examiner (Ans. 6), the Examiner has simply not explained how the printing device described by Löffler is capable of performing graphical superimposing of data on physically existing printing material that has been printed by the printing machine so as to support a rejection based on anticipation. Lastly, the Examiner’s assertion (Ans. 6) that “any printing or copying device is capable of superimposing an image media” is not supported by any evidence of any record, let alone any Appeal 2009-008424 Application10/733,484 4 indication as to how such supposed capability would satisfy the claimed limitations. In view of the above discussion, since all of the claim limitations are not present in the disclosure of Löffler, we do not sustain the Examiner’s 35 U.S.C. § 102(b) rejection of independent claim 1, nor of claims 3 and 7- 12 dependent thereon. 35 U.S.C. § 103(a) REJECTION We also do not sustain the Examiner’s obviousness rejection of dependent claims 2, 4-6, and 13-15 based on the combination of Löffler and Isogawa. The Examiner has applied the Isogawa reference to Löffler to address the projection device features of the rejected claims. We find nothing in the disclosure of Isogawa, however, which overcomes the innate deficiencies of Löffler discussed supra. CONCLUSION Based on the findings of facts and analysis above, we conclude that Appellant has shown that the Examiner erred in rejecting claims 1, 3, and 7- 12 for anticipation under 35 U.S.C. § 102(b), and in rejecting claims 2, 4-6, and 13-15 for obviousness under 35 U.S.C. § 103(a). Appeal 2009-008424 Application10/733,484 5 DECISION The Examiner’s decision rejecting claims 1, 3, and 7-12 under 35 U.S.C. § 102(b), and claims 2, 4-6, and 13-15 under 35 U.S.C. § 103(a) is reversed. REVERSED rwk