Ex Parte Pollock

Board of Patent Appeals and Interferences

Oct 12, 2010

11258494 (B.P.A.I. Oct. 12, 2010)

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.
11/258,494 10/25/2005 David Clarke Pollock 6003.1029 2905
23280 7590 10/13/2010
Davidson, Davidson & Kappel, LLC
485 7th Avenue
14th Floor
New York, NY 10018
EXAMINER
LOW, LINDSAY M
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
10/13/2010 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 DAVID CLARKE POLLOCK
____________

Appeal 2009-007683
Application 11/258,494
Technology Center 3700
____________

Before: JENNIFER D. BAHR, STEFAN STAICOVICI, and KEN B.
BARRETT, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL1

1The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the "MAIL DATE"
(paper delivery mode) or the "NOTIFICATION DATE" (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-007683
Application 11/258,494

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STATEMENT OF THE CASE
David Clarke Pollock (Appellant) appeals under 35 U.S.C. § 134
(2002) from the Examiner's decision rejecting under 35 U.S.C. § 103(a)
claims 1-4 and 6-11 as unpatentable over Jackson (US Pub. 2003/0110968
A1, pub. Jun. 19, 2003), Whitten (US 6,551,227 B1, iss. Apr. 22, 2003), and
admitted prior art2, and claim 5 as unpatentable over Jackson, Whitten,
Belanger (US 6,093,139, iss. Jul. 25, 2000), and admitted prior art. We have
jurisdiction over this appeal under 35 U.S.C. § 6 (2002).

Claim 1 is representative of the claimed invention:
1. A folder comprising:
a jaw cylinder; and
a folding cylinder including a gripper for gripping an edge of a first
signature and a tucking blade for tucking the first signature into the jaw
cylinder, the folding cylinder including a signature support supporting a
second signature against the jaw cylinder, the signature support and the
gripper being movable automatically together with respect to the tucking
blade.

SUMMARY OF DECISION
We REVERSE.

2 The admitted prior art is not at issue in this appeal.
Appeal 2009-007683
Application 11/258,494

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OPINION
Issue
The Examiner's rejection of claims 1-4 and 6-11 is based on a
combination of the teachings of Jackson and Whitten. The Examiner found
that Jackson describes a jaw cylinder 36 and a folding cylinder 90 having
grippers 86, tucking blade 76, and a support plate 92. Ans. 3. The Examiner
found that Jackson does not teach "a way to support the trail edges of
signatures against the jaw cylinder after folding," but that Whitten teaches
supports 11 for holding a material against an opposing cylinder. Id. The
Examiner concluded that it would have been obvious to add the supports 11
of Whitten to Jackson's folding cylinder 90 "for the purpose of holding a
trail edge of a signature against the jaw cylinder … so as to prevent
movement." Id.
Appellant argues that the Examiner does not state why or how
Whitten teaches placing a signature support on the folding cylinder, because
in Whitten the signature support is on the cylinder opposite the cylinder with
the grippers. Appeal Br. 5. In addition, Appellant argues that the proposed
combination does not address the limitation requiring the signature support
and gripper blade to be "movable automatically together with respect to the
tucking blade." Id. at 6. The Examiner answers that Whitten shows a
signature support 11 on the same cylinder as the tool 12 (Ans. 5), and that
when combined with Jackson’s grippers, Whitten's signature support is
"capable of being mounted on the same support and of moving together
[with the gripper] with respect to the tucking blade" (Ans. 6).
Accordingly, the issue in this appeal is whether the Examiner's
proposed combination of the teachings of Jackson and Whitten renders
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Application 11/258,494

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obvious a folder including "signature support and the gripper being movable
automatically together with respect to the tucking blade" as required by
claim 1.
Findings of Fact
Jackson describes several gripping devices 84 mounted on gripper
spider 80 of transfer cylinder 90. Para. 34, fig. 3. In addition, transfer
cylinder 90 has several tucking devices 74 and covers 92 mounted on
tucking spider 70 that define the outer circumference of the transfer cylinder
90. Para. 32, fig. 3. The finger-like grippers 86 of each gripping device 84
extend through apertures 94 of the cover 92 to grasp onto a lead edge of a
signature. Para. 34. Cover 92 provides support to signatures on the outer
circumference of the transfer cylinder 90. Paras. 10, 12. The phase angle
between the gripping 84 and tucking 74 devices determines the cross fold
location, and is adjustable by changing the angle between the gripper 80 and
tucker 70 spiders. Para. 35. Thus, the grippers move relative to the tuckers
and support covers.
Whitten describes a paper conducting (transfer) cylinder 14 having
several grippers 17 for gripping the leading edge of the signature. Col. 5, l.
28 to col. 6, l. 10, fig. 2. Whitten also describes a cutting cylinder 7 having
product seizing elements (signature supports) 11 and knives 12 for
respectively urging and cutting the leading edge of the signature. Id. We do
not find any disclosure regarding an adjustment (such as phase angle) of the
grippers 17 or the product seizing elements 11 along the circumference of a
cylinder.
Appeal 2009-007683
Application 11/258,494

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Analysis
As we found above, gripper 84 in Jackson moves relative to signature
support cover 92 and the tucker 74. Claim 1, however, requires the gripper
and signature support to move relative to the tucker. Thus, Jackson does not
describe the limitation at issue.
The Examiner proposes to modify Jackson to include the supports 11
of Whitten on Jackson's transfer cylinder 90 (Ans. 3) and to make the
supports 11 mounted on the same support as gripper 84 so that it is movable
relative to the tucker 74 (Ans. 6). However, Whitten's supports 11 are
mounted on a cutting cylinder and push the signature into a gripper on the
transfer cylinder. Col. 5, ll. 56-67. In addition, Jackson's grippers 84 are
located under the support cover 92; the gripper fingers 86 only reach the
outside of the cylinder through slots 94 in cover 92. Para. 34. Thus, even
assuming, arguendo, it would have been obvious to one of ordinary skill to
position the supports 11 in Whitten on the transfer cylinder, the Examiner
has made no findings as to how the supports 11 would be mounted in
Jackson's transfer cylinder 90 so as to be movable with the grippers 84
relative to the tucker 74.
Such a modification would require further modification to the
structure of Jackson to mount the supports 11 on the gripper spider 80, as
well as to modify the cover 92 to allow the supports 11 to act upon a
signature. The Examiner does not make findings regarding modifying the
structure of Jackson to incorporate the supports 11 on the spider 80 so as to
move with the grippers 84 relative to the tucker 74, nor does the Examiner
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explain why it would have been obvious to modify Jackson as such.3 Thus,
the Examiner has not made the initial factual findings required to
demonstrate a prima facie case of obviousness of claim 1. See In re Warner,
379 F.2d 1011, 1017 (CCPA 1967) (the examiner has the initial duty of
supplying the requisite factual basis and may not, because of doubts that the
invention is patentable, resort to speculation, unfounded assumptions, or
hindsight reconstruction to supply deficiencies in the factual basis). The
rejection as directed to dependent claims 2-4 and 6-11 is similarly deficient.
The Examiner does not rely on Belanger for any teaching that would
make up for the deficiency in the combination of Jackson and Whitten
discussed above. Thus, the rejection of claim 5 suffers from the same
deficiency as the rejection of claim 1.

DECISION
We reverse the Examiner's decision.

REVERSED

3 The Examiner states that "the gripper and the signature support are capable
of being mounted" as claimed, but a mere statement that something is
capable of modification or combination is not a substitution for factual
findings and an analysis of why it would have been obvious to make such a
modification or combination.
Appeal 2009-007683
Application 11/258,494

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