Ex parte PFAFF

Board of Patent Appeals and Interferences

Apr 21, 1998

08192067 (B.P.A.I. Apr. 21, 1998)

Application for patent filed February 3, 1994. According1
to appellant, this application is a continuation of Application
08/002,660, filed January 11, 1993, now abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ALAN R. PFAFF
__________
Appeal No. 96-1687
Application No. 08/192,0671
__________
ON BRIEF
__________
Before McCANDLISH, Senior Administrative Patent Judge, ABRAMS and
FRANKFORT, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner finally
rejecting claims 1-24, which constitute all of the claims of
record in the application.
Appeal No. 96-1687
Application No. 08/192,067
Translations enclosed.2
2
The appellant's invention is directed to a rotary die
machine of the type used to cut blanks from a thin web of
material passing through the nip of the dies. The subject matter
before us on appeal is illustrated by reference to claim 1, which
is reproduced in an appendix to the APPLICANT’S NEW BRIEF.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Bell et al. (Bell) 4,759,247 Jul. 26, 1988
Fokos et al. (Fokos) 5,001,950 Mar. 26, 1991
Kakko-Chiloff 5,058,472 Oct. 22, 1991
Swiss patent (Swiss ‘931) 326,931 Jan. 15, 19582
European patent (EP ‘559) 234,559 Feb. 25, 19872
THE REJECTIONS
Claims 1-6 and 17-19 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Kakko-Chiloff in view of EP ‘559 and
Bell.
Claims 7-9 and 21-23 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Kakko-Chiloff in view of EP ‘559, Bell
and Swiss ‘931.
Appeal No. 96-1687
Application No. 08/192,067
3
Claims 10-12, 14-16 and 20 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Kakko-Chiloff in view of EP
‘559, Bell and Fokos.
Claims 13 and 24 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Kakko-Chiloff in view of EP ‘559, Bell,
Swiss ‘931 and Fokos.
The rejections are explained in the Examiner's Answer.
The opposing viewpoints of the appellant are set forth in
the APPLICANT’S NEW BRIEF.
OPINION
All of the claims stand rejected under 35 U.S.C. § 103.
The test for obviousness is what the combined teachings of the
prior art would have suggested to one of ordinary skill in the
art. See In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981). In establishing a prima facie case of obviousness
under 35 U.S.C. § 103, it is incumbent upon the examiner to
provide a reason why one of ordinary skill in the art would have
been led to modify a prior art reference or to combine reference
teachings to arrive at the claimed invention. See Ex parte
Clapp, 227 USPQ 972, 973 (Bd. Pat. App. & Int. 1985). To this
end, the requisite motivation must stem from some teaching,
Appeal No. 96-1687
Application No. 08/192,067
4
suggestion or inference in the prior art as a whole or from the
knowledge generally available to one of ordinary skill in the art
and not from the appellant's disclosure. See, for example,
Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1052, 5
USPQ2d 1434, 1052 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
We shall look first to the rejection of independent claim 1.
According to the examiner, Kakko-Chiloff discloses an apparatus
that meets all of the limitations of this claim except for the
inwardly tapered recesses in each end of the die cylinders and
the corresponding tapered sidewalls in the arbor assemblies which
support the die cylinders at each end, and the requirement that
each die cylinder and its associated arbor assemblies be
separately removable from the guide ways of the die stand. For
the tapered recess limitation the examiner looks to EP ‘559, and
for the separate removability to Bell.
Kakko-Chiloff is directed to a rotary cutting apparatus
having a pair of cooperating die cylinders, each comprising a
central roller portion flanked by a pair of axially aligned and
extending stub shafts, which are received in the supporting
bearings. Interestingly, this is precisely the prior art
construction over which the appellant believes his invention to
be an improvement (specification, page 1). The objective in
Appeal No. 96-1687
Application No. 08/192,067
5
Kakko-Chiloff is to maintain the alignment and the spacing of a
pair of die cylinders even in the face of removing them and
replacing them with a new set. As stated in column 2:
With a view of reducing the adjustment idle times,
all these considerations lead to provide, for each new
format, a complete interchangeable cutting device or
“cassette” including, in addition to the cylinders for
format cutting, all the other elements necessary for
the cutting operation.
The patentee goes on the explain that the “cassette” comprises
upper and lower cutting cylinders (6 and 7) and the two pairs of
blocks (24 and 25) that support them, which are attached together
by a resilient coupling device (26) and installed or removed as a
unit (column 3, line 56 et. seq.). Thus, in the Kakko-Chiloff
construction, the cylinders and their associated arbor assemblies
are not separately removable, as is required by claim 1.
Bell discloses a rotary die machine in which the cylinders
and their arbor assemblies are separately removable, a fact that
is not explicitly stated, but is immediately recognizable as
being the case when one considers the description and operation
of the structure disclosed, with particular reference to column
3. The examiner’s position is that one of ordinary skill in the
art would have found it obvious to replace the “cassette” of the
primary reference, in which both cylinders and their arbors are
Appeal No. 96-1687
Application No. 08/192,067
6
connected together and are removed and inserted together, with a
pair of unconnected, separate cylinders. We think not. Such a
modification would have destroyed the very essence of the Kakko-
Chiloff invention, and we therefore are of the view that this
would have served as a disincentive for the artisan to make the
modification proposed by the examiner. We further observe that
the Bell cylinders also are of the type in which stub shafts
extend outwardly from the central roller portions.
EP ‘559 was cited for its showing of mounting a pair of die
cylinders on tapered arbor assembly sidewalls which cooperate
with tapered recesses in the cylinders. Be that as it may, this
reference fails to overcome the objection we have raised above
with regard to the lack of motivation to combine the teachings of
Kakko-Chiloff and Bell.
For the reason expressed above, we agree with the appellant
that the only suggestion for combining the references in the
manner proposed by the examiner resides in the hindsight accorded
one who first viewed the appellant’s disclosure. This, of
course, is not a proper basis for a rejection. See In re Fritch,
972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992). It
therefore is our conclusion that the teachings of the three
references cited against claim 1 fail to establish a prima facie
Appeal No. 96-1687
Application No. 08/192,067
7
case of obviousness with regard to the subject matter recited in
the claim, and we will not sustain the rejection.
Independent claim 17 stands rejected on the basis of these
three references, also. Our position with regard to it is the
same, that is, we will not sustain the rejection for the reason
set forth above with regard to claim 1.
Claim 7, the third of the independent claims, has been
rejected on the basis of Kakko-Chiloff, EP ‘559 and Bell, taken
further with Swiss ‘931, which was added for its teaching of
utilizing a drawbar extending axially completely through the die
cylinder. This reference also fails to overcome the problem we
voiced above with regard to Kakko-Chiloff and Bell, and the
rejection also cannot be sustained.
Likewise, the addition of the Fokos patent to the various
rejections fails to overcome the problem.
Since the rejections of the independent claims cannot be
sustained, it follows that those of the dependent claims also
must fall.
Appeal No. 96-1687
Application No. 08/192,067
8
SUMMARY
None of the rejections are sustained.
The decision of the examiner is reversed.
REVERSED
HARRISON E. McCANDLISH )
Senior )
Administrative Patent Judge)
)
)
)
NEAL E. ABRAMS ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
CHARLES E. FRANKFORT )
Administrative Patent Judge)
Appeal No. 96-1687
Application No. 08/192,067
9
William H. Francis
3500 Penobscot Building
Detroit, MI 48226