Ex Parte Pfeiffer

Patent Trial and Appeal Board

May 9, 2016

11799292 (P.T.A.B. May. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111799,292 05/01/2007
24131 7590 05/11/2016
LERNER GREENBERG STEMER LLP
PO BOX 2480
HOLLYWOOD, FL 33022-2480
FIRST NAMED INVENTOR
Nikolaus Pfeiffer
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
A-4501 5723
EXAMINER
SIMMONS, JENNIFER E
ART UNIT PAPER NUMBER
2854
NOTIFICATION DATE DELIVERY MODE
05/11/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
boxoa@patentusa.com
docket@patentusa.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NIKOLAUS PFEIFFER
Appeal2014-009242
Application 11/799,292
Technology Center 2800
Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and
DENISE M. POTHIER, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1, 2, and 4--9. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
Appeal2014-009242
Application 11/799,292
STATEMENT OF THE CASE
Appellant's invention controls a printing press's inking unit.
Spec. 1:12-14. Changing an inking unit from one steady state to another
does not happen instantaneously. Id. at 1:22-2:10. Rather, the changeover
period depends on the inking unit's reaction time to the adjustment. Id. To
shorten this reaction time, known methods temporarily over- or under-adjust
the required ink amount during a non-steady-state phase. Id. at 2:5-15. In
one embodiment, the invention determines the required adjustment based on
a measurement. Id. at 12: 15-15: 7. Claim 1 is illustrative:
1. A method for controlling an inking unit of a printing
press having at least one ink metering element and a control unit,
the method comprising the following steps:
changing over the ink metering element from a first ink
amount metering to a second ink amount metering for a desired
inking to be achieved and for accelerating an inking unit reaction;
processing at least one value of a current actual inking
during a non-steady-state phase of the inking unit, with the
control unit, for determining a temporary third ink amount
metering, the at least one value of the current actual inking being
a corrected value of a measured non-steady-state actual inking
on a printing material, the non-steady-state phase being the phase
while changing the ink metering from the first to the second ink
amount metering;
setting the ink metering element, with the control unit, to
the temporary third ink amount metering at least for a time period
during the non-steady-state phase of the inking unit before
achieving the desired inking; and
the temporary third ink amount metering being greater
than the second ink amount metering when the second ink
amount metering is greater than the first ink amount metering,
and the temporary third ink amount metering being smaller than
the second ink amount metering when the second ink amount
metering is smaller than the first ink amount metering.
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Application 11/799,292
THE REJECTIONS
The Examiner rejected claims 1, 2, and 4--8 under 35 U.S.C. § 103(a)
as unpatentable over Mayer (US 6,561,098 B2; issued May 13, 2003) and
Shiki (US 6,536,341 B2; issued Mar. 25, 2003). Final Act. 2-5. 1
The Examiner rejected claim 9 under 35 U.S.C. § 103(a) as
unpatentable over Mayer, Shiki, and Kistler (US 6,450,097 B 1; Sept. 27,
2002). Final Act. 5.
THE OBVIOUSNESS REJECTION OVER MA YER AND SHIKI
The Examiner finds that Mayer discloses every recited element of
claim 1 except for measuring the non-steady-state actual inking on a printing
material, but cites Shiki as teaching this feature in concluding that the claim
would have been obvious. Final Act. 2--4. In this combination, the
Examiner finds that Mayer's flow-ink quantities are a current actual-inking
value during a non-steady state. Id. at 3. According to the Examiner, Shiki
measures actual inking on a printing material. Id. (citing Shiki, col. 2,
11. 55---67). Based on these teachings, the Examiner concludes that it would
have been obvious to include Shiki's measuring in Mayer to adjust the
amount of ink based on the final product. Final Act. 4.
Appellant argues that the actual inking on a printing material has
nothing to do with the amount of ink leaving the ink fountain. App. Br. 4--6;
Reply Br. 4--5. Appellant contends that the Examiner improperly interprets
1 Throughout this opinion, we refer to (1) the Final Rejection mailed January
30, 2014 ("Final Act."); (2) the Appeal Brief filed May 21, 2014 ("App.
Br."); (3) the Examiner's Answer mailed July 7, 2014 ("Ans."); and (4) the
Reply Brief filed August 29, 2014 ("Reply Br.").
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Application 11/799,292
the phrase "the current actual inking" in the claims as Mayer's ink flow, not
ink-layer-thickness values, as defined. Id. at 5. According to Appellant, the
definition for "current actual inking" excludes the ink-flow amount. Id.
(citing Spec. 7). Appellant adds that Shiki does not measure actual inking in
non-steady-state. Reply Br. 2-3.
Appellant further contends that Shiki and Mayer process different
quantities and there is no motivation to combine the references. App. Br. 4--
6; see also id. at 9 (arguing that the Examiner has not identified a reason to
combine the references). In Appellant's view, the references are different
because Shiki measures density values, and Mayer adjusts the ink leaving
the ink fountain. Id. at 6. According to Appellant, it is not enough that the
two quantities are related by a function. Reply Br. 4--5. Appellant argues
that these values are not compatible or comparable. Id. at 5.
According to Appellant, the Examiner has engaged in hindsight
analysis. App. Br. 6-7; see also id. at 9. Additionally, Appellant argues that
the Examiner's proposed modification of Mayer would change the principle
of operation of both references, and would probably render them
unsatisfactory for their intended purpose. Id. at 8.
Appellant further contends that the Examiner's proposed combination
is "technically impossible." Id. at 7. In Appellant's view, the proposed
modification, involving modifying circuits, is not taught by either reference.
Id.; see also id. at 9-10 (arguing that Mayer does not explain how to
"reconstruct" the references as the Examiner proposes).
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Application 11/799,292
ISSUES
(1) Under§ 103, has the Examiner erred by finding that Mayer and
Shiki collectively would have taught or suggested:
(a) processing at least one value of a current actual inking
during a non-steady-state phase, as recited in claim 1?
(b) a measured non-steady-state actual inking on a printing
material, as recited in claim 1?
(2) Is the Examiner's combining the teachings of these references
supported by articulated reasoning with some rational underpinning to
justify the Examiner's obviousness conclusion?
ANALYSIS
We begin by construing the term "at least one value of a current actual
inking." Contrary to Appellant's argument (Reply Br. 5), the term "actual
inking" is not defined on page 7 of the Specification. Rather, the
Specification describes, somewhat broadly, that "the current actual inking
can be determined on the basis" of ink-layer-thickness measurements.
Spec. 7:4--7 (emphasis added). We emphasize "can be" here because it
indicates that current actual inking can be represented by other values.
Apart from this discussion, the Specification discusses the term "actual
inking" generally in other exemplary embodiments. See id. at 7:14--25. So
although this discussion informs our construction, it does not define the
limitation to so limit our interpretation to the disclosed examples.
Given this non-limiting and exemplary description, we see no error in
the Examiner's reliance on Mayer to show a current actual-inking value. See
Final Act. 3. Here, claim 1 calls for "at least one value of the current actual
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Application 11/799,292
inking." But the claim does not specify the value's units-that is, whether
this value, for example, measures volume. Nor do we find error in the
Examiner's position that Mayer's value for the amount of ink leaving the
fountain is connected to the actual inking. See id. (referring to Mayer's flow
of ink quantity "s( t )" in connection with current actual inking). Because the
claim does not preclude the recited value from representing the actual inking
in this way, the Examiner's interpretation of the recited "value of a current
actual inking" as Mayer's flow ink quantity (Final Act. 3) is reasonable.
The next issue, then, is whether Shiki and Mayer collectively teach or
suggest measuring the actual inking in a non-steady-state.
Both Mayer and Shiki control a printing machine's inking supply.
Mayer, col. 1, 11. 8-10; Shiki, col. 1, 11. 10-13. The inking supply controls
the ink on a printing plate's ink-accepting areas. See, e.g., Mayer, col. 1,
11. 10-14. Mayer's control circuit receives a desired ink-quantity value from
an outside source. Id. col. 3, 11. 25-27, cited in Ans. 9. Shiki, however, uses
measurements to control the ink-fountain-key opening. Shiki, col. 2, 11. 48-
56.
As Appellant acknowledges (Reply Br. 2), Shiki measures the actual
inking on printed material (Shiki, col. 2, 11. 55-57). Like the above-
discussed examples (Spec. 7:7-12), Shiki's measurement also uses a density
value and a reference color (Shiki, col. 2, 11. 57----62).
Contrary to Appellant's argument (Reply Br. 2-3), the Examiner does
not find that Shiki' s measurement takes place during a non-steady-state. See
Final Act. 3. Instead, to arrive at the claimed invention, the Examiner
concludes that it would have been obvious to perform Shiki's measurements
during the non-steady state of Mayer's system. Id.
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Application 11/799,292
To be sure, Mayer does not provide a blueprint for modifying the
control circuits, as Appellant indicates. See App. Br. 7, 9. But to say that it
would have been "impossible" for skilled artisans to modify control circuits
to perform Shiki' s measurements in Mayer's system, as Appellant contends
(id. at 7), is overstated, for this assertion is unsubstantiated by any
persuasive evidence on this record. For the reasons discussed below, the
Examiner's obviousness conclusion (Final Act. 4) is supported by articulated
reasoning with some underpinning to justify the obviousness conclusion.
We find unavailing Appellant's contention that because Shiki
measures density values rather than ink leaving the ink fountain, Shiki
cannot be used to control Mayer's ink fountain. See id. at 4---6, 9;
Reply Br. 4. Notably, as shown in Figure 1, Shiki uses these measurements
to control the ink-fountain-key opening and, therefore, the amount of ink
supplied from that opening. See Shiki, col. 2, 11. 48-56. For example,
Shiki' s ink fountain key has a larger opening when the target density is
larger than the measured density. Id. col. 2, 11. 10-17. And the ink-fountain-
key opening determines the amount of ink supplied. See, e.g., id. col. 1,
11. 15-19; see also id., Abstract; col. 3, 11. 3-18 (noting that where a
measured color density is smaller or larger than a target value, the control
apparatus increases or decreases the opening degree of ink fountain key 22,
respectively, and, thus, the amount of ink supplied). Therefore, we are not
convinced that Shiki's measured color values "have nothing to do with a
certain amount of ink" or could not have been used to control this amount, as
Appellant contends. App. Br. 6; see also Reply Br. 2--4.
In short, Shiki' s measurement is used in the same way in the proposed
combination as it is used separately-namely, to control an ink supply. See
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Application 11/799,292
Final Act. 3. Therefore, the Examiner's combination uses a known element
with no respective change in its function to yield a predictable result-an
obvious improvement. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007).
Despite Appellant's arguments to the contrary (App. Br. 4---6, 9--10;
Reply Br. 4 ), we find ample reason to combine the references, as proposed-
namely, to adjust the ink based on the final product. Final Act. 4.
Therefore, the Examiner's reason to combine the references (id.) is
supported by articulated reasoning with some underpinning to justify the
obviousness conclusion.
We also do not see how modifying Mayer in this way would have
changed its principle of operation or rendered it unsatisfactory for its
intended purpose, as Appellant contends (App. Br. 7-8). Leaving aside
Appellant's somewhat speculative qualifier that the Examiner's combination
would "probably" render the cited references unsatisfactory for their
intended purpose, Appellant fails to point to any undermined principle or
purpose. See id. Rather, Appellant merely identifies Mayer's and Shiki's
operational differences. See id. But here, Mayer's principle of operation is
to control the ink amount using control circuits. See, e.g., Mayer, col. 3,
11. 25-27, cited in Ans. 9. On this record, we are not convinced that the
Examiner's combination would destroy this control or render it
unsatisfactory. See Final Act. 4. Rather, the Examiner merely proposes to
provide a different control input---one that is based on measurements, rather
than an unspecified outside value. See Ans. 4--5, 9.
Although Appellant contends that the Examiner's proposed
modification requires a "very complicated" modification of Mayer's control
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Application 11/799,292
circuits-a modification whose success would purportedly be uncertain
(App. Br. 7}--Appellant provides no persuasive evidence on this record to
substantiate such a theory apart from conclusory assertions that have little
probative value. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997)
(noting that mere lawyer's arguments and conclusory statements that are
unsupported by factual evidence are entitled to little probative value).
Moreover, it is well settled that "a determination of obviousness based
on teachings from multiple references does not require an actual, physical
substitution of elements." In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir.
2012) (citations omitted). Nor is the test for obviousness whether a
secondary reference's features can be bodily incorporated into the structure
of the primary reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Rather, the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art. Id. And here, the Examiner's
proposed combination predictably uses prior art elements according to their
established functions to yield a predictable result. See KSR, 550 U.S. at 417.
Nevertheless, even assuming, without deciding, that the Examiner's
proposed combination involves some modification to Mayer's control
circuits, and that such a modification would add complexity (neither of
which has been substantiated), there is no persuasive evidence on this record
proving that such a modification would have been beyond the level of
ordinarily skilled artisans. Moreover, any added complexity resulting from
such a modification may well be offset by the advantages of the additional
measurement-based control functionality provided by the modification-an
engineering tradeoff well within the level of ordinarily skilled artisans.
Accordingly, we sustain the Examiner's rejection of claim 1, and claims 2,
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4--8, not argued separately with particularity. See App. Br. 3-10;
Reply Br. 6.
THE OBVIOUSNESS REJECTION OVER MA YER, SHIKI, AND
KISTLER
We also sustain the Examiner's obviousness rejection of claim 9.
Final Act. 5. Appellant argues in a conclusory manner that the Kistler
reference does not cure the purposed deficiencies of Mayer and Shiki, but
does not argue this rejection separately with particularity. See App. Br. 1 O;
Reply Br. 6. Nevertheless, to the extent that Appellant's earlier arguments
apply to claim 9, we are unpersuaded by these arguments for the reasons
discussed previously.
CONCLUSION
The Examiner did not err in rejecting claims 1, 2, and 4--9 under
§ 103.
DECISION
The Examiner's decision rejecting claims 1, 2, and 4--9 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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