Ex parte RING

Board of Patent Appeals and Interferences

Sep 17, 1997

08117669 (B.P.A.I. Sep. 17, 1997)

Application for patent filed September 8, 1993. 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journal and (2) is not binding precedent of the Board.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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ROBERT S. RING
____________
Appeal No. 96-3968
Application No. 08/117,6691
____________
ON BRIEF
____________
Before LYDDANE, STAAB, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 26, which are all of the claims
pending in this application.
We AFFIRM-IN-PART and enter a new ground of rejection
pursuant to 37 CFR § 1.196(b).
Appeal No. 96-3968
Application No. 08/117,669
2
BACKGROUND
The appellant's invention relates to a form burster. Claims
1 and 15 are representative of the subject matter on appeal and a
copy of those claims, as they appear in the appellant's brief, is
attached to this decision.
The prior art references of record relied upon by the
examiner as evidence of anticipation under 35 U.S.C. § 102 (b)
and obviousness under 35 U.S.C. § 103 are:
Hageman 2,513,093 June 27, 1950
Jones et al. 3,942,694 March 9, 1976
(Jones)
Gergely, Jr. et al. 5,060,838 Oct. 29, 1991
(Gergely)
Nakamura et al. 5,104,022 Apr. 14, 1992
(Nakamura)
Claim 1 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by Nakamura.
Claims 2, 4, 5, 7, 8 and 15 through 19 stand rejected under
35 U.S.C. § 103 as being unpatentable over Nakamura.
Claims 6 and 20 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Nakamura in view of Jones.
Appeal No. 96-3968
Application No. 08/117,669
We note that the final rejection (Paper No. 7, mailed2
August 22, 1994) set forth this ground of rejection against claim
12. However, the examiner's answer (Paper No. 14, mailed June
26, 1995) did not contain this ground of rejection.
Nevertheless, since the examiner's answer did not withdraw this
ground of rejection, we consider this rejection of claim 12
before us in this appeal.
3
Claims 3, 10, 11, 13, 14 and 21 stand rejected under
35 U.S.C. § 103 as being unpatentable over Nakamura in view of
Hageman.
Claim 12 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Nakamura in view of Hageman and Jones.2
Claims 1, 2, 9 and 22 through 26 stand rejected under
35 U.S.C. § 103 as being unpatentable over Gergely in view of
Hageman.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and the appellant regarding the §§ 102 (b) and 103
rejections, we make reference to the examiner's answer for the
examiner's complete reasoning in support of the rejections, and
to the appellant's brief (Paper No. 13, filed April 6, 1995) for
the appellant's arguments thereagainst.
Appeal No. 96-3968
Application No. 08/117,669
See column 7, line 30, to column 8, line 2, of Nakamura.3
4
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, to the October 4,
1994 declaration of Robert S. Ring and to the respective
positions articulated by the appellant and the examiner. As a
consequence of our review, we make the determinations which
follow.
We will not sustain the examiner's rejection of claim 1
under 35 U.S.C. § 102(b) as being anticipated by Nakamura. We
agree with the appellant's argument (brief, p. 6) that the gap
between Nakamura's feed-in rollers 26a and 26b does not satisfy
the "fixed gap" limitation of claim 1. We disagree with the
examiner's determination (answer, p. 4) that Nakamura discloses a
fixed gap between Nakamura's feed-in rollers 26a and 26b.
Nakamura specifically teaches that the gap between the feed-in
rollers 26a and 26b is adjusted by a gap adjusting means. As3
discussed in column 10, line 3, to column 11, line 20 and as
shown in Figures 8 and 9 of Nakamura, the gap between the feed-in
rollers 26a and 26b changes as each continuous paper sheet is
Appeal No. 96-3968
Application No. 08/117,669
5
fed. For example, when a thick continuous paper sheet is fed,
the feed-in rollers 26a and 26b and incremented in eight pulses
to close the gap therebetween followed by eight pulses to widen
the gap. Thus, the feed-in rollers 26a and 26b are not mounted
to have a "fixed gap" therebetween. Since all the limitations of
claim 1 are not met by Nakamura, we will not sustain the
examiner's rejection thereof under 35 U.S.C. § 102(b).
We will not sustain the examiner's rejection of claims 2
through 8, 10 through 14, 18 and 19 under 35 U.S.C. § 103 as
being unpatentable over Nakamura, alone or in combination with
Jones and/or Hageman. Similar to claim 1, these claims all
require the guide elements/slow speed rolls to have a "fixed gap"
therebetween. In rejecting these claims under 35 U.S.C. § 103,
the examiner relied upon Nakamura as teaching this "fixed gap"
limitation. However, as discussed above, we do not agree with
the examiner on this matter. Since the "fixed gap" limitation is
not taught or suggested by the prior art applied by the examiner,
we will not sustain the examiner's rejection of claims 2 through
8, 10 through 14, 18 and 19 under 35 U.S.C. § 103 as being
unpatentable over Nakamura, alone or in combination with Jones
and/or Hageman.
Appeal No. 96-3968
Application No. 08/117,669
6
We will sustain the examiner's rejection of claims 15
through 17 under 35 U.S.C. § 103 as being unpatentable over
Nakamura. We will also sustain the examiner's rejection of claim
21 under 35 U.S.C. § 103 as being unpatentable over Nakamura in
view of Hageman. These claims only require that the slow speed
rolls have a gap therebetween, not a "fixed gap" as recited in
the claims previously considered. With regard to these claims,
we agree with the examiner's determination (answer, p. 5) that
it would have been obvious to one having ordinary skill in the
art to adapt Nakamura's burster to (1) process business forms of
a paper weight of 32 lbs. or less, or more specifically, 16-32
lbs., and (2) utilize a transport speed of about 600 fpm since
discovering an optimum range or value involves only routine skill
in the art.
Implicit in these rejections is the examiner’s view that the
above noted modification of Nakamura would have resulted in a
method which corresponds to the method recited in claims 15
through 17 and 21 in all respects.
The appellant has not presented any argument with respect to
claims 15 through 17 and 21. The arguments presented in section
Appeal No. 96-3968
Application No. 08/117,669
7
VI, Parts B and D of the brief (pp. 6-8 and 11) are all addressed
to limitations not present in claims 15 through 17 and 21.
Accordingly, the appellant has not specified any error in the
rejection of claims 15 through 17 and 21.
For the above reasons, we will sustain the examiner's
rejection of claims 15 through 17 under 35 U.S.C. § 103 as being
unpatentable over Nakamura and the examiner's rejection of claim
21 under 35 U.S.C. § 103 as being unpatentable over Nakamura in
view of Hageman.
We will not sustain the examiner's rejection of claim 20
under 35 U.S.C. § 103 as being unpatentable over Nakamura in view
of Jones. We agree with the appellant's argument (brief, p. 11)
that Jones does not teach or suggest driving the transport belts
at a third speed slightly higher than the first speed of the slow
speed rolls, but not as great as the second speed of the high
speed rolls as recited in claim 20. While Jones does disclose a
double conveyor belt unit 46-55 for conveying bags from nip rolls
40, 41 to folder rolls 56-58, Jones does not teach or suggest the
step of driving transport belts at a third speed as recited in
claim 20. Since the limitations of claim 20 is not taught or
Appeal No. 96-3968
Application No. 08/117,669
8
suggested by the prior art applied by the examiner, we will not
sustain the examiner's rejection of claim 20 under
35 U.S.C. § 103 as being unpatentable over Nakamura in view of
Jones.
We will sustain the examiner's rejection of claims 1, 2, 9,
22, 24 and 26 under 35 U.S.C. § 103 as being unpatentable over
Gergely in view of Hageman. With regard to these claims, we
agree with the examiner's determination (answer, p. 8) that it
would have been obvious to one having ordinary skill in the art
to provide Gergely with a stationary breaker blade as suggested
and taught by Hageman. Further, with regard to claims 2 and 22,
we agree with the examiner's determination (answer, pp. 8-9)
that it would have been obvious to one having ordinary skill in
the art that the fixed gap of Gergely would have been between
about 0.005-0.008 inches. Further, with regard to claim 24, we
agree with the examiner's determination (answer, p. 9) that it
would have been obvious to one having ordinary skill in the art
to adapt Gergely's burster to process business forms of a paper
weight of 32 lbs. or less since one of ordinary skill in the art
would readily adapt the burster of Gergely to business forms of
varying paper weights.
Appeal No. 96-3968
Application No. 08/117,669
9
Implicit in this rejection is the examiner’s view that the
above noted modifications of Gergely would result in an apparatus
which corresponds to the apparatus recited in claims 1, 2, 9 and
22 and a method which corresponds to the method recited in claims
24 and 26 in all respects.
The appellant's arguments (brief, pp. 12-15) are
unpersuasive for the following reasons. First, Gergely discloses
in Figure 1, a pair of spaced plates (unnumbered) for guiding the
web 18 from tractors 26 to the rollers 10 and 12. These spaced
plates are readable on the claimed guide elements/plates having a
"fixed gap" therebetween. Second, we agree with the examiner
that the appellant has not rebutted the examiner's determination
(answer, p. 8) that the spaced plates of Gergely inherently
prevent the formation of a form bubble. Third, we agree with the
examiner (answer, pp. 12 and 14) that the size of the gap between
the spaced plates of Gergely is a result effective variable since
the size of the gap would have been set according to the actual
thickness of the web being conveyed. Fourth, we agree with the
examiner that an artisan would have interpreted the zigzagged
line above roller 34 in Figures 6 and 7 of Gergely as being a
representation of a spring to bias roller 34 towards roller 36.
Appeal No. 96-3968
Application No. 08/117,669
See Figure 7 where springs 53 urge upper high speed roll4
50 into engagement with lower high speed roll 48.
10
In any event, we agree with the examiner (answer, p. 14) that
Hageman would have suggested the use of spring biased high speed
rollers.4
For the above reasons, we will sustain the examiner's
rejection of claims 1, 2, 9, 22, 24 and 26 under 35 U.S.C. § 103
as being unpatentable over Gergely in view of Hageman.
We will not sustain the examiner's rejection of claims 23
and 25 under 35 U.S.C. § 103 as being unpatentable over Gergely
in view of Hageman. We agree with the appellant's argument
(brief, p. 15) that the recited guide plates are not taught or
suggested by the applied prior art. In that regard, we find that
there is no suggestion, absent the appellant's specification, to
make the spaced plates of Gergely adjustable as recited in claims
23 and 25. Since the "adjustable" limitation is not taught or
suggested by the prior art applied by the examiner, we will not
sustain the examiner's rejection of claims 23 and 25 under 35
U.S.C. § 103 as being unpatentable over Gergely in view of
Hageman.
Appeal No. 96-3968
Application No. 08/117,669
11
Under the provisions of 37 CFR § 1.196(b), we enter the
following new ground of rejection:
Claims 3 and 4 are rejected under 35 U.S.C. § 103 as being
unpatentable over Gergely in view of Hageman for the reasons set
forth above with respect to the § 103 rejections of claims 1 and
2 based on Gergely and Hageman and the additional reasons set
forth below.
Claim 3 depends on claim 2 (addressed previously) and adds
the limitation that the high speed rolls are spring biased
together. As set forth above, we agree with the examiner that an
artisan would have interpreted the zigzagged line above roller 34
in Figures 6 and 7 of Gergely as being a representation of a
spring to bias roller 34 towards roller 36 and that, in any
event, Hageman would have suggested the use of spring biased high
speed rollers. Accordingly, it would have been further obvious
to one having ordinary skill in the art to spring bias Gergely's
rollers 34 and 36 together as suggested by Hageman's spring
biased rolls 50 and 48.
Claim 4 depends on claim 1 (addressed previously) and adds
the limitation that the fixed gap is about 0.007 inches. As set
Appeal No. 96-3968
Application No. 08/117,669
12
forth above, we agree with the examiner that the size of the gap
between the spaced plates of Gergely is a result effective
variable. Accordingly, it would have been further obvious to one
having ordinary skill in the art to space the spaced plates of
Gergely apart by about 0.007 inches.
CONCLUSION
To summarize, the decision of the examiner to reject claim 1
under 35 U.S.C. § 102(b) as being anticipated by Nakamura is
reversed; the decision of the examiner to reject claims 2 through
8, 10 through 14, 18 and 19 under 35 U.S.C. § 103 as being
unpatentable over Nakamura, alone or in combination with Jones
and/or Hageman is reversed; the decision of the examiner to
reject claims 15 through 17 and 21 under 35 U.S.C. § 103 as being
unpatentable over Nakamura, alone or in combination with Hageman
is affirmed; the decision of the examiner to reject claim 20
under 35 U.S.C. § 103 as being unpatentable over Nakamura in view
of Jones is reversed; the decision of the examiner to reject
claims 1, 2, 9, 22, 24 and 26 under 35 U.S.C. § 103 as being
unpatentable over Gergely in view of Hageman is affirmed; the
decision of the examiner to reject claims 23 and 25 under 35
U.S.C. § 103 as being unpatentable over Gergely in view of
Appeal No. 96-3968
Application No. 08/117,669
13
Hageman is reversed; and a new rejection of claims 3 and 4 under
35 U.S.C. § 103 as being unpatentable over Gergely in view of
Hageman has been made pursuant to our authority under 37 CFR §
1.196(b).
Any request for reconsideration or modification of this
decision by the Board of Patent Appeals and Interferences based
upon the same record must be filed within one month from the date
hereof. 37 CFR § 1.197.
With respect to the new rejection under 37 CFR § 1.196(b),
should the appellant elect the alternate option under that rule
to prosecute further before the Primary Examiner by way of
amendment or showing of facts, or both, not previously of record,
a shortened statutory period for making such response is hereby
set to expire two months from the date of this decision. In the
event the appellant elects this alternate option, in order to
preserve the right to seek review under 35 U.S.C. §§ 141 or 145
with respect to the affirmed rejection, the effective date of the
affirmance is deferred until conclusion of the prosecution before
the examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
Appeal No. 96-3968
Application No. 08/117,669
14
If the appellant elects prosecution before the examiner and
this does not result in allowance of the application, abandonment
or a second appeal, this case should be returned to us for final
action on the affirmed rejection, including any timely request
for reconsideration thereof.
Appeal No. 96-3968
Application No. 08/117,669
15
No period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART; 37 CFR § 1.196(b)
WILLIAM E. LYDDANE )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 96-3968
Application No. 08/117,669
16
NIXON AND VANDERHYE
1100 NORTH GLEBE ROAD
8TH FLOOR
ARLINGTON, VA 22201-4714
Appeal No. 96-3968
Application No. 08/117,669
1
APPENDIX
1. A burster for business forms comprising:
a transport mechanism; a pair of driven high speed
rolls; a plurality of guide elements for guiding forms to said
high speed rolls; and a breaker blade between said guide elements
and high speed rolls; and
said guide elements mounted so that said guide elements
have a fixed gap, greater than zero, therebetween during
processing of business forms having a particular weight, said
fixed gap sufficient to prevent formation of a form bubble in
business forms being burst by said burster.
15. A method of bursting continuous single part business
forms having perforation lines formed periodically therein; and
having a paper weight of about 32 lb. or less, utilizing a
burster having gapped slow speed rolls upstream of high speed
rolls, and a breaker blade between the slow and high speed rolls,
comprising the steps of:
(a) feeding the forms with a paper weight of about 32
lbs. or less to the slow speed rolls at a speed not less than a
first speed;
(b) driving the slow speed rolls at substantially the
first speed;
© passing the forms through a gap between the slow
speed rolls that is of sufficient spacing to prevent bubble
formation in the forms;
Appeal No. 96-3968
Application No. 08/117,669
2
(d) driving the high speed rolls at a second speed,
significantly, greater than the first speed; and
(e) when a perforation moves past the slow speed rolls,
effecting bursting at a perforation line.
APPEAL NO. 96-3968 - JUDGE NASE
APPLICATION NO. 08/117,669
APJ NASE
APJ LYDDANE
APJ STAAB
DECISION: AFFIRMED-IN-PART;
1.196(b)
Prepared By: Delores A. Lowe
DRAFT TYPED: 11 Sep 97
FINAL TYPED: