Ex Parte Richards

Patent Trial and Appeal Board

Nov 29, 2017

12435853 (P.T.A.B. Nov. 29, 2017)

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.
12/435,853 05/05/2009 John Sheridan Richards 6003.1182 4226
23280 7590 12/01/2017
Davidson, Davidson & Kappel, LLC
589 8th Avenue
16th Floor
New York, NY 10018
EXAMINER
FERGUSON SAMRETH, MARISSA LIANA
ART UNIT PAPER NUMBER
2854
NOTIFICATION DATE DELIVERY MODE
12/01/2017 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):
ddk @ ddkpatent .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN SHERIDAN RICHARDS1
Appeal 2017-002746
Application 12/435,853
Technology Center 2800
Before BRADLEY R. GARRIS, CHRISTOPHER C. KENNEDY, and
BRIAN D. RANGE, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Under 35 U.S.C. § 134, Appellant appeals from the Examiner’s
rejections under 35 U.S.C. § 103(a) of independent claims 1, 8, and 45 as
unpatentable over Dufour (US 6,733,431 B2, May 11, 2004) in view of
Athans (US 6,606,944 Bl, Aug. 19, 2003) and Brodie (US 2,821,134, Jan.
28, 1958) and of remaining dependent claims 9, 30, 35—38, and 44 as
unpatentable over these references alone or in combination with additional
prior art. We have jurisdiction under 35 U.S.C. § 6.
1 Goss International Americas Inc. is identified as the real party in interest.
Appeal Br. 2.
Appeal 2017-002746
Application 12/435,853
We REVERSE.
Appellant claims a broadsheet newspaper printing press comprising a
folder including a cylinder cross-folding the newspaper pages off center so
one side of the pages has a length of 9 inches or more and the other side has
a length of 6.5 inches or less (i.e., to create an offset fold for receiving
inserts (Spec. 128)) (independent claims 1 and 8). Appellant also claims a
corresponding method comprising a cross-folding step to obtain these length
dimensions (independent claim 45).
A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, appears below.
1. A broadsheet newspaper printing press comprising:
an image carrier carrying three images around in broadsheet
newspaper format, the three images being different from each other;
the image carrier transferring the three images to a web;
a folder imparting a longitudinal fold to the web and cutting the web
into broadsheet newspaper pages,
the folder including a cylinder cross-folding the broadsheet newspaper
pages off center so one side of the broadsheet newspaper pages has a length
of 9 inches or more and the other side has a length of 6.5 inches or less,
the folder collecting at least three sections to form a broadsheet
newspaper, each section derived from one of the three images.
In rejecting the independent claims, the Examiner finds that Dufour
discloses a newspaper printing press and method having a cross-folding
cylinder and step but does not disclose that the cross-folding results in the
claimed feature wherein one side of the newspaper pages has a length of 9
inches or more and the other side has a length of 6.5 inches or less (Final
Action 2—3). The Examiner also finds that Athans discloses folding paper
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Application 12/435,853
into first and second lengths wherein the first and second lengths are
different but, like Dufour, does not disclose the length dimensions of the
independent claims. Nevertheless, the Examiner concludes that it would
have been obvious to modify Dufour so as to result in such length
dimensions because “discovering an optimum value of a result effective
variable involves only routine skill in the art” (id. at 3 4). As further support
for this obviousness conclusion, the Examiner observes that “column 6 lines
14-18 of Athans state that an operator can input a fold ratio as desired” (id.
at 4).2
Appellant states that the folded pages of Dufour create an offset or lap
of approximately 10 to 25 mm, in other words approximately 0.39 to 0.98
inches, (App. Br. 6) and that Dufour’s system is not designed to handle laps
exceeding an inch (id. at 8). Appellant’s statements are supported by
Dufour’s teachings that “[t]he offset—referred to as the lap— should be
approximately 10 mm to 25 mm” (col. 5,11. 24—25) and that “the difference
between the cutting lengths for section a and section b will be chosen to be
approximately 10 to 25 mm, because the downline inserters require such an
offset for secure and dependable insertion processing” (col. 5,1. 66-col. 6,1.
4). We emphasize that these teachings are contained within the Dufour
disclosure cited by the Examiner (i.e., col. 4,1. 10-col. 6,1. 20, Final Action
3).
2 The Examiner relies on Brodie to evince obviousness for the independent
claim feature relating to an image carrier carrying three images. However, in
light of our disposition of the subject appeal, we need not address this
obviousness issue.
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Appeal 2017-002746
Application 12/435,853
Appellant correctly points out that the length dimensions required by
the independent claims result in a lap of at least 2.5 inches which is more
than 2.5 times greater than Dufour’s lap of approximately 0.39 to 0.98
inches (App. Br. 7). Appellant argues that there is no apparent reason to
modify Dufour in such a way as to obtain the length dimensions and
concomitant lap of the independent claims (id.). Appellant further argues
that the column 6, lines 14—18, disclosure of Athans cited by the Examiner
(i.e., Final Action 4) does not support the Examiner’s obviousness
conclusion because it merely teaches that an operator can set a desired lap
without suggesting the claimed length dimensions and the corresponding lap
of at least 2.5 inches (App. Br. 8).
Appellant’s arguments have convincing merit.
In the record before us, the Examiner fails to cite any disclosure in the
applied references that teaches or would have suggested the claimed length
dimensions and their resulting lap.3 Indeed, as noted above, the Dufour
disclosure cited by the Examiner includes teachings that a lap should be less
than 1 inch and that downline inserters require such a lap to achieve secure
and dependable insertion processing. These circumstances undermine the
Examiner’s conclusion that it would have been obvious to optimize the
3 In the Response to Argument section of the Answer, the Examiner refers to
an article that is said to disclose length dimensions of 10.5 inches and 8
inches, thereby yielding a lap of 2.5 inches (Ans. 3). We will not consider
this article because it is not included in the statement of the rejection. See
In reHoch, 428 F.2d 1341, 1342 n.3 (CCPA 1970).
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Application 12/435,853
length dimensions of Dufour to be within the claimed ranges based on an
optimization theory.
Regarding this latter point, it is well settled that there is no prima facie
case of obviousness based on optimization where, as here, the claimed
values are significantly outside the prior art range in which an optimized
value would be expected to reside (i.e., the claimed length dimensions result
in a lap of at least 2.5 inches which is more than 2.5 times Dufour’s lap
range of less than 1 inch). This is particularly so when the prior art tends to
teach away from values outside the prior art range as Dufour does by
teaching that downstream inserters require a lap or offset of 10 to 25 mm
(i.e., of less than 1 inch). See In re Sebek, 465 F.2d 904, 907 (CCPA 1972):
Where, as here, the prior art disclosure suggests the outer
limits of the range of suitable values, and that the optimum
resides within that range, and where there are indications
elsewhere that in fact the optimum should be sought within that
range, the determination of optimum values outside that range
may not be obvious. We think it is not on the facts of this case.
To summarize, in the rejection and in the responses to argument, the
Examiner’s obviousness contentions regarding the independent claims are
merely conclusory statements that lack articulated reasoning with rational
underpinning. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(“[R]ejections on obviousness grounds 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”) quoted with approval in KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007). For this reason, we do not sustain the Examiner’s
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§103 rejections of independent claims 1, 8, and 45 and of remaining
dependent claims 9, 30, 35—38, and 44.
DECISION
The Examiner’s decision rejecting the appealed claims is reversed.
REVERSED
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